Canadian Patents Research Articles

Canadian Patent Appeal Board denies Amazon.com's one-click patent application

The Patent Appeal Board recently refused a patent application filed by Amazon.com for placing orders on-line using one click (the ‘one-click patent application’). Customers were identified using cookies that were stored locally on their computers; these identifiers were used to obtain the customer's pre-recorded information from Amazon.com's database. The patent examiner initially rejected the application as being either obvious or directed towards non-statutory subject matter. Although the Board reversed the examiner's findings on obviousness, the application was rejected as being directed towards non-statutory subject matter. Section 2 of the Patent Act defines an ‘invention’ as ‘any new and useful art, process, machine, manufacture or composition of matter’ (or any improvement thereof); the Board considered that the application fell outside this statutory definition.

The Precautionary Principle in Patent Law: A View from Canada

The precautionary principle (PP) has rapidly emerged as a staple of international environmental law and attempts have been made to extend it into other fields. This article examines whether the PP can or should be extended into patent law. First, an assessment of the general arguments in favour of extending the PP into patent law is performed, followed by an analysis of its applicability within Canadian patent law as it is currently enacted. Then, the arguments against a precautionary patent law are scrutinized.

Demythologizing PHOSITA - Applying the Non-Obviousness Requirement under Canadian Patent Law to Keep Knowledge in the Public Domain and Foster Innovation

Demythologizing PHOSITA - Applying the Non-Obviousness Requirement under Canadian Patent Law to Keep Knowledge in the Public Domain and Foster Innovation

Patent due diligence: Process and priorities – A Canadian patent attorney’s perspective

This article provides a broad-ranging Canadian patent attorney’s perspective of the highly challenging area of patent due diligence work and of how to manage the conflicting priorities of a due diligence project. It is suggested that the work be approached in stages, each of which is explored in some depth: 1. Examine the formalities of filings of interest, focus on primary jurisdiction(s) and primary portions of technology, review any key licenses and permissions related to the technology. 2. Carry out an in-depth review of file wrappers; consider whether any opinions are necessary and if so initiate searching; substantively review relevant assignments and employment contracts; expand the scope of investigations to additional filings/jurisdictions as appropriate. 3. Prepare preliminary versions of any opinions, carry out any investigations required to go behind the documentation that has been reviewed. 4. Expand and formalize any opinions as needed; carry out or request any remediation that may be appropriate; finalise any reporting letters that may be required.

Payment of patent maintenance fees merely mechanical

‘For unexplained motivations’, the Canadian Patent Office instituted abandonment proceedings against Sarnoff Corporation because the patent maintenance fees—which were always paid on time—were paid by an ‘improper person’ according to the Commissioner of Patents; however, on judicial review, Mr Justice Roger Hughes of the Federal Court of Canada held that it would clearly be a frustration of the legislative intent of the Patent Act if ‘non-patent’ matters always required the specialist intervention of patent agents and, in such routine and clerical matters, payment of fees can be achieved through ‘any’ agent acting on behalf of the principal, provided they are so authorized.

Of Mice and Men: God and the Canadian Supreme Court

Abstract. In a recent 5‐to‐4 decision, the Supreme Court of Canada denied to Harvard University a patent on a genetically modified mouse. In their reasoning, the majority Justices, concerned obviously about the implications of granting the patent for the human case, argue that higher organisms (mammals) are not “compositions of matter” in the sense intended by the Canadian Patent Act. But if a mouse is not a composition of matter, what—indeed, what on earth—is it? As the minority Justices complain, the majority decision smacks of dubious metaphysics and theology. Appealing to a quite unlikely source, the Bible, I show that the distinction between mice and men can be defended without introducing problematic metaphysical and question‐begging theological materials. I also show, en route, that the biblical position on the special status of men and women is not inconsistent with evolutionary theory. Granting a patent on the mouse (as was done in the U.S.A.) is compatible with denying it to human organisms.

