Thomas BaileyOyen Wiggs Green & Mutala LLP

Phone: 604 669 3432E-mail: tbailey@patentable.com

http//www.patentable.com

Patents - Lecture 1

Course Materials• Handouts

– Course Outline for patent section– PowerPoint Slides– casebook– example of a granted Canadian patent– list of patent related websites

http://www.patentable.com/lectures/

Course Materials• Statutes

– Consolidated Intellectual Property Statutes and Regulations 2012 (Carswell:2011)

– http://laws.justice.gc.ca/en/showtdm/cs/P-4

• Reference texts– D. Vaver, Intellectual Property Law (Irwin Law:

1997)– G. Henderson ed., Patent Law of Canada,

(Carswell: 1994)– H.G. Fox, Canadian Patent Law and Practice,

(Carswell: 1969)

Course Materials• Reports

– Canadian Patent Reporter (C.P.R.) – United States Patent Quarterly (U.S.P.Q.)– Reports of Patent Cases (R.P.C.)

• Journals– Intellectual Property Journal (I.P.J.)– Canadian Intellectual Property Review (C.I.P.R)– European Intellectual Property Review (E.I.P.R)

Course Outline

• Lecture Timing– 2:00 to 3:15 - break – 3:30 to 4:30– Patent Section: February 9 & 16; March 1 & 8– No class February 23– Trademark Section: March 15, 22, 29 & April 5

Course Outline

1. The basic structure of a patent

2. Examples of granted patents

3. History of monopolies

4. The subject matter of patents

Course Outline

5. Requirements of Patentability

6. Patent Specifications

7. Ownership of Patent Rights

8. Infringement

Overview

• Copyright• Trademarks• Patents• Trade Secrets• Industrial Designs• Unfair competition torts

Patent Basics

• Patents can protect ideas, not just the expression of ideas

• Not all ideas fall within patentable subject matter

• Patents do not protect scientific principles or abstract theorems

What is a Patent?

• A form of monopoly for a limited period of time intended to encourage disclosure of useful inventions

• A type of social contract between the inventor and the state

• An incentive to innovation

Patent Applications

• Patent Rights do not arise automatically upon conception of an invention

• Must obtain approval from a governmental patent Examiner in order to obtain enforceable rights

• Patent application process is costly and time consuming

Patent Applications

• Patent application process involves:– filing– search– examination– response or amendment– notice of allowance or final rejection– payment of issue fee or appeal

Infringement

• Patents protect against independent creation -it is not necessary to prove access

• The “claims” of a patent define the scope of monopoly which the patent affords

• Literal and substantial infringement

International Protection

• Separate patents must be obtained in each jurisdiction of interest

• “Worldwide patents” do not exist• Difference between patentability and

infringement• European Patent Convention• Patent Cooperation Treaty

PCT Applications by Country

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Growth in Number of Patent Applications from China

Chinese PCT Applications

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Term• Patents subsist for a defined term• After a patent expires or lapses the invention

falls into the public domain and may be freely used by anyone

• Currently, Canadian patents extend for a term of 20 years from the application filing date

• Formerly, patents extended for 17 years from the issue date

Cost & Complexity

• Patent applications are significantly more expensive to prepare and file than trademark or copyright applications

• Patents are also typically more expensive to enforce than other forms of intellectual property protection

Statistics from a survey by the American Intellectual Property Law Association

• Cost of Enforcing IP Rights

* Source: AIPLA – Report of the Economic Survey, 2011

PATENT TRADEMARK COPYRIGHT AT RISK

Discovery Trial Discovery Trial Discovery Trial

350,000 650,000 200,000 350,000 200,000 350,000 <$1M

1,500,000 2,500,000 425,000 775,000 400,000 700,000 $1-$25 M

3,000,000 5,000,000 1,000,000 1,500,000 750,000 1,375,000 >$25 M

Trade Secrets• Trade secrets are protected by the common

law so long as the information remains secret

• Patents require disclosure of an idea - the word “patent” is derived from a Latin word which means “laid open” or “revealed”

• Patents will eventually expire • Trade secrets may potentially extend

indefinitely

Trade Secrets

• Some inventions are better maintained as trade secrets

• Trade secret protection may be available for new ideas which do not constitute patentable subject matter

EXAMPLES OF TRADE SECRETS:

1. formulae and processes;2. computer software;3. recipes;4. manufacturing processes;5. fixtures, jigs, plant layout, assembling processes;6. combinations of parts;7. internal office memoranda;8. sales training materials;9. strategies for bidding on new work;10. inventory data and projections, detailed unit costs, profit

data;11. ideas for television programs and newspaper contests;12. information about mineral claims;13. customer lists.

