The Concept of Invention

1. The Concept of Invention The law of patents seeks to protect inventions. The question then is, what is an invention?

2. Defining an Invention • Webster’s dictionary defines an invention as “a device, contrivance, or process originated after study and experiment.”

3. Defining an Invention • S. 2 of the Patent Act provides that an “invention” means “any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture of composition of matter.” (Emphasis added)

4. ‘New’ • This refers to the criterion of novelty. In evaluating novelty, the court must first determine the state of the art as at the date of invention. The date of invention, is itself, a question of fact, to be established either verbally, in writing, by carrying out a process or by construction of the apparatus or process in question.

5. ‘New’ • Once the date of invention of the alleged invention is determined, for the court to make a legitimate assessment of novelty, it must place itself as far as possible in a position similar to that of the person skilled in the art. It is the knowledge notionally possessed by the proverbial person skilled in the art at the date of invention that proves novelty.

6. ‘New’ • The alleged invention must possess sufficient skill and ingenuity. • This is perhaps a subjective test; what the Germans call “wertuitel”. • To the extent that the skill and ingenuity could not have been obvious to a person skilled in the art at the date of the invention, the test is met.

7. ‘Useful’ • This refers to the test of utility, of which, later. • It would suffice at this juncture to note that usefulness of an invention in contemporary patent law is restricted to the issue of whether the invention performs as described or predicted by the inventor. It is irrelevant that the invention is indeed a nuisance, immoral or burden to society.

8. Manufacture & Composition of Matter • The word manufacture denotes a mechanistic process or product. It connotes the making of s/thing, even though living organisms may be part of the manufacturing process, e.g., brewing. • In the light of Harvard Oncomouse, a composition of matter must be limited in some way so as not to include a “machine” or “manufacture”, but to imply a combination or mixture of various ingredients that does not include higher life form whose genetic code has been altered by scientific manipulation.

9. Machine • A machine is any instrument or assemblage of parts for the transmission of force, energy or power in a predetermined manner. A machine may be a simple device, for example, a beer opener or a complex instrument such as anti-ballistic missile system. • Query: what is the difference between combinations and aggregates?

10. …Art • The word “art” in the Patent Act must be given its general connotation of learning or knowledge as commonly used in expressions such as “state of the art” or “the prior art”; thus an addition to the cumulative wisdom in a field whereby a desired result is effected having commercial value is a “new and useful” art. • Query: Is the “vendible” test sound law? See Lawson v. Comm’nr of Patents (champagne-shaped subdivision of land)

11. …Art • The decision of the court in Lawson v. Comm’r of Patents strongly suggests that for an art to be patentable “there must be some manual, chemical, or physical effect to transform or reduce something to a different state or thing. See also Re Dixon Application (instructional text for improving the vocal chords).

12. Process • Similarly, for a process to be patentable, it must confer some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art. The word “process” is also used interchangeably with “method.”

13. …improvement of .. • Patents may be granted for the new use of an old compound as there is inventive ingenuity in such discovery. The Patent Act, however, requires that the claims must be directed to such new use. In other words, claims directed to the compound itself or to the old use of the invention are not patentable. The new patent does not grant any rights to the inventor over the claims covered by old invention. See Polansky Electronics v. AGT Ltd

14. Art. 27 (1) of TRIPS • “Subject to the provisions of paras 2 and 3, patents shall be available for any inventions, whether products of processes, in all fields of technology, provided that they are NEW, involve and INVENTIVE STEP and are CAPABLE OF INDUSTRIAL APPLICATION.”

15. No Absolute Right to Patents • However, s. 27 (8) provides that “no patent shall be granted for any mere scientific principle or abstract theorem.” • Query: Are computer programmes not mathematical theorems? If so, why are they patentable? • The Patents Office is ill-disposed to inventions that have an illicit object in view. • Query: What of dual or multiple use inventions?

16. No Absolute Right to Patents • In the same vein, no patent may issue with claims directed to medical treatment per se. • Patents may however be issued to new or improved apparatuses for surgical treatment. See Visx Inc v. Nidek Co

17. No Absolute Right to Patents • Similarly, s. 20 (1) - (13) which empowers the state to confiscate certain inventions pertaining to munitions of war strongly suggest that patents may not be issued to ALL inventions. • In addition, s. 22 places limits on nuclear inventions.

18. S. 27 (1) of the Patent Act • s. 27 (1) stipulates that the commissioner may “grant a patent for an invention to the inventor or the inventor’s legal representative if an application for the patent in Canada is filed in ACCORDAMCE with this Act and ALL OTHER REQUIREMENTS for the issuance of a patent under this Act are met.”

19. Summary • As the majority of the SC held in Harvard case, “while the definition of “invention” is broad, Parliament did not define invention as “anything new and useful made by man…just because all inventions are unanticipated and unforeseeable, it does not necessarily follow that they are all patentable.”