Reforming Canada's Access to Medicines Regime

Amir Attaran's arguments that Parliament should not bother to reform Canada's Access to Medicines Regime1 are not persuasive. First, experts have debunked his simplistic claim that patents have no significant impact on access to AIDS drugs in Africa because of limited patent coverage.2 In any event, the law addresses the situation in which patent holders in Canada can bar the export of generic versions of their medicines. In some cases, there may be additional hurdles to overcome in the developing country importing the drugs, including the possibility that a compulsory licence will have to be issued in that country. However, this does not mean it is pointless to change Canada's law to make it easier for generic drug exporters to overcome the patent barriers in Canada. Second, Attaran claims that Canadian manufacturers are unlikely to offer competitive pricing. Oddly, he cites generic drug prices in Canada, when it is the prices at which the drugs are offered to developing countries that are relevant. So far, one product, an AIDS drug, has been developed for possible export under Canada's Access to Medicines Regime; the manufacturer has stated publicly that it can and is willing to sell this drug for only a few cents more per tablet than the prices set by Indian generic drug manufacturers and that the price will come down further if the company succeeds in procuring the necessary active pharmaceutical ingredients more cheaply.3,4 Finally, Attaran accepts that Canada's law is “inefficient” and “user-unfriendly.” Indeed, the law mandates a cumbersome process in which generic drug manufacturers must seek separate compulsory licences for each order, by a single country, of a predetermined quantity of a drug, after attempting in each instance to negotiate a voluntary licence from the company holding the Canadian patent. However, Attaran merely asserts that reforming Canada's law is pointless because a developing country has yet to use this law or the fundamentally similar laws enacted in other countries, all of which were implemented in response to a 2003 World Trade Organization agreement.5 He identifies none of the factors that are likely to explain why no poor countries have yet notified the World Trade Organization of their intention to import generic drugs produced elsewhere under compulsory licence, as required under the 2003 agreement; these include a history of threats from multinational brand-name pharmaceutical companies and the United States government against countries that have used or contemplated obtaining compulsory licences, as demonstrated most recently in the reaction to Thailand taking such a step.6,7 Rather than contemplate that the problem might lie, in part, with the World Trade Organization mechanism implemented by Canada, Attaran incorrectly suggests that there is no alternative process consistent with the World Trade Organization agreement. In fact, we have proposed that Canada legislate a different, streamlined process to obtain compulsory licences for export, one that avoids the flaws of the 2003 World Trade Organization decision but is still permissible under other World Trade Organization rules and that recognizes both the logistical practicalities of drug procurement and the political realities faced by developing countries.8 Obviously, Parliament cannot legislate away bullying by other countries. But at least, in light of this political reality, it should craft simper legislation that emboldens developing countries by minimizing not only the effort (in time and costs) to obtain lower cost generic drugs under compulsory licence, but also the risk of retaliation. For example, as we have proposed, a revised law should make it easy for a generic drug manufacturer to obtain, in advance of negotiating a contract with any particular purchaser, a single compulsory licence allowing it to export its generic medicine to any of the eligible developing countries, without predetermined restrictions on quantity or time, in exchange for applicable royalties based on the subsequent use of the licence by the generic drug manufacturer. With this legal authorization in hand, generic drug manufacturers could compete effectively with bids to supply multiple developing countries, thereby achieving economies of scale, and the law would require neither advance disclosure of individual purchasing countries nor separate licensing processes for each individual drug order. Fixing Canada's law will not, by itself, be sufficient to overcome the various hurdles that developing countries face in meeting the medical needs of their populations, but it is a necessary part of a larger effort to improve access to treatment.

Communicating With Patients About Chemotherapy Costs

Chemotherapy Costs TO THE EDITOR: Schrage and Hanger provided a very helpful gleam on how medical oncologists viewed their responsibilities in communicating with patients about chemotherapy costs. There are two key issues that can be further elaborated. First, although many may think that they do not usually take cost into account when recommending a treatment, the truth is that we all do, if only subconsciously. Recommendation of a treatment, even when cost is not explicitly discussed, is based on the assumption that there are resources (somehow) to support the delivery of the treatment. To take an extreme theoretical example, would one recommend a treatment that can only be administered in zero gravity, or that would cost $1 billion per treatment course? Probably not, and the patient likely would concur that this is not a realistic option. The second consideration is that a treatment is not usually categorized as simply “works” or “doesn’t work.” More commonly, it works “a little” or “quite well.” Clinical trial design, and regulatory approval, is usually based on proof of the minimal level of clinical improvement. However, this may not be enough when balanced against other factors like treatment costs, burden of disease, toxicity profiles, and so on. Funding agencies, such as the Centers for Medicare & Medicaid Services, define different levels of clinical improvement in global terms, such as “more effective” (improves by a significant, albeit small, margin as compared with established services or medical items) and “as effective but with advantages” (same effect as established services or medical items, but some advantages that some patients will prefer). However, this provides no indication of the true magnitude of benefit relative to the baseline prognosis of the patients. For example, 9 months may mean something different for patients with advanced small-cell lung cancer to those with, say, prostate cancer. Sunstrum et al showed that improvement in survival, tumor response, quality of life, and toxicity would classify a drug as being of “substantial improvement” for the purpose of setting a price by the Canadian Patented Medicine Prices Review Board. What is needed now is to relate the size of improvement in these end points to the baseline prognosis of the patients. Only then can we truly discuss how to communicate chemotherapy costs with the patients—and to the society at large.

