Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: tbailey@patentable.com http//www.patentable.

1. Thomas Bailey Oyen Wiggs Green & Mutala LLP Phone: 604 669 3432 E-mail: tbailey@patentable.com http//www.patentable.com Patents – Lecture 4

2. Course Materials • Handouts • PowerPoint Slides • http://www.patentable.com/lectures/

3. Lecture Outline 1. Novelty - test for anticipation 2. Obviousness 3. Utility 4. Patent Specifications

4. Lecture Outline 5. Ownership 6. Infringement

5. Baker Petrolite case(Casebook , pp. 125 - 135) • This case deals with anticipation by prior use or sale • There is very little jurisprudence interpreting Section 28.2(1)(a) of the Patent Act • The Federal Court of Appeal held that an “enabling” disclosure is required • If a product is made available without restriction to even one member of the public, and if a person skilled in the art would be able to discover the claimed invention without the use of inventive skill (such as by reverse engineering the product), then the invention may be found to be anticipated

6. Baker Petrolite case(Casebook , pp. 125 - 135) • The amount of time and work involved in conducting the reverse engineering analysis is not determinative of whether a skilled person could discover the invention • In this case the Court held that a person skilled in the art and using data and techniques available at the relevant time, and without the exercise of inventive skill, would have been led inevitably to the subject matter of the patent claims, namely the extraction of hydrogen sulphide from natural gas by contact with triazine (or its starting components)

8. 130

10. 134

12. 135

13. Concealed Use • Some “black box” inventions are concealed or undetectable in normal use • Query whether the sale of such inventions makes them “available to the public” within the meaning of Section 28.2(1) • Canadian law now clearly requires an “enabling disclosure”, namely a disclosure by which information sufficient to enable a person skilled in the art to practice the invention has been “made available to the public”

14. Obviousness “[The issue of obviousness] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts.” Judge Learned Hand, Harries v. Air King Products Co. (1950) 183 F.2d 158, 162, CA2, N.Y.

16. 139

17. 139

18. Ernest Scragg case(Casebook , pp. 140 - 142) • The courts apply an objective test - whether the alleged invention would have been obvious to a person of ordinary skill in the art • A “mere scintilla” or slightest trace of an inventiveness is sufficient • Workshop improvements are not patentable • “Hindsight analysis” should be avoided - many important inventions may seem obvious once the solution to a particular problem has been shown

20. 140-141

22. 142

23. 11 CA No. 912921 ISSUED 45 Oct. 24, 1972 CLASS 52 114-12 C.R. CL. 54 WIND-PROPELLED APPARATUS Henry H. Schweitzer, Pacific Palisades, California, U.S.A. and James R. Drake, Santa Monica, California, U.S.A. APPLICATION No. 21 061,852 FILED 22 Sep. 12, 1969 PRIORITY DATE 30 No. OF CLAIMS 10 CANADIAN PATENT

24. Windsurfing case(Casebook , pp. 142 - 151) • All of the component elements of the invention were known in the prior art • The Plaintiff obtained a patent on the basis that the invention was a new and inventive combination • The trial court held that the invention was obvious in view of a Darby sailboard which was described in a 1965 article in Popular Science magazine • The Darby sailboard included a mast which could swivel in a socket, but it did not include a Marconi rig (i.e. a triangular sail) or a wishbone boom

25. Windsurfing case(Casebook , pp. 142-151) • The trial judgment was overturned on appeal • Urie J. held that the advantages of the Marconi rig were not obvious to the inventor of the Darby sailboard who the court considered to be someone skilled in the art • Urie J. also considered the commercial success of the invention (i.e. a “secondary consideration”) • In the result, claims 5 and 10 of the patent were found to be valid

29. 143

31. 150

32. 150

33. 5 10 15 20 25 30 7

34. 5 10 7

35. 5. The apparatus of claim 1 including means adapted to enable said user to grasp either side of said sail. 10. The apparatus of claim 4 wherein said boom comprises a pair of boom members arcuately connected athwart said mast and securing said sail there-between.

39. Sanofi case(Casebook , pp. 151-160) • This case also deals with the test for obviousness • The Court adopted the four-step Windsurfing/Pozzoli approach • An invention may be “obvious to try” if it is more or less self-evident that what is being tried ought to work • However, a mere possibility of finding an invention is not enough • It was not self-evident from the “875 patent or common general knowledge that the selected isomer ought to work, i.e. that it would be more effective and less toxic

41. 155

43. 156

45. 159

47. 160

48. Conor Medsystems v. Angiotech Pharmaceuticals • University College London • Innovation Seminar - 23 November 2011 • Moot court before the Supreme Patent Court (Justice Rothstein of the SCC) • http://www.ucl.ac.uk/laws/ibil/index.shtml?events_past

49. X v. Commissioner of Patents(Casebook , pp. 161 - 162) • An invention is not useful if will not operate at all or, more broadly, if it will not do what the patent specification promises it will do • In this case the applicant sought patent protection for a “death ray” which allegedly used a path of photo-ionized air produced by a laser beam as a channel for the transmission of a very high voltage • The Federal Court of Appeal upheld the judgment of the Patent Appeal Board which refused the application on the basis that the invention was not useful since it was inoperable for the purpose for which it was designed