copyright 1998 Donald M. Cameron, Aird & Berlis
DEFECTS IN THE PATENT
F.1 Inadequate Disclosure
THE LEGISLATIVE BASIS
The Patent Act requires the applicant to particularly indicate and distinctly claim the part, improvement or combination that the inventor claims as his or her invention.(1) The Patent Act also requires that the specification end with a claim or claims stating distinctly and in explicit terms the things or combinations that the applicant regards as new and in which he or she claims an exclusive property or privilege.(2)
The applicant must define the nature of the invention and describe how it is put into operation. A failure to meet the first condition would invalidate it for ambiguity, while a failure to meet the second invalidates it for insufficiency.(3)
Section 34 lies at the heart of the whole patent system. The grant of a monopoly is one half of the bargain the patent system strikes between the Government and the inventor. The description of the invention required by section 34 represents the quid pro quo for the monopoly of the patent. The inventor has to disclose what he or she has invented in such a manner that someone skilled in the art could read the disclosure and construct or use the invention once the patent expires.(4) Patent monopolies are granted to encourage people to make inventions and to make their nature and working of them known. Unless the description of them in the patent is full and fair, the patent ought not be valid.(5)
The question is whether a person skilled in the art could, with only the specification, put the invention to as successful a use as the inventor could himself.(6) The patent need not show manufacturing instructions.(7)
Where the reader must work out a problem or if a degree of luck is involved, there is not sufficient disclosure.(8) The patent may require the reader to engage in some simple experimentation to use the invention(9), but it cannot involve any inventive experimentation.(10) Where testing would be required to determine the suitability of a component, the disclosure is insufficient.(11)
Where the invention is an inventive combination of old elements or devices, it is sufficient to name the old elements, describe their mode of operation and the new useful result accomplished. If the applicant wants to claim invention for a subordinate element then he or she must claim that element separately to secure a patent on it.(12)
Some articles, when seen or described, speak for themselves and a further description as to function or purpose is unnecessary. There are cases, however, where the function is a part of the invention, and in such cases as description of the function must be included in the specification to maintain a valid claim.(13)
The disclosure must answer the question: What is your invention and how does it work?(14)
There is no requirement to describe every possible way in which the invention can be performed.(15) A patentee need ntot describe in what respect the invention is new or in what way it is useful or nor extol the effect or advantage of it.(16) Object clauses that set out the advantages of the invention need not incorporate those advantages into the claims.(17)
nature of the attack
Attacks on the validity of a patent under Section 34 of the Patent Act are technical and should not defeat a meritorious invention.(18)
Attacks on the patent must be precisely and explicitly pleaded to give fair notice of the nature of the attack.(19) Insufficient disclosure, not clear or complete is a plea which, by its very nature, requires to be supported by evidence.(20)
Such attacks must be proven strictly. Where the defendant has taken the exact thing patented, exploited it, said to the inventor when challenged, "your patent is invalid", and then examined every line of it, suggesting to the court that one or two bad sentences should render the entire patent bad, they must prove such allegations strictly.(21) The Courts should not be too astute or technical when construing claims and particularly when considering their sufficiency of disclosure. One construes the claims in light of what a person skilled in the art would understand them to cover. Where there is an insufficiency of description but a person skilled in the art would realize that it is a mere technical omission, the patent will not be invalidated.(22) material date to examine sufficiency
A patent is to be construed as of the date it issued.(23) biotechnology inventions
The deposit of a seed (the invention itself) was not sufficient disclosure.(24)
It has never been part of the law that a patentee should find out about the prior art before patenting nor to state the difference between the invention and the prior art. This would be an unmanageable burden on the patentee. They cannot be required to discover and compile the prior art to determine what inventive step they have contributed.(25)
The patentee is representing to the Government and to the public that if the directions of the patent are followed, an instrument will be created that will be useful in the sense that it works.(26)
A claim cannot be construed to exclude claimed components which a skilled reader would know to be unsuitable. Such a claim is invalid.(27)
Section 34(1) indicates what should be included in the specification. Section 34(2) of the Patent Act requires that a patent end with a claim or claims which state distinctly and in explicit terms that which the applicant regards as new and in which he claims an exclusive property or privilege.
