PATC Module 2 – Infringement/Validity

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Presentation transcript:

PATC Module 2 – Infringement/Validity Canada-US Differences

Canada US Differences Novelty: First-to-File vs. First-Inventor-to-File Obviousness: more creative POSITA Prosecution matters obligation of candour, disclosure file wrapper is used to construe claims Examination request, excess claim fees Extensions of time vs. abandonment period Subject matter software higher life business methods Continuation applications Double patenting – no terminal disclaimers

Canada US Differences Novelty Standard Canada: Novelty set out in s.28.2 first to file no on-sale bar US standard for Novelty is set out in 35 USC 102 first inventor to file system statutory bars US has an on-sale bar (regardless of what information is actually made available)

Canada US Differences (b) Obviousness Standard Canada: s.28.3 of the Act; Beloit very difficult to establish obviousness this has changed somewhat in view of Sanofi US: 35 USC 103 American POSITA is more creative (KSR v. Teleflex) easier to defeat patent as obvious

Canada US Differences (c) Prosecution Matters Canada: no resort to file wrapper to construe claims limited duty of candour US: high obligation to bring forward all prior art to attention of patent office (IDS) statements made during prosecution can (and must) be reviewed when construing claims

Canada US Differences (d) Subject Matter Canada: higher life forms cannot be patented business methods--uncertain software patents—limited [Amazon] US: much broader definition of patentable subject matter software patents – some restrictions [Alice]

Canada US Differences (e) Continuation Applications Canada: no continuations, only voluntary divisionals double patenting trap – see next slide US: allows for continuations, continuations-in-part (CIPs) very flexible, can even file continuations of PCT rather than national entry terminal disclaimers to fix double patenting – see next slide

Canada US Differences (f) Double Patenting Canada: Difficult double patenting regime, no opportunity to fix if claims were not subjected to a unity of invention rejection US: Obviousness type double patenting can be readily overcome by filing a terminal disclaimer Keep in mind, not only are the patent terms fixed (PTAs are routine in US practice), but also ownership Rationale is that two owners cannot own similar/same claims and enforce both patents separately