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

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

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Part B: Short Answer Questions

B1

Your client is sued for infringement of a reissued patent. You learn that the claims were amended in the reissue petition to cover your client's product after the patentee became aware of your client's product. What defense does this suggest?

(2 Marks)

Answer

• The patent is invalid because the original patent was surrendered and the reissue patent is invalid.
• Section 47 permits a patent to be reissued only when a patent is deemed defective or inoperative by reason of insufficient description and specification, or by reason of the patentee's claiming more or less than he had a right to claim as new, but at the same time it appears that the error arose from inadvertence, accident or mistake, without any fraudulent or deceptive intention.
• The statute does not contemplate a case in which an inventor has failed to claim protection in respect of something he has invented but had no intention of claiming in his original patent. Therefore, the failure to adequately claim the invention to cover your client's device is not a basis of reissue unless it can be characterized as "inadvertence, accident or mistake" and the reissue can only be valid if there was an original intent to cover the allegedly infringing article.

B2

1. Define "exhaustion" as it applies to patent law. (2 Marks)
2. What is the test for "inducement to infringe"? (2 Marks)

Answer

1. When purchasers buy a patented product in Canada, they benefit from an implied licence to use, repair, and resell that product under the common law doctrine of exhaustion, absent any restriction imposed by the patentee or licensee.
2. A finding of inducement to infringe requires the following three criteria to be met:
   1. There must be an act of infringement by the direct infringer
   2. Completion of the action of infringement must be influenced by the acts of the seller to the extent that, without such acts, the buyer would not have infringed the patent; and
   3. The influence must be knowingly exercised by the seller.

B3

What is the distinction between "public knowledge" and "common general knowledge"?

(2 Marks)

Answer

In the framework of claim construction, common general knowledge is that of the skilled person in the art whereas public knowledge is all publicly available state of the art information including prior art. Common general knowledge does not necessarily include all public knowledge. Eli Lilly and Company v. Apotex, 2009 FC 991. Public knowledge may be cited for obviousness or anticipation. Common general knowledge is the background information that the skilled person is deemed to possess, which is used for various purposes including construction of a patent or other document.

B4

Your client has obtained a (new Act) patent based on a Convention filing. The patent claims a cleaning composition and an optional additive which can be added to the composition to improve its performance. The two substances do not chemically combine or react; they simply mix together. When they are combined, they can be used as a laundry detergent. The composition without the additive can only be used as hand cleaner. The only use for the additive is for combining with the composition.

The claim date for the composition claims is the priority filing date while the claim date for the additive claims is the Canadian filing date.

Beginning before the priority filing date and continuing up to the Canadian filing date a manufacturer independently had been producing and stockpiling the cleaning composition and the additive. The manufacturer is now combining these two ingredients and offering the mixture for sale as laundry detergent. Your client learns of this activity.

1. What defense, if any, does the manufacturer have with respect to its production and sale of: (3 Marks)
   1. the composition
   2. the additive
   3. the combined composition and additive
2. How would your answer to (a) change if the manufacturer had bought and paid for the composition and additive from a supplier before the above dates, but the supplier did not release these products to the manufacturer until after the Canadian filing date because the products did not meet the supplier's strict quality control requirements?: (3 Marks)

Answer

1. 1. Composition without the additive
      • there will be a s. 56 prior user defense for the composition made prior to the priority filing date, being the claim date for the composition claims.
      • No s. 56 defense is available for composition made after the priority date.
   2. Additive
      • there will be a s. 56 defense for any additive made prior to the Canadian filing date
   3. Composition with the additive
      • there will be a s. 56 prior user defense for the production and sale of the combination, if made with ingredients produced prior to the priority filing date, even though the mixture was made subsequently. The manufacturer has the right to manufacture a product from patented ingredients it acquired before the relevant claim dates.
      • Probably no s. 56 defense for combination made with the additive produced after the priority date, since the additive component infringes.
2. s. 56 prior user defense is not available if the ingredients were not "purchased or acquired" by the manufacturer before the respective claim dates. In this case, the manufacturer may not have acquired the subject matter of the patent prior to the relevant date(s) and may not be entitled to the prior user defense, since "acquisition" of the specific articles many not have occurred prior to the relevant claim date. It is possible that additional facts may show that the respective parties did intend for title to pass at an earlier date, which could change the outcome.

B5

Your client is aware that a product patent of a competitor is expiring within the next year. Regulation of sale of the product is within the jurisdiction of an Italian government ministry.

1. On what basis, if any, would small scale production of the product now to satisfy themselves that a product of vendible quality can be made, avoid infringement?
2. On what basis, if any, would production of the product now, in small batches for purposes of submission to the regulatory body, avoid infringement?

(2 Marks)

Answer

1. May have a Section 55.2(1) defense if they are only making to satisfy themselves that they can make something that is within the claim but if they are doing more, i.e. test for commercial scale, then defense is not available; see Elli Lilly v. Apotex 2009 FC 991, October 1, 2009.
2. Section 55.2(1) defense is available because it is for submission to a regulatory body. It is irrelevant that the regulatory body is overseas.

B6

Your client has developed a household product with innovative functional and decorative features. You conduct a freedom to operate search and turn up a patent and a registered industrial design which are of concern. On what basis, if any, can your client bring a legal proceeding to ensure that they do not infringe the patent and the industrial design?

(2 Marks)

Answer

1. For a patent, an action for a declaration of non-infringement can be brought before the Federal Court after grant before or after an action for infringement. Section 60(2) of the Patent Act.
2. For a registered industrial design, an action for declaration of non-infringement cannot be commenced prior to an action for infringement. Peak Innovations Inc. v. Meadowland Flowers Ltd. 2009 FC661, June 23, 2009; Industrial Design Act sections 15 and 15.1

B7

What was the holding in Belzberg v. Canada, 2009 FC 657 concerning the Commissioner of Patent's authority (or lack thereof) after an appeal of a Final Action?

(2 Marks)

Answer

Following a Patent Appeal Board hearing of an appeal of a Final Action, the Commissioner has no authority to return the application to prosecution. The Commissioner is to make one of two decisions:

1. Refuse the patent application under section 40 if the Act if the PAB has found alleged defects to be justified; or
2. Grant the patent application under section 27 of the Act.

B8

1. What is the Patent Prosecution Highway? (1 Mark)
2. Name four patent offices with which Canada has a Patent Prosecution Highway Pilot Program. (2 Marks)

Answer

1. The Patent Prosecution Highway is a means of accelerating examination of a patent application by relying on examination work that has already been conducted at another intellectual property office with which Canada has a Patent Prosecution Highway Pilot Program.
2. U.S.P.T.O, Japan Patent Office, Danish Patent and Trademark Office, Korean Intellectual Property Office (need only identify the countries, not necessarily the names of the patent offices)

B9

1. What is the relief sought by the Applicant in an Application filed under the Patented Medicines (Notice of Compliance) Regulations? (1 Mark)
2. What is the difference in consequence between a finding of invalidity in an Application filed under the Patented Medicines Notice of Compliance Regulations and a Federal Court Action? (1 Mark)

Answer

1. An order prohibiting the Minister of Heath from issuing a Notice of Compliance to a generic drug company (the "second person" or respondent) for a New Drug, Section 6(1) of the NOC Regulations
2. In an NOC proceeding, a finding of invalidity is a finding that the allegation of invalidity in the notice of allegation is justified. The finding is limited to NOC proceedings and does not affect the patentee's right to enforce the patent in an infringement action against anyone, including the respondent in the NOC. A finding of invalidity in a Federal Court Action invalidates the patent. The patent cannot be asserted against other parties.

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