Patent Law: Understanding The Applicable Legal Framework

Patents are territorial rights, governed by national laws and international agreements. In the US, patent law is codified in Title 35 of the United States Code, with the US Patent Act enacted by Congress under its Constitutional grant of authority to secure exclusive rights to inventors' discoveries for a limited time. The US Patent and Trademark Office (USPTO) grants patents, with the Federal Circuit Court reviewing appeals. Patent law in the UK is contained in the Patents Act 1977, with the European Patent Office (EPO) granting patents in member states. Patent laws vary by country, but generally, a patent grants the holder the exclusive right to exclude others from making, using, or selling an invention for a limited time, in exchange for publishing its technical details.

Patentable subject matter

The determination of patentable subject matter is particularly relevant in the fields of biology and software, where certain inventions may be excluded from patentability. For example, the Canadian Intellectual Property Office (CIPO) grants patents only for physical embodiments of ideas or processes that yield tangible outcomes or have commercial potential. This means that while business methods are patentable in Canada, theorems and computer programs are not. Similarly, in Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328, the court confirmed that "well-understood classes of patentable subject matter" exclude "the fine arts or works of art that are inventive only in an artistic or aesthetic sense". Thus, an artistically inventive painting or a musically innovative recording is not considered patentable subject matter, even if the medium on which they are created is physical.

In Europe, the European Patent Convention (EPC) does not offer explicit guidance on what constitutes an invention for patent law purposes. However, it is understood that an invention must consist of a mixture of technical and non-technical features, with the technical features contributing to the inventive step. This means that non-technical features are generally excluded from the realm of patentable subject matter as a matter of policy.

The patentability of computer-implemented inventions, medical diagnostic methods, and medical uses is a complex area that has been the subject of recent legal decisions, such as Yves Choueifaty v Attorney General of Canada, 2020 FC 837. These cases help shape the understanding of patentable subject matter and provide guidance to patent offices in determining eligibility.

It is worth noting that the criteria for patentable subject matter can evolve over time as new technologies emerge and legal precedents are set. As such, it is important to refer to the specific laws and practices of a given jurisdiction when assessing the patentability of a particular invention.

Utility

The patent examiner's guidelines require that a patent application expresses a specific, credible, and substantial utility. The invention must be useful for some purpose, either explicitly or implicitly. This means that the invention must have a significant and presently available benefit, with a clearly defined "real-world" use. The utility requirement also ensures that the invention is not immoral, deceitful, or illegal.

To obtain a utility patent, inventors must go through a complex and often expensive process, which may include hiring a patent attorney or agent, a technical illustrator to draft patent drawings, and paying filing fees, which can range from a few thousand to tens of thousands of dollars depending on the complexity of the invention. Utility patents are good for up to 20 years but may require maintenance fees to be paid over that time.

Novelty

The novelty criterion ensures that an invention is genuinely new and has not been previously disclosed or made public. This requirement is crucial to encourage innovation and reward inventors for their creativity and investments. It provides inventors with the exclusive right to their discoveries for a limited time, as stated in Article I, Section 8, Clause 8 of the U.S. Constitution.

The novelty requirement is detailed in 35 U.S.C. § 102, which consists of two distinct parts: novelty and statutory bars to patentability. The novelty aspect mandates that the invention must not be known, used, or patented by others in the same country or described in a printed publication anywhere before the patent applicant's invention. In other words, the invention must be genuinely new and not a variation of existing knowledge or a simple combination of existing elements.

The statutory bar, on the other hand, refers to the timing of the patent application. It states that the invention must not have been in public use, on sale, or patented in the same country, or described in a printed publication anywhere, more than one year before the patent application date. This bar aims to prevent inventors from delaying their patent applications indefinitely while still allowing a grace period for inventors to refine their inventions and navigate the patent application process.

It is important to note that an inventor's actions cannot destroy the novelty of their invention, but they can create a statutory bar to patentability. Therefore, inventors should be mindful of the timing of their patent applications to ensure they meet the novelty requirement and avoid any statutory bars.

Additionally, the concept of "prior art" is crucial in determining novelty. Prior art refers to any information that has been made publicly available, orally or in writing, before the filing date of a patent application. Public disclosure of an invention before filing a patent application would typically prevent the inventor from obtaining a valid patent due to the novelty requirement. However, some countries offer a grace period, usually between 6 and 12 months, to protect applicants who disclosed their inventions before filing.

In summary, the novelty requirement is essential for obtaining a patent and encourages inventors to bring new inventions to the market. It ensures that an invention is genuinely new and has not been previously disclosed or made public, fostering innovation and rewarding inventors for their creativity and contributions.

Non-obviousness

The non-obviousness requirement was added to US patent law by Congress with the enactment of the Patent Act of 1952. It is codified as 35 U.S.C. §103, which states:

> "A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

The US Supreme Court has played a significant role in interpreting and applying the non-obviousness requirement. In Graham v. John Deere Co. (1966), the Court provided guidelines on what constitutes "non-obviousness". It outlined several factors that must be considered in determining non-obviousness:

• The scope and content of the prior art
• The differences between the claimed invention and the prior art
• The level of ordinary skill in the art
• Objective indicia of non-obviousness, such as commercial success, long-felt but unresolved needs, failure of others, and unexpected results

However, the "person having ordinary skill in the art" (PHOSITA) standard proved ambiguous in practice. As a result, the US Supreme Court provided two additional approaches to guide the analysis of non-obviousness: Graham et al. v. John Deere Co. of Kansas City et al. (1966) and KSR v. Teleflex (2006), which provide guidelines for what is "non-obvious" and "obvious", respectively.

In post-KSR patent practice, non-obviousness is often conflated with non-predictability. It is generally easier to establish non-obviousness in unpredictable arts, such as pharmacology, compared to predictable arts like business methods.

Additionally, there is a contradiction between non-obviousness and patentable subject matter requirements. While non-obviousness can be met when an inventor discovers something new and unexpected, a patent may still be denied if the application relies solely on elements already known in the art. This dichotomy aims to prevent broad patent claims that could hinder scientific progress.

The non-obviousness requirement aims to strike a balance between encouraging private investments in fundamental science research and preventing monopolies on public domain knowledge or research tools. It ensures that inventions are not merely obvious variations of existing knowledge but instead contribute meaningfully to scientific progress.

Enablement

The specification in a patent application must describe the invention in a manner that would enable someone with ordinary skill in the art to make and use the invention without an undue amount of experimentation. The purpose of the enablement requirement is to require applicants to truly put the invention into the public domain and, through that disclosure, advance the technical arts.

In order to satisfy the enablement requirement, the drafter should specifically and objectively define and describe how to make and use the invention. The disclosure must explain enough about the invention so that someone skilled in the art can both make and use it.

The enablement requirement does not mean that the inventor must define the invention so that it will be a success in the commercial marketplace. The law does not require that a patent disclosure enables a person of ordinary skill in the art to make and use a perfected, commercially viable embodiment of the invention.

The requirement that an invention be described so that it can be made and used comes with an important caveat: the law requires that an invention must be described so that it can be made and used without "undue experimentation". While there is no concrete definition of what constitutes undue experimentation, the requirement generally mandates that the description explains the invention so that it could be made and used without individuals having to go through a trial-and-error process. In other words, the invention must teach so that it can be achieved.

Frequently asked questions