A valid patent

Patent

A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....

 in Canada needs to be new

Novelty (patent)

Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....

 and inventive

Inventive step and non-obviousness

The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....

. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot be granted in the given invention without meeting these basic requirements. These requirements are borne out of a combination of statute and case law.

Novelty

The definition of “invention” in section 2 of the Patent Act (R.S.C., 1985, c. P-4)

Patent Act (Canada)

The Canadian Patent Act is Canadian federal legislation and is one of the main pieces of Canadian legislation governing patent law in Canada. It sets out the criteria for patentability, what can and cannot be patented in Canada, the process for obtaining a Canadian patent, and provides for the...

uses the word “new”. This means the invention must not already be known. Section 28.2(1) of the Patent Act explicitly codifies the novelty requirement.
Section 28.2 thus blocks patent applications if the applicant, or someone who obtained their knowledge from the applicant, made the invention public more than a year before applying; if anyone else made the invention public before the application; or if the invention is already subject to an earlier patent application.

Disclosure of the invention

Of note, paragraph 28.2(1)(a) provides for a grace period for the person who filed, which prevents their claim from being barred by their own previous disclosure (or disclosure by persons who obtained knowledge from them directly or indirectly) within the previous year. This serves the practical purposes of allowing an inventor to obtain patents within multiple jurisdictions without having to disclose their invention in each jurisdiction simultaneously. It can also allow inventors to discuss their invention with potential investors, for instance, without requiring non-disclosure agreements. However, since such a grace period is non-universal, it remains limited in its helpfulness to inventors.

Disclosure by another party

The section also provides that the subject-matter defined in the claim cannot have been previously disclosed in Canada or elsewhere. If the subject-matter has been disclosed in Canada or in a foreign jurisdiction, a patent cannot be granted on the same subject-matter in Canada.

The section does not restrict disclosure to prior patents. As long as the subject-matter was disclosed “in such manner that the subject-matter became available to the public”, the subject-matter is barred from being patented. This includes prior patents, publications, or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count. Ignorance regarding prior disclosure is not an excuse.

Where there has been prior disclosure of the same subject-matter, the invention will be deemed to be not novel, the prior disclosure being anticipatory of the invention. However, the prior disclosure must be sufficiently detailed to be anticipatory. The disclosure must also be self-contained; a combination of prior art is not adequate for showing anticipation. As stated in Beloit Canada Ltd. et al v. Valmet Oy:

“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.”

In Reeves Brothers Inc. v. Toronto Quilting & Embroidery Ltd. , the Federal Court enunciated an eight-pronged test in order to determine whether the prior art is anticipatory of the subject-matter at issue:

The prior art must:

1. Give an exact prior description;
2. Give directions which will inevitably result in something within the claims;
3. Give clear and unmistakable directions;
4. Give information which for the purpose of practical utility is equal to that given by the subject patent;
5. Convey information so that a person grappling with the same problem must be able to say "that gives me what I wish";
6. give information to a person of ordinary knowledge so that he must at once perceive the invention;
7. in the absence of explicit directions, teach an "inevitable result" which "can only be proved by experiments"; and
8. satisfy all these tests in a single document without making a mosaic.”

In Apotex Inc. v. Sanofi-Synthelabo Canada Inc., it was claimed that Sanofi-Synthelabo’s patent was invalid because it covered only a selection of a prior, broader genus patent. One of the alleged grounds of invalidity was lack of novelty. The Supreme Court of Canada

Supreme Court of Canada

The Supreme Court of Canada is the highest court of Canada and is the final court of appeals in the Canadian justice system. The court grants permission to between 40 and 75 litigants each year to appeal decisions rendered by provincial, territorial and federal appellate courts, and its decisions...

 employed a two-part test for anticipation. In order for there to be a finding of anticipation, the prior art must satisfy both of the following branches:

1. Prior disclosure; and
2. Enablement.

The test for disclosure is whether a person skilled in the art, reading the prior patent, would understand that it discloses the special advantages of the second invention. No trial and error is permitted.

Once it is established that the prior disclosure indicates the special advantages of the second invention, some trial and error or experimentation is permitted to determine whether that disclosure also enables the development of the second invention. However, the skilled person must be able to perform or make the invention of the second patent without undue burden.

The Supreme Court based their test on an earlier British test: “Patents are meant to teach people how to do things. If what is “taught” involves just too much [work] to be reasonable allowing for all the circumstances including the nature of the art, then the patent cannot be regarded as an “enabling disclosure.” . . . The setting of a gigantic project, even if merely routine, will not do.”

The prior art information must thus:

1. Be clearly disclosed, and
2. Enable the skilled worker to make or perform the invention.

The Supreme Court stated four non-exhaustive factors to be considered in determining whether there has been enablement:

1. Enablement is to be assessed having regard to the prior patent as a whole including the specification and the claims. There is no reason to limit what the skilled person may consider in the prior patent in order to discover how to perform or make the invention of the subsequent patent. The entire prior patent constitutes prior art.
2. The skilled person may use his or her common general knowledge to supplement information contained in the prior patent. Common general knowledge means knowledge generally known by persons skilled in the relevant art at the relevant time.
3. The prior patent must provide enough information to allow the subsequently claimed invention to be performed without undue burden. When considering whether there is undue burden, the nature of the invention must be taken into account. For example, if the invention takes place in a field of technology in which trials and experiments are generally carried out, the threshold for undue burden will tend to be higher than in circumstances in which less effort is normal. 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. But experiments or trials and errors are not to be prolonged even in fields of technology in which trials and experiments are generally carried out. No time limits on exercises of energy can be laid down; however, prolonged or arduous trial and error would not be considered routine.
4. Obvious errors or omissions in the prior patent will not prevent enablement if reasonable skill and knowledge in the art could readily correct the error or find what was omitted.

