Case Comment
© 1997-2005 Donald M. Cameron,
Ogilvy Renaultcitation(s): (1986) 8 C.P.R. (3d) 289 (F.C.A. per Hugessen J.A.)
Case Comment
© 1997-2005 Donald M. Cameron,
Ogilvy Renault
"...obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, "Any fool could have done that." Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known."
"The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive.
"The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy."
"While the evidence of experts is, in my view, properly admissible even on an "ultimate issue" question such as obviousness, it seems to me that it must be treated with extreme care.
Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"
"Since its acceptance, the machine has had an outstanding commercial success, to the point that, as the trial judge himself said, at p. 5, it "is now almost universally adopted for use in the press section of paper-making machines".
"...obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, "Any fool could have done that." Anticipation or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known."
"The relevant statutory provision of the purpose of assessing the plea of anticipation in the present proceedings is para. 28(1)(b) [now s. 27(1)(b)]of the Patent Act. That paragraph directs an inquiry as to whether the claimed invention is
28(1)(b) ... described in any patent or in any publication printed in Canada or in an other country more than two years before presentation of the petition...
"The petition which resulted in the issuance of the plaintiff's Canadian patent was filed November 26, 1973, so the relevant date for the purposes of the present inquiry is November 26, 1971.
It will be recalled that anticipation, or lack of novelty, asserts that the invention has been made known to the public prior to the relevant time. The inquiry is directed to the very invention in suit and not, as in the case of obviousness, to the state of the art and to common general knowledge. Also as appears from the passage of the statute quoted above, anticipation must be found in a specific patent or other published document; it is not enough to pick bits and pieces from a variety of prior publications and to meld them together so as to come up with the claimed invention. One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading the following it would in every case and without possibility of error be led to the claimed invention. Where, as here, the invention consists of a combination of several known elements, any publication which does not teach the combination of all the elements claimed cannot possibly be anticipatory."
Return to:
Cameron's IT Law: Home Page; Index
Cameron's Canadian Patent & Trade Secrets Law: Home Page; Index