Trade Secrets

• Trade secrets provide no protection against independent creation

• Protection is lost once the idea becomes available to the public

Industrial Designs

• Industrial designs protect visual or aesthetic features of new articles of manufacture whereas patent protection functional features

• Term of protection is 5 years renewable for one further 5 year term

• In the United States industrial designs are referred to as “design patents” and extend for a single term of 14 years

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Structure of Patent Specifications

• “Specification” refers to the “Disclosure” or “Description” (i.e the descriptive portion of the patent application) and the “Claims” (the numbered paragraphs which define the scope of the patent monopoly)

• The purpose of the Disclosure is to describe the invention in sufficient detail to allow someone to reproduce the invention once the patent lapses or expires

• The Disclosure is addressed to a person “skilled in the art”, not the average layperson

CANADIAN PATENT

Henry H. Schweitzer, Pacific Palisades, California, U.S.A.and James R. Drake, Santa Monica, California, U.S.A.

No. OF CLAIMS 10

54 WIND-PROPELLED APPARATUS

ISSUED Oct. 24, 197245

52 CLASS 114-12C.R. CL.

CA No. 91292111

21 APPLICATION No. 061,852

30 PRIORITY DATE

22 FILED Sep. 12, 1969

Canadian Patent No. 912,921

Abstract

Wind-propelled apparatus in which a mast is universally mounted on a craft and

supports a boom and sail. Specifically a pair of curved booms are arcuately connected

athwart the mast and secure the sail therebetween, the position of the mast and sail being

controllable by the user but being substantially free from pivotal restraint in the absence of

such control.

Field of the Invention

The field of art to which the invention pertains includes the field of ships, particularly

sailboats and iceboats, and the field of land vehicle sail attachments.

Background of the Invention

Sail propulsion has been suggested as a motive means not only for boats and

iceboats, but also for such watercraft as surfboards and landcraft such as skateboards and

sleds, i.e., generally any lightweight small craft. Typically, a sail is provided on a mast that

is rigidly secured to the craft in a vertical position or else the sail and mast are entwined in a

network of riggings and control mechanisms.

The general effect of providing a sail on a normally sail-free vehicle is to convert the

vehicle into a water- or land- boat. Thus, by rigidly securing a sail to a surfboard, the feel of

the surfboard and enjoyment as such is lost and the skill normally required to control it is no

longer needed. Instead one obtains the speed and feel of a light sailboat and needs

substantially only those skills appropriate to control a sailboat. The same "denaturing"

occurs with other vehicles modified to bear a sail.

A further problem arises when a sail is fitted to a vehicle that does not have high roll

stability in that sudden or excessive winds can overturn the vehicle.

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Abstract

Wind-propelled apparatus in which a mast is universally mounted on a craft and

supports a boom and sail. Specifically a pair of curved booms are arcuately connected

athwart the mast and secure the sail therebetween, the position of the mast and sail being

controllable by the user but being substantially free from pivotal restraint in the absence of

such control.

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Field of the Invention

The field of art to which the invention pertains includes the field of ships, particularly

sailboats and iceboats, and the field of land vehicle sail attachments.

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Background of the Invention

Sail propulsion has been suggested as a motive means not only for boats and

iceboats, but also for such watercraft as surfboards and landcraft such as skateboards and

sleds, i.e., generally any lightweight small craft. Typically, a sail is provided on a mast that

is rigidly secured to the craft in a vertical position or else the sail and mast are entwined in a

network of riggings and control mechanisms.

The general effect of providing a sail on a normally sail-free vehicle is to convert the

vehicle into a water- or land- boat. Thus, by rigidly securing a sail to a surfboard, the feel of

the surfboard and enjoyment as such is lost and the skill normally required to control it is no

longer needed. Instead one obtains the speed and feel of a light sailboat and needs

substantially only those skills appropriate to control a sailboat. The same "denaturing"

occurs with other vehicles modified to bear a sail.

A further problem arises when a sail is fitted to a vehicle that does not have high roll

stability in that sudden or excessive winds can overturn the vehicle.

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Summary of the Invention

The present invention provides wind propulsion means for a vehicle that adds new

dimensions of wind responsiveness and speed and yet enhances the vehicle's normal ride and

control characteristics to greatly increase the enjoyment obtained therefrom. Wind-

propelled apparatus is provided comprising vehicle body means adapted to support a user

and wind-propulsion means pivotally associated with the body means and adapted to receive

wind for motive power. The position of the propulsion means is controllable by the user

and is substantially free from pivotal restraint in the absence of such control.

In particular embodiments, the propulsion means is connected to the vehicle body by

means of a universal joint, e.g. a joint having three axes of rotation, or other such joint to

enable the propulsion means to be substantially free-floating in the absence of user control.

The wind propulsion means can comprise a spar pivotally attached to the vehicle

body and a sail on the spar. Means are provided to allow the user to grasp the sail on one or

both sides thereof. Thus, a boom is provided laterally disposed on the spar to hold the sail

taut and provide a hand-hold. In particular embodiments, a pair of booms is provided

arcuately connected athwart the spar and securing the said there-between.

