Paper B - 2020

Question 1

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

Answer 1

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

Question 2

A math professor contacts you to discuss a new method he developed for identifying large prime numbers. This method can be performed using a pen and paper but it is much more practical to use a computer to perform the required calculations. The professor further explains that one of the practical applications of his method is to encrypt messages transmitted across digital networks.
A) Can you help the professor obtain a Canadian patent for his method of identifying large prime numbers? Cite the relevant case law and section of the Patent Act.
B) Based on the information provided in the question, does the professor have another option for obtaining a Canadian patent?

Answer 2

A) No, the method of identifying large prime numbers is not patentable pursuant to Section 27(8) of the Patent Act, as it is a “mere scientific principle or abstract theorem”. If the method can be performed by a pen and paper (or mental steps), none of the essential elements fall within a category of statutory subject matter (Amazon.com Inc. v. Canada (Commissioner of Patents) 2011 FCA 328 or
Amazon.com Inc. v. Canada (Commissioner of Patents) 2010 FC 1011).

B) It may be possible to obtain a patent for a method of encrypting messages transmitted across digital networks which uses the method for identifying large prime numbers.

Question 3

On November 28, 2019, a representative of ABC Corp. gets in touch with you about the possibility of obtaining a patent for their new product in Canada. You ask them to tell you whether they disclosed the details of their new product to anyone, and the date of any such disclosure. They provide you with the following list.

1. A presentation to potential investors on September 12, 2018, prior to which the investors signed a Non-Disclosure agreement.
2. A promotional video, published on the Internet on December 5, 2018.
3. A training session for ABC Corp.’s sales team, which occurred on August 21, 2018.

A) Do any of these disclosures represent an absolute bar to patentability in Canada if today’s date is November 28, 2019? Cite the relevant section of the Patent Act.
B) By what date should you file a patent application directed to ABC Corp.’s new product in Canada?

C) The representative of ABC Corp. also tells you that they foresee worldwide demand for their product, and they want to obtain patents in Europe and the United States as well. What advice can you give them in this regard if today’s date is November 28, 2019?

Answer 3

Answers:

A) None of the disclosures are a bar to patentability in Canada (Section 28.2(1)(a) of the Patent Act).

B) The patent application should be filed on or before December 5, 2019 to stay within the grace period.

C) The publication of the promotional video prevents obtaining a European patent, but does not prevent obtaining a U.S. patent if filed by December 5, 2019.

Question 4

Your client is being sued for patent infringement by Plaintiff Inc., the owner of Canadian Patent No. 2,XXX,001. The ‘001 patent has one claim directed to a process for separating pistachio kernels from their shells. The claimed process includes a step of placing whole pistachios on a shaker table. Your client tells you that from his experience, the process only works properly when the shaker table is operated at a frequency between 300 to 500 cycles per minute. Your client also tells you that he is aware that Plaintiff Inc. recommends to its clients to operate the shaker table at a at a frequency of 425 cycles per minute. However, neither the description nor the claims of the ‘001 patent mention a frequency at which the shaker table should be operated.

Identify two grounds of invalidity which are suggested by the above scenario. Cite the relevant sections of the Patent Act.

Answer 4

Lack of utility - Section 2 of the Patent Act
Insufficient disclosure - Section 27(3) of the Patent Act
Overbreadth - Section 27(4) of the Patent Act

Question 5

You are the patent agent responsible for International Patent Application PCT/CA2017/XXXXX2, filed by a sole inventor, Johnny B. Goode, at the receiving Office on April 15, 2017. No priority claim was made. On March 10, 2020, Mr. Goode provides you with instructions to file a National Phase application in Canada based on PCT/CA2017/XXXXX2. Are you permitted to enter national phase late in Canada? Please explain, assuming regular requirements for national phase entry are met. Cite the relevant sections of the Patent Rules.

Answer 5

Yes, pay the fee for reinstatement of rights set out in item 22 of Schedule 2 (i.e. $200). Section 154(3) and 210(3).

Question 6

A) Who is eligible for requesting re-examination of a Canadian Patent?
B) What should a request for re-examination of a Canadian Patent include?

Answer 6

A) Any person may request re-examination.
B) Prior art, prescribed fee, and a statement regarding the pertinency of the prior art.

Question 7

The validity of a Canadian pharmaceutical patent is challenged in Federal Court for lack of utility. The specific claim under attack covers at least 100 drugs. The patent includes examples directed to ten different drugs that fall within the scope of the claim. The examples include substantive experimental details with respect to making and using the drugs. Name the one main defence to counter the lack of utility attack based on the information provided. Name the three-part test and list the relevant case associated with the test.