As an example of an application of this test: under the disclosure branch of the test, a compound is not clearly disclosed simply because it is part of a larger class of compounds; under the enablement branch, a compound is not enabled simply by disclosing its theoretical formula, unless the compound has actually been prepared or the skilled worker would know, from the given directions or his ordinary knowledge, how to prepare it.

Earlier patent application

Priority is determined by order of applications, thus a prior application will bar a subsequent one. This "first to file" approach is used globally with the exception of the United States

United States

The United States of America is a federal constitutional republic comprising fifty states and a federal district...

, which is scheduled to switch on March 16, 2013 after the enactment of the America Invents Act

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant change to the U.S...

 (see "First to file and first to invent

First to file and first to invent

First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...

"). An earlier application that remains secret because it is abandoned or withdrawn before being published does not constitute disclosure.

Non-obviousness

A valid patent also requires a non-obvious patent. The invention must have some element of inventiveness. This concept originated in common law

Common law

Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...

 out of the notion that an invention must be inventive. It is now explicitly codified in section 28.3 of the Patent Act.
Section 28.3 has a grace period of one year that allows the inventor, or a person who obtained knowledge directly or indirectly from the inventor, to disclose the invention without rendering the subsequent invention non-obvious.

The non-obvious requirement is explained in Beloit Canada Ltd. v. Valmet Oy. Justice Hugessen contrasted the concepts of anticipation and non-obviousness:

“They are, of course, quite different; 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.”

It should be clarified that while Justice Hugessen says “any fool”, the proper standard in patents is a person skilled in the art.

The man skilled in the art is the hypothetical person used as the benchmark for determining obviousness. The description of this man 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. The question to be asked is whether this mythical creature (the man in the Clapham omnibus

The man on the Clapham omnibus

The man on the Clapham omnibus is a reasonably educated and intelligent but non-specialist person — a reasonable person, a hypothetical person against whom a defendant's conduct might be judged in an English law civil action for negligence. This is the standard of care comparable to that which...

 of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent.”

In Apotex Inc. v. Sanofi-Synthelabo Canada Inc., Justice Rothstein restated the approach from Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.:

1. Identify the notional “person skilled in the art” and identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Each of these steps is crucial, and can affect the outcome of the obviousness inquiry. Cases can turn on the interpretation of who the presumed skilled person is, since this will affect how large a step is big enough for the subsequent invention to be considered non-obvious.

A nuance to this test will be included for inventions in areas where advances are often won by experimentation; an “obvious to try” test can be used to extend obviousness and invalidate a patent. Commercial success of the invention sought to be patented also impacts a finding of obviousness.

Obvious-to-try

In fields where experimentation is common, such as in the pharmaceutical industry, an invention may be unpatentable if a skilled worker would have found it obvious to try the course that led to it. As stated in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., the following non-exclusive factors should be taken into consideration at the fourth step of the obviousness inquiry:

1. Is it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art?
2. What is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine?
3. Is there a motive provided in the prior art to find the solution the patent addresses?

If the answer to these questions leads to a finding that it was obvious to take this additional step, the patent will be considered obvious and invalid. The court makes clear that where the required experimentation to take the leap is extensive, a patent can be granted for the further step taken.

The American Approach to Obvious-to-Try: KSR International Co. v. Teleflex Inc.

The Supreme Court of the United States

Supreme Court of the United States

The Supreme Court of the United States is the highest court in the United States. It has ultimate appellate jurisdiction over all state and federal courts, and original jurisdiction over a small range of cases...

 was confronted with the obvious to try

Inventive step and non-obviousness

The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....

 issue in KSR International Co. v. Teleflex Inc.

KSR v. Teleflex

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 , is a decision by the Supreme Court of the United States concerning the issue of obviousness as applied to patent claims.-Case history:...

, where the subject-matter of a patent was a combination of known components. They held that “when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that the result is not innovative enough to be patentable.”

This is similar to Canada in that an invention can still be deemed to be obvious, despite going a step beyond the prior art.

Commercial success

Case law reveals that a patented item that is an instant hit on the market is less likely to be found obvious than a patent for a product that was poorly-received. In Diversified Products Corp. v. Tye-Sil Corp., the Federal Court of Appeal said that:

“[w]hile the factor of commercial success, taken alone, is not conclusive evidence of inventiveness, where as here, it is but one of many factors, it cannot be disregarded.”

The court went on to mention other factors that can aid in a finding of obviousness:

“Looking at these various factors -- the device is novel and superior to what was available until then; it was since used widely and in preference to alternative devices; competitors as well as experts in the field had never thought of the combination; amazement accompanied its first publication; commercial success -- it is, using the words of Tomlin J., in De Frees , supra, ‘practically impossible to say that there is not present that scintilla of invention necessary to support the patent’.”