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Brief Description of the Drawings

FIGURE 1 is a perspective view of a wind-propelled apparatus according to an

embodiment of this invention obtained by modifying a surfboard with a sail, spar and boom

therefor and leeboard;

FIGURE 2 is a sectional view, on line 2-2 of FIGURE 1, of a universal joint used for

pivotal motion of the sail;

FIGURE 3 is a sectional view, on lines 3-3 of FIGURE 1, of the spar-side juncture

between the booms; and

FIGURE 4 is a sectional view, on line 4-4 of FIGURE 1, of the clew-side juncture

between the booms.

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Description of the Preferred Embodiment

Referring to FIGURE 1, a wind-propelled apparatus is shown, including a surfboard

10, spar 12, triangular sail 14 and booms 16 and 18. The surfboard 10 has a daggerboard

20, as leeboard, inserted through an opening 22 provided in the body of the surfboard 10

and projecting obliquely from the bottom 24 thereof. A top portion of the daggerboard 20

extends somewhat beyond the top surface 28 of the surfboard 10 to provide a platform 29

for pivotal attachment of the spar 12 as will be more fully described below.

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Claims

The embodiments of the invention in which an exclusive property or privilege is

claimed are defined as follows:

1. Wind-propelled apparatus comprising body means adapted to support a user and

wind-propulsion means pivotally associated with said body means and adapted to receive

wind for motive power for said apparatus, said propulsion means comprising a mast, a joint

for mounting said mast on said body means, a sail and means for extending said sail laterally

from said mast, the position of said propulsion means being controllable by said user, said

propulsion means being substantially free from pivotal restraint in the absence of said user,

said joint having a plurality of axes of rotation whereby said sail free falls along any of a

plurality of vertical planes upon release by said user.

2. The apparatus of Claim 1 wherein said propulsion means is adapted to be hand-

held by said user but is otherwise substantially free from pivotal restraint.

3. The apparatus of Claim 1 including means for said user to hold said sail.

4. The apparatus of Claim 1 wherein said sail extending means comprises a boom

laterally disposed on said mast to hold said sail taut and adapted to provide a hand-hold for

said user.

5. The apparatus of Claim 1 including means adapted to enable said user to grasp

either side of said sail.

6. The apparatus of Claim 1 adapted as a watercraft.

7. The apparatus of Claim 6 including water stabilizing means associated with said

body means.

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1. Wind-propelled apparatus comprising body means adapted to support a user and

wind-propulsion means pivotally associated with said body means and adapted to receive

wind for motive power for said apparatus, said propulsion means comprising a mast, a joint

for mounting said mast on said body means, a sail and means for extending said sail laterally

from said mast, the position of said propulsion means being controllable by said user, said

propulsion means being substantially free from pivotal restraint in the absence of said user,

said joint having a plurality of axes of rotation whereby said sail free falls along any of a

plurality of vertical planes upon release by said user.

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The function of patent claims was discussed by Lord Russell of Killowen in Electric &Musical Industries, Ltd. v. Lissen Ltd. (1939), 56 R.P.C. 23 (H.L.) at p. 39:

The function of the claims is to define clearly and with precision the monopolyclaimed, so that others may know the exact boundaries of the area withinwhich they will be trespassers. Their primary object is to limit and not toextend the monopoly. What is not claimed is disclaimed. The claims mustundoubtedly be read as part of the entire document, and not as a separatedocument; but the forbidden field must be found in the language of the claimsand not elsewhere. It is not permissible, in my opinion, by reference to somelanguage used in the earlier part of the specification to change a claim which byits own language is a claim for one subject-matter into a claim for another and adifferent subject-matter, which is what you do when you alter the boundaries ofthe forbidden territory. A patentee who describes an invention in the body of aspecification obtains no monopoly unless it is claimed in the claims.

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The same principle was recognized by Thorson P. in a leading Canadian case, NorandaMines Ltd. v. Minerals Separation North American Corp. (1947), 12 C.P.R. 102 (Ex. C.) at p.146:

By his claims the inventor puts fences around the fields of his monopoly andwarns the public against trespassing on his property. His fences must be clearlyplaced in order to give the necessary warning and he must not fence in anyproperty that is not his own. The terms of a claim must free from avoidableambiguity or obscurity and must not be flexible; they must be clear and preciseso that the public will be able to know not only where it must not trespass, butalso where it may safely go. If a claim does not satisfy these requirements thenit cannot stand… The inventor may make his claims as narrow as he pleaseswithin the limits of his invention but he must not make them too broad. Hemust not claim what he has not invented for thereby he would be fencing offproperty which does not belong to him. It follows that a claim must fail if inaddition to claiming what is new and useful it also claims something that is oldor something that is useless.

