MOPOP - Chapter 9 - Endnotes

The Description
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Endnotes

1 See the definitions of "description" and "claims" in section 2 of the Patent Rules.

2 Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 37

3 Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [(1989), 25 C.P.R. (3rd), 257 (S.C.C.)] at page 268; Apotex v. Wellcome (supra at 2) at paragraph 70; Electrolytic Zinc Process Co. v. French's Complex Ore Reduction Co. [1930] S.C.R. 462 at paragraph 22; Leithiser v. Pengo Hydra-Pull of Canada Ltd. [(1974), 17 C.P.R. (2nd), 110 (F.C.A.)] at pages 113-115; Lundbeck Canada Inc. v. Minister of Health 2009 FC 146 at paragraph 135; Pfizer Canada Inc. v. Novopharm Limited 2009 FC 638 at paragraph 105. See also Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61, e.g. at paragraph 26, applying these requirements to prior disclosures being considered for the purposes of anticipation.

4 Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at pages 154-155, Dickson J. quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.]

5 Consolboard (supra at 4) at page 157

6 Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)]at page 111

7 Minerals Separation (supra at 6)

8 Minerals Separation (supra at 6) at pages 111-112, with these points being reasserted by Thurlow J. in Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Ltd. et al. [(1968), 55 C.P.R. (1st), 207 (S.C.C.)] at pages 225-226; Wandscheer et al. v. Sicard Limitée [(1947), 8 C.P.R. (1st), 35 (S.C.C.)] at pages 39-40.

9 This position has been adopted by the courts so often that it has become axiomatic. See, e.g., Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 53; Consolboard (supra at 4) at page 160

10 Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 44, quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.] at page 184; Whirlpool (supra at 9) at paragraph 49, citing Lister v. Norton Brothers and Co. [(1986), 3 R.P.C. 199 (Ch.D.)] at page 203

11 Free World Trust (supra at 10) at paragraph 44

12 From Beloit Canada Ltd. v. Valmet Oy [(1986), 8 C.P.R. (3rd), 289 (F.C.A.)] at page 294 we know them to be a "paragon of deduction" and from Whirlpool (supra at 9 at paragraph 74) we know them to be "reasonably diligent in keeping up with advances in the field to which the patent relates". See also the comments on point in Janssen-Ortho Inc. v. Novopharm Limited 2006 FC 1234 at paragraph 113.

13 Bayer Aktiengesellschaft v. Apotex Inc. [(1995), 60 C.P.R. (3rd), 58 (On.Ct.G.D.)] at page 79

14 Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 99

15 Servier (supra at 14) at paragraph 254

16 Axcan Pharma Inc. v. Pharmascience Inc. 2006 FC 527 at paragraph 38

17 Bayer AG (supra at 13) at page 79; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraph 97; Lundbeck Canada Inc v. Minister of Health 2009 FC 146 at paragraph 36

18 In respect of applications filed on or after October 1, 1996.

19 The comments in GlaxoSmithKline Inc. v. Pharmascience Inc. 2008 FC 593 at paragraph 35, while they relate to expert witnesses at trial and not to examiners and inventors/applicants during examination, are illustrative.

20 see, e.g., Apotex v. Sanofi-Synthelabo (supra at 3) at paragraph 37; Burton Parsons Chemical Inc. v. Hewlett-Packard (Canada) Ltd. [(1976), 17 C.P.R. (2nd), 97 (S.C.C.)] at page 105

21 Pfizer v. Novopharm (supra at 3) at paragraph 108; Sanofi-Aventis Canada Inc. v. Apotex 2009 FC 676 at paragraph 233; Free World Trust (supra at 10) at paragraph 54. Note, however, that the Supreme Court in Free World Trust was addressing the date for claim construction rather than enablement.

22 Apotex v. Sanofi-Synthelabo (supra at 3) at paragraph 37. During examination, such obvious errors should be corrected whenever identified.

23 TRW Inc. v. Walbar of Canada Inc. [(1991), 39 C.P.R. (3rd), 176 (F.C.A.)] at page 197

24 Procter & Gamble Co. v. Bristol-Myers Canada Ltd. [(1978), 39 C.P.R. (2nd), 145 (F.C.T.D.)] at pages 159-160, aff'd [(1979), 42 C.P.R. (2nd), 33 (F.C.A.)]; see also Apotex v. Sanofi-Synthelabo (supra at 3) at paragraphs 33-37

25 Rice v. Christiani & Nielsen [1929] Ex.C.R. 111 at paragraph 9, rev'd on other grounds

26 H.G. Fox, Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed., Carswell (Toronto)] at page 171; the last sentence in the first paragraph was quoted with approval in Pioneer Hi-Bred (supra at 3) at page 270

27 Janssen-Ortho Inc. v. Novopharm Ltd. 2004 FC 1631 at paragraph 54; quoted in Bristol-Myers Squibb Canada Co. v. Novopharm Ltd. 2005 FC 1458 at paragraph 71, Aventis Pharma Inc. v. Apotex Inc. 2005 FC 1504 at paragraph 126. Note that in the foregoing cases the Courts were addressing the question of obviousness, and whether engaging in routine testing made the result of that testing unobvious. However, the link between the obviousness analysis and the evaluation of sufficiency is addressed in Sanofi-Aventis Canada Inc. v. Ratiopharm Inc. 2010 FC 230 at paragraphs 57-80. See also the comments in Pfizer Limited v. Ratiopharm 2010 FCA 204 at paragraphs 16 to 27.