Answer 7

• Sound Prediction
  1) Factual basis for the prediction
  2) An articulable and “sound” line of reasoning
  3) Sufficient disclosure
• Apotex Inc. v Wellcome Foundation Ltd., [2002] 4 S.C.R. 153

Question 8

Name the three parts of the “Sound Prediction” doctrine.

Answer 8

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

Question 9

What is the relevant case associated with the “Sound Prediction” doctrine?

Answer 9

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

Question 10

What is the Apotex Inc. v Wellcome Foundation Ltd., [2002] 4 S.C.R. 153 case known for?

Answer 10

“Sound prediction” doctrine

Question 11

You receive a Notice of Allowance dated March 2, 2020 from the Canadian Intellectual Property Office for Canadian Patent Application No. 2,XXX,102 and you report the Notice of Allowance to your client (large multi-national company). The due date for payment of the Final Fee is July 2, 2020.
The client contacts you on April 10, 2020 and advises that they now have additional claims that they would like to include in the Canadian patent application. List the steps required to add these new claims and the due date for doing so. Cite the relevant sections of the Patent Rules.

Answer 11

1) Request withdrawal of the Notice of Allowance (Subsection 86(17) of the Patent Rules).
2) Pay the $400 withdrawal fee (item 14 of Schedule 2 of the Patent Rules) no later than four months after it was sent, and before the day on which the final fee is paid.
3) The application is now subject to further examination and a Voluntary Amendment can be filed to add the new claims.

Question 12

You receive a Notice of Allowance dated March 2, 2020 from the Canadian Intellectual Property Office for Canadian Patent Application No. 2,XXX,102 and you report the Notice of Allowance to your client (large multi-national company). The due date for payment of the Final Fee is July 2, 2020.
The client contacts you on April 10, 2020 and advises that they would like to abandon the application. On July 3, 2020, however, the client changes their mind and contacts you that same day, advising that they now wish for the application to issue. List the steps required to obtain the issued patent and the due date for doing so. Cite the relevant sections of the Patent Act and Patent Rules.

Answer 12

1) Request reinstatement for failure to pay the final fee by July 2, 2020 (Section 73(3) of the Patent Act and Subsection 87(1), 133(1), and 135(1)(a) of the Patent Rules) and does not depend on showing due care.
2) Pay the $300 final fee (item 13 of Schedule 2 of the Patent Rules) and pay the $200 reinstatement fee (item 15 of Schedule 2 of the Patent Rules) by July 2, 2021.

Question 13

On March 31, 2020, you receive instructions from a US Associate to file a regular Canadian patent application on April 1, 2020. The US associate would like you to claim priority to one or more of the applications listed in A to D below. By letter, please identify from which application(s) you CANNOT claim priority.

A) US provisional patent application filed June 3, 2019.
B) US provisional patent application filed March 1, 2019.
C) US design patent application filed July 15, 2019.
D) European patent application filed April 1, 2019.

Answer 13

B and C

Question 14

Which of the following is NOT patentable subject matter in Canada?

A) A claim to a new method of medical treatment
B) A claim to a new use for a known drug
C) A new product claimed as a product by process
D) A new mathematical theorem
E) A new device

Answer 14

A and D

Question 15

(2021) Canadian patent application, CA 2AAABBB, relating to invention X was filed in January 2020. CA 2AAABBB includes two alternative embodiments: X1 and X2. Embodiment X1 is not sufficiently disclosed since essential technical information is missing. Embodiment X2 is sufficiently disclosed.

Indicate whether the statement is true or false. Cite the relevant section of the Patent Act or Patent Rules:

(a) An objection from the Examiner regarding embodiment X1 can be overcome by filing additional technical information.

Answer 15

FALSE - Section 27(3), Section 38.2, or Section 38.2(2) of the Patent Act.

Question 16

(2021) Canadian patent application, CA 2AAABBB, relating to invention X was filed in January 2020. CA 2AAABBB includes two alternative embodiments: X1 and X2. Embodiment X1 is not sufficiently disclosed since essential technical information is missing. Embodiment X2 is sufficiently disclosed.

Indicate whether the statement is true or false. Cite the relevant section of the Patent Act or Patent Rules:

(b) If the Examiner does not raise any objections regarding lack of support, this will not be a valid ground for impeaching the patent granted on the basis of CA 2AAABBB.

Answer 16

FALSE - A valid ground to attack validity is lack of sufficiency of disclosure – Section 27(3) of the Patent Act. - It is irrelevant if the Examiner did not raise an objection.

Question 17

(2021) Canadian patent application, CA 2AAABBB, relating to invention X was filed in January 2020. CA 2AAABBB includes two alternative embodiments: X1 and X2. Embodiment X1 is not sufficiently disclosed since essential technical information is missing. Embodiment X2 is sufficiently disclosed.