20. Summary • The combined effect of all the provisions stated above is that an invention is not necessarily a juridical fact or or a legal fact unless it falls within the scope of patentable subject matter. A development or improvisation may thus meet all the requirements and yet fail on the ground of lacking proper subject matter.

21. Elements of an Invention • The alleged invention must be new (NOVEL). • The alleged invention must not have been obvious to a person “skilled to the art”. • The alleged invention must be useful, that is, industrially applicable. • Finally, the invention must fall within judicially recognized categories of “patentable subject-matter.”

22. Novelty in Patent Law • The colloquial or pedestrian concept of novelty differs from patent law’s conception of newness. In the context of patent law, the test of novelty is quite technical, requiring the satisfaction of certain set standards. • The criterion of novelty seeks to debar from patentability, “inventions” which do no more than to repeat information or knowledge which is already part of the “prior art.” This refers to the concept of “anticipation”.

23. Date of Invention and Prior Art • To determine whether an invention is new, two factors are relevant, namely, the date of invention and the prior art at the date of invention. • The court must first determine the relevant date of invention. The date of invention is a question of fact. As the court held in Ernest Scragg v. Leesona, date of invention may be established by proof that the invention was formulated by a given date.

24. Date of Invention • The date of invention may be established verbally or in writing or by evaluating the point in time at which the process, manufacture, or machine was constructed. It is the date on which the inventor reduced his/her ideas to perfection. The date of conception of the idea does not determine the date of invention. However, patent law permits some experimentation with the invention after the date of invention.

25. Public Domain and Prior Art • The terms “prior art” and “public domain” are different. In patent law, prior art refers to that body of knowledge in the specific field in issue ordinarily known and available to the average person working in that relevant and specific field of knowledge. Prior art is field-specific and narrower than information in the public domain.

26. Anticipation defined • An invention is said to have been anticipated if prior to the filing of the application, another patent, document and/or reliable oral information had previously described, embodied or put in public use the alleged invention. See Pfizer v. Apotex

27. The Nature of “Anticipation” • The test of anticipation does not necessarily deny that there may have been an invention, rather, it asserts that the idea expressed in the invention was already disclosed to persons skilled in that art (Beloit case). It is immaterial that the inventor was in fact unaware that the invention had been described elsewhere.

28. Pfizer v. Apotex • Upon the expiration of Pfizer’s patent covering the use of the drug sertraline for the treatment of depression, Apotex obtained a NOC to permit it to sell its generic version of setraline for that indication only. Pfizer subsequently obtained NOCs permitting the use of sertraline to treat panic disorder and obsessive compulsive disorder and were granted a patent covering the latter indications.

29. Pfizer v. Apotex • Pfizer sought a court order prohibiting the Minister of Health from issuing an NOC to Apotex in relation to the use of sertraline for PD and OCD. In a ruling dismissing the application, the FC court held that an article reporting that sertraline was undergoing phase II clinical trials for the treatment of OCD anticipated claims of the Pfizer patent. It was not necessary for the article to say that sertraline was effective for OCD.

30. Pre Oct. 1, 1989 and Post Oct. 1 1989 • The legal regime on anticipation and novelty may be delimited to two time frames, i.e, the law on pre-October 1, 1989 applications and the law on post-October 1, 1989 applications. • For applications in the former period, no such patent will be valid if the subject matter of the alleged invention had been described in any publication printed in Canada or in any other country more than 2 years before the actual filing date. Energy Absorption case.

31. Anticipation, pre-Oct. 1 1989, CONT’D • If an invention lacks novelty, the patent is invalid and there cannot be a successful case of infringement of the patent. Novelty is a question of fact. It is tested as of either, • The date of the invention or • Two years before the filing date

32. The ‘date of invention” • In the pre-October 1, 1989 regime, Canada operated a FIRST TO INVENT model. The definition of the phrase “first to invent” is discussed in Scott Paper case, (1981), 53 C.P.R. (2d) 26 (F.C.T.D.). • The date of filing is the date the Commissioner receives the documents, information, and fees prescribed for the purposes of the application at the Patent Office.

33. First to file and first to invent • In the global scheme, there are two different ways to assert priority. The first and most widespread is the FIRST TO FILE SYSTEM. The second is the FIRST TO INVENT. Until 1989, Canada and the US operated the former. In the FIRST TO INVENT regime, NOVELTY is determined by reference to EITHER the date of the invention or two years before the filing date. See Bayer v. Apotex

34. Anticipation, pre-Oct, 1 1989 • The law presumes that every patented invention is novel. Hence, the onus is on the person asserting otherwise to prove same. • It is often very difficult to invalidate a patent on the grounds of anticipation. This is because anticipation cannot be proved by an assemblage of elements gathered from glosses selected here and there in several anterior specifications.

