Patent & Designs for Corporate Lawyers

Cowichan Valley Bar Associate

July 26, 2016

Douglas B. Thompson

Thompson Cooper LLP

Points to be covered

#1 – Time Limits for obtaining valid protection

#2 – What Design protection does & does not cover

#3 – What Patent protection does & does not cover

#4 – How Patent Claim System works

#5 – Patent Examiner’s review of claims

#6 – Limitations of Preliminary Searches

#7 – Attacks on Validity of Patent during Litigation

#8 – Difference between Patentability and Freedom to Operate

Time Limits for obtaining valid Design protection

Many Countries have an “absolute” novelty requirement

Canada and the United States have a “grace period”

6. (3) The Minister shall refuse to register the design if the application for registration is filed in Canada

(a) more than one year after the publication of the design in Canada or elsewhere,

Recourse if Time Limits Missed

64 (2) Where copyright subsists in a design applied to a useful article or in an artistic work from which the design is derived and, by or under the authority of any person who owns the copyright in Canada or who owns the copyright elsewhere,

(a) the article is reproduced in a quantity of more than fifty,

it shall not thereafter be an infringement of the copyright or the moral rights for anyone

(c) to reproduce the design of the article or a design not differing substantially from the design of the article by (i) making the article

What Design protection does cover

I

What Design protection does not cover

Section 5.1 No protection afforded by this Act shall extend to

(a) features applied to a useful article that are dictated solely by a utilitarian function of the article; or

(b) any method or principle of manufacture or construction.

Amendments copies to Design protection

Amendment (when comes into effect) will lengthen term of CA Design

the term limited for the duration of an exclusive right

(a) begins on the later of the date of registration of the design and the prescribed date, referred to in subsection 8.3(1), on which the application for the registration of the design is made available to the public; and

(b) ends on the later of the end of 10 years after the date of registration of the design and the end of 15 years after the filing date of the application.

Time Limits for obtaining valid Patent protectionMany Countries have an “absolute” novelty requirement

Canada and the United States have a “grace period”

28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed

(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

What Patent protection does & does not cover

Methods of medical treatment (Intervention Radiology)

Complex organisms (Harvard Mouse Case)

Paper schemes

Computer implemented business methods (Software alone)

Non-technical subject matter (hour glass subdivision)

How Patent Claim System works

1. A campfire skewer, comprising:

an elongate member having a first end, a second end, a first portion adjacent the first end, and a second portion adjacent the second end, the first end having means for impaling food;

a hand grip rotatably mounted on the first portion of the elongate member such that by holding the hand grip and manipulating the second portion of the elongate member, the elongate member can be made to rotate in a rotisserie-like fashion.

2. The campfire skewer of Claim 1, wherein the first portion has a first axis and the second portion is offset from the first axis.

3. The campfire skewer of Claim 1, wherein the first end of the elongate member serving as the means for impaling food is "U" shaped.

4. The campfire skewer of Claim 1, wherein the hand grip is axially slidable along the first portion of the elongate member.

5. The campfire skewer of Claim 1, having a second hand grip rotatably mounted on the second portion of the elongate member.

Patent Examiner’s review of claims

Claim 1 must be:

New

Useful

Not “obvious”

Aug. 18, 1953 R. F. W ICKMAN

BARBEQUE ROASTER

Filed Sept. 14, 1950

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“Obviousness” Rejection

1. A cleaning apparatus for golf clubs, comprising:

a box-like tub for holding a cleaning solution;

a pair of oppositely facing brushes situated within the tub to scrub substantially all exposed surfaces of a golf club head inserted into the tub;

bristles having two primary lengths to accommodate and satisfactorily scrub most different types of golf club heads; and

a flexible gasket with flaps so arranged as to retain cleaning solution within the tub interior, yet permitting a golf club head to be passed therethrough for insertion into or withdrawal from the tub interior.

“Obviousness” Rejection

Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,380,839 (Caradonna) in view of US 3,583,018 (Fink) and further in view of US 3,872,534 (Hoag).

U.S. Patent Apr. 26, 1983 Sheet 2 of 2 4,380,839

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Limitations of Preliminary Searches

All opinions regarding patentability are based upon search results – but every searcher will provide slightly different bundles of patents

Computerized word searches only work if there is common terminology

Searches are directed at the “classes” most applicable to the invention, but Examiners often pull patent reference from unrelated classes

Difference between Patentability and Freedom to Operate

Just because you have a patent does not mean you are not going to receive a “cease and desist” letter from another patent holder

Having your own patent does not protect you from infringement

Attacks on Validity of Patent during Litigation

If you can invalidate the other sides patent as being “obvious” or having a defect, you don’t have to deal with the infringement issue.

Searches play a huge role in defending a patent infringement lawsuit