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Structure of Patent Specifications

• Abstract– a brief technical statement describing the utility of the

invention and the manner in which the invention is distinguishable from other inventions

• Field of the Invention– a summary of the field of technology to which the

invention relates

• Background of the Invention– a description of the “prior art” (i.e any other existing

devices or processes in the same field) and the problems or shortcomings which the invention is designed to overcome

Structure of Patent Specifications

• Summary of the Invention– a brief summary of the invention– often a paraphrase of the claims

• Brief Description of the Drawings– a brief description of what each drawing view represents

• Detailed Description of the Preferred Embodiment– a detailed description of the structure of the invention

with reference to the part numbers shown in the drawings

– usually also a detailed description of the operation of the invention

Structure of Patent Specifications

• Claims– one or more numbered paragraphs which define the

scope of the monopoly which the patent affords

• Drawings– illustrations of the invention using the reference

numbers used in the Detailed Description– not all inventions require drawings

Patent Claims

• The purpose of the claims is to delimit the scope of exclusive rights protected by the patent

• The scope of the patent monopoly is defined by the claims rather than what is described in the patent disclosure or illustrated in the drawings

• What is “not claimed is disclaimed” • Claims may cover actions (i.e. methods, processes

and uses) in addition to things (i.e. apparatuses, compositions and products)

Patent Claims

• “Independent” claims stand on their own• “Dependent” claims (those which refer, by number,

to one or more preceding claims) are read as including the features of each claims from which they depend, either directly or indirectly

• Claims may be of varying scope - e.g. “broad” or “narrow” claims

• Functional terminology is used to broaden the scope of the claims (broad claims are ordinarily more valuable than narrow claims)

Patent Claims

• Structure of the claims is critical when assessing whether an invention constitutes patentable subject matter or whether it is infringed by a competing apparatus or activity

• Must consider not only what an invention is but how it is claimed

• By convention, each claim is a single sentence

By convention, each claim of a patent must be a single sentence. Colons, semi-colonsand commas are typically used to separate different claim clauses. Mr. Justice Colliercommented on this requirement in Xerox of Can. Ltd. v. I.B.M. Can. Ltd. (1977), 33 C.P.R.(2d) 24, at p. 88, n. 14 (F.C.T.D.):

Claim 1 (to use an example) of this patent has approximately 178 words. TheGettysburg address has, I understand, 270 words. But the Gettysburgmasterpiece uses not only words but punctuation, including periods, to conveyits meaning. Claim 1 has no periods. It is one long complicated sentenceemploying approximately 6 commas. It is said that the Patent Rules…and thePatent Office require that claims be stated in this way - one sentence. I suspectthe real answer is that this drafting method is merely traditional. We lawyersare slaves to tradition… In patent suits, claims are often, at best, riddles. Whentechnical words and phrases are all bundled into one huge sentence, the claimpasses from riddle to enigma.

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“The PO does encourage long sentences to be broken into sections, subsections, and paragraphs, but claims still proliferate into the hundreds despite the "one invention, one patent" rule. Both the PO and the courts, sympathetic towards technologies that are sometimes difficult to describe and to understand, have abdicated the field to the neurotic drafting practices of patent agents and lawyers. The problem is not confined to Canada. Patent drafting has drifted internationally into the sort of practices that in the past caused Charles Dickens to take up his pen. The result is that only another patent agent or lawyer can possibly parse, let alone interpret, a colleague's handiwork. Nothing will change until patent offices and courts everywhere start insisting that claims be readily comprehensible by actual (rather than notional) skilled persons, and not only after nine-day trials---upon pain of invalidity. Whether, however, this can come about without international action through bodies like the World Intellectual Property Organization, reinforced by national legislation, is debatable.” (Intellectual Property Law - D. Vaver, p. 142)

Self-sealing incisions for cataract surgery

Transgenic Non-Human MammalsUS Patent No.

4,736,866

Stac Electronics v. Microsoft

(http://www.vaxxine.com/lawyers/articles/stac.html

NTP v. RIM

i4i’s XML-Related Patent (i4i v. Microsoft, US$290 million in damages)

Facebook’s News Feed and Search Ranking Patents

“From the earliest days at Apple, I realized that we thrived when we created intellectual property. If people copied or stole our software, we’d be out of business. If it weren’t protected, there’d be no incentive for us to make new software or product designs. If protection of intellectual property begins to disappear, creative companies will disappear or never get started. But there’s a simpler reason: It’s wrong to steal. It hurts other people. And it hurts your own character.” (quoted in Steve Jobs by Walter Isaacson at p. 396). 323 Apple patents list Steve Jobs as inventor. http://www.nytimes.com/interactive/2011/08/24/technology/steve-jobs-patents.html

Steve Jobs’ Design Patents iPhone 4 and iPad

Steve Jobs’ Design Patents Glass Staircase

Mobile Device Legal Wars

• Patent disputes involving Microsoft, Kodak, Apple, Google, Nokia, Samsung, HTC and Motorola are ongoing including:

– Lawsuits in California, Delaware, Germany, Australia, Netherlands, France, Japan, UK, Italy, South Korea– Two International Trade Commission complaints

• Products at issue include: iPhone, iPad, iCloud, Galaxy S, Galaxy Tab, Nexus S 4G, Droid Charge, Droid X

• Recent developments include:– Motorola wins German injunction against Apple iCloud (3 February 2012)– Apple fails to obtain German injunction against Samsung Galaxy Tab 10.1N and Galaxy Nexus (1 February

2012)– Apple obtains German injunction against Samsung Galaxy Tab 10.1 (31 January 2012)– Samsung loses in 2 actions alleging patent infringement by Apple in Germany (27 January 2012)– Apple loses in action alleging patent infringement by Samsung in the Netherlands (24 January 2012)– Apple loses in preliminary action alleging patent infringement by Motorola in the ITC (13 January 2012)– Kodak sues Apple and HTC for patent infringement in the US (10 January 2012)– Microsoft wins interim victory against Motorola in the ITC (20 December 2011)– Apple obtains import ban on HTC phones implementing “data tapping patent” in the ITC (19 December

2011)– Apple loses injunction against Samsung banning Galaxy Tab in Australian appeals court (30 November 2011)

Cork Stopper

Flow Actuated Pulsator

T-shirt map

Apparatus for facilitating the birth of a child by centrifugal force

Drinking vessel with sound effects

Bath capsule

Cow with artificial horns

Statute of Monopolies

• During the reign of Elizabeth I the Crown often exercised its prerogative power to grant trading monopolies

• In Darcy v. Allen (1602) 11Co Rep 84 the courts of common law declared void a patent granting the plaintiff the sole right to import foreign playing cards into England on the basis that the monopoly was contrary to public policy

• The Statute of Monopolies (1623) declared all monopolies to be invalid, subject to some exceptions

Statute of Monopolies

• In Section 6 of the Statute of Monopolies an exception was made for letters patent and grants of privilege for “any manner of new manufactures” which were granted to the “true and first inventor”

• This exception to the general rule prohibiting monopolies is the foundation of modern patent law

• The Statute of Monopolies did not use the term “invention” per se

VI. Provided alsoe and be it declared and enacted, that any declaracion beforemencioned shall not extend to any letters patents and graunts of privilege for thetearme of fowerteen yeares or under, hereafter to be made of the sole working ormakinge of any manner of new manufactures within this Realme, to the true andfirst inventor and inventors of such manufactures, while others at the tyme ofmakinge such letters patents and graunts shall not use, soe as alsoe they be not contraryto the lawe nor mischievous to the State, by raisinge prices of commodities at home, orhurt of trade, or generallie inconconvient; the said fourteeene yeares to be accomplishedfrom the date of the first letters patents or grant of such priviledge hereafter to be made,but that the same shall be of such force as they should be if this Act had never byn made,and of none other. [Emphasis Added]

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Evolution of Patent Specifications

• Originally patents were granted without the need to file a detailed description of the invention

• After about 1700 the custom of filing a written patent specification emerged

• Inventors eventually began to describe both the best means for carrying out the invention in specific terms and the general nature of the invention in broad terms

• It became a requirement in 1883 that a patent end with a set of claims delimiting the scope of the invention

after 1700 in order to protect the public the Crown granted the Patent subject to a condition, and that condition is the foundation of modern Patent law. It was in the form of a proviso obligating the inventor “by instrument in writing under this hand and seal particularly to describe and ascertain the nature of the said invention, and in what manner the same is to be performed, and cause the same to be enrolled within six calender months.” From that time the inventor had to describe and ascertain the nature of the invention, and in what manner the same was to be performed; otherwise the patent lapsed at the end of six months. The grant was still obtained for the mere title; and the definiteness was obtained by the Specification which was subsequently filed. As Patents became more important, and therefore the rights under Patents were more keenly contested, it became obvious that this proviso provided for two very different things, the nature of the invention - and very little thought shews that this means the delimitation of the invention - and the manner in which the same is to be performed. The first was necessary to define the monopoly and the second was necessary to secure that the public was not defrauded by the patentee. . . .

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As it is the duty of the inventor to give the fullest practical information to the public he isbound to put in, if, for instance the invention is a process, quantities and times which arethe best he knows. But it would be cruel to hold him to the invention when he carried outonly those best quantities and times, because a person could then take his invention insubstance if he did not take it in the quite the best way, and the value of the grant wouldbe practically nothing. Hence inventors, in their own protection, took to introducing intotheir Specification, language intended to distinguish between that which was there for thepractical information of the public, and that which was there for the delimitation of theinvention. Correct delimitation was of the greatest possible importance to the inventor,because if his Patent covered something which was old the Patent was wholly bad. At thesame time there was the danger of confining himself to a mere outline which gavedelimitation, but did not tell the public the best way within those limits of performing hisinvention. The one duty required him to state his invention in its most general form, andthe other duty required him to state it in its best and therefore in a very special form. Outof that has arisen the practice, which originally was perfectly optional of having a separatepart of the Specification primarily designed for delimitation. That is what we call theClaim.

