Novelty, Obviousness and Utility

1
Novelty, Obviousness and Utility

• Carol Hitchman
• March 1, 2005

2
Patent Act provisions

• Old Act sections 2, 27 and 61 (previously
  section 28 and 63)
• New Act sections 2, 28.2 and 28.3

3
Old Patent Act

• Anticipation by-
• (a) prior knowledge or use (subject to section
  61) before the date of invention
• (b) patent or printed prior publication more than
  2 years before Canadian filing date or
• (c) public use or sale in Canada 2 years prior to
  Canadian filing date

4
Old Patent Act

• No statutory provision for obviousness
• Courts refer to invention in section 2 as
  requiring that the subject matter not be obvious
• Obviousness determined at the date of invention,
  which has to be proven by the patentee if earlier
  than the priority/filing date

5
New Patent Act

• Invention must not be disclosed so that the
  subject matter of the patent became available to
  the public in Canada or elsewhere
• (a) by applicant more than one year before the
  Canadian filing date
• (b) by anyone other than the applicant before the
  claim date (priority date or Canadian filing
  date, whichever is earlier)

6
New Patent Act

• (c) by someone other than the applicant in a
  patent application filed in Canada with a filing
  date before the claim date or
• (d) by someone other than the applicant in a
  patent application filed in Canada with a filing
  date in Canada after the claim date, but with a
  priority date before the claim date (plus a few
  other criteria)

7
New Patent Act

• Obviousness is provided for invention must
  contain subject matter that would not have been
  obvious on the claim date to a person skilled in
  the art or science having regard to
• (a) information disclosed more than one year
  before the Canadian filing date by the Applicant
  or
• (b) information disclosed by someone other than
  the applicant before the claim date and in such a
  manner that the information became available to
  the public in Canada or elsewhere

8
Novelty

• All cases in case book are under the Old Patent
  Act
• Leading case under the New Patent Act is Baker
  Petrolite Corp. v. Canwell Enviro-Industries Ltd.
  2003 1 F.C. 49 (F.C.A.)

9
Difference between anticipation and obviousness

• ..obviousness is an attack on a patent based on
  its lack of inventiveness. The attacker says, in
  effect, Any fool could have done that.
  Anticipation, or lack of novelty, on the other
  hand, in effect assumes that there has been an
  invention but asserts that it has been disclosed
  to the public prior to the application for the
  patent. The charge is Your invention, though
  clever, was already known.
• Beloit Canada Ltd. v. Valmet OY, p. 293

10
Novelty Beloit

• Anticipation must be found in a specific patent
  or other published document it is not enough to
  pick bits and pieces from a variety of
  publications and to meld them together so as to
  come up with the claimed invention p. 297

11
Novelty Beloit

• One must, in effect, be able to look at a prior,
  single publication and find in it all the
  information which, for practical purposes, is
  needed to produce the claimed invention without
  the exercise of any inventive skill. The prior
  publication must contain so clear a direction
  that a skilled person reading and following it
  would in every case and without possibility of
  error be led to the claimed invention p. 297

12
Novelty Voith (Beloit, part 2)

• The Schiel paper is properly led in evidence and
  accepted as a printed publication
• However, the publication must stand on its own
  it cannot be extended by the introduction of
  parol evidence p. 338-340

13
Reeves Brothers the tests

• 8 tests for anticipation are set out in page 157
  in essence a distillation of the case law
• E.g. the prior art must give an exact prior
  description, give clear directions which will
  inevitably result in something within the
  claims...

14
Reeves revised Diversified Products case

• FCA makes it clear that the tests set out in
  Reeves are not cumulative p. 361
• An impractical and inoperable device cannot be an
  anticipation p. 363-364

15
Xerox v. IBM

• Recites case law on anticipation p. 46-48
• - paper anticipation device never put into
  production looked on with disfavour p. 48
• A signpost, however clear, upon the road to the
  patentees invention will not suffice. The prior
  inventor must be clearly shown to have planted
  his flag at the precise destination before the
  patentee p. 59, quoting from the General Tire
  case

16
Baker Petrolite case

• Summarizes the new law at paras. 42-43
• 1. Sale to the public or public use is
  insufficient to prove anticipation. Disclosure
  of the invention is required to constitute
  anticipation.
• 2. A prior sale must amount to an enabling
  disclosure, i.e. it must be such as to enable the
  public to make or obtain the invention.

17
Baker Petrolite

• 3.Prior sale or use of a chemical product will
  constitute an 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 analytic techniques at the relevant time.

18
Baker Petrolite

• 5. An invention becomes available to the public
  if a product containing the invention is sold to
  any 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 that was sold.

