Archive for November, 2012

TRIPS 4th Edition, and new book on Criminal Enforcement

by Daniel Gervais on Thursday, November 29th at 7:59 PM

The 4th edition of the TRIPS book is now available.

A South Asian Edition was also released a few months ago if you are in the region.

 

Christophe Geiger just published a book (not many like this one) on criminal enforcement of intellectual property, offering various perspectives on counterfeiting and an analysis of international and domestic rules on criminal enforcement, in the wake of TRIPS 61 , ACTA and the TPP discussions.  See here

 
Thursday, November 29th at 7:59 PM
 

Patent disclosure at the Supreme Court of Canada

by Daniel Gervais on Friday, November 9th at 7:14 PM

The Supreme Court of Canada issued an important opinion on November 8th, 2012.  The case is Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60.

Lets see what the Court had to say:

5. At the time of Pfizer’s patent application, Pfizer had conducted tests that demonstrated that sildenafil was effective in treating ED. […] Nowhere in the patent application is it disclosed that the compound that works is found in Claim 7 or that the remaining compounds in the patent had not been found to be effective in treating ED.

[…]

31.  The issues in this appeal are best understood by reference to the fundamental principles underlying the patent system. As the courts below noted, sufficiency of disclosure lies at the very heart of this system. If the issues are viewed through this lens, the case becomes more straightforward, and the conclusion flows easily from this principle.

32. The patent system is based on a “bargain”, or quid pro quo:  the inventor is granted exclusive rights in a new and useful invention for a limited period in exchange for disclosure of the invention so that society can benefit from this knowledge. This is the basic policy rationale underlying the Act. The patent bargain encourages innovation and advances science and technology. Binnie J. explained the quid pro quo as follows in AZT, at para. 37:

  • A patent, as has been said many times, is not intended as an accolade or civic award for ingenuity. It is a method by which inventive solutions to practical problems are coaxed into the public domain by the promise of a limited monopoly for a limited time. Disclosure is the quid pro quo for valuable proprietary rights to exclusivity which are entirely the statutory creature of the Patent Act.

[…]

56.  Pfizer submits that s. 58 of the Act allows courts to consider valid claims separately from those that are not valid. Implicitly, Pfizer is suggesting that under s. 58, where a valid claim exists, the consideration of the disclosure requirements can be limited to that claim. However, this is a misinterpretation of s. 58. Section 58 simply states that valid claims survive in the face of one or more invalid claims. This section is engaged once it has been determined, on the basis of the patent as a whole, whether the requirements, including the disclosure requirements, have been complied with.  Section 58 does not allow a court to consider the validity of a single claim — Claim 7 in this case — independently of the rest of the specification, even if the claim in question is the only one that may be valid. This section is engaged only after the validity analysis is carried out.

[…]

69.  In light of s. 27(3), it is the specification and not just the claims that the court must consider to determine whether the patent in question meets the disclosure requirements (see also Perry and Currier, at §15.26).Section 27(4) provides that the claim or claims must define the subject-matter of the invention distinctly and explicitly.

70. […] [T]he specification, which includes the claims and the disclosure, must define the “precise and exact extent” of the privilege being claimed so as to ensure that the public can, having only the specification, make the same use of the invention as the inventor.

[…]

79. Whether or not a specification is sufficient depends on what a skilled person would consider to be sufficient….Expert evidence in this case reveals that there was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound. Pfizer’s own expert witness admitted that a person skilled in the art who read the patent would not know which compound was shown by the study to be useful in treating ED.

 

———-

The remedy, a unanimous Court found, is to invalidate the patent not just a few claims (see para 56 above).

 

Patents are often presented on contractual terms as the Court does here. because use (or working) of a patent is not part of the bargain, it seems to make sense (a) to insist on full/candid disclosure; and (b) to grant a patent only if the invention “works”, which one might define as having both know utility (a notion which has been greatly diluted, however) and disclosing a way to use the invention to make it work as claimed (which in this case seemed to require knowing which compound worked).

 

 
Friday, November 9th at 7:14 PM