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NRDC case(Casebook , pp. 4- 9)

• Australian patent statute defined an invention as a “manner of new manufacture” within the meaning of Section 6 of the Statute of Monopolies

• Only the claims relating to a “method” of eradicating weeds were in issue

• Judgment is an inquiry into the scope of permissible subject matter of letters patent

• Court held that an expansive interpretation of the “vendible products” test was required

(1851) 10 C.B. 838; 138 E.R. 331, (where the patent was for a method of giving duplicateelectric signals). The truth is that any attempt to state the ambit of s. 6 of the Statute ofMonopolies by precisely defining "manufacture" is bound to fail. The purpose of s. 6, itmust be remembered, was to allow the use of the prerogative to encourage nationaldevelopment in a field which already, in 1623, was seen to be excitingly unpredictable. Toattempt to place upon the idea the fetters of an exact verbal formula could never havebeen sound. It would be unsound to the point of folly to attempt to do so now, whenscience has made such advances that the concrete applications of the notion which werefamiliar in 1623 can be seen to provide only the more obvious, not to say the moreprimitive, illustrations of the broad sweep of the concept.

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In a case which has been much cited in recent times, the G.E.C. case (1942) 60R.P.C. 1, Morton, J., as he then was, while disclaiming the intention of laying down anyhard and fast rule applicable to all cases, put forward a proposition which, if literallyapplied, would have a narrowing effect on the law and indeed has already been found tostand as much in need as the Statute itself of a generous interpretation. The propositionwas that "a method or process is a manner of manufacture if it (a) results in the productionof some vendible product, or (b) improves or restores to its former condition a vendibleproduct or (c) has the effect of preserving from deterioration some vendible product towhich it is applied". Any criticism to which this is open, as Lord Jenkins remarked inReitzman v Grahame--Chapman and Derustit Limited (1950) 68 R.P.C. 25 at p. 32. iscertainly not on the score of its being too wide. It is valuable for its insistence that inpatent law at the present day a process may be within the concept of "manufacture"notwithstanding that it merely improves, restores, or preserves some antecedently existingthing; but in so far as it may appear to restrict the concept by its use of the expression"vendible product", it must be considered now as substantially qualified by the commentsmade upon it by Evershed, J. (as he then was), in the Cementation case (1945) 62 5R.P.C. 151 and in Rantzen's case (1946) 64 R.P.C. 63 at p. 65, and by Lloyd-Jacob, J., inElton and Leda Chemicals Limited's Application [l957] R.P.C. 267.

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Evershed, J., suggested in Rantzen's case (1946) 64 R.P.C. 63 at p. 66, where he spoke of the expression "vendible product" as laying proper emphasis upon the trading or industrial character of the processes intended to be comprehended by the Acts--their "industrial or commercial or trading character" as Lloyd-Jacob, J., himself described it in Lenard's Application (1954) 71 R.P.C. 190 at p. 192. The point is that a process, to fall within the limits of patentability which the context of the Statute of Monopolies has supplied, must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art (see Virginia-Carolina Chemical Corporation's Application [1958] R.P.C. 35 at p. 36)--that its value to the country is in the field of economic endeavour. (The exclusion of methods of surgery and other processes for treating the human body may well lie outside the concept of invention because the whole subject is conceived as essentially non-economic: see Maeder v. Busch (1938) 59 C.L.R. 684 at p. 706.)

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end result an artificial effect falling squarely within the true concept of what must beproduced by a process if it is to be held patentable. This view is, we think, required by asound understanding of the lines along which patent law has developed and necessarilymust develop in a modern society. The effect produced by the appellant's method exhibitsthe two essential qualities upon which "product" and "vendible" seem designed to insist.It is a "product" because it consists in an artificially created state of affairs, discernible byobserving over a period the growth of weeds and crops respectively on sown land onwhich the method has been put into practice. And the significance of the product iseconomic; for it provides a remarkable advantage, indeed to the lay mind a sensationaladvantage, for one of the most elemental activities by which man has served his materialneeds, the cultivation of the soil for the production of its fruits. Recognition that therelevance of the process is to this economic activity old as it is, need not be inhibited byany fear of inconsistency with the claim to novelty which the specification plainly makes.The method cannot be classed as a variant of ancient procedures. It is additional to thecultivation. It achieves a separate result, and the result possesses its own economic utilityconsisting in an important improvement in the conditions in which the crop is to grow,whereby it is afforded a better opportunity to flourish and yield a good harvest.

