When an considers subject matter of an application to be an aggregation, the defect is identified under section 28.3 of the Patent Act as being obvious. Obviousness subject matter is broadly described as lacking an . Aggregations are believed to lack an inventive step since the absence of integration between elements makes their results predictable. However, since the patent system is founded on incentivizing the dissemination of knowledge for the advancement of society, should aggregations that lead to advances in social utility be considered defective simply because there is no integration of elements?

A well-known English states that "necessity is the mother of invention". This implies that the driving force for invention is need. In response to this proverb, author stated “I don’t think necessity is the mother of invention – invention, in my opinion, arises directly from idleness, possibly also from laziness. To save oneself trouble.” Neither of these quotes incorporate any consideration of the patent system; however, they point to a flaw in the way obviousness is used to invalidate an application.

(1875) is a U.S. Supreme Court decision on the validity of patent for an eraser fixed to one end of a wooden pencil. In the decision, Justice Hunt writes that “a combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; otherwise it is only an aggregation of separate elements.” Consequently, the application of a piece of rubber to one end of a pencil was ruled an aggregation. When the eraser is removed from the pencil, the pencil and eraser continue to function as intended. Strictly speaking there is no integration of elements; however, the eraser and pencil when manufactured together produce a product that has a utility greater than the utility of the elements by themselves. In other words, the aggregation produces “a utility step”. A pencil with an eraser attached saves oneself trouble.

As indicated in Article 27 of the agreement, an inventive step is necessary for patent eligibility in member states. Member states adopt their own tests for determining the presence of an inventive step. In the U.S., the use of “” allude to the imperfect nature of its test for obviousness. Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results. Evidence of secondary considerations can prove an invention is non-obvious even though, in theory, it appears to be obvious.

The ingenuity of an invention is often inextricably linked to its utility. Consequently, separate tests for utility and obviousness present a problem. Utility, after all, is what society needs for the patent system to have value. The current Canadian test for obviousness provided in does not contemplate utility advancements because utility occupies a separate requirement. The test for obviousness contemplates only whether differences between the state of the art and the inventive concept of the claim would have been obvious to the person skilled in the art. Prior to Sanofi, the most recent Canadian comprehensive obviousness checklist was that of Justice Sharlow from , the levofloxacin infringement case. The list incorporates many of the secondary considerations used in the U.S. and is still used in Canadian patent law. However, I believe law on obviousness remains inadequate for to its failure to incorporate utility analysis as a secondary consideration to prove non-obviousness.

Aggregations which produce a utility step suffer from hindsight bias when undergoing the obviousness test. An useful aggregation will tend to look obvious after the fact. Hindsight bias is thought to be safeguarded by viewing prior art through the eyes of a person not having knowledge of the claimed invention. An additional safeguard from hindsight bias requires the Examiner or judge to articulate why it would have been obvious to combine prior art to arrive at the claimed invention. I believe these safeguards to be overly idealistic.

There is a small, but significant, number of that offer protection (also known as petty patents or innovation patents). In the utility model, the stringent requirement of non-obviousness is lowered, or absent altogether, for protection that lasts between 7 and 10 years (depending on the country). I believe the utility model represents a strong compromise between the desire to incentivize improvements for the benefit of society while offering shorter terms of protection to indicate the level of inventiveness does rise to that of a patent. I believe they are a practical solution for utility step aggregations. Canada currently does not offer utility model protection.

Justin Philpott is a JD Candidate at Osgoode Hall Law School. Justin is currently enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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The US doctrine of inequitable conduct is on “clean hands” - parties acting in bad faith should not be entitled to an equitable remedy. As presently interpreted by the US Federal Circuit, (1) an intent to deceive the Patent and Trademark Office, and (2) materiality in the misrepresentation made, information submitted, or information omitted. Significantly, a finding of inequitable conduct can render granted patents unenforceable. The USPTO’s Patent additionally provides for a general “duty of candor and good faith in dealing with the [Patent] Office.” Under this rule, a patent will not be granted on an application “with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct.” Prior to the case, materiality was interpreted in line with the 1992 revision of USPTO’s Rule 56, under the standard of “importance to a reasonable examiner.” Therasense separated the close relation between the judicial doctrine and USPTO rule, and applied a to inequitable conduct.

The case giving rise to this comment, , concerned the alleged infringement of patents involving wireless transmission of caller identification. The defendant countered by alleging the patents were invalid due to the inventor’s inequitable conduct during prosecution. To overcome a prior art challenge, the inventor had made false declarations that the claimed invention had been reduced to practice at a certain earlier date. Although the declarations were later amended, the false statements were never removed, corrected, or called to the attention of the PTO. Applying the standard, the US Court of Appeals agreed with the defendant and found the patents, although for a novel invention, invalid for the inventor’s “affirmative egregious misconduct” in filing the false declaration.

Canadian patent prosecution law currently lacks a doctrine of inequitable conduct or a general duty of good faith, although provisions do punish some acts of bad faith. Thus, under of the Patent Act, a patent is void if an application willfully, for the purposes of misleading, makes “material allegation in the petition of the applicant in respect of the patent is untrue” or omits or adds information to the specification that is either more or less than necessary. A patent must also demonstrate utility, and therefore must . Canada does have a narrowly defined duty of good faith: of the Patent Act requires applicants to “reply in good faith to any requisition made by an examiner in connection with an examination.” Although the Federal Court of Appeal to introduce a general duty of good faith, it declined to extend the duty past the boundaries of section 73.

There is a significant limit to the duty under s.73: its breach will not invalidate a granted patent. The section applies only to requisitions made by an examiner during examination. The patent becomes abandoned if an applicant does not meet this duty during examination, but it can later be reinstated under section 73(3). By contrast, in the Intellect Wireless case, the inventor’s “affirmative act of egregious misconduct” was sufficient to invalidate the granted patents, without regard to the characteristics of the inventions or the manner in which they were described.

The US case raises once again the question of whether a general duty of good faith should be introduced into patent prosecution in Canada. The inequitable conduct doctrine reflects a moral principle that no benefit should be obtained by misrepresentation. that the doctrine can also reduce the rate of low quality patents. But should the actions of the applicant matter more than the value and quality of the application? If such a duty were introduced, Canada should take account of the U.S. experience. Practitioners heaved a of when the Federal Court of Appeal of Canada declined to expand the specific duty in section 73(1) into a general duty of good faith. The doctrine as a plague on the U.S. system due to the prolific use of the doctrine as a defence in “” situations, causing increased litigation costs. It may also by encouraging inventors to disclose more than necessary. A general Canadian duty of good faith should not be created if it results in increased costs to users of the patent system, regardless of the moral imperative behind it.

Mark Bowman is a JD Candidate at Osgoode Hall Law School and is enrolled in Osgoode’s Intellectual Property Law Intensive Program.  As part of the program requirements, students were asked to write a blog on a topic of their choice.

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