Section 53(1) of the Patent Act states that a patent is void if any material allegation in the patent is false or if the specification or drawings contain more or less than is necessary for obtaining the end for which they purport to be made and the omission or addition is wilfully made for the purpose of misleading. Section 53(2) allows that if the Court finds that an omission or addition in the specification and drawings was not intentional, the remainder of the patent may be left intact and valid.
The Act requires that an applicant file a specification including disclosure and claims, whereby everything that is essential for the invention to function properly is disclosed. To be complete it must meet two conditions: it must describe the invention and define the way it is produced or built; and define the nature of the invention and how to put it into operation. Failure to define the first would render the application invalid for ambiguity; failure to meet the second renders it invalid for insufficiency. The description must be full enough to enable a person skilled in the art to produce the invention using only the disclosure in the patent.(28)
In return for the privilege of a grant of monopoly, the patentee must state plainly what is the invention for which he or she asks protection, so that others will be advised of what is protected and its limits. A claim which is unclear as to its boundaries is invalid. If the skilled person in attempting to put a claim to use, or in trying to determine the boundaries which another method would not infringe, is given insufficient or obscure direction, then the claim is invalid.(29)
The court should not be quick to find ambiguity and should refuse to do so where a claim can with some effort be construed in a meaningful way.(30)
The language of a claim must not be vague, but can be general.
The language of the claims is to be given an "understandable meaning".(31) The language of the claims must be read in light of the specification as a whole, although it is still only the language of the claims that determines the scope of the monopoly claimed.(32)
A claim must be sufficiently explicit so as to inform the reader as to what is within and what is not within the claim.(33) If a claim could be interpreted in more than one way, it would be impossible for anyone to know, at least in advance, when a manufacture or use or sale of the patented product would be within the claim. Where the language is ambiguous, it may be that it is invalid for failing to inform a reader as to the scope of the claim, or it may be invalid upon an interpretation where it appears to claim more than was invented.(34)
The standards for patent specifications are not the same as those in academic scientific literature. A lack of data that would serve to verify the product, desirable as that may be for one working in advanced sciences, is not a requirement of the law of patents.(35)
The question to be asked is: could a person skilled in the art be able to make the invention from the information contained in the patent specification? Reliability of the method of measurement of a component of the claim goes to infringement, not to validity.(36)
A phrase that can be properly interpreted using grammatical rules and common sense cannot be found to be ambiguous. Conflicts among experts interpretations of a phrase can sometimes be solved with a common sense grammatical reading of the phrase.(37)
If a patentee uses language that, when fairly read, is avoidably ambiguous or obscure, the patent is invalid, whether due to design, carelessness or to want of skill. Where a patent is difficult to explain, due allowance will be made for any resulting difficulty in the language, but if the court suspects the patentee is using unclear language in an attempt to blur the boundaries of his claim, they will have little sympathy.(38)
G. IMPEACHMENT PROCEEDINGS
Only an "interested person" under s. 60(1) (formerly s. 62(1)) of the Patent Act) can commence an action to impeach a patent. This includes a person dealing with the same kind of product who is in competition with the patentee.(39)
In one case it was held to be sufficient to plead that the plaintiff is the owner of the patent in that the invention was made by its employee in the course of his employment and that the patent was obtained by the defendant in breach of the plaintiff's rights.(40)
Where the person impeaching the patent is relying upon prior knowledge and use, it must provide particulars of when and in what manner the earlier knowledge and use occurred, and where the concept of the invention is alleged to have been described in earlier applications that resulted in patents.(41)
security for costs
A person commencing impeachment proceedings must, pursuant to s. 60(3) of the Patent Act provide security for costs before proceeding with the action.