28 Pfizer Canada Inc. v. Canada (Minister of Health) 2006 FCA 214 at paragraph 24

29 Janssen-Ortho Inc. v. Apotex Inc. 2008 FC 744 at paragraph 111; Pfizer v. Canada (supra at 28) at paragraphs 26 and 27

30 Apotex (supra at 2) at paragraph 70

31 Apotex (supra at 2) at paragraph 70

32 Apotex (supra at 2) at paragraph 37

33 Norac Systems International Inc. v. Prairie Systems & Equipment Ltd. 2002 FCT 337 at paragraph 16, rev'd in part on other grounds 2003 FCA 187

34 Dimplex North America Ltd. v. CFM Corp. 2006 FC 586 at paragraph 80, aff'd 2007 FCA 278; citing Norac Systems (supra at 33)

35 Fox (supra at 26) citing at pages 150-151 Mullard Radio Valve Company Ltd. v. Philco Radio and Television Corporation of Great Britain Ltd. [(1935), 52 R.P.C. 261] at page 287; quoted in Eli Lilly Canada Inc. v. Novopharm Ltd. 2007 FC 596 at paragraph 188 and in Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1978), 39 C.P.R. (2nd), 191 F.C.T.D.)] at page 216

36 Norac Systems (supra at 33) at paragraph 41; Almecon Industries Ltd. v. Anchortek Ltd. 2001 FCT 1404 at paragraph 45, aff'd 2003 FCA 168, citing Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1978), 39 C.P.R. (2nd), 191 F.C.T.D.)] at page 216

37 Metalliflex Ltd. v. Rodi & Wienenberger Aktiengesellschaft [(1960), 35 C.P.R. (1st), 49 (S.C.C.)] at pages 53-54

40 see, e.g., Novopharm Limited v. Janssen-Ortho Inc. 2007 FCA 217 at paragraph 26; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraphs 376-377; Pfizer Canada Inc. v. The Minister of Health 2008 FC 13 at paragraphs 99 and 118

55 The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex.Ct.)] at page 98

56 The King v. American Optical (supra at 55)

57 Lester v. Commissioner of Patents [(1946), 6 C.P.R. (1st), 2 (Ex.Ct.)] citing at page 3 British Celanese Ltd. v. Courtaulds Ltd. [1935] 52 R.P.C. 171 at page 193

58 Domtar Ltd. v. MacMillan Bloedel Packaging Ltd. [(1977), 33 C.P.R. (2nd), 182 (F.C.T.D.)] at pages 189-190; Bergeon v. De Kermor Electric Heating Co. [1927] Ex. C.R. 181 at paragraphs 29 and 81; Schmuel Hershkovitz v. Tyco Safety Products Canada Ltd. 2009 FC 256 at paragraph 148; Free World Trust (supra at 10) at paragraph 27

59 Free World Trust (supra at 10) at paragraph 32

60 Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1952), 15 C.P.R. (1st), 133 (P.C.)] at pages 144-145

62 Section 80 of the Patent Rules applies to applications filed after October 1, 1996. There is no equivalent to this rule for earlier-filed applications.

63 Note that, for applications filed prior to October 1, 1996 and October 1, 1989, respectively, the requirement that an invention have a title are governed by sections 134 and 170 of the Patent Rules.

64 This practice was first communicated in the practice notice Title of Invention [C.P.O.R. Vol. 137, No. 4, January 27, 2009].

65 This requirement is governed by subsection 135(4) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(4) of the Patent Rules for applications filed before October 1, 1989.

66 There is no such requirement in the Patent Rules governing applications filed prior to October 1, 1996.

67 This requirement is explicitly governed by subsection 74(1) of the Patent Rules for applications filed on or after October 1, 1996, by subsection 135(3) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(3) of the Patent Rules for applications filed before October 1, 1989.

68 The permissibility of chemical and mathematical formulae, and the like, is provided by subsection 74(2) of the Patent Rules for applications filed on or after October 1, 1996; for applications filed prior to October 1, 1996 this may only be implied by the lack of any proscription to formulae per se.

69 The permissibility of such presentation in applications filed on or after October 1, 1996 is implied from subsection 74(2) of the Patent Rules. Explicit permission for such presentation is provided by subsection 135(3) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(3) of the Patent Rules for applications filed before October 1, 1989.

70 This requirement is governed by subsection 135(2) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(2) of the Patent Rules for applications filed before October 1, 1989.

71 This requirement is governed by subsection 135(2) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(2) of the Patent Rules for applications filed before October 1, 1989.

72 No such explicit provision exists for applications filed prior to October 1, 1996.

73 This requirement is governed by paragraphs 141(1)(g) of the Patent Rules for applications filed before October 1, 1996 and by paragraph 177(1)(g) of the Patent Rules for applications filed before October 1, 1989.

74 This requirement is governed by section 140 of the Patent Rules for applications filed before October 1, 1996 and by section 176 of the Patent Rules for applications filed before October 1, 1989.

75 These requirements are governed by section 137 of the Patent Rules for applications filed before October 1, 1996 and by section 173 of the Patent Rules for applications filed before October 1, 1989.

76 Information regarding the publication of US patent documents is provided based on an interpretation of US practice as expressed in the USPTO's Manual of Patent Examining Procedure, 8th Ed. (August 2001) as revised July 2008. See, e.g., sections 101 and 103.


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