predecessor had sold the product in the US for 2 years prior to filing Petrolite’s the Canadian patent Canwell starts selling a similar product, Petrolite sues There is little jurisprudence dealing with s28.2(1)(a) of the Patent Act Federal court of appeal An disclosure is required; mere sale is not sufficient “enabling” If product is made available without restriction to even one member of the public, and if a person skilled in the art would be able to discover the claimed invention (reverse engineering is OK) without the use of the inventive skill then the invention may be found to be anticipated matter how hard the reverse engineering might be Doesn’t Held: Patent not valid Person skilled in the art and using data and techniques available at the relevant time, and without the exercise of inventive skill, would have been led inevitably to the subject matter of the patent claims, namely the extraction of hydrogen sulphide from natural gas by contact with triazine (or its starting components) Person does not have to actually conduct analysis of the product; sufficient that they could have done so Ernest Scragg & Sons v Lessona Corp (1964 Ex Ct) early test – Facts Plaintiff sought to impeach the validity of two Canadian patents for yarn crimping process based on inventions lacking novelty because of prior art (two publications and a claim of use) HELD: Test is an extremely high bar; the prior art was not sufficient to prove disclosure so the patent is valid Test for of novelty) “anticipation” (lack Prior art must provide and in order to anticipate ‘clear unmistakable directions’ the invention as to the invention show everything that is “information [must]… essential to it so that a workman of ordinary skill in the relevant art would at once have perceived, understood and been able to practically apply the invention without the necessity of further experiment…” Anticipation must be found in a the teachings of single prior art document – multiple documents cannot be combined Not enough that the information was there without the indication as to how it be used (there must be and unmistakable as to the purpose or use) “clear direction” Cites the prior art Reeves Brothers: must…[meet one] 1) give an exact prior description 2) give directions which will inevitably result in something within the claim 3) give clear and unmistakable directions
Petrolite’s predecessor had sold the product in the US for 2 years prior to filing the Canadian patent Canwell starts selling a similar product, Petrolite sues There is little jurisprudence dealing with s28.2(1)(a) of the Patent Act Federal court of appeal An “enabling” disclosure is required; mere sale is not sufficient If product is made available without restriction to even one member of the public, and if a person skilled in the art would be able to discover the claimed invention without the use of the inventive skill (reverse engineering is OK) then the invention may be found to be anticipated Doesn’t matter how hard the reverse engineering might be Held: Patent not valid Person skilled in the art and using data and techniques available at the relevant time, and without the exercise of inventive skill, would have been led inevitably to the subject matter of the patent claims, namely the extraction of hydrogen sulphide from natural gas by contact with triazine (or its starting components) Person does not have to actually conduct analysis of the product; sufficient that they could have done so Ernest Scragg & Sons v Lessona Corp (1964 Ex Ct) – early test Facts Plaintiff sought to impeach the validity of two Canadian patents for yarn crimping process based on inventions lacking novelty because of prior art (two publications and a claim of use) HELD: Test is an extremely high bar; the prior art was not sufficient to prove disclosure so the patent is valid Test for “anticipation” (lack of novelty) Prior art must provide ‘clear and unmistakable directions’ in order to anticipate the invention “information as to the invention [must]… show everything that is essential to it so that a workman of ordinary skill in the relevant art would at once have perceived, understood and been able to practically apply the invention without the necessity of further experiment…” Anticipation must be found in a single prior art document – the teachings of multiple documents cannot be combined Not enough that the information was there without the indication as to how it be used (there must be “clear and unmistakable direction” as to the purpose or use) Cites Reeves Brothers: the prior art must…[meet one] 1) give an exact prior description 2) give directions which will inevitably result in something within the claim 3) give clear and unmistakable directions