Novelty

Statutory Basis

"invention" means any new and useful art. . .

But the novelty requirement is set out in detail in s28.1/2

An invention which is not new is “anticipated”

Rationale

The novelty requirement is a minimal standard for ensuring that the invention is a contribution to knowledge

At one time patents were granted individually on application to the king

This system was abused Eg A monopoly in playing cards granted

to a No monopolies for

Technical

When must an invention be new? First to file v first to invent

Where must an invention be new? Anywhere in the world

What does it mean for an invention to be new? How similar does must the prior art be in

order to anticipate the invention? Where is the borderline with non-

obviousness?

First-to-File/Invent

First-to-file When two patent applications are filed for the

same invention, the first person to file is entitled to the patent

All of the world except the US US will be changing soon

First-to-invent When two patent applications are filed for the

same invention, the person who proves that they were the first to invent is entitled to the patent

This is established in an “interference” proceeding

First-to-File/Invent

The disadvantage of the first-to-invent standard is that it leads to litigation

Evidence of invention must be kept in case of interference proceedings eg Engineering notebooks Must be kept for long periods as interference

can be declared long after issue This is true for anyone who wants to apply

for a US patent – not just US inventors

Qualified Absolute Novelty

Absolute Novelty An invention is new if it is not part

of the state of the art / prior art as of the priority date

What is the priority date? What is the state of the art?

Qualified One year grace period for disclosure by

inventor

Filing Date v Claim Date

Claim date v filing date Filing date is the date of filing of the

Canadian application Claim date is the date from which the

Canadian application can claim priorityOften referred to as “priority date”

Claim / Priority Date

When is the “claim date”? For patent applications filed only in Canada,

it is simply the filing date: s 28.1(1) However, the claim date is adjusted to

allow for the international patent filing system Claim date is filing date of international

filing under PCT or other applicable treaty So long as filing in Canada follows within

one year

State of the Art

State of the art is all information Made available to the public By use or written or oral

description Anywhere in the world As of the priority date

State of the Art

Plus all information In Canadian patent applications with

an earlier priority date, including convention filings

It is irrelevant whether the prior application has been published – it is considered as part of the state of the art even though it is secret

However, unpublished foreign applications are not part of the state of the art

State of the Art

Result: First to file wins

Prior Public Knowledge

S.28.2 (1)The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed. . . (b) before the claim date by a person not

mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;

Not previously disclosed to the public anywhere in the world

Prior Canadian Application

Or in a patent application . . . (c) in an application for a patent

that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date; or

Prior filing in Canada

Prior Convention Application

(d) in an application (the "co-pending application") for a patent that is filed in Canada by a person other than the applicant and has a filing date that is on or after the claim date if

[applicant has previously filed an application in a convention country]

[prior to the claim date] [and claimed convention priority]

Qualified

Grace period after disclosure by inventor

(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

Qualified

Note that grace period is not adjusted for international filing Inventor has one year from disclosure

to file in Canada Many systems do not have a grace

period Do not count on it

Old Act – Pre-1993

First-to-invent Distinction between paper disclosure

and use Prior use outside Canada irrelevant Two year grace period

For paper disclosure anywhere in the world

For prior use in Canada Ie. First-to-invent could obtain patent so

long as filed within 2 years of disclosure by anyone

What must be disclosed

What must be disclosed

Prior use , prior sale, prior publication, all had separate statutory bases at one time

Now simply “disclosed in such a manner that the subject matter became available to the public”

Old Law

Prior to 1996 distinguish Paper anticipation Prior use

Old Law

Paper Anticipation The prior disclosure is only by means of

a publication, ie the thing itself was never produced

The disclosure in the publication must be equal to the patent disclosure

Old Law

Prior Use Where the thing itself is disclosed the

rule is: Infringement after = anticipation

prior Anything which would have infringed

will be sufficient to anticipate It does not matter if it would have

been difficult to reverse engineer to discover the invention, or that it never in fact was reverse engineered

Current Law:Enabling Disclosure

Enabling Disclosure

In order to anticipate invention, prior art must:

Disclose AND

Enable

Disclosure

Must disclose the very thing that is claimed

A signpost, however, clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.

Sachs LJ, General Tire v Firestone Tire

Disclosure

The requirements that must be met before an invention should be held to have been anticipated by a prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent. . . . It is not enough to prove that an apparatus described in it could have been used to produce a particular result. There must be clear directions so to use it. Thorson P. The King v. Uhlemann Optical Co.

Disclosure

Nor is it sufficient to show that it contained suggestions which, taken with other suggestions, might be shown to foreshadow the invention or important steps in it. There must be more than the nucleus of an idea which, in the light of subsequent experience, could be looked on as being the beginning of a new development. Thorson P. The King v. Uhlemann Optical Co.

