Novelty

1. Novelty

2. Patentability and Novelty • The infamy of nineteenth patent law was largely traceable to the re-patenting of subject-matter which was already in the public domain. 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” in the “public domain’ • Hence, the requirement that for an invention to be patentable it must be new. • This requirement raises two important issues, namely, what is the extent of the geography of public domain and, secondly, whose “art” is pertinent? The public or members of a select body of professionals?

3. The Criterion of Novelty • The colloquial or pedestrian concept of novelty differs from that understood and applied in patent law. • In patent law, the test of novelty is technical, requiring the satisfaction of certain judicial standards and statutory criteria. • Where an alleged invention is already taught by information known to or available to persons skilled in the relevant art, such invention is said to have bee “anticipated”.

4. Pre 1989 and Post 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 printedin Canada or in any other country more than 2 years before the actual filing date. Energy Absorption case.

5. Printed Publication • In order for a document to qualify as a printed publication, it must • A) have become generally available without restriction to members of the public, • B) the person or persons receiving the document, to be categorized as members of the public must have no special relationship with the author; • C) the onus is on the person asserting publication to prove the fact of publication.

6. Printed Publication • In J M Voith GmbH, the court held that the distribution of a brochure at a trade convention to customers and others constituted publication. • On the other hand, placement of a document in a restricted area of a library kept by a trade association and thereby treated as confidential was held not to constitute publication. See Koehring Canada case.

7. Printed Publication • In sum, a typewritten document is not a printed publication. See Xerox case • Photostat copies may be considered printed publication. • Offset printing is printing within the meaning of “printed publication.” • Is a photocopy of a typescript including hand-drawn figures a “printed” document? In the US, the courts have interpreted the words as conjunctive rather than in the alternative.

8. Pre-Oct 1989 • 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.

9. First to File & First to Invent • Prior to 1989 October, there were two different ways to assert priority. The first to file and the first to invent systems. • Until 1989, Canada and the US operated the first to invent system. Here, NOVELTY is determined by reference to EITHER the date of the invention or two years before the filing date. See Bayer v. Apotex. • 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.).

10. Filing Date • 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. See s. 28 (1) of the Patent Act. • The Commissioner may by notice in writing require an applicant to complete an incomplete application by a specified date. See s. 27 (6) of the Patent Act.

11. Date of Invention • The date of invention may be established verbally or in writing or by evaluating the point in time at which the subject-matter of the invention (process, manufacture, or machine, etc) was constructed or reduced to a workable model. 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.

12. Foreign Anticipation • Under the pre-October 1, 1989 regime, an application for a patent must be filed in Canada before a patent for the same invention has been issued by any other country, or within 12 months from the filing of an application for the same invention in another country.

13. Date of Invention v. Anticipation • Once the date of invention is settled, the next task is to determine whether what the alleged invention teaches had already been anticipated by information or previous inventions already known to persons “skilled” in the relevant “art” to which the alleged invention pertains. • 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 pertinent to the alleged invention. • Prior art is thus field-specific and narrower than information in the public domain. • Where the “new” teachings offered by the “invention” has been already taught by prior art, the alleged invention is said to have been ANTICIPATED.

14. Anticipation • Thus, 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

15. 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.

16. Presumption of Validity • 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.

17. 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.

18. 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.

19. Anticipation Post October 1989 • S. 27 (2) provides that: • The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed • (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;

20. Anticipation Post October 1989 • (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; • (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 • (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 …

21. Anticipation Post October 1989 • (i) the co-pending application is filed by • (A) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or • (B) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim,

22. Anticipation Post October 1989 • (ii) the filing date of the previously regularly filed application is before the claim date of the pending application, • (iii) the filing date of the co-pending application is within twelve months after the filing date of the previously regularly filed application, and • (iv) the applicant has, in respect of the co-pending application, made a request for priority on the basis of the previously regularly filed application.

23. Anticipation and Claim Date • The claim date is often the same as the filing date. See s. 28 (1) (1) of the Patent Act: • “The date of a claim in an application for a patent in Canada (the "pending application") is the filing date of the application, unless….

24. Exceptions to the Parity in Date • (a) the pending application is filed by • (i) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or • (ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim; • (b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and • (c) the applicant has made a request for priority on the basis of the previously regularly filed application.

25. Priority of Claim Date • S. 28 (2)(2) provides that: • In the circumstances described in paragraphs (1)(a) to (c), the claim date is the filing date of the previously regularly filed application. • S. 28 (1), the filing date of an application is the date on which the Comm’r receives the documents, information and FEES prescribed for the purposes of this section or, if they are received on different dates, the last date.