165. A conflict between two pending applications is declared when:
a. both of them contains one or more claims defining substantially the same invention; or
b. one or more claims of one application describe the invention disclosed in the other application.
c. If a claim of a patent is considered to be infringed by the disclosure of another patent, the latter patent for the purposes of subsection 45 is in conflict with the former patent.
1. Patent Act, R.S.C. 1985 c. P-4, s. 34(1)(e).
2. Patent Act, R.S.C. 1985 c. P-4, s. 34(2).
3. Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) (1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J.)
4. Consolboard Inc. v. MacMillan Bloedel (Sask) Ltd., (1981), 56 C.P.R. (2d) 145 (S.C.C. per Dickson J.) at 154-155.
5. American Cyanamid Co. v. Berk Pharmaceuticals, Ltd., , R.P.C. 231 per Whitford, J. at p. 234 (Ch).
6. The King v. American Optical Co., (1950) 13 C.P.R. 87 (per Thorson, P.) at p. 110;
See also: Edison and Swan United Electric Light Co. v. Woodhouse and Rawson,  4 R.P.C. 99 (C.A.) at p. 108
7. Sakharam D. Mahurkar v. Vas-cath of Canada Limited et al, (1988) 18 C.P.R. (3d) 417 (F.C.T.D. per Strayer J.) at p. 440.
8. Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), (1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J.)
9. Mobil Oil Corporation et al v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473 (F.C.A. per Marceau J.A.) at p. 482.
10. Mobil Oil Corporation et al v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473 (F.C.A. per Marceau J.A.) at pp. 484-485, 486.
11. Ductmate Industries Inc. v. Exanno Products, (1985) 2 C.P.R. (3d) 289 (F.C.T.D. per Reed J.)
12. Baldwin Int'l Radio Co. of Canada, Ltd. v. Western Electric Co., Inc & Northern Electric Co.,  S.C.R. 94 (S.C.C. per Rinfret J.) at p. 105.
13. The Mullard Radio Valve Co., Ld. v. Philco Radio and Television Corporation of Great Britain, Ld. and Others,  53 R.P.C. 323 at p. 352.
14. Mineral Separation North America Corp. v. Noranda Mines, Ltd. (1947), 12 C.P.R. 102 at p. 111;
Consolboard Inc. v. MacMillan Bloedel (Sask) Ltd.,  1 S.C.R. 504 at p. 520-521; (1981), 56 C.P.R. (2d) 145 per Dickson J. at 157 (S.C.C.).
15. Quantel Ltd. v. Spaceward Microsystems Ltd.  R.P.C. 83 (Patents Court per Falconer J.) at p. 136, l 49-50.
16. Consolboard Inc. v. MacMillan Bloedel (Sask) Ltd.  1 S.C.R. 504 at p. 526; (1981) 56 C.P.R. (2d) 145 per Dickson J. (S.C.C.). See also Beecham Canada Ltd. v. Procter & Gamble Co. (1982) 61 C.P.R. (2d) 1 per Urie J.A. at 8 (F.C.A.) citing Duff, C.J. in Western Electric Co. Inc. v. Baldwin Radio of Canada  S.C.R. 570 at p. 574.
17. Reliance Electric Industrial Company et al v. Northern Telecom Limited, (1992) 44 C.P.R. (3d) 161 (F.C.A. per Mahoney J.) at p. 164.