The expanding world of prior art [Patents

This paper discuses the case of Bruckelmyer v. Ground Heaters, Inc which involved a problem unique to the construction industry in colder climates. In order to harden properly, concrete must be kept from freezing before it sets up. Mr. Bruckelmyer knew about this problem and came up with a system for prethawing large areas of frozen ground so that concrete could be poured all winter all. His solution was to lay out a serpentine pattern of hoses over the frozen ground and then pass hot water or antifreeze through the hoses to heat the ground below. The hoses were covered with a thermal blanket so that thawing rates of a foot per day could be achieved. Bruckelmyer obtained two U.S. patents and proceeded to sign up licensees to practice his invention. One of those licensees, Ground Heaters, Inc., subsequently canceled its license but kept on practicing the technology. Bruckelmyer responded by bringing suit for patent infringement. As Ground Heaters looked for prior art to knock out Bruckelmyer's patents, it found an old Canadian patent that showed the use of hot water hoses to heat concrete forms but not to heat the ground. In the Canadian file were two additional figures that had been included in the original application but were canceled during prosecution and those not part of the issued patent. Those figures showed using a hose system to thaw frozen ground, exactly what Bruckelmyer has patented. CAFC struggle with the issue and in the end ruled in Ground Heater's favor and found that the two old Canadian drawings were prior art and thus Brucklmyer's patent was invalid.

The impact of Canadian Patent Policy and Information Technology (IT) on Canadian Patent Office operations and on Canadian use of patent information from 1980 to 2005

Canadian Patent Policy and practice evolved under the influence of British and American policy and practice. In 1989 Canada entered into a Free Trade Agreement (FTA) with the United States and the Canadian Patent Act was updated to reflect international patent practice. In 1992 the TechSource project was started in order to automate Canadian Patent operations in harmony with Trilateral (US, EPO, and Japan) automation projects, and disseminate patent information to Canadian Industry. The TechSource system (2000) has reduced the use of paper to process patent applications and improved access to patent information in Canada. While Canadian use of patents has increased since 1980, the use of TechSource patent information has been less than originally forecasted. The TechSource (2000) system will need to be upgraded and modernized in order to be able to: interface with newer international patent processes, replace outdated technology and reduce operating costs. There are opportunities available to reduce future Canadian patenting and TechSource costs. More public education will be needed to increase the use of patent information in Canada.

ISA 247

ISA 247

Unlabelled: Law, Language, and Genetically Modified Foods in Canada

“Sometimes, Goliath wins.” Such was the assessment of journalists Rick Weiss and Justin Gillis on Canada’s 2004 Supreme Court ruling over Monsanto Canada versus Saskatchewan farmer Percy Schmeiser (see Weiss & Gillis, 2004). At the heart of this landmark case pulsed the issue of intellectual property protection and ownership versus individual rights—rights rooted in a long cultural tradition among farmers of saving and recultivating their seeds. For scholars interested in developments within Canadian jurisprudence, the details of Monsanto Canada Inc. v. Schmeiser (2004) will be quite familiar: in 1998, it was discovered that a large percentage of the farmer’s canola crop contained Roundup-resistant seeds—seeds that Monsanto had genetically engineered (and patented) to resist the company’s own Roundup herbicide. Schmeiser surmises that the seeds must have blown onto his property either from passing trucks that had been improperly tarped or from neighbouring farms, five of which had signed Technology Use Agreements with Monsanto. These agreements require farmers to exclusively use Monsanto’s seeds and herbicide, and to also pay a $15 per acre licensing fee to use the technology. Farmers, furthermore, are not allowed to save any seed for replanting and must buy new Monsanto seed each year.1 Now, Schmeiser did not purchase Roundup Ready® canola seeds from Monsanto, nor did he sign a Technology Use Agreement—and, in March of 1998, the company warned Schmeiser against planting any Roundup-resistant seed that he might have culled from his own crops. This, Monsanto claimed, would constitute patent infringement. Schmeiser planted his saved seed anyway, setting off a spate of lawsuits and appeals that would eventually reach the Supreme Court of Canada. In a contentious ruling, and with a slim 5-4 margin, Canada’s Supreme Court found Schmeiser guilty of violating Monsanto’s patent. The details of this ruling, and its profound implications for Canadian patent law, merit a journal article in itself. But the case also presents a different, rather intriguing, opportunity for communication analysis—one that is more limited in scope, and more focused on

“Breakthrough” drugs and growth in expenditure on prescription drugs in Canada

Driven by increased use of prescription drugs and by shifts from old to new products, spending on drugs in Canada doubled between 1996 and 2003.1 Which drugs drove this expenditure...

