Category Archive:Blog

ByCarolyn Keane

Patent Search 101: Why US Patent Searches are Critically Important

By Gene Quinn  January 13, 2018

US Patent Search: US Patent Searches are essential.Inventors will frequently ask why they need to spend the money on a US patent search, and all too frequently believe patent searches are unnecessary. There are various iterations of this question, starting out with “why do I need a patent search, I’ve already searched myself and cannot find anything,” to “there is nothing on the market like their invention, so why would a US patent search be necessary?” After all how could someone have ever come up with their invention?

Surveying the market is a wise first step, but there may be patents lurking. There are various reasons for this, but one big reason is because an independent inventor or small company came up with the invention previously, filed and obtained a patent, but then lacked the resources or know-how to bring the product to market. Then when others came up with the same or similar idea and found that issued patent they abandoned the project and never took the product to market because they could not own the exclusive rights, which meant that if the product succeeded on the market a larger competitor could simply copy with impunity.

It is also a wise first step to do your own patent search if you are an inventor. Spending time looking for related patents and perhaps even more importantly reading related patents is a very useful endeavor. If you can find a patent reference that you feel is too close for comfort then you have saved the money associated with paying for a professional patent search and/or hiring a patent attorney or patent agent.

Notwithstanding, I am always skeptical when I hear inventors say that they have done their own US patent search and have found nothing. Patent searching is as much an art as it is a skill, and if you are not familiar with advanced search strategies it is not surprising that you are unable to find anything too close, but rest assured there are always patents to find that are at least similar in some ways. I have put together a patent search tutorial, which will help give you some strategies. So absolutely start with your own patent search, but at some point before spending thousands of dollars to obtain a patent you