35. Anticipation and Oral disclosure • The law on anticipation is that the prior art on the subject of the application must not have been publicly available prior to the invention. The tenor of the old legislation seemed to limit relevant prior art to “patents and printed publications”, hence the issue arises as to whether an affidavit evidence or oral disclosure on the existence of an embodiment of the alleged invention are admissible in assessing novelty.

36. Oral Disclosure • In Tenneco Chemicals, [1967] 1 Ex. C.R. 188, Jackett P. opined that the patent examiner was bound to consider oral sources of disclosure as sufficient to invalidate a patent on the grounds of anticipation. However, considering some of the remarks of Justice Binnie, in the Electro Sante case, the law on the relevance of oral anticipation seems unsettled.

37. Anticipation and Mosaicing • The practice of “mosaicing”, that is, gathering together various references in order to build a composite case of anticipation is not permissible under Canadian Patent law. Mosaicing may be relevant in dealing with the test of obviousness, not with anticipation. On the latter, the law requires that there be A SINGLE DOCUMENT or INVENTION anticipating the alleged invention. Anticipation and obviousness are two different concepts.

38. Obviousness & Inventiveness • The test of obviousness deals with an alleged lack of “inventiveness”. Here, the prior art is reviewed and its cumulative effect weighed in the light of whether the alleged inventive step would have been obvious to the proverbial “workman skilled in the art.”

39. Ahh!! This Gives me all I want • Anticipation asserts that the alleged invention was already known to persons skilled in the art. The information must be found in a single document or invention which gives the person skilled in the art what is claimed and teaches him/her all that is necessary to replicate the alleged invention.

40. Anticipation, Cont’d (Electro) • “Although the various components were earlier known to persons skilled in the art, the inventor brought the elements together to achieve what the Commissioner of Patents considered a new, useful and ingenious result. The claimed invention effected an ingenious combination rather than a mere aggregation of previously known components” Binnie, J. in Freeworld v. Electro Sante, at para. 27.

41. Mosaicing and disclosure • The disclosure of a single copy of a document disclosing the invention would suffice to invalidate the patent if the disclosure was made without an obligation of confidence. • Similarly, the disclosure of the invention to ONE person without an obligation of confidence puts the invention in the public domain and out of the reach of valid patentability. See the Gibson case.

42. Prior Publication • “To constitute a prior publication, the information contained in the document must be EQUAL to that given by the patent and show EVERYTHING that is ESSENTIAL to it so that a workman of ORDINARY SKILL in the RELEVANT art would at once have perceived, understood and been able practically to apply the invention without the necessity of further experiment.” Thorson, J, in Ernest Scragg at 71; Bayer v. Apotex

43. Anticipation • Reference to other documents is not permissible UNLESS there is a CLEAR instruction or inference to do so in the document at hand (See Binnie, J, in Free World v. Electro Sante). According to his lordship, ‘a signpost, however clear, upon 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.”

44. Anticipation, cont’d • In the much-cited case of Reeves Bros, the court held that a valid anticipation must compose of the following. The Prior art must: 1. Give an exact description; 2. Give directions which will inevitably result in something within the claims;

45. The Reeves case: • Give clear and unmistakable directions; • Give information which for the purpose of practical utility is equal to that given by the subject patent • Convey information so that a person grappling with the same problem must be able to say “Ah ! that gives me what I wish” • Be contained in one SINGLE document

46. Reeves’ Tests • More importantly, the information given by the purported PRIOR ART, “must the purpose of practical utility, be EQUAL to that given in the patent in suit.” See Dickson, J. in Consolboard case. • In short, in the words of Justice Binnie, “the test for anticipation is difficult to meet”. (Electro Sante Case), The better line of attack is obviousness, rather than anticipation.

47. Anticipation • The rigorous nature of the test of anticipation impels the conclusion that a very “old prior patent used for an apparently different purpose which could only be said by a patent agent to have all essential elements is not an anticipation” HUGHES, at 329. • Similarly, if the claim is a combination of elements, the prior art must contain EACH ELEMENT of the combination.

48. The Gillette defence • There is a style of pleading by patent lawyers in which the defence of anticipation is raised in such a way as to contend that the alleged invention by the plaintiff was already disclosed in the prior art and as such does not infringe or that the PATENT IS INVALID. This is known as the Gillette defence. Courts are very skeptical of this line of defence.

49. Anticipation • “The test of anticipation is a difficult defence to establish because courts recognize that it is all too easy after an invention has been disclosed to find its antecedents in bits and pieces of earlier learning. It takes little ingenuity to assemble a dossier of prior art with the benefit of 20-20 hindsight.” Binnie J. in Electro Sante v. Free World

50. Prior Publication, pre-10/01/89 • The pre-October 1, 1989 regime provided that patents may not issue for alleged inventions that was in any patent or publication printed in Canada or elsewhere more than two years before the actual filing date of the application in Canada.