Twenty years of barrel-stave flextensional transducer technology in Canada

The barrel-stave flextensional transducer, a compact underwater sound source, was conceived at DRDC Atlantic in 1986 [G. W. McMahon and D. F. Jones, U.S. Patent No. 4,922,470 (1 May 1990); Canadian Patent No. 1,285,646 (2 July 1991)]. Over the years, five barrel-stave designs belonging to three flextensional classes were built and tested at DRDC Atlantic. Three Class I transducers with operating frequencies ranging from 800 to 1600 Hz were integrated into submarine communications buoys, low frequency active horizontal projector arrays, and a broadband sonar towbody. A high-power Class II and broadband (1–7 kHz) Class III transducer were deployed under the ice in the Lincoln Sea for research related to rapidly deployable surveillance systems. These barrel-stave flextensional transducers have also supported a variety of marine mammal studies including vocal mimicry in long-finned pilot whales, coda dialects in sperm whales, and the R&D of acoustic detection and tracking systems for endangered northern right whales. In August 2004 a barrel-stave transducer was used to lure a trapped juvenile humpback whale to the sluice gates of a tidal generating station on the Annapolis River in Nova Scotia by transmitting humpback whale calls underwater. The acoustic performance parameters for all 5 transducers will be presented.

Bifurcation Behavior and Efficient Pure Hydrogen Production for Fuel Cells Using a Novel Autothermic Membrane Circulating Fluidized-Bed (CFB) Reformer: Sequential Debottlenecking and the Contribution of John Grace

I am pleased to contribute, together with my Ph.D. student Zhongxiang Chen, this paper to the Ind. Eng. Chem. Res. special issue for Professor John Grace of the University of British Columbia in recognition of his many contributions to subjects of interest to readers in this journal. I have known John since the early 1970s (over 30 years now) when we were both studying for our Ph.D.'s in the U.K. (he was in Cambridge, and I was in Edinburgh). Since then, we have always been in close contact. I visited him at McGill and British Columbia Universities, and he visited me at King Saud and Auburn Universities, and we cooperated in the development of novel fluidized-bed reformers (e.g., Adris, A.; Grace, J.; Lim, C.; Elnashaie, S. S. E. H. Fluidized Bed Reaction System for Steam Hydrocarbon Gas Reforming to Produce Hydrogen. U.S. Patent 5,326,550, Jun 1994; Canadian Patent 2,081,170, Dec 2002). This was our first explicit application of the sequential debottlenecking methodology, although John has used the appro...

The Family of HIGHSULFTMProcesses. Improvement of Amine Desulfurization and Aftertreatment of Tail Gases

HIGHSULFTM processes increase the efficiency of amine desulfurization of gases: they increase emission of carbon dioxide above the absorber, significantly decrease the hydrocarbon content in the acid gas and increase the concentration of hydrogen sulfide, i.e., they increase the efficiency of extraction of sulfur in a Claus unit. HIGHSULFTM is easily applied to any units of the SCOT type for aftertreatment of tail gases in refineries and petrochemical complexes. The advantage is the use of an inexpensive and widely available selective solvent — methyldiethanolamine (MDEA) and plant equipment. HIGHSULFTM processes are protected by US and Canadian patents and are being patented in other countries by TKK Company.

The patent system in Singapore

Abstract Patent protection in Singapore was formerly only available by obtaining a UK patent grant and then registering the grant in Singapore. The patent system that was implemented in 1995, and has replaced the former procedure, is described here. Applicants can request search and examination, in which case the work is outsourced to the Austrian or Australian patent offices. Alternatively applicants can submit the results of the corresponding search and examination reports carried out by a prescribed office (the patent offices of Australia, Japan 1 , New Zealand, UK, USA, Canada (This only applies to Canadian patent applications filed when in English.) and the EPO (This only applies to European patent applications filed when in English.)). A mixed mode of relying on a search from a prescribed office or under the Patent Co-operation Treaty, followed by filing a request for examination, is also possible. The ePatents system, currently providing online Singapore patent register, database, renewal and address updating facilities, is summarised, as is SurfIP, an online service providing a patent search covering many databases and countries, IP management tools, and facilities to assist the commercialization of IP.