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2.2 Statutory Provisions

The scope of patentable subject matter in Canada is defined by s. 2 and s. 27(8) ofthe Patent Act:

2. In this Act, “invention” means any new and useful art, process, machine,manufacture or composition of matter, or any new and useful improvementin any art, process, machine, manufacture or composition of matter.

27 (8) No patent shall be granted for any mere scientific principle orabstract theorem.

The United States Patent Act has a similar statutory provision defining whatinventions are patentable:

35 U.S.C. 101 Whoever invents or discovers any new and useful process,machine, manufacture or composition of matter, or any new and usefulimprovement thereof, may obtain a patent therefor, subject to theconditions and requirements of this title.

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Patent Applications

• Patent application process involves:– filing– search– examination– response or amendment– notice of allowance or final rejection– payment of issue fee or appeal

Lawson case(Casebook , pp. 10 - 16)

• Applicant sought patent protection for a parcel of land subdivided into lots each delineated in the shape of a champagne glass

• Court considered whether the invention was an “art”, “process” or “manufacture” within the meaning of Section 2 of the Patent Act

• Court held that a method for describing and laying out parcels of land was a professional skill which could not constitute an “art” or “process”

• Also, since the invention did not change the character or condition of the land itself, it was not a “manufacture”

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In the specifications the advantages of the appellant's alleged invention over theconventional practice of subdividing land into lots of rectangular shape are set forth as: (1)providing greater density; (2) the buildings are staggered; (3) greater choice of buildingplans; (4) greater freedom of orientation to enjoy aesthetic qualities of a site and; (5)reducing cost of installation of services.

I doubt the validity of the suggested advantages numbered (1) and (5). AdvantageNo. (2) is admittedly not new. There appears to me to be merit in advantages numbered(3) and (4).

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The action taken by the Commissioner of Patents, as disclosed by the record, ischronologically summarized.

On March 11, 1963, the petition of the appellant for an invention entitled "Sub-divided Parcel of Building Land" was filed in the Patent Office.

On March 28, 1963, the Commissioner advised the appellant that the grant ofletters patent was refused on the grounds that: (1) a general arrangement of subdividingland is not proper subject matter for a patent; (2) the application merely disclosed a planfor the layout of land; (3) to be patentable there must be present something more than ascheme or plan, however ingenious. (See communication from Examiner dated March28, 1963).

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As I understood the submissions of counsel for the appellant, it was that the patentapplied for was the manner of subdividing land in accordance with the enunciated"champagne glass" principle and that he conceded that what was claimed was not actuallythe parcel of land so subdivided and acknowledged that a claim to the land itself,subdivided in that manner was untenable.

Again as I understood his argument, it was directed to rebutting the propositionput forward by Morton, J., in Re G.E.C.'s Application (1942), 60 R.P.C. 1, that "amethod or process is a manner of manufacture if it (a) results in the production of somevendible product . . .". I understood his submission to be that the land so marked out wasa vendible product.

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It is obvious from the concluding portion of the above quotation that professionalskills are not the subject-matter of a patent. If a surgeon were to devise a method ofperforming a certain type of operation he cannot obtain an exclusive property or privilegetherein. Neither can a barrister who has devised a particular method of cross-examinationor advocacy obtain a monopoly thereof so as to require imitators or followers of hismethods to obtain a licence from him.

It seems to me that a method of describing and laying out parcels of land in a planof subdivision of a greater tract of land in the skill of a solicitor and conveyancer and thatof a planning consultant and surveyor. It is an art which belongs to the professional fieldand is not a manual art or skill.

I, therefore, conclude that the method devised by the applicant herein forsubdividing land is not an art within the meaning of that word in s. 2(d).

. . . . .

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Counsel for the appellant conceded that if the subject-matter claimed was a plan, itwas not patentable for which reason he was adamant in submitting that the claim was forthe application of the principle in subdividing land which resulted in a different article. Inview of my conclusions that the subject was not an "art" or a "manufacture" within themeaning of those words in s. 2(d) for the reasons I have outlined, it follows that what isbeing claimed is more approximate to a plan. While it may be that the appellant couldobtain protection under the Copyright Act, R.S.C. 1952, c.55, or the Industrial DesignAct Union Label Act, R.S.C. 1952, c. 150, neither of which matters I am required todecide, he is not entitled to protection under the Patent Act.

