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Part 1 Security Interests in Personal Property_ The PPSA ...

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The Patent System
Specification
The specification has two parts: “disclosure” & “claims”27(3) The specification of an invention must(a) correctly and fullydescribe the inventionand its operation or use as contemplated by the inventor;(4) The specification mustend with a claimor claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.
Specification
The claims define the monopolySo that others will know whether they are infringingOne of the important features of the claims is to make it clear to other people what they are not entitled to do during the life of the patent. . .WhitfordJ, American Cyanamid Co vBerkPharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch D
Specification
The disclosure describes the invention to the worldSo that others will be able to practice the invention after the patent term expires‘Quid pro quo’ for patent monopoly[The disclosure] should be a complete description which will enable anybody, after the patent has expired, to put the invention into practice.WhitfordJ, American Cyanamid Co vBerkPharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch D
Specification
The disclosure also reveals knowledge that may be useful even during the termInvention is monopolized, knowledge is notThese monopolies are granted to encourage people to make inventions and to make the nature and working of them known. . .WhitfordJ, American Cyanamid Co vBerkPharmaceuticals, Ltd, [1976] RPC 231, 234 (Ch D
Claims
“Embodiment”The specific machine or compound which the inventor has come up with“The inventive concept”The inventor’s contribution“Invention”The invention defined by the claims
Claims
The inventor is entitled to claim the inventive concept, not just their particular embodimentBut the concept must be described in concrete termsBut the court will not determine the inventive conceptThat is left to the inventor in prosecuting the patentRecall – the inventor (& her agent) writes her own patent
Claims
The claims define the scope of the monopolyIn an infringement action, the court compares the defendant’s product with the claimsnotwith the plaintiff’s productValidity, infringement, etc are all determined with reference to the inventionas claimed
Claims
“Men substitute words for reality and then fight over words”Edwin Howard Armstrong, pioneer in radio, on his experiences in patent litigation, quoted byHayhurst, in Patent Law in Canada
BVD v Can. Celanese
Issue: stiffening shirt collarsThe prior art consisted of coating material with cellulose which left a stiff and glassy surface:egthe Van Heusen patent
BVD v Can. Celanese
The substance of the plaintiff’s Dreyfus invention was a method of making a flexible composite textile material byweaving cellulose into the fabricthe very substance of Dreyfus' invention was. . .to make a composite textile material by taking a plurality of fabrics and uniting them by the use of a fabric composed of or containing yarns, filaments orfibresof a thermoplastic cellulose derivative and the application thereto of heat and pressureThere is no doubt that this invention was new, useful and not obvious
BVD v Can. Celanese
ProblemThe claim did not mention weavingA process for the manufacture of composite sheet material which comprises treating a fabric containing a thermoplastic derivative of cellulose with a softening agent, associating it with another fabric, and uniting the fabrics by subjecting them to heat and pressure
BVD v Can. Celanese
The patent was invalid because the scope of the inventionas claimedwas not novelThe prior art spread the cellulose over the fabric and then applied heatSpreading falls within “associated”
BVD v Can. Celanese
The inventive concept was novelThe invention as claimed was notResultInvalidpatentNote: the consequence is not just that plaintiff loses infringement action, but patent for real invention is rendered worthless by overly broad claims
Claiming
To avoid this problem multiple claims are standardBegin by claiming the broadest possible scopeGradually narrow to the specific embodiment
Claiming
Claims stand or fall independently58 When, in any action or proceeding respecting a patent that contains two or more claims, one or more of those claims is or are held to be valid but another or others is or are held to be invalid or void, effect shall be given to the patent as if it contained only the valid claim or claims
Construction
Principles
We must look to the whole of the disclosure and the claims to ascertain the nature of the invention and methods of its performance, (NorandaMines Limited v Minerals Separation North American Corporation [[1950] SCR 36], being neither benevolent nor harsh, but rather seeking a construction which is reasonable and fair to both patentee and public.Per Dickson JConsolboardInc v MacMillanBloedel(Saskatchewan Ltd [1981] 1 SCR 504
Principles
There is no occasion for being too astute or technical in the matter of objections to either title or specification for. . ."where the language of the specification, upon a reasonable view of it, can be so read as to afford the inventor protection for that which he has actually in good faith invented, the court, as a rule, willendeavourto give effect to that construction"Per Dickson JConsolboardInc v MacMillanBloedel(Saskatchewan Ltd [1981] 1 SCR 504
Principles
[T]he patent should be approached "with a judicial anxiety to support a really useful invention"Per Dickson JConsolboardInc v MacMillanBloedel(Saskatchewan Ltd [1981] 1 SCR 504
Specifics
The patent is addressed to persons skilled in the artExpert evidence to explain the meaning of the terms used in a claim is normally requiredExperts are not permitted to testify as to themeaning of the claimConstruction of the patent is for the judge
Specifics
The termsof theclaims must be interpreted in light of the disclosureThe disclosure cannot be used to change the meaning of the claimEgif more was disclosed than was claimed
True Monopoly v Copyright
American Cyanamid vBerkPharm
The broad claim would enable the plaintiffs to stop any worker who dug up a soil sample anywhere and found in it a strain ofStreptomycesaureofaciensand mutated that strain to produce a near 100 per cent tetracycline-producing strain, from using that strain . . .
American Cyanamid vBerkPharm
So, on the broad claim, the plaintiffs could seek to stop other workers from reaping the benefit of what might be a long and possibly expensiveprogrammeof work and research, to which the plaintiffs, by their disclosure in this patent, could not conceivably have made any kind of contribution.
American Cyanamid vBerkPharm
It is clear that as between two independent inventors the first to file receives the patent and can exclude the otherIs this case different from a standard case of independent invention?DoesWhitfordJ’s objection apply in the standard case?What is the response?
American Cyanamid vBerkPharm
Suppose the only way to independently create the drug is a long and expensive program of research.Does the result in this case undermine the incentive for the originator to develop the drug in the first place?
American Cyanamid vBerkPharm
From a publicpolicy perspective, is it good or bad to encourage other researchers to undertake a long and expensive research program in order to develop substantially the same drug?Why would the originator want a broad patent, if not to prevent independent creation?
Copyright v Patent
Areuncopyrightable“ideas” patentable?If so, why?Why are ideas not copyrightable?How are patents different from copyright in that respect?Consider trivial ideas that cost little to develop
Presumption of Validity
Presumption of Validity
43(2) After the patent is issued, it shall, in the absence of any evidence to the contrary, be valid . . .Is this a substantive burden?That is, should the court defer to the examiner?Or is it only necessary to raise some evidence?
Diversified vTye-Sil
Presumption of validityThus the section does impose on the party attacking the patent for invalidity the onus of showing that it is invalid and,in my opinion, the onus so imposed is not an easy one to dischargeThorson PThis isnotthe law
Presumption of Validity
The law is as follows:. . .the peculiar effect of a presumption 'of law' (that is the real presumption) is merely to invoke a rule of law compelling the jury to reach the conclusionin the absence of evidence to the contrary from the opponent. If the opponent does offer evidence to the contrary (sufficient to satisfy the judge's requirement of some evidence), the presumption disappears as a rule of law, and the case is in the jury's hands free from any ruleDecaryJA Diversified Products Corp vTye-SilCorp
Presumption of Validity
IsDecaryJA right as a matter of policy?

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Part 1 Security Interests in Personal Property_ The PPSA ...