Sufficiency of specification in patent law in Canada
Encyclopedia
In Canada, every patent application
must include the “specification”. The patent specification has three parts: the disclosure, the claim
s, and the abstract. The contents of the specification are crucial in patent litigation.
:
In the disclosure, the applicant explains what his or her invention is and how to put it to use.
The sufficiency of the disclosure
, with any valid amendments made to it, is judged at the patent's claim date. The disclosure must be fair, honest, open and sufficient. If a person skilled in the art can arrive at the same results only through chance or further long experiments, the disclosure is insufficient and the patent is void. The disclosure must give skilled readers enough information for them to easily use the invention when the patent expires, and for them to try to improve on or experiment with it in the meanwhile. Thus, a patent holder who holds back essential information invalidates the whole patent. The disclosure would also be insufficient if it is simply wrong and a person skilled in the art cannot use the disclosure or her general ability to replicate the invention. If a person skilled in the art would readily spot the mistake or omission and quickly correct it by using common general knowledge and the rest of the patent, but without "prolonged research, inquiry or experiment" or inventiveness, then this will not invalidate a patent.
When read literally, the Act provides a best mode duty only for machines (see above Patent Act at s 27(3)(c)). This led one court to recently confine the doctrine to machines while admitting that "common sense and fair play" would extend this duty to all inventions. Some authors such as Professor Vaver argue that this revisionism seems wrong given prior case law and the Supreme Court of Canada's decision in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. which recognized that the Act's disclosure provision is badly drafted and cannot be read literally.
Thus, the claims require the patent applicant to stake out the monopoly sought. Claims are sometimes analogized as a series of "fences" surrounding and protecting the valuable invention. Anything outside the fence is public domain: "what is not claimed is disclaimed." Since each claim is an independent grant of monopoly, one or more may be found invalid without necessarily affecting the validity of any other. This system leads inevitably to inventors claiming the widest interpretation possible of what their invention is, along with a series of ever narrowing, more specific claims.
In order to determine whether a claim is infringed or invalid, the Court will read the claims and give them a meaning through a process referred to as "claim construction". As Professor Vaver explains, trying to estimate the outcome of claim construction is next to impossible:
Thus, the game for patent holders is to reveal as little as possible, while claiming as much as possible. The less that is disclosed, the more that can be retained and serve as a competitive edge. The wider the claims, the tougher it is for competitors not to infringe, however, the patent holder must avoid the known and the obvious or risk patent invalidity.The case Professor Vaver was quoting from is Fabio Perini SPA v. LPC Group Plc [2010] EWCA Civ 525 at para 24
If there is more than one invention, the patent office
can insist on division or the applicant may divide on his or her own initiative. A wrong decision by an applicant can cause severe problems and may even risk invalidation of the patent(s).
All patent offices see their job as granting, not rejecting, patents. Thus, an examiner's objections are directed at ensuring that a valid patent issue. The patent office can reject an application only if it is positively satisfied that the applicant is not by law entitled to a patent. This is a result of s. 40 of the Patent Act which states:
The non-discretionary nature of the Commissioner's duty was confirmed in Monsanto Canada Inc. v. Schmeiser where Pigeon J., after citing s. 40 stated:
An applicant may overcome objections to the application by argument or amendment. If the examiner is satisfied, the application is allowed and a patent is issued. If the examiner is not satisfied, the examiner will issue a final action letter, with reasons for rejecting the application. A rejection can be appealed to a Patent Appeal Board comprising senior patent office examiners. If the applicant is unsuccessful there, he or she can appeal directly to the Federal Court
and ultimately the Supreme Court of Canada
.
Thus, the Act stipulates that the specifications and drawings should contain only what is need to describe, disclose, and exemplify the inventions. Any omissions or additions made wilfully “for the purpose of misleading” invalidate the patent. Innocent errors in the specifications and drawings thus appear not to invalidate an entire patent.
The petition for a patent must be truthful in that a false “material allegation” invalidates the patent. This requirement applies only to false allegations in the petition itself. Misstatements elsewhere are excluded, although a misstatement elsewhere may invalidate a patent for other reasons related to patentability such as insufficient disclosure or a lack of utility.
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
must include the “specification”. The patent specification has three parts: the disclosure, the claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
s, and the abstract. The contents of the specification are crucial in patent litigation.
Disclosure requirements
The requirements of disclosure are set out in s. 27 of the Patent ActPatent 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...
:
In the disclosure, the applicant explains what his or her invention is and how to put it to use.
- For a product, this means that the disclosure must show how to make and use the invention.
- For a new combination, the elements of and result of the combination must be detailed.
- For a machine, the inventor must indicate the principle of the invention and the best mode of applying it.
The sufficiency of the disclosure
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...
, with any valid amendments made to it, is judged at the patent's claim date. The disclosure must be fair, honest, open and sufficient. If a person skilled in the art can arrive at the same results only through chance or further long experiments, the disclosure is insufficient and the patent is void. The disclosure must give skilled readers enough information for them to easily use the invention when the patent expires, and for them to try to improve on or experiment with it in the meanwhile. Thus, a patent holder who holds back essential information invalidates the whole patent. The disclosure would also be insufficient if it is simply wrong and a person skilled in the art cannot use the disclosure or her general ability to replicate the invention. If a person skilled in the art would readily spot the mistake or omission and quickly correct it by using common general knowledge and the rest of the patent, but without "prolonged research, inquiry or experiment" or inventiveness, then this will not invalidate a patent.
Best mode
As part of their duty of full disclosure and good faith, inventors must reveal their best mode, or "preferred embodiment", of using the invention, even if that mode is not claimed in the patent application. The mode must be the best one the inventor knows at the claim date, and must be well enough disclosed for other skilled workers to practice it without undue experiment.When read literally, the Act provides a best mode duty only for machines (see above Patent Act at s 27(3)(c)). This led one court to recently confine the doctrine to machines while admitting that "common sense and fair play" would extend this duty to all inventions. Some authors such as Professor Vaver argue that this revisionism seems wrong given prior case law and the Supreme Court of Canada's decision in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. which recognized that the Act's disclosure provision is badly drafted and cannot be read literally.
The claims
The claims are a mandatory part of the specification through s. 27(4) of the Patent Act which states:Thus, the claims require the patent applicant to stake out the monopoly sought. Claims are sometimes analogized as a series of "fences" surrounding and protecting the valuable invention. Anything outside the fence is public domain: "what is not claimed is disclaimed." Since each claim is an independent grant of monopoly, one or more may be found invalid without necessarily affecting the validity of any other. This system leads inevitably to inventors claiming the widest interpretation possible of what their invention is, along with a series of ever narrowing, more specific claims.
In order to determine whether a claim is infringed or invalid, the Court will read the claims and give them a meaning through a process referred to as "claim construction". As Professor Vaver explains, trying to estimate the outcome of claim construction is next to impossible:
Thus, the game for patent holders is to reveal as little as possible, while claiming as much as possible. The less that is disclosed, the more that can be retained and serve as a competitive edge. The wider the claims, the tougher it is for competitors not to infringe, however, the patent holder must avoid the known and the obvious or risk patent invalidity.The case Professor Vaver was quoting from is Fabio Perini SPA v. LPC Group Plc [2010] EWCA Civ 525 at para 24
The abstract
The abstract section summarizes the invention’s purpose. The abstract should describe the technical problem and the solution of the problem by the invention in a succinct way so that a reader can decide whether the rest of the patent is of interest.Unity of invention
The general rule is "one invention, one application, one patent". However, multiple claims covering all facets are allowed in the same patent if a "single inventive concept" links them. If more than one invention is disclosed, the application can be split into two or more "divisional applications", each claiming the requisite one invention. One invention does not become two inventions just because it is contained in another product. Professor Vaver provides the following example to illustrate the point:If there is more than one invention, the patent office
Patent office
A patent office is a governmental or intergovernmental organization which controls the issue of patents. In other words, "patent offices are government bodies that may grant a patent or reject the patent application based on whether or not the application fulfils the requirements for...
can insist on division or the applicant may divide on his or her own initiative. A wrong decision by an applicant can cause severe problems and may even risk invalidation of the patent(s).
Examination
In Canada, a specialized examiner will check the specification against the documents in the patent office's extensive library and other public sources, and decide whether a patent should be granted. Anything that would invalidate an issued patent bars the initial grant. As Professor Vaver explains:- For more on these related questions, see Presumption of validity; utility in patent law in CanadaPresumption of validity; utility in patent law in CanadaThis page covers both the Presumption of Validity and Utility in Canadian Patent Law.-The Presumption of Validity:The presumption of validity refers to the fact that, once a patent has been issued, courts will presume that it is valid...
, Novelty; Non-obviousness in patent law in Canada
All patent offices see their job as granting, not rejecting, patents. Thus, an examiner's objections are directed at ensuring that a valid patent issue. The patent office can reject an application only if it is positively satisfied that the applicant is not by law entitled to a patent. This is a result of s. 40 of the Patent Act which states:
The non-discretionary nature of the Commissioner's duty was confirmed in Monsanto Canada Inc. v. Schmeiser where Pigeon J., after citing s. 40 stated:
An applicant may overcome objections to the application by argument or amendment. If the examiner is satisfied, the application is allowed and a patent is issued. If the examiner is not satisfied, the examiner will issue a final action letter, with reasons for rejecting the application. A rejection can be appealed to a Patent Appeal Board comprising senior patent office examiners. If the applicant is unsuccessful there, he or she can appeal directly to the Federal Court
Federal court
Federal court may refer to a court of the national government in a country that has a federal system of government. Examples include:* United States federal courts** A particular federal court, such as the United States district courts....
and ultimately 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...
.
Truthful application
In Canadian patent applications, a distinction is drawn between specifications and drawings, and the petition itself through s. 53 of the Patent Act which states:Thus, the Act stipulates that the specifications and drawings should contain only what is need to describe, disclose, and exemplify the inventions. Any omissions or additions made wilfully “for the purpose of misleading” invalidate the patent. Innocent errors in the specifications and drawings thus appear not to invalidate an entire patent.
The petition for a patent must be truthful in that a false “material allegation” invalidates the patent. This requirement applies only to false allegations in the petition itself. Misstatements elsewhere are excluded, although a misstatement elsewhere may invalidate a patent for other reasons related to patentability such as insufficient disclosure or a lack of utility.