Paper B Flashcards by Jean-Christophe Paquette

Is a given claim obvious in view of…? What is the test?

A) POSITA and CGK
- POSITA
-CGK
B) Inventive concept
C) Differences between prior art and inventive concept
D) Differences constitute obvious steps or do they require inventiveness (describe alone + combinations)
E) Conclusion

(2018)

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License case law?

In Canada, a valid licence can only be obtained for a CA patent if both Chloe
Green and Greenhouses Ltd. consent to the license to Rob. (Forget v. Specialty Tools of
Canada Inc (1993), 48 CPR (3d) 323 at 331 (BCSC), aff ’d (1995), 62 CPR (3d)
537(BCCA)).

(2018)

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Authority of patent act related to eliminate false inventor

The Federal Court has jurisdiction to order that any entry in the records of the Patent
Office relating to the title of a patent be varied (Section 52 of the Patent Act). It will thus
be necessary to make an application at the Federal Court to remove an inventor.

(2018)

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(i) List one reason why or why not each of the claims may be patentable subject matter in
Canada.
(ii) What is the appropriate Section of the Patent Act that applies to patentable subject
matter.
Mushroom X comprising novel compound Y for treating a tumor in a subject.

Claim would be rejected since mushroom X is a higher life form.

Section 2 of the Patent Act.

(2018)

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(i) List one reason why or why not each of the claims may be patentable subject matter in
Canada.
(ii) What is the appropriate Section of the Patent Act that applies to patentable subject
matter.

Novel compound Y for use in treating a tumor in a subject.

Claim would be accepted since compound Y is patentable.

Section 2 of the Patent Act.

(2018)

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(i) List one reason why or why not each of the claims may be patentable subject matter in
Canada.
(ii) What is the appropriate Section of the Patent Act that applies to patentable subject
matter.

A method of treating a tumor comprising administering mushroom X to a subject.

Claim would be rejected for being directed to a method of medical treatment.

Section 2 of the Patent Act.

(2018)

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(i) List one reason why or why not each of the claims may be patentable subject matter in
Canada.
(ii) What is the appropriate Section of the Patent Act that applies to patentable subject
matter.

An animal feed comprising mushroom X.

Claim would be accepted since it includes a higher life form within its scope as a component of a composition or food product.

Section 2 of the Patent Act.

(2018)

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(i) List one reason why or why not each of the claims may be patentable subject matter in
Canada.
(ii) What is the appropriate Section of the Patent Act that applies to patentable subject
matter.

Use of a composition comprising mushroom X and a salt for treating a tumor in a subject

Claim would be accepted since it includes a higher life form within its scope as a use.

Section 2 of the Patent Act.

(2018)

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In the United States, according to 35 U.S.C. 112 “the specification….shall set forth the best
mode contemplated by the inventor of carrying out his invention.” As can be understood from
this language, U.S. patent applications have a best mode requirement that is relevant to all
technologies. Does the Canadian Patent Act impose a similar best mode requirement? Apply the
appropriate Section(s) of the Patent Act.

YES, but limited to machines. Section 27(3)(c) of the Patent Act.

(2018)

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A Canadian patent application was abandoned for failure to respond to an Office Action. Your
client contacts you in a state of panic a few days before the reinstatement deadline, and tells you
that he is unable to provide you with instructions by the deadline. He nevertheless wants to keep
this application from becoming irrevocably abandoned. Can an extension of time be requested?
Apply the appropriate Section(s) of the Patent Act and/or Rules.

Yes. The time limit for reinstatement may be extended under Subsection 26(1) of the Patent
Rules provided that the request for the extension of time is made before the period for
reinstatement expires and the fee set out in item 22 of Schedule II of the Patent Rules is paid
before the period for reinstatement expires.

(2018)

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Name the three-part test for sound prediction

1) Factual basis for the prediction
2) An articulable and “sound” line of reasoning
3) Sufficient disclosure

(2018)

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Name the relevant case law for the test.

Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153

(2018)

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You promptly report to a US Associate a Notice of Allowance you received this morning for a
Canadian patent application. She is very excited about getting the patent application allowed for
this technology in Canada. She sends you a listing of new claims that were allowed in several US
counterpart Continuation patent applications. She requests that you promptly file a divisional
application before paying the final fee for the allowed Canadian patent application.
You have a look at the claims and they are directed to subject matter that is close to the subject
matter of the allowed Canadian patent application. No unity of invention rejection was raised
during prosecution of the allowed Canadian patent application.
Based on your assessment, what would you recommend to the US Associate before filing a
divisional application with these claims?