Enablement

Must provide sufficient information for a person skilled in the art to be able to arrive at the invention that has been disclosed

Enablement means that the ordinary skilled person would have been able to perform the invention which satisfies the requirement of disclosure. Synthon

Enablement

Some trial and error is permitted at the enablement stage Contrast disclosure which requires the flag

to be planted at the precise location E.g. Invention claims chemical

compound which was previously sold in the open market Disclosure is satisfied Enablement is satisfied IF skilled chemist

can ‘reverse engineer’ the compound

Enablement

The prior patent must provide enough information to allow the subsequently claimed invention to be performed without undue burden. . . . If inventive steps are required, the prior art will not be considered as enabling. However, routine trials are acceptable and would not be considered undue burden

Sanofi

Enabling Disclosure

No longer true that “Infringement after = anticipation prior” If the use did not enable a person

skilled in the art to perform Infringement after But not anticipating before

Rationale

An invention is a piece of information. Making matter available to the public within the meaning of section 2(2) therefore requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information. Merrell Dow v Norton HL, per Lord Hoffmann

Rationale

Old approach viewed an invention as a thing

New approach views invention as information

Difference is important only when disclosure of the thing is not equivalent to disclosure of the information

Example

Same chemical as claimed in patent was sold on the open market and (1) Formula / method of manufacture is

not publically known and cannot be determined from the chemical itself

Not enabling (2) Formula can be determined from

compound itself by skilled chemist using standard techniques

Enabling

Merrell Dow v Norton

Merrell Dow held expired patent on terfenadine. Anti-histamine

Then discovered active metabolite and patented that. Active metabolite is inevitably made when

terfenadine is swallowed. Norton sells terfenadine. Is patent on active metabolite is invalid as

anticipated by prior use or terfenadine patent?

Merrell Dow v Norton

No anticipation by use When terfenadine swallowed by end-

consumers. Who then make active metabolite

Not anticipated on this basis: Use disclosed “no information to the

public about the nature of the product or how to make it.”

Recall: “the product” = active metabolite

Merrell Dow v Norton

Anticipation by terfenadine patent Disclosed = Yes

“In this case, knowledge of the acid metabolite was in my view made available to the public by the terfenadine specification under the description "a part of the chemical reaction in the human body produced by the ingestion of terfenadine and having an anti-histamine effect".”

Merrell Dow v Norton

Anticipation by terfenadine patent Enabled = Yes

Anyone would know who to make the active metabolite – by swallowing terfenadine

(Note: for the purposes of the litigation, patent was construed to claim only active metabolite in the human body)

Apotex v Sanofi-Synthelabo

Selection patent = ‘777 clopidogrel bisulfate

Genus = ‘875 – large class of compounds, encompassing clopidogrel bisulfate Claim specifies a class of free bases,

including clopidogrel, and pharmaceutically acceptable salts, which include the bisulfate: total # in class = approx. 250,000

Apotex v Sanofi-Synthelabo

Sanofi holds Enabling disclosure approach to

anticipation from Synthon is correct Selection patents are valid in principle

Apotex v Sanofi-Synthelabo

On the facts – No disclosure in prior art “If in reading the genus patent the

special advantages of the invention of the selection patent are not disclosed, the genus patent does not anticipate the selection patent.”

Apotex v Sanofi-Synthelabo

On the facts – No enablement in prior art (obiter) For anticipation, the genus patent must

provide enough information so as to allow the selected invention to be performed without undue burden. In this case, the applications judge concluded that the ‘875 patent did not specifically lead to the claimed invention. He noted, on the record before him, that if one were to follow the teachings of the prior art, one would obtain racemates, never their isomers.

Apotex v Sanofi-Synthelabo

Discovering the special properties of the enantiomer of clopidogrel bisulfate was undue, whether or not it was inventive (non-obvious) In determining whether the enablement

step for proving anticipation has been met, it is important to note that routine trials are acceptable but inventive steps are not permitted.

Court ultimately concluded that it was in fact non-obvious

Available to the “public”

Public

The inventor can disclose to others so long as the disclosure is confidential Eg to raise money Saunders Airglide

Grace period does not run because there is no disclosure in the relevant sense

Public

Disclosure is made to the public so long as the use is not secret There is no requirement that the use be

actively publicized Windsurfer cases

Public

Disclosure to any public anywhere in the world “or elsewhere” s28.2 E.g. use in India anticipates invention in

US (Turmeric)

Windsurfer cases

Why is isolated prior use a bar to patentability?