Patent Agent Exam 2010 - Marking Guide B - (2 of 2)

Patent Agent Exam 2010 - Marking Guide B (PDF - 67 KB - 12 pages)

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Part B

In order for full marks to be awarded, markers are to assess whether:

  • The candidate has dealt correctly with all key issues
  • The response was very clear
  • The response was very well organized
  • Case law was cited with precision

Question 12 - Case Law

(2.0 Marks)

  1. 0.5 Mark
    Lawson v. Commissioner of Patents
  2. 0.5 Mark
    Apotex Inc. v. Sanofi-Synthelabo Canada, Inc.
  3. 0.5 Mark
    Tennessee Eastman v. Commissioner of Patents
  4. 0.5 Mark
    Patent Appeal Board decision for Amazon.com Inc.

Question 13 - Good Faith/Best Mode

(1.5 marks per answer for a total of 3.0 possible marks)

  1. 1.5 Mark
    The candidate should identify two of the following. Other issues not mentioned below may also apply, but should also be supported by appropriate citations to statutory or regulatory provisions or judicial decisions.
    • 1.5 Mark
      Although this is not an explicit requirement in the Patent Act or Rules, the Federal Court’s view that applicants should make full and frank disclosure to the Patent Office as articulated in Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102 or G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81, suggests that care should be taken in responding to requisitions to ensure that the known prior art is not misrepresented.
    • 1.5 Mark
      If it turns out that the client’s method of making the compound is necessary to achieve what is promised by the specification, then deliberately omitting a description of the client’s method may void the patent as a wilful omission made for the purpose of misleading, pursuant to s. 53(1) of the Patent Act.
    • 1.5 Mark
      If the invention that is the subject of the patent application is the chemical compound itself, there is no requirement to describe his best method of making it. The "best mode" requirement applies only to the application of a principle in respect of a machine, as set out in s. 27(3)(c) of the Patent Act, and not in respect of a compound. See also the commentary in Sanofi-Aventis Canada v. Apotex Inc., 2009 FC 676.

Question 14 - Citability - 28.2

(3.0 Marks)

  1. 2.0 Mark
    Yes, D1 is still citable under s. 28.2(1)(b) of the Patent Act. Subparagraph (a) defines the one-year grace period for public disclosure by the applicant or by a person who obtained knowledge directly or indirectly from the applicant. The "applicant" in this case is the client. However, the publication of March 31, 2005, when it occurred, was not a disclosure "by the applicant", as required by s. 28.2(1)(a); it was a disclosure by a third party. Thus, it was a disclosure by a person not mentioned in subparagraph (a), and subparagraph (b) must apply.
  2. 1.0 Mark
    The result remains "yes", but the candidate should note that there is an additional reason why D1 is still citable as anticipatory prior art. Section 28.2(1)(b) still applies for the same reasons. Even if it was not applicable, s. 28.2(1)(c) would also apply, because D1 was an application for a patent filed in Canada that at the time was filed by a person other than the "applicant", the client.

Quuestion 15 - Old Act - Prior Public Use & Sale

(4.0 Marks)

  1. 2.0 Mark
    According to the information given, Hans must have filed his patent application around 1985. Therefore, it is generally dealt with in accordance with the Patent Act as it read immediately before October 1, 1989, as set out in s. 78.2(2) of the Patent Act. As a result, novelty is governed by s. 27 of the Old Act. The question states that Hans had made and sold his remedy for several years (more than two) before he filed the Canadian patent application. While s. 27(3) limits the grace period for public use or sale of an invention to two years before the Canadian filing date, the facts indicate that the use and sale likely only took place in the U.S. Accordingly, s. 27(c) would not apply. The facts given also suggest that neither s. 27(a) nor s. 27(b) would apply.
  2. 2.0 Mark
    The fact that Hans’s earlier activity is now in Canada, rather than the U.S., means that s. 27(c) now applies. Although it appears that the invention was not detectable from the finished product, the fact remains that Hans sold the product containing the invention; therefore, it was on sale in Canada more than two years before the filing date, and is therefore invalid. The facts given in the question suggest that it is likely that the formula could not be reverse-engineered or otherwise detected from the finished product. However, as suggested in Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. (2002), 17 C.P.R. (4th) 478 (F.C.A.), the mere use or sale of a claimed invention is likely sufficient under the Old Act.