The claims could be construed as being directed to the same or a similar invention, and a double
patenting rejection could be raised for the divisional:
i. If the claims would not necessitate a further search:
1. File an amendment after allowance to submit the claims and pay the fee ($400)
for such amendment.
ii. If the claims would necessitate a further search:
19
1. Let the application go abandoned (Section 73(1)(f) of the Patent Act; Section
30(10)(a) of the Patent Rules) for failure to pay the final fee,
2. Pay the reinstatement fee ($200) (Section 73(3) of the Patent Act),
3. Pay the final fee ($400) (Section 32(a) of the Patent Rules and item 5 of
SCHEDULE II), and
4. File a voluntary amendment at the same time to introduce the new claims

(2018)

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A PCT application was filed June 1, 2016, claiming priority from a US provisional patent
application filed June 2, 2015. If today is December 12, 2017, would you be able to enter
national phase in:
(a) Canada?

Canada – Yes, can enter national phase within 42 months of the priority date; (to review in view of new rules)

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US – No, more than 30 months from the priority date;

2018

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Yes, still within 31 months from the priority date;

2018

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No, Taiwan is not a PCT contracting state.

2018

What is required to add XX as an inventor? Apply the appropriate Section(s)
of the Patent Act and/or Patent Rules

Pursuant to subsection 31(4) of the Patent Act, where an application is filed by one or
more applicants and it subsequently appears that one or more further applicants
(includes an inventor) should have been joined, the further applicant or applicants
may be joined on satisfying the Commissioner that he or they should be so joined,
and that the omission of the further applicant or applicants had been by inadvertence
or mistake and was not for the purpose of delay.

(2018)

What is required to remove XX and XX as inventors? Apply the
appropriate Section(s) of the Patent Act and/or Patent Rules.

Pursuant to subsection 31(3) of the Patent Act, where an application is filed by joint
applicants and it subsequently appears that one or more of them has had no part in the
invention, the prosecution of the application may be carried on by the remaining
applicant or applicants on satisfying the Commissioner by affidavit that the remaining
applicant or applicants is or are the sole inventor or inventors.

(2018)

true or false?
Apply the appropriate Section(s) of the Patent Act and/or Patent Rules.

A request for re-examination may only be filed by the patentee, or a competitor of the
owner.

False – 48.1 (1) of the Patent Act. Any person can request re-examination.

(2018)

true or false?
Apply the appropriate Section(s) of the Patent Act and/or Patent Rules.

A re-examination board has to complete the re-examination proceeding within 12 months
once the re-examination board has caused a re-examination to be made of the claim of the patent
in respect of which the request for re-examination was submitted.

True – 48.3 (3) of the Patent Act.

2018

true or false?
Apply the appropriate Section(s) of the Patent Act and/or Patent Rules.

A patentee may submit a reply to the notice of the re-examination board setting out
substantial new questions on the patentability of one or more claims.

True – 48.2 (5) of the Patent Act.

2018

true or false?
Apply the appropriate Section(s) of the Patent Act and/or Patent Rules.

A determination by the re-examination board that the request for re-examination did not
raise a substantial new question affecting patentability of a claim of the patent may not be
appealed to any court.

True – 48.2 (5) of the Patent Act.

2018

You are the Patent Agent for JU CORP in Canada and you inform the CEO that his Canadian
patent application became abandoned last month for failure to pay a maintenance fee. He does
not understand this at all, because he remembers that he personally paid the correct amount to
CIPO well before the fee was due. Explain to him what went wrong and how it can be corrected,
if possible. No authority or statutory support is required.

In Canada, only the authorized representative of JU CORP (usually the Agent) can pay the
maintenance fees for patent applications. The CEO was not the authorized representative. The
application can be reinstated by having the authorized representative pay the reinstatement fee
($200) and pay the missing maintenance fee.

(2018)

Name the leading Canadian Supreme Court case pertaining to novelty and obviousness.

Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265.

Three secondary considerations for supporting non-obviousness

There has been along-felt need in the art for the claimed invention, and others have failed to solve that need. Commercial success. Copying by others

Is there a presumption with respect to the validity of CA 2,xxx,100? Who can request the Court to invalidate CA 2,xxx,100? Apply the appropriate sections of the Patent Act

An issued patent is presumed to be valid. Section 43(2) of the Patent Act. A patent may be declared invalid or void by the Federal Court at the instance of the Attorney General of Canada or at the instance of any interested person. Section 60(1) of the Patent Act.