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Tennessee Eastman case(Casebook , pp. 17 - 22)

• Applicant sought a patent on a method of surgically bonding the surfaces of incisions or wounds using adhesive compounds

• Exchequer Court held that method was in the professional field of surgery and medical treatment and was therefore not essentially economic in character

• Exchequer Court therefore refused the application on public policy grounds

• On appeal, the Supreme Court of Canada also held that the method did not constitute patentable subject matter, but for different reasons

Tennessee Eastman case(Casebook , pp. 17 - 22)

• Former Section 41 of the Patent Act prohibited the patenting of medicines except in “process dependent” form

• The Supreme Court reasoned that if a method of medical treatment consisting in the application of a new drug could be claimed separate from the drug itself, this would permit inventors to circumvent Section 41

• The Court applied the same reasoning to surgical treatments

• Section 41 has since been repealed

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discovery that the compounds had a marked affinity for adhering to surfaces of livingtissue. Claim 3 of the patent application read as follows:

3. The method for surgical bonding of body tissues which comprisesapplying to at least one of the tissue surfaces to be bonded a thin film of anadhesive composition comprising a monomeric ester of a-cyanoacrylic acidwith a saturated aliphatic alcohol of 3 to 6 carbon atoms, bringing togetherthe surfaces to be bonded and polymerizing the thin film of monomer whilein contact with such surfaces, said adhesive composition containing also aminor amount of at least one substance from the group consisting of aplasticizer and a polymeric thickening agent.

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In my view the method here does not lay in the field of the manual or productivearts nor, when applied to the human body, does it produce a result in relation to trade,commerce or industry or a result that is essentially economic. The adhesive itself mayenter into commerce, and the patent for the process, if granted, may also be sold and itsuse licensed for financial considerations, but it does not follow that the method and itsresult are related to commerce or are essentially economic in the sense that thoseexpressions have been used in patent case judgments. The method lies essentially in theprofessional field of surgery and medical treatment of the human body, even though it maybe applied at times by persons not in that field. Consequently it is my conclusion that inthe present state of the patent law in Canada and the scope of subject-matter for patent, asindicated by authoritative judgments that I have cited, the method is not an art or processor an improvement of an art or process within the meaning of s. 2(d) of the Patent Act .

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Section 41 was enacted for the purpose of restricting the scope of patents "relatingto substances prepared or produced by chemical processes and intended for foods ormedicine". The first principle proclaimed is that in the case of such inventions, "thespecification shall not include claims for the substance itself, except, when prepared orproduced by the methods or, processes of manufacture particularly described in the claimor by their obvious equivalents". In my view, this necessarily implies that, with respect tosuch substances, the therapeutic use cannot be claimed by a process claim apart from thesubstance itself. Otherwise, it would mean that while the substance could not be claimedexcept when prepared by the patented process, its use however prepared could be claimedas a method of treatment. In other words, if a method of treatment consisting in theapplication of a new drug could be claimed as a process apart from the drug itself, then theinventor, by making such a process claim, would have an easy way out of the restriction ins. 41(l).

Having come to the conclusion that methods of medical treatment are notcontemplated in the definition of "invention" as a kind of "proccess", the same must, onthe same basis, be true of a method of surgical treatment. In this connection, I would notethat in Imperial Chemical Industries v. Commissioner of Patents (1966), 33 Fox Pat. C.153; 51 C.P.R. 102; [1967] 1 Ex. C. R. 57, the Exchequer Court decided that ananaesthetic was a substance "intended for medicine" within the meaning of s. 41(1),relying on the decision of this Court in Parke Davis & Co. v. Fine Chemicals of CanadaLtd , [1959] S.C.R. 219; 30 C.P.R. 59; 17 D.L.R. (3d) 153 in which it was held that theword "medicine" should be interpreted broadly so as to include the product in bulk as wellas in dosage form.

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Wayne State University case(Casebook , pp. 23)

• Applicant sought a patent for a method for slowing the rate of cancer cell growth

• Method claims were refused, but the Patent Appeal Board allowed claims to the new use of known compounds for therapeutic purposes

• Patent Appeal Board relied upon the decision of the Supreme Court of Canada in Shell Oil Co. (1982) 62 C.P.R. (2d) 1

If I am right that the discovery of a new use for these compounds which iscapable of practical application is an “invention” within the meaning of thedefinition, I can find nothing in the statute which would preclude a claimfor these compositions. Section 36 does not seem to present a barrierbecause the inventive ingenuity here lies in the new use for the oldcompounds and not in the compounds themselves. Having discovered theuse, the appellant has then combined the compounds with the appropriatecarriers for their application to plants. It is not, in my view, necessary inthe case of the discovery of a new use for an old compound that thecombination of the compound with the adjuvant be itself novel in any senseother than that it is required in order to give effect to this particular use ofthe compound. This is not a case where the inventive ingenuity is allegedto lie in the combination; the combination is simply the means of realizingon the new discovery potential of the compounds. This is a case where theinventive ingenuity is in the discovery of the new use and no furtherinventive step is required in the application of the compounds to that use,i.e., in the preparation of the appropriate compositions.

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Methods of Medical Treatment

• Cosmetic methods involving the treatment of living tissue may constitute methods of medical treatment

• Diagnostic methods, which do not involve the direct treatment of human tissue, are potentially patentable

• Methods of medical treatment are patentable in the United States, although U.S. legislation enacted September 30, 1996 has established new limitations on the remedies available for infringement of a patented “medical activity”