Question 16 - Small Eentity (Definition)

(2.0 Marks)

  1. 1.0 Mark
    Nothing. The definition of "small entity" in s. 3.01(3) of the Patent Rules excludes "an entity" that employs more than fifty employees. There is no single entity identified in this question with more than fifty employees. It is preferable to register whatever assignment or transfer documents were executed, but it is not a necessity given the facts of this question.
  2. 1.0 Mark
    Maybe. It is unwise to assume that nothing needs to be done, because no information is given in the question concerning entity status when the first patent application was filed. S. 3.01(2) sets out the conditions under which an applicant may pay fees at the small entity level; it depends on the entity size of the applicant originally identified in the petition on the filing date. S. 3.01(4) of the Patent Rules specifically states that a divisional application is considered to have the same filing date as the original application. In this case, we know the client filed the patent application itself, but we do not know for certain that he was entitled to claim small entity status at the time.

Question 17 - Section 29

(5.0 Marks)

  1. 3.0 Mark
    There is a risk that the application may be deemed abandoned for failure to respond in good faith to an Examiner’s requisition by the specified due date, as required by s. 73(1)(a) of the Patent Act—see s. 97 of the Patent Rules. Although the law on the duty of candour in patent prosecution is in a state of flux as of the time of writing this examination, the candidate should be aware of the potentially heightened obligation to ensure that responses to the patent office are full, frank and fair: see, for example, G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81, rev'd 2007 FCA 173 or Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102.
    Rule 29 requests, given the wording of s. 29(1) of the Patent Rules, are not restricted to corresponding applications claiming the same invention. Rule 29(1) refers to inventions "describing the same invention". Accordingly, it appears that incorrect information has been given to the Examiner in response to a requisition, which is an action that may result in deemed abandonment.
    There is still time for the application to be reinstated. The best course of action to ensure the good standing of the application and the validity of any eventual patent is to request reinstatement of the application, pay the requisite fee, and re-file a response to the previous office action including the requisite information (Rule 98(1)). Furthermore, a response to the second examiner’s report should be filed, if the report is not withdrawn by the examiner (s. 73(1)(a)).
  2. 2.0 Mark
    This does not change the advice; the wording of s. 29 of the Rules includes patent applications filed on behalf of any other person claiming under an inventor named in the application being examined. It may be that details of the prior art cited may not be available to the client, in which case the response should explain why the information or not available (Rule s. 29(3)).

Question 18 - Small Entity (Correction)/Public Disclosure/Agent Liability

(6.0 Marks)

  1. 2.5 Mark
    1. $200 top up filing fee under Section 28.(1) of Patent Act with explanation to the Commissioner in support of why it would be "just" to deem the fee required to have been received on time. [1 mark]
    2. $50 top up 2009 maintenance fee Rule 26.(3) and $200 extension fee under Rule 26.(4)(c) [1 mark]
    3. $50 top up 2010 maintenance fee Rule 26.(3) and $200 extension fee under Rule 26.(4)(c) [0.5 marks]8 (alternatively, pay $50 top up 2010 maintenance fee and $200, request reinstatement, and pay reinstatement fee under Section 73.(3)(c) of the Patent Act)
    1. 0.5 Mark
      Europe requires absolute novelty. Provided the invention was "made available to the public" by the display, the invention will be not be patentable in Europe.
    2. 1.0 Mark
      No effect. The display was less than one year prior to US filing date, so the display should not affect chances of obtaining a US patent.
    3. 1.0 Mark
      The shipments are not citable as prior art, but commercial success may aid in prosecution vis-à-vis the issue of obviousness.
  3. 1.0 Mark
    Disclose to insurer possible claim vis-à-vis loss of client rights in Europe.

Question 19 - Withdrawal of Application/Priority Claim

(4.0 Marks)

  1. 2.0 Mark
    Yes, the application can be withdrawn [0.5 marks] (Section 10.(5) of the Patent Act [0.5 marks]) provided the withdrawal takes place by June 10, 2010 [0.5 marks] (two months before expiry of confidentiality period), under Section 92 of the Patent Rules) [0.5 marks]. [It is also possible to withdraw, where the Commissioner is able to stop technical preparations to open the application to public inspection at a subsequent date prior to 18 months. This is not necessary here since there is still time to meet the fixed deadline.]
  2. 2.0 Mark
    Withdraw the first priority claim [0.5 marks] before August 10, 2010 [0.5 marks] i.e., 16 months from the earliest priority date of February 10, 2009. This will delay publication until 18 months from the second priority date i.e., until March 10, 2011 [0.5 marks]. Rule 91. [0.5 marks] [It is possible to withdraw the first prior claim prior to publication if the Commissioner is able to stop technical preparations to open the application to public inspection, but again this is unnecessary under the circumstances, so the request should be submitted by the fixed deadline.]

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