Patents

2. Are All Inventions Patentable?

(b) Novelty

In Canada

To be patentable, an invention must possess "novelty" , i.e., it must be new. There are two criteria for establishing such novelty set out in the Canadian Patent Act, as summarized below.

i. The invention must not have been described in another patent application filed in Canada having an earlier "effective filing date."

The "effective filing date" is the earlier of either the actual filing date of the Canadian application or the "Convention priority date".

There is an international treaty called the Paris Convention that allows citizens of the member countries of the Convention to file subsequent patent applications for the same invention in any of the member countries within one year of the first patent application filed for the invention in a member country, and thereby obtain a so-called "Convention priority date" for each later filed applications. The "Convention priority date" is the actual filing date of the first patent application filed for the invention in a member country. In other words, if the subsequent patent applications are filed in Paris Convention countries within one year of the first filed Paris Convention country application, they will each be afforded a "Convention priority date" backdated to the actual filing date of the first filed application. Accordingly, for applications entitled to the benefit of the Paris Convention, the effective filing date of the application would be the Convention priority date.

For example, an application filed first in Canada by Inventor A will be overcome by an application later filed in Canada by Inventor B, where Inventor B's later filed Canadian application has been backdated to an earlier "Convention priority date." In this instance, Inventor B's application will move on toward a patent, while Inventor A's application will be refused as lacking the requisite "novelty." By contrast, when the Canadian patent applications is the first application to be filed anywhere, where prior applications were filed in countries which are not members of the Convention, or when for other reasons the application is not entitled to a Convention priority date under the Paris Convention, the "effective filing date" in Canada will be the actual filing date of the Canadian patent application.

Most of the major countries of the world, including Canada, the United States, the United Kingdom, Germany and Japan are members of the Paris Convention.

From the above, it should be appreciated that Canada is, a "first to file" country. That is, assuming two parties independently develop the same invention, the first of such parties to file a patent application for the invention in a Paris Convention country will be entitled to obtain the Canadian patent for the invention. Moreover, the Canadian Patent Office assumes that inventors filing for a patent application in Canada are true inventors (as they are required to declare in the application papers). Filing a patent application for something developed by someone else, even if it was developed many years previously and apparently forgotten about, amounts to an act of fraud. There is no effective way under the present Canadian Patent Act to challenge a fraudulent assertion of inventorship within the Patent Office. Thus, an applicant who fraudulently files an application claiming to be the true inventor will routinely obtain the Canadian patent over the actual true inventor who files a Canadian application having a later effective filing date. While the true inventor may be able to have the fraudulently obtained patent invalidated by the Federal Court of Canada after its issuance, such relief may be sufficiently untimely and expensive so as to effectively deprive the true inventor of the fruits of his invention. Moreover, the true inventor may not, despite obtaining a declaration of invalidity of the fraudulently obtained patent from the Federal Court, be able to obtain his own patent for the invention because of public disclosures of the invention which occurred more than one year prior to the filing of a Canadian patent application by the true inventor (see below).

All important countries of the world, except for the United States and the Philippines, are also "first to file" countries.

Accordingly, from the above, it will be seen that there is a critical urgency for the inventor wishing to protect his invention by means of a patent to file a first patent application for the invention in a Paris Convention country as soon as is practically possible.

ii The invention must not have been, before the "effective filing date" of the Canadian application (as defined above), disclosed in Canada or elsewhere in such a manner that it became available to the public.

This requirement of "absolute novelty" was introduced into the Canadian Patent Act in October of 1989 and has, as yet, received little interpretation by the Canadian courts. Based upon the pre-October 1989 Canadian law, and upon the patent law of other countries which have had such an "absolute novelty standard" for many years, it seems correct to assume that any sales or public uses of the invention (in any country) will be considered a public disclosure of the invention sufficient to destroy its novelty. Even an offer to sell the invention may be construed as a public disclosure, at least where terms of confidentiality are not imposed on the offeree.

Experimental use will not likely destroy the novelty of the invention, but to be so classified, such use must be concealed from the public.