19
Baker Petrolite

• 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 was required.
• 8.It is not necessary that the product that is
  analyzed be capable of exact reproduction. It is
  the subject matter of the patent claims that must
  be disclosed through the analysis.

20
Obviousness (Beloit, p. 294)

• The test for obviousness is not to ask what
  competent inventors did or would have done to
  solve the problem. Inventors are by definition
  inventive. The classical touchstone for
  obviousness is the technician skilled in the art
  but having no scintilla of inventiveness or
  imagination a paragon of deduction and
  dexterity, wholly devoid of intuition a triumph
  of the left hemisphere over the right.

21
Beloit continued

• The question to be asked is whether this mythical
  creature (the man on the Clapham omnibus of
  patent law) would, in the light of the state of
  the art and of common general knowledge as at the
  claimed date of the invention, have come directly
  and without difficulty to the solution taught by
  the patent. It is a very difficult test to
  satisfy.

22
Beloit p. 295

• Everything is obvious after the fact Expert
  witnesses who say that they could have done that
  will have to answer Why didnt you

23
General Tire v. Firestone

• Skilled person is assumed to have the common
  general knowledge
• Common general knowledge is different from public
  knowledge it is what would in fact be known by
  an appropriately skilled addressee of the patent
  p.482

24
PG (the diaper case)

• The skilled worker can be a composite being or a
  team combining knowledge of more than one
  relevant art p. 12
• Skilled worker has the common general knowledge
  as well as information available to him (her) in
  publications and patents but must be evidence
  that the prior art would be available through a
  diligent search p. 47

25
Farbwerke Hoechst

• Inventive ingenuity standard is not that high
  practically all research work is done by looking
  in directions where the state of the art points
  p. 155
• Cripps Question p. 156 Was it obvious to any
  skilled chemist in the state of the chemical
  knowledge existing at the date of the patent that
  he could recite claimed invention here. If the
  answer is No the patent is valid, if Yes the
  patent is invalid.

26
Worth a Try?

• Farbwerke case refers to the worth a try test
  not enough for obviousness p. 155
• Pfizer Canada Inc. v. Apotex Inc. 2002 F.C.J.
  No. 1540 rephrases this saying that no research
  is to be conducted but the skilled person is to
  keep up with advances in the field and if taught
  by the literature to conduct investigations so
  long as there is no undue experimentation, the
  invention will be obvious.

27
Windsurfer v. Windsurfer

• UK CA and FCA come to different conclusions on
  obviousness of the windsurfer
• Not necessary to show that the skilled worker
  would in fact be interested in the prior art or
  would recognize the commercial potential of the
  prior art UK, p. 74

28
Windsurfer v. Windsurfer

• UK court finds that the inventive concept is a
  free-sail concept and that was disclosed in the
  Darby prior art p. 74
• FCA finds that the inventive concept was the
  ability of the user to grasp either side of the
  sail (claim 5) since Darby did not disclose
  this, the invention was not obvious p. 260
• In Canada, Darby gave evidence that the
  windsurfer design had not occurred to him.

29
Utility Do the wheels go round?

• Generally speaking, not a very high bar in
  prosecution, the patent office does not require
  any real proof of the utility asserted in the
  patent and often the utility asserted is so
  soft that it would be impossible to measure
  e.g. crystal forms with better drying and
  filtration characteristics than the known
  crystal form

30
X v. Commissioner of Patents

• The Patent office refused a patent application
  for a death ray.
• The applicant (and no one else) had constructed
  the device.
• Invention founded on a prediction of utility
  patent office and Appeal Board found that the
  invention would not work.
• Court deferred to the expertise of the Board.

31
Minerals Separation

• Claim 9 broad enough to include things that would
  not work (cellulose xanthates) p. 144
• Patentee can define terms in the specification
  p. 144
• Not enough to say a person skilled in the art
  would not use cellulose xanthates to try and
  narrow the scope of the claim p. 148

32
Burton Parsons

• Case generally cited for the proposition that
  patents (both the disclosure and the claims) are
  addressed to persons skilled in the art p. 560
• The claim covered a cream applied to the skin to
  which electrodes are applied (for example in
  electrocardiogram).
• The claim covered highly ionizable salts
  however some were not compatible with the skin.

33
Burton Parsons contd

• S.C.C. finds that the toxic/incompatible
  substances will work i.e. not a case of
  inutility as in the Minerals Separation case and
  that persons skilled in the art would know not to
  use the ones that are incompatible with the skin
  p. 561-562
• Distinguished Minerals Separation saying that the
  inutility of the cellulose xanthate was not known
  in the prior art however, the toxicity of the
  highly ionizable salts was known