Indicate whether the statement is true or false. Cite the relevant section of the Patent Act or Patent Rules:

(c) If the missing essential technical information regarding embodiment X1 is present only in the abstract, the essential technical information can be used to interpret the claims of CA 2AAABBB.

Answer 17

FALSE – Subsection 55(8) of the Patent Rules states that the abstract “must not be taken into account for the purpose of interpreting the scope of protection sought or obtained.”

Question 18

(2021) Canadian patent application, CA 2AAABBB, relating to invention X was filed in January 2020. CA 2AAABBB includes two alternative embodiments: X1 and X2. Embodiment X1 is not sufficiently disclosed since essential technical information is missing. Embodiment X2 is sufficiently disclosed.

Indicate whether the statement is true or false. Cite the relevant section of the Patent Act or Patent Rules:

(d) An objection from the Examiner can be overcome by restricting CA 2AAABBB to embodiment X2.

Answer 18

TRUE – Since X2 is sufficiently disclosed, a patent may be granted based on X2. Section 27(3) of the Patent Act or Section 60 of the Patent Rules.

Question 19

(2021) Company Z filed a Canadian patent application CA 2XXXYYY on 30 January 2018, without claiming any priority. CA 2XXXYYY has eleven claims. Alina and Brittany are named as the inventors of CA 2XXXYYY.

Is the following statement true or false? Cite the relevant section of the Patent Act or Patent Rules:

The applicant can correct Alina’s name to “Elina.”

Answer 19

True. Section 106 of the Patent Rules – An error in the name of an applicant or an inventor in an application for a patent must be corrected by the Commissioner on the request of the applicant if the request is made on or before the day on which the final fee set out in item 13 of Schedule 2 is paid or, if the final fee is refunded, on or before the day on which the final fee is paid again, and the correction does not result in a change in their identity.

Question 20

(2021) Company Z filed a Canadian patent application CA 2XXXYYY on 30 January 2018, without claiming any priority. CA 2XXXYYY has eleven claims. Alina and Brittany are named as the inventors of CA 2XXXYYY.

Is the following statement true or false? Cite the relevant section of the Patent Act or Patent Rules:

The applicant cannot continue prosecution if it is discovered that Brittany is not an inventor of CA2 XXXYYY.

Answer 20

False. Section 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.

Question 21

(2021) The claimed invention of a patent application is directed to an explosive composition “comprising 60-90% solid ammonium nitrate, and 10-40% water-in-oil in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree.” The application discloses that the explosive requires both fuel (ammonium nitrate) and oxygen aeration to “sensitize the composition.” A journal article, published more than two years before the effective filing date of the application, discloses explosive compositions containing water-in-oil emulsions having identical ingredients to those claimed, in ranges overlapping with the claimed composition. The only element of the claim not recited in the journal article is “sufficient aeration entrapped to enhance sensitivity to a substantial degree.” The journal article does not recognize that sufficient aeration sensitizes the fuel to a substantial degree. In addition to the journal article, a magazine article printed three years ago contains test data demonstrating that “sufficient aeration” is necessarily an inherent element in the prior art explosive composition under the circumstances.

Which of the following statements are true? Cite the relevant case law.

a. The journal article anticipates the claim because it discloses every limitation of the claim either explicitly or inherently.
b. The journal article does not anticipate the claim because the journal article does not recognize an inherent property.
c. The journal article does not anticipate the claim because the journal article does not recognize an inherent function of oxygen.
d. The journal article does not anticipate the claim because the journal article does not recognize an inherent ingredient, oxygen.
e. (b), (c) and (d).

Answer 21

Option (a) is true. An enabling disclosure is considered to disclose everything that would inevitably or necessarily occur or be done by a person practicing the invention. Old and known subject-matter is not rendered novel simply by disclosing and claiming a feature which is inherently (i.e., necessarily present) or implicitly (i.e., suggested but not directly expressed) found in the prior art. The concepts of inherent and implicit disclosure are related.
Abbott Laboratories v. Canada (Minister of Health) 2006 FCA 187 at paragraphs 23 to 25; or Calgon Carbon Corporation v. North Bay (City) 2006 FC 1373 at paragraphs 114 to 136.

Question 22

(2021) ABC Inc. is a research-based pharmaceutical company and owner of Canadian Patent X,XXX,123. The ‘123 patent has only one claim directed to the use of a known compound for the treatment of liver conditions X, Y and Z at a dosage of 200 mg/day.

Generic Co. sells the compound as a drug and publishes a document intended for medical practitioners, indicating that this drug may be used to treat liver conditions X, Y and Z at a dosage of 200 mg/day.

Assuming the claim is valid, why would Generic Co. not be guilty of direct infringement of the ‘123 patent? Cite the relevant case law.

