American University Washington College of Law Webinar. Current Issues in Canadian Patent Law & Practice August 2008. Overview. Hot Topics in Canadian Patent Law Good faith in prosecution Double patenting Competition law and patent assignments
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Current Issues in Canadian Patent Law & Practice
73 (1)—An application for a patent in Canada shall be deemed to be abandoned if the applicant does not
(a) reply in good faith to any requisition made by an examiner in connection with an examination, within six months after the requisition is made or within any shorter period established by the Commissioner
“ … Since at least sixty years ago there has been a doctrine of good faith in respect of patents … ”
“ … An obligation arises on those seeking to gain a patent to act in good faith when dealing with the Patent Office … It is to be expected that there will be full, frank and fair disclosure … ”
Every patent issued for an invention is assignable in law, either as to the whole interest or as to any part thereof, by an instrument in writing.
“… In my opinion, as a matter of law, it is not arguable that the impairment of competition inherent in the exercise of rights expressly provided by…[the Patent]…Act—the obtaining of a patent or reissue of a patent, its assignment and action by the assignee to enforce its monopoly—can be undue. It follows that undue impairment of competition cannot be inferred from evidence of the exercise of those rights alone.”
“…section 50 of the Patent Act does not immunize an agreement to assign a patent from section 45 of the Competition Act when the assignment increases the assignees' market power in excess of that inherent in the patent rights assigned.”
(3) The specification of an invention must
(a) correctly and fully describe the invention and its operation or use as contemplated by the inventor;
(b) set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is most closely connected, to make, construct, compound or use it…
“…the inventor…must…give to the public an adequate description of the invention with sufficiently complete and accurate details as will enable a workman, skilled in the art to which the invention relates, to construct or use that invention when the period of the monopoly has expired…”
“…To be complete, it must meet two conditions: it must describe the invention and define the way it is produced or built…”
“Thus, in considering the law as to sufficiency in regard to selection patents, the following may be concluded:
1. A valid selection patent may be obtained where the invention lies in selecting a member or members from a previously disclosed group where the member or members selected possess a particular advantage not previously to be found or predicted in a large number of members of the class by a person skilled in the art.
2. The advantage may also be a disadvantage to be avoided.
3. The advantage must be clearly set out in the specification. A statement that the selected group possesses advantages or lack of disadvantages is not in itself sufficient; the advantage must be plainly and fully set out in sufficient detail so as to enable a person skilled in the art to know and appreciate what they are.”
Eli Lilly FC (2007)
“…Only two questions are relevant for the purpose of subsection 27(3) of the Act. What is the invention? How does it work…In the case of selection patents, answering the question “What is the invention?” involves disclosing the advantages conferred by the selection. If the patent specification (disclosure and claims) answers these questions, the inventor has held his part of the bargain...”
42. Every patent granted under this Act…shall, subject to this Act, grant to the patentee and the patentee’s legal representatives for the term of the patent, from the granting of the patent, the exclusive right, privilege and liberty of making, constructing and using the invention and selling it to others to be used, subject to adjudication in respect thereof before any court of competent jurisdiction.
… "small entity" , in respect of an invention, means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that (a) is controlled directly or indirectly by an entity, other than a university, that employs more than 50 employees; or
(b) has transferred or licensed or has an obligation, other than a contingent obligation, to transfer or license any right in the invention to an entity, other than a university, that employs more than 50 employees.
David E. Schwartz