Apart from anticipation and obviousness, identify and briefly explain two other issues that may affect the validity of Canadian Patent No. 2,xxx,100.

Issue of whether proper inventors have been named – Jane is named as a co-inventor on CA ‘100. A rule of thumb is that an inventor can be defined by someone who is the first to contribute to the inventive concept and reduction to a definite and practical shape of one or more of the claims in a patent. Jane only instructed Bob to fix the office’s old shredder and may not be a co-inventor. Issue of ownership – Bob invented the invention while he was employed as the firm’s mechanical engineer. However, CA ‘100 names “Smart Shredder, Inc.” rather than the firm as the owner. It is not known whether Bob was hired to invent by the law firm

Dr. White is the owner of a pharmaceutical company and believes he has invented a new drug for the treatment of dry eye. He is ready to market his product but has consulted with you to file a patent application. After performing a search of the prior art, you realize that the drug is not new. The drug per se has been patented in Canada by ABC Corp. and is presently marketed for the treatment of nail fungus. a) Can Dr. White still obtain a patent for the treatment of dry eye with this drug? Explain why.

The new use of a known drug, provided the drug was never used for the treatment of dry eye

Dr. White is the owner of a pharmaceutical company and believes he has invented a new drug for the treatment of dry eye. He is ready to market his product but has consulted with you to file a patent application. After performing a search of the prior art, you realize that the drug is not new. The drug per se has been patented in Canada by ABC Corp. and is presently marketed for the treatment of nail fungus. b) Dr. White wants to bring his product to market but does not want to invalidate ABC Corp’s Canadian patent. List one way this could be achieved without attracting a lawsuit from ABC Corp.

One of: i) Purchase the drug from ABC Corp; or ii) Obtain a licence to the drug from ABC Corp, until their patent expires. In a way, i) is a subset of ii) as an implicit license is provided upon purchase of the drug from ABC Corp.

A PCT application was filed March 14, 2017, claiming priority from a United States provisional patent application filed March 17, 2016. {E8198812.DOCX; 1} If today is October 5, 2018, in which of the following countries would this application NOT be able to enter national phase? Provide only letter(s) as your answer. No authority or statutory support is required. a) Canada b) United States c) China d) Europe e) Taiwan

B and E

You are contacted by foreign associates whose client has belatedly decided to enter national phase in Canada. The International patent application has an international filing date of December 30th, 2015 and a priority date of December 30th, 2014. If today’s date is September 27th, 2018, would this application be able to enter national phase if priority to the December 30th, 2014 application is actively withdrawn? Cite the relevant authority or statutory support.

No. The 42-month period is in fact the 30-month deadline, plus a one-year period to pay an additional fee for late payment (Section 58(3)(b) of the Patent Rules) and any maintenance fees if more than 2 years from the international filing date. If these fees are not timely paid within the 42-month period, the application cannot enter the national phase in Canada

a) Your client wishes to transfer ownership of their Canadian patent application to ABC Ltd. The client provides you with an assignment for recordal in the Canadian Intellectual Property Office (CIPO). List two steps required to record the assignment in CIPO.

Any two of the following:  submit a request to register the assignment;  include an indication of the patent application or patent to which the document relates; and  pay the prescribed fee ($100) set out in item 21 of Schedule II of the Patent Rules.

Your client wishes to transfer ownership of their Canadian patent application to ABC Ltd. The client provides you with an assignment for recordal in the Canadian Intellectual Property Office (CIPO). What Section of the Patent Rules applies?

Sections 38, 39, and 42 of the Patent Rules

A regular Canadian patent application is filed on March 2, 2014. The applicant does not file a request for priority at the time of filing, but on June 3, 2014 files a request claiming priority from a United States patent application filed on March 3, 2013 and from a Canadian patent application filed on August 1, 2013. The applicant provides the patent application number, country and filing date for each of these previously filed United States and Canadian patent applications and requests priority from these patent applications. Will the applicant be entitled to claim priority? Why or why not? Cite the relevant statutory support.

The applicant is entitled to claim priority from the previously filed United States and Canadian patent applications filed on March 3, 2013 and August 1, 2013, respectively. The request for priority was filed before the expiry of the 16 months period after the filing date of the earliest filed United States patent application and the request therefore complies with Subparagraph {E8198812.DOCX; 1} 88(1)(c) of the Patent Rules in respect thereof. The applicant will receive priority based on both the US and Canadian patent applications.

An inventor has been inadvertently omitted from a regular Canadian patent application. a) What steps are required to rectify this omission? Cite the relevant statutory support. b) What document(s) must be submitted?

a) Pursuant to subsection 31(4) of the Patent Act, the inventor may be joined on satisfying the Commissioner that the inventor should be so joined, and that the omission of the further inventor had been by inadvertence or mistake and was not for the purpose of delay. b) A petition/request with a new Declaration as to the Applicant's entitlement for the new inventor

In accordance with the Canadian Patent Act and/or Rules, which of the following sources of information may not be citable against a patent application in view of anticipation and/or obviousness? No authority or statutory support is required. A. A paper that was orally presented at a meeting, where the meeting was open to all interested persons and the paper was distributed in written form to six people without restriction. B. A doctoral thesis that was indexed, catalogued, and shelved, in a single, university library. C. A research report distributed in numerous copies but only internally within an organization and intended to remain confidential. D. A reference available in electronic form on the Internet. {E8198812.DOCX; 1} E. A technical manual that was shelved and catalogued in a public library, where there is no evidence that anyone ever actually looked at the manual. F. The preamble of a Jepson claim. G. One of the figures in the drawings of the patent application labelled as prior art.

You file a Canadian patent application on May 1, 2018 for your client, a Taiwanese individual inventor and resident in Taiwan. Your client tells you she has signed a license agreement with a Canadian company to produce her invention commercially. The license agreement requires that your client file a PCT application and name both the Canadian company and your client as coApplicants. When entering national phase(s), the Canadian company will be the sole Applicant for Canada but a licensee for all other countries. Your client will then be the sole Applicant for all countries other than Canada. a) Are you permitted to file the PCT application in the Canadian Intellectual Property Office (CIPO)? Please explain. No authority or statutory support is required.

a) Yes. To file a PCT application in Canada, only one applicant needs to be a national or resident of a PCT contracting state (Canada). The Taiwanese inventor is not entitled, but the Canadian company is entitled.

You file a Canadian patent application on May 1, 2018 for your client, a Taiwanese individual inventor and resident in Taiwan. Your client tells you she has signed a license agreement with a Canadian company to produce her invention commercially. The license agreement requires that your client file a PCT application and name both the Canadian company and your client as coApplicants. When entering national phase(s), the Canadian company will be the sole Applicant for Canada but a licensee for all other countries. Your client will then be the sole Applicant for all countries other than Canada. Can you record the licence before the International Bureau? Please explain. No authority or statutory support is required.

PCT contains no provisions for registration of licences. This must be done with national or regional offices upon national/regional phase entry, if possible with those of

Independent claim 1, fully supported by the description in a patent application, states: Claim 1. An apparatus comprising: a plastic valve; a copper pipe connected to the plastic valve; and an aluminum pipe connected to the plastic valve. Which of the following claims, presented in the application, are objectionable under Subsection 27(4) of the Patent Act? Provide a reason for your answer. No authority or statutory support is required. Claim 2. The apparatus of claim 1, wherein said pipe is statically charged. Claim 3. The apparatus of claim 1, wherein a large portion of an outer circumference of said copper pipe is preferably statically charged. Claim 4. The apparatus of claim 1, further comprising a thermostat connected to said plastic valve. A. Claim 2 B. Claim 3 C. Claim 4 D. Claims 2 and 3 E. Claims 3 and 4

D. Claim 2 is indefinite because it is not clear which “said pipe” the claim is referring to since claim 1 recites a copper pipe and an aluminum pipe. Claim 3 could be construed as indefinite for recitation of the imprecise word “preferably” and the phrase “a large portion” as “large” is a relative term

An inventor files a Canadian patent application by mail with the Canadian Intellectual Property Office on January 2, 2019, claiming priority from a patent application filed with the Japanese {E8198812.DOCX; 1} patent office on January 8, 2018. Several days later, the inventor is informed that the Canadian Intellectual Property Office received only the petition, the fee and a certified copy of the Japanese priority document, written in Japanese, on the last day of the priority year. The copy of the Canadian patent application written in English was not included by the inventor. Can a filing date be secured with a valid priority claim? Cite the relevant authority or statutory support.

Assuming that the Japanese priority application does not contain any text written in English or French, it does not appear that the application contains “a document, in English or French, that on its face appears to describe an invention” and hence the application documents do not meet the criteria of Subsection 27.1(1)(a) of the Patent Rules and a filing date cannot be attributed to the application documents that have been submitted.