Answer 22

Generic Co. is not performing the actions covered by the claim.
Apotex Inc. v. Astrazeneca Canada Inc., 2017 FCA 9 (CanLII) or Weatherford Canada Inc. v. Corlac Inc., 2011 FCA 288

Question 23

(2021) ABC Inc. is a research-based pharmaceutical company and owner of Canadian Patent X,XXX,123. The ‘123 patent has only one claim directed to the use of a known compound for the treatment of liver conditions X, Y and Z at a dosage of 200 mg/day.

Generic Co. sells the compound as a drug and publishes a document intended for medical practitioners, indicating that this drug may be used to treat liver conditions X, Y and Z at a dosage of 200 mg/day.

Generic Co. determined that the treatment of liver conditions X, Y and Z requires a dosage of 300 mg/day. Does this affect the validity of ‘123 patent? Provide a reason and cite the relevant section of the Patent Act or Patent Rules.

Answer 23

YES. The claim would be held invalid for lack of utility. Section 2 of the Patent Act.

Question 24

(2021) Small Business Co. is owner of Canadian Patent X,XXX,456, having a filing date of November 7, 2009. As the owner of Small Business Co., Bob has been sending instructions to pay the maintenance fees for the ‘456 patent every year by e-mail, in reply to a reminder e-mail by his patent agent. In August 2020, Small Business Co.’s junk e-mail filter was updated by their internet service provider, which caused the patent agent’s e-mails to erroneously get filtered out as junk. Having not received any reminder e-mails from his patent agent, Bob did not instruct the patent agent to pay the maintenance fee for the ‘456 patent that was due on November 7, 2020. However, on September 20, 2021, Bob decides to call his patent agent on a whim.

What can the patent agent tell Bob about the status of the ‘456 patent, assuming that a Maintenance Fee Notice dated December 15, 2020 was sent by the Canadian Intellectual Property Office and timely received by the patent agent? Cite the relevant section of the Patent Act.

Answer 24

The patent is deemed expired on November 7, 2020. Section 46(4) of the Patent Act.

Question 25

(2021) Small Business Co. is owner of Canadian Patent X,XXX,456, having a filing date of November 7, 2009. As the owner of Small Business Co., Bob has been sending instructions to pay the maintenance fees for the ‘456 patent every year by e-mail, in reply to a reminder e-mail by his patent agent. In August 2020, Small Business Co.’s junk e-mail filter was updated by their internet service provider, which caused the patent agent’s e-mails to erroneously get filtered out as junk. Having not received any reminder e-mails from his patent agent, Bob did not instruct the patent agent to pay the maintenance fee for the ‘456 patent that was due on November 7, 2020. However, on September 20, 2021, Bob decides to call his patent agent on a whim.

(b) What actions can be taken by Bob with respect to the ‘456 patent? Cite the relevant section of the Patent Act and Patent Rules.
(c) What argument can be made in favour of the actions proposed in part

Answer 25

b. The patent may be reinstated by payment of the maintenance fee, a late fee, and a reinstatement fee, as well as an explanation that the failure to pay the maintenance fee occurred despite “due care” being taken. Section 46(5) of the Patent Act, or Sections 115 and 116 of the Patent Rules.

c. Due care may be established by showing that communication channels that were successfully used in the past (e-mails) could be reasonably relied on and there was no reason to expect them to fail.

Question 26

(2021) International Patent Application No. PCT/CA2019/XXXXX9 has a priority date of October 31, 2018 and was filed on October 31, 2019 by the Applicant, Kitty Classic Ltd. On October 15, 2021, the Applicant calls you in a panic advising that they missed the 30-month deadline for national phase entry in Canada for PCT/CA2019/XXXXX9 but they understand that they can still enter national phase late in Canada. Are you permitted to enter national phase late in Canada? Please explain the steps required, assuming regular requirements for national phase entry are met. Cite the relevant sections of the Patent Rules.

Answer 26

Yes. Pay the fee for reinstatement of rights set out in item 22 of Schedule 2 (i.e. $200) and request that the rights of the Applicant be reinstated and failure to enter the national phase by the 30-month due date was unintentional. Section 154(3) of the Patent Rules

Question 27

(2021) Your client is Company A, Inc., the patentee of CA X,XXX,999. What steps would you take at the Canadian Intellectual Property Office for each of the following fact scenarios? Cite the relevant section of the Patent Rules.

The name of Company A, Inc. was changed to Company A, Ltd. but did not result in a new legal entity.

Answer 27

Request the recording of a name change under Section 125 of the Patent Rules.

Question 28

Your client is Company A, Inc., the patentee of CA X,XXX,999. What steps would you take at the Canadian Intellectual Property Office for each of the following fact scenarios? Cite the relevant section of the Patent Rules.

CA X,XXX,999 was assigned from Company A, Inc. to Company B.

Answer 28

Request the recording of a transfer of the patent under Section 126 of the Patent Rules.