Harvard v. Canada: the myc mouse that still squeaks in the maze of biopatent law.

The Canadian Supreme Court will soon make a decision about Harvard University's long-standing application for a Canadian patent on a mouse transgenic for the myc oncogene. That decision could reignite in North America the controversy that continues in Europe and elsewhere to surround the patenting of life forms. The tortuous steps in this 15-year patent maze are marked by the arguments about life patents that attended the U.S. Supreme Court's decision in Diamond v. Chakrabarty. This patent dispute about oil-digesting bacteria cracked open the door for animal patents in the United States and other countries, even though the legal arguments involved were based on patent applications for corn seeds and oysters, not mammals. The patent challenge to the Harvard mouse by the Canadian government now threatens to close this door in Canada. The arguments against life patents are commonly based on moral and religious grounds that regard the sanctity of life and oppose its commodification. The most compelling arguments for such patents are based on the benefits they deliver through commercial exploitation of inventions. The debate about patenting animals has been more heated outside North America and cacaphonic in the Third World. However, the Canadian debate could be amplified by the U.S. Supreme Court's recent entry on the biopatent stage through the side door of a new corn seed patent dispute. A narrow legal analysis by the Canadian Supreme Court would award the mouse patent to Harvard, while a policy analysis might support the government's challenge of the patent. Although the impact of the Harvard mouse patent process in Canada could be just a squeak, opponents of patenting life can mount the myc mouse to once again roar their opposition to animal patents. And the sound could resonate through the arguments about both biopatents and human cloning, with potentially important effects for academia, industry, and the public.

Patents, brand-generic competition and the pricing of ethical drugs in Canada: some empirical evidence from British Columbia, 1981-1994

This paper examines the impact of the 1987 changes in the Canadian Patent Act on the pricing of ethical drugs. From 1969 to 1987 Canada opted to control pharmaceutical prices by using the compulsory licensing provisions of the Act to promote competition between branded drugs and their generic equivalents. In 1987, however, the Act was amended to guarantee patent holders an extended period (7–10 years) of protection. This reduced brand-generic competition by retarding generic entry and suggests that, ceteris paribus, after 1987 pharmaceutical prices increased relative to pre-1987 prices. This hypothesis is examined for the period 1981–1994 using a sample of 82 drugs from the British Columbia Pharmacare Programme. The major conclusions are: despite evidence of significant first mover advantages which resulted in higher brand prices, competition from generics succeeded in reducing overall market prices prior to 1987; but, after 1987, the efficacy of generic competition was reduced and both brand and market prices increased.

A new sampler for collecting separate dry and wet atmospheric depositions of trace organic chemicals

Studies conducted in Saskatchewan and elsewhere have demonstrated the atmospheric transport of agricultural pesticides and other organic contaminants and their deposition into aquatic ecosystems. To date these studies have focused on ambient concentrations in the atmosphere and in wet precipitation. To measure the dry deposition of organic chemicals, a new sampler was designed which uses a moving sheet of water to passively trap dry particles and gasses. The moving sheet of water drains into a reservoir and, during recirculation through the sampler, is passed through an XAD-2 resin column which adsorbs the trapped organic contaminants. All surfaces which contact the process water are stainless steel or Teflon. Chemicals collected can be related to airborne materials depositing into aquatic ecosystems. The sampler has received a United States patent (number 5,413,003 – 9 May 1996) with the Canadian patent pending. XAD-2 resin adsorption efficiencies for 10 or 50 μg fortifications of ten pesticides ranged from 76% for atrazine (2-chloro-4-ethylamino-6-isopropylamino- S-triazine) to 110% for triallate [ S-(2,3,3-trichloro-2-phenyl)bis(1-methylethyl)carbamothioate], dicamba (2-methoxy-3,6-dichlorobenzoic acid) and toxaphene (chlorinated camphene mixture). Field testing using duplicate samplers showed good reproducibility and amounts trapped were consistent with those from high volume and bulk pan samplers located on the same site. Average atmospheric dry deposition rates of three chemicals, collected for 5 weeks in May and June, were: dicamba, 69 ng m -2 da -1; 2,4-D (2,4-dichlorophenoxyacetic acid), 276 ng m -2 da -1: and, γ-HCH ( γ-1, 2, 3, 4, 5, 6-hexachlorocyclohexane), 327 ng m -2 da -1.