Any description of the invention published in a printed publication will also likely destroy the novelty of the invention, at least where the description contains sufficient details to allow the reader to practise the invention without the need for other than routine experiment. Such a printed publication could be in the form of a new product brochure, an article in a scientific or trade journal, or even an article in a widely read publication such as "Popular Mechanics." As issued patents of all countries are considered to be available to the public, a patent of any country published prior to the effective filing date of a Canadian application for the same invention will destroy the novelty of any invention described in a subsequently filed Canadian patent application. Moreover, many countries, including Canada, publish their patent applications prior to issuance, such that the date of publication will destroy the novelty of the invention, at least with respect to applications filed after such publication that are not entitled to a Convention priority date pre-dating such publication.

Some of the apparent harshness of the absolute novelty standard as it applies to Canadian applications is mitigated by a one year "grace period" with respect to public disclosures of the invention made by the inventor or by those who derived their knowledge of the invention through the inventor. That is, with respect to disclosures made by the inventor, or others who derived their knowledge of the invention, either directly or indirectly, from the inventor, the Canadian Patent Act allows the inventor to delay filing of a Canadian patent application for the invention up to one year after the date of such publication without destroying its novelty. Note firstly, that this does not change the first to file rule. That is, in delaying this one year, the inventor runs the risk that someone else (either legitimately or otherwise) will file an application in Canada for the same invention. Secondly, the Paris Convention priority filing date does not apply here. That is, the actual filing date of the Canadian application must be within one year of the first public disclosure made by the inventor (anywhere). Accordingly, the one year grace period for filing Canadian applications will be properly seen as a potential trap for the unwary, as it appears to offer the inventor security for his invention for an initial one year period, without emphasizing that the clock of the first to file system is in fact ticking away during that year without any regard to the grace period. This danger becomes all the more pronounced when it is remembered that the remainder of the world, outside of the U.S. and the Philippines, has no regard whatever to the existence of the one year grace period. Thus, foreign countries would view public disclosures made by an inventor in Canada as effectively destroying the novelty of the invention under the rules of the particular foreign country unless an application had already been filed from which a subsequent application could claim Convention priority.

All of this should impress on the inventor the critical need to keep his invention confidential (i.e., no public sales, uses or publications whatsoever) until at least one Paris Convention country application is filed for the invention. In this manner, and assuming all further foreign applications for the invention are duly filed within one year from such first filing (so as to have a Convention priority date pre-dating any publications of the invention), the inventor will have done all that he can to ensure that he is the first to file for the invention and that he has not destroyed the novelty of his invention through his own acts or through those who derived knowledge of the invention through him.

In the United States

The criteria for assessing novelty of an invention claimed in an American patent application are different from those used for Canadian applications. However, because most Canadian inventors are interested in obtaining patent protection for their inventions in the United States, it is important to summarize these conditions to assist in preventing valuable patent rights from being inadvertently lost in the U.S.A.

A valid patent for an invention cannot be obtained in the United States if the invention claimed therein was:

i. known or used by others in the United States before the invention thereof by the applicant; or
ii. patented or described in a printed publication in any country before the invention thereof by applicant for patent;
iii. or, in public use or on sale in the United States more than one year prior to the actual U.S. patent application filing date; or,
iv. patented or described in a printed publication in any country more than one year prior to the actual U.S. patent application filing date.

It will be seen that criteria i) and ii), above, judge novelty as at the date of invention, and not as at the effective filing date, as is the case in Canada. Also, criteria i) and ii) require that the applicant for a patent be the first true inventor in order to obtain a valid U.S. patent. Accordingly, the United States is properly seen as a "first to invent" country. Complicated procedures exist under the U.S. Patent Act, called interference proceedings, to decide which of two competing applications filed by alleged "first inventors" shall be entitled to issue to patent. However such proceedings are lengthy, complex and expensive. An inventor is best advised to file a Paris Convention country application as soon as practically possible, and preferably before any public uses, sales or printed publications of his invention, so as to lessen the likelihood that a fraudulent "first inventor", or a true inventor who has concealed his invention for many years, might file a prior application for the same invention, and thereby either obtain a first U.S. patent for the invention, or provoke interference proceedings.

It should also be appreciated that criteria ii) and iii), above, apply equally to acts of the patent applicant and to the acts of others, such that public uses or sales of the invention in the United States or publication of printed disclosures of the invention in any country outside of the one year grace period established thereunder, even by the patent applicant himself, will prevent a valid patent from being obtained. Again, as with Canadian applications, the prudent inventor will keep his invention confidential until at least one patent application in a Paris Convention country is filed so as to prevent such statutory novelty bars from arising, either through his own actions or the actions of others.