26. Novelty Under the Patent Act • No patent would be valid if prior to the application date, there is • A) a prior application pending describing the same invention • B) subsequently filed an application which claims an earlier convention filing date which describes the same invention, • C) a third party disclosed the invention in such a manner as it becomes available to the public,

27. Novelty Under the Patent Act • …D) the applicant, or someone deriving knowledge from the applicant has, more than one year before the effective filing date, disclosed the invention in such a manner as it became available to the public. • The first two requirements clearly create a first to file system in Canada. In rare cases where 2 or more applicants, filed on the same day, or on same convention dates, all the applicants will get a patent.

28. Convention Filing Date and the PCT • Articles 50-102 pertain to the modalities for the application of the Patent Cooperation Treaty in respect of international patents. • Arts . 53 (1) and 56 provide that the Comm’r shall act as an International Searching Authority and the Designated Office, respectively, in accordance with the PCT. • The “international filing date” means the date accorded to an international application by a receiving date pursuant to Art 11 of PCT.

29. Absolute Novelty • The first implication of s. 28 (2) is that all applications are governed by a regime of ABSOLUTE NOVELTY. Conditions c & d combine to create a regime of absolute novelty. • More importantly, the nature of the disclosure required to constitute prior art has been broadened beyond the narrow scope of ‘printed publication.’ • Under the new rules, if the invention has been disclosed prior to the claimed date in such a manner that it becomes available to the public, then anticipation is in issue. • S. 34 (1) the Patent Act encourages applicants to file a description setting out the background art known to the applicant to be important for understanding, searching, and examining the invention. Note that this is subjective and relies on the applicant’s good faith and integrity. See also s. 34 (2)

30. Legal Characteristics of Anticipation • In the much-cited case of Reeves Bros, the court held that a valid anticipation must comprise of the following elements: 1. Give an exact description; 2. Give directions which will inevitably result in something within the claims;

31. Reeves’ Brothers 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” • If documented, be contained in one SINGLE document. The information given by the purported PRIOR ART, “must for the purpose of practical utility, be EQUAL to that given in the patent in suit.” See Dickson, J. in Consolboard case.

32. Methods of Anticipation • An alleged invention may fail the test of novelty on the following grounds: • 1. anticipation by verbal disclosure or description; • 2. anticipation by public show or exhibition; • 3. anticipation by the existence of a prior patent or publication.

33. Verbal 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.

34. 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.

35. Anticipation by Prior Use, Sale or Display • 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. • No patent may issue for an invention that was in public use or on sale in Canada for more than 1 year before the filing of the application in Canada. See s. 28 (2) (1) of the Patent Act. • Note that this provision differs from experimental use exemptions. • See the Gibney case.

36. Gibney v. Ford Motors • Ptf instituted action for infringement of a patent relating to a protector for a generator. Ptf put a protective makeshift cover on the generator of an unidentified customer. • No precautions as to secrecy or confidence were taken in respect of such use. The dft argued, and the court agreed that the subject matter of the patent had been used in public in Canada for more than 2 years b/4 the application for patent was filed.

37. Gibney v. Ford Motors • In Gibney, as soon as the unidentified customer drove out without any injunction or restriction placed upon him, the invention then became available to anyone who wanted to lift up the hood of the car and look at it. • In Birtwhistle v. Sumner Engineering Co. Ltd. (1928), 46 R.P.C. 59 at p. 71, one unit only of a timing device for book-makers was not even sold but merely carried around by a book-maker when he went on his rounds for the purpose of trying it out and yet this was held to be prior public use.

38. Anticipation by Open Use • In Re Stahlwerk Becker Aktiengesellschaft, the House of Lords decided that if an invention were available to even one member of the public, that was sufficient for the purposes of defeating the patent on the basis of public display. • According to Lord Finlay, “I think it would be very dangerous to introduce the doctrine which your Lordships are now invited to introduce, either that it must be actually shown that the knowledge had been acquired by some individual, …or that there is a high probability that it had in fact been acquired. The law as to prior user seems to be this, that, if the article has been manufactured and sold, that gives the means of knowledge to the purchaser, and that that is enough to establish prior user.”

39. Anticipation by Use or Sale • “When an article is manufactured and sold, and from an inspection of it is possible for the vendee to ascertain its component elements, or the main principles of its construction, then, in my opinion, there has been publication by prior user.” Per Lord Shaw of Dunfernline in Re Stahlwerk Becker Aktiengesellschaft Patent

40. Legal Meaning of “Use” or “Public Display” • “When it is said that a process has been disclosed or an invention has been disclosed by means of a “use”, it is not necessary that such “use’ should be a use by the public proper, provided only there is a use in public, that is to say, in such a way as contra-distinguished from a mere experimental user with a view of patenting a thing which may or may not be existing.” Pollock in Croysdale v. Fisher

41. Enabling Disclosure • If the patent deals with a device or method of manufacture which method or mechanisms of the device can only be disclosed by dissecting the device or method of manufacture, it is not necessary to prove that the device or method WAS IN FACT dissected. • Mere sale or public use of the device or method is enough to invalidate the patent. See Risi Stone case

42. Enabling Disclosure • For an invention to be invalidated on the grounds of open use, display or sale prior to filing for patent protection, the disclosure must be an “enabling” one. • Therefore, where the issue is prior use or sale, the court would carefully examine the circumstances of the case to determine whether the sale or use constituted an enabling disclosure. • See Baker v. Canwell Petrolite.

43. Baker Petrolite v. Canwell • Rpdts owned a patent covering the use of a chemical composition to sweeten "sour" natural gas by removing hydrogen sulphide. The sweetening composition comprised the reaction product of an alkanolamine and an aldehyde. The preferred alkanolamine was monoethanolamine ("MEA") and the preferred aldehyde was formaldehyde. The claims covered a number of different ranges of molar ratios of MEA to formaldehyde. The predominant reaction product was triazine.

44. Canwell, cont’d • On December 10, 1987, the respondents' predecessor commenced commercial sales of a sweetening composition sold under the designation W-3053. W-3053 was the reaction product of MEA and formaldehyde and contained triazine. • There was no evidence that the composition of W-3053 or its starting materials were disclosed to customers.

45. Canwell, cont’d • On December 23, 1988, rspndts' predecessor filed a patent application in the US. • On December 19, 1989 rpdt’s filed the application for the patent in suit in the Canadian Patent Office. • The appellants alleged that the patent was invalid pursuant to s. 28.(2) (1)(a) of the Patent Act, R.S.C. 1985, on the basis that the invention had been disclosed in a manner that it became available to the public more than one year prior to the filing date.

46. Canwell, cont’d • The appellants contended that chemical analysis of W-3053 would have led a person skilled in the art to the invention. The respondents argued that such reverse engineering would not meet the stringent test for anticipation set out in Beloit Canada Ltd. v. Valmet OY in that it would not lead to the claimed invention in every case and without the possibility of error. • In holding the patent to be valid and infringed, the trial judge found the evidence of chemical analysis to be unsatisfactory and that the defendants had not discharged the burden of proving anticipation. • The defendants appealed. In reversing the lower court, the CA held that:

47. Canwell, cont’d • “The principles in Beloit v. Valmet and Free World v. Electro Sante relating to anticipation by prior publication are also applicable to anticipation by prior use or sale, but may need to be tailored to fit the particular circumstances of prior use or sale.” • The principle on clear and unmistakable prior publication capable of directing a skilled person reading it without error to the invention claimed, applies to the specific context of a publication that a person would read… In the case of prior use or sale, reading may not be relevant. For the purpose of analyzing anticipation in the context of disclosure by prior sale or use, the following principles, which supplement, but do not alter the principles set out in Beloit v. Valmet and Free World Trust, apply: • 1. Sale to the public or use by the public alone is insufficient to prove anticipation. Disclosure of the invention is required to constitute anticipation under s. 28.2(1)(a).

48. Canwell, cont’d • 2. For a prior sale or use to anticipate an invention, it must amount to "enabling disclosure". • 3. The prior sale or use of a chemical product will constitute enabling disclosure to the public if its composition can be discovered through analysis of the product. • 4. The analysis must be able to be performed by a person skilled in the art in accordance with known analytical techniques available at the relevant time and without the exercise of inventive skill. • 5. When reverse engineering is capable of discovering the invention, it becomes available to the public if a product containing the invention is sold to any one member of the public who is free to use it as she or he pleases. • 6. It is not necessary to demonstrate that a member of the public actually analyzed the product sold.

49. Canwell, cont’d • 7. The amount of time and work involved in conducting the analysis is not determinative of whether a skilled person could discover the invention. The relevant consideration is only whether inventive skill is required. • 8. It is not necessary that the product that is the subject of the analysis be capable of exact reproduction. It is the subject matter of the patent claims that must be disclosed through the analysis. Novelty of the claimed invention is destroyed if there is a disclosure of an embodiment which falls within the claim.

50. Anticipation by 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