Patent Agent Exam 2010 - Marking Guide D - (1 of 2)

Patent Agent Exam 2010 - Marking Guide D (PDF - 42 KB - 11 pages)

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Part A: Opinion

A1. Discuss whether the Presser infringes any of claims 1-7.

(35 Marks)

In construing the claims, the candidate should apply a purposive construction and refer to relevant cases – i.e., Catnic, Whirlpool, Free World Trust. The candidate should refer to the specification where necessary and should also consider the possible qualifications of the person skilled in the art.

Claim 1

(20 Marks)

  1. Construction

    Candidate should construe at least some of the following terms:

    1. "two opposing levers, which along at least part of their length serve as arms".
    2. "pivotal movement of the levers":
      • does this require there be pivotal movement of both levers or can it mean one or both of them?
    3. "wherein one of said levers is provided with a first pressing chamber……. and wherein a second pressing chamber is provided, said chambers being separated from each other by a wall":
      • does this mean the chambers must be adjacent with a common wall between them and located on the same lever or could they be separate but spaced apart or even located on different levers?
    4. "through openings":
      • must these be of a different size/configuration in the respective chambers, or can they be identical?

    Marks may be awarded for well-reasoned discussion of any other elements which the candidate construed.

  2. Infringement

    Candidate should consider whether in the Presser:

    1. each of the lower and upper members 1, 2 is a "lever" or "arm"
    2. there is pivotal movement of both members vs. only one of them
    3. the physical separation between the chambers by means of a spacing therebetween is substantively the same as if they were separated from each other by a "wall"
    4. the chambers being located on different members is substantively the same as if they were on the same member.
    5. the perforations being identical as opposed to being of different size/configuration in the respective chambers would be relevant to infringement of claim 1

Claim 2

(2 Marks)

Candidate should construe the term "spaced apart lands, bars or knives".

Does the Presser have lands, bars or knives within the pressing chamber or could the wave-like shape be considered substantively the same as lands, bars or knives?

Claim 3

(2 Marks)

Candidate should construe the term "spaced projecting elevations which match the cross-section of said lands, bars or knives".

Is the wave-like shape of the plunger in the Presser substantively the same as the "spaced projecting elevations"?

Claim 4

(5 Marks)

No further marks should be given for repeating the discussion of terms or issues which have been already been discussed in connection with claim 1.

  1. Construction

    Candidate should construe at least some of the following terms:

    1. "treating":
      • is this substantively different from "disintegrating" as used in claim 1?
    2. "two levers which are in pivotal relationship":
      • This recites the relationship between the levers in rather different terms from claim 1 but again does the use of the term "levers" necessarily require a pivotal connection between the arms to bring them together to cause the pressing members to enter the pressing chambers and does the term require there be pivotal movement of both levers or can it mean one or both of them?
    3. "a pressing member":
      • can this term embrace multiple pressing members, or must there be a single pressing member for entering both chambers?
    4. "wherein said chambers have different openings":
      • must these openings be of a different size/configuration as between the different chambers, or can they be of a different size/configuration within each chamber?
  2. Infringement

    Candidate should consider whether in the Presser:

    1. the device "treats" vegetables or fruits as opposed to "disintegrating them"
    2. the two members are in a "pivotal relationship"
    3. the multiple plungers are substantively the same as the "pressing member" of claim 4
    4. the physical separation between the chambers by means of a spacing therebetween is substantively the same as if they were separated from each other by a "wall"
    5. the chambers being located on different members is substantively the same as if they were on the same member.
    6. the perforations being identical as opposed to being of different size/configuration in the respective chambers would be covered by the term "wherein said chambers have different openings".

Claim 5

(2 Marks)

Candidate should construe the term "adjacent an end" (of the two levers).

Does the Presser have the connection between the two members "adjacent" an end of each member?

Claim 6

(2 Marks)

  1. Construction

    Candidate should construe at least some of the following terms:

    1. "the pressing members form adjacent integral parts…. and wherein the pressing members are movable into their respective pressing chambers as a unit":
      • does this mean that the pressing members are located adjacent one another and are integrally formed as parts of a single unit whereby the parts move together as, for example, in Figs. 3-11?
    2. "spaced relation to a pivotal connection of the levers to one another"
  2. Infringement

    Candidate should consider whether in the Presser:

    1. the plungers are adjacent
    2. the plungers are integral parts of a single unit
    3. the plungers are in spaced relationship to the pivotal connection between the upper and lower members.

Claim 7

(2 Marks)

Candidate should consider whether:

  1. this claim is infringed by a user of the Presser and
  2. if there is infringement, whether the client would be guilty of inducing the user to infringe.

A2. Discuss whether the Easy Presser infringes any of claims 1-7.

(10 Marks)

Candidate should identify the differences between the Presser and the Easy Presser and discuss whether and how such differences would modify the answer to question A1, again following the principle of purposive construction. In particular, the candidate should construe the term "pivotal movement" in claim 1 and the term "wherein the two levers are pivotally connected to one another by a pivotal connection adjacent an end thereof" in claim 6:

is a physical connection (e.g. a hinge or pin) necessary or unnecessary for pivotal movement between the arms? Does the Easy Presser have a pivotal connection between the upper and lower members?

A3. What defences against an infringement action does the above fact scenario suggest?

(10 Marks)

Candidate should discuss:

  1. Gillette defence based on prior sales of similar products, prior art located in prosecution of consultant's patent and discuss what additional facts are required to determine this.
    • Prior sales of similar products or prior art located in prosecution of consultant's patent are irrelevant unless they constituted prior public disclosure as of the priority date of the 2,XXX,XXX patent, which would need to be determined.
  2. Whether prosecution history of consultant's patent suggests that a skilled person might consider the Presser to be outside scope of claims and if it is determinative of that.
    • It is not determinative because prosecution history cannot be introduced in evidence – no file wrapper estoppel in Canada.

A4. Assuming your client proceeds with their proposed scheme and they are found to infringe the patent, what remedies might be available to the owner of the patent? Bear in mind that your client will be giving their product away for free.

(10 Marks)

Candidate should discuss at least some of the following:

  1. Injunction (1 mark)
  2. Delivery up/destruction (1 mark)
  3. Costs (1 mark)
  4. pre-judgment interest (1 mark)
  5. post-judgment interest (1 mark)
  6. Damages: discuss what these might be, given that patentee is not working the invention, and client gives product away for free (2 mark)
  7. Accounting of profits: discuss what these might be given that product is given away and discuss Monsanto v. Schmeiser as to availability of accounting as a remedy (3 mark)

A5. Discuss possible causes of action or remedies your client could seek against the consultant.

(5 Marks)

Candidate should discuss at least one of the following:

  1. Seek indemnity under the contract
  2. Seek ownership of consultant's patent

A6. What steps could your client take to avoid infringement, while still pursuing their marketing plan?

(5 Marks)

Candidate should discuss at least one of the following:

  1. Seek a compulsory license under the patent for non-working.
    • Per Rodi & Wienenberger, even though a number of other distributors are selling substantially identical products in Canada, which may infringe the patent, the patentee could not rely on that as being a "satisfactory reason" for non-working of the invention.
  2. Use the Jamaica plant to avoid infringement for sales outside of Canada.
    • Since the product would not be made, used or sold in Canada, there could be no infringement.
  3. Try to license or buy the patent from the owner.

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