18. Burton Parsons v. Hewlett Packard (1975) 17 C.P.R. (2d) 97 (S.C.C. per Pigeon J.) at p. 106.
19. TRW Inc. v. Walbar of Canada Inc. (1991) 39 C.P.R. (3d) 176 (F.C.A. per Stone J.) at p. 196.
20. Quantel Ltd. v. Spaceward Microsystems Ltd.  R.P.C. 83 (Patents Court per Falconer J.) at p. 136, l 10-16.
21. The Edison Bell Phonograph Corporation, Limited v. Smith and Young,  11 R.P.C. 389 at p. 39.
22. Xerox of Canada Ltd. et al v. IBM Canada Ltd., (1977), 33 C.P.R. (2d) 24 (F.C.T.D. per Collier J.) at p. 44.
23. AlliedSignal Inc. v. Du Pont Canada Inc. et al. (1995), 61 C.P.R. (3d) 417 (F.C.A. per Desjardins J.A.) at p. 426 quoting the French version of Burton Parsons v. Hewlett Packard  1 S.C.R. 555 (S.C.C. per Pigeon) at 560
24. Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), (1989) 25 C.P.R. (3d) 257 (S.C.C. per Dickson C.J.)
25. British United Shoe Machinery Company Ltd v. A. Fussell & Sons Ld. (1908), 25 R.P.C. 631 (per Moulton, L.J.) at pp. 651-652; followed in Quantel Ltd. v. Spaceward Microsystems Ltd.  R.P.C. 83 (Patents Court per Falconer J.) at p. 139, l. 28-30.
26. Henriksen v. Tallon Limited,  R.P.C. 434 at p. 441.
27. Henriksen v. Tallon Limited,  R.P.C. 434 at p. 447.
Yet see Burton Parsons
28. Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) (1989) 25 C.P.R. (3d) 257 (S.C.C. per Lamer J.) at p. 267-268.
29. Xerox of Canada Ltd. v. IBM Canada Ltd. (1977) 33 C.P.R. (2d) 24 at 82 (F.C.T.D.) per Collier J.
30. Procter & Gamble Co. v. Bristol Myers Canada Ltd. (1979), 42 C.P.R. (2d) 33 at p. 37-38
Reading & Bates Construction Co. et al v. Baker Energy Resources Corp. et al (1986) 13 C.P.R. (3d) 410 at 430-431 (F.C.T.D) per Stayer J.
Lubrizol Corp. v. Imperial Oil Ltd. (1990) 33 C.P.R. (3d) 1 (F.C.T.D.) at p. 26.
31. Reading & Bates Construction Co. et al v. Baker Energy Resources Corp. et al, (1986) 13 C.P.R. (3d) 410 at 430 (F.C.T.D.) per Strayer J., aff'd (1987) 79 N.R. 351 (F.C.A.).
32. Smith Incubator Co. v. Seiling (1937) S.C.R. 251 (S.C.C.) per Duff C. at p. 255.
33. Smith Incubator Co. v. Seiling (1937) S.C.R. 251 (S.C.C.) per Duff C. at p. 255.
34. Apotex Inc. v. Hoffman-La Roche Ltd. (1989) 24 C.P.R. (3d) 289 at p. 299 (F.C.A.) per Thurlow D.J.A.
35. Wellcome Foundation Ltd. v. Apotex Inc. (1991) 39 C.P.R. (3d) 289 at 336 (F.C.T.D.) per MacKay J.
36. AlliedSignal Inc..v. Du Pont Canada Inc. et al, (1995), 61 C.P.R. (3d) 417 (F.C.A. per Desjardins J.A.) at p. 431.
37. Mobil Oil Corporation et al v. Hercules Canada Inc., ** use complete cite, at pp. 483-484.
38. Procter & Gamble Inc. and The Procter & Gamble Company v. Unilever PLC, and Lever Brothers Limited (1995), 61 C.P.R. (3d) 499 (F.C.A. per Stone J.A.) at p. 519.
39. Wakefield Properties Corp. v. Teknion Furniture Systems Inc, (1992), 44 C.P.R. (3d) 474 (F.C.T.D. per Jerome A.C.J.)
40. E.I. Dupont de Nemours & Co. et al v. Diamond Shamrock Corporation (1980), 47 C.P.R. (2d) 204 (F.C.T.D. per Cattanach J.)
41. E.I. Du Pont de Nemours & Co. et al v. Diamond Shamrock Corp. (1980), 46 C.P.R. (2d) 68 (F.C.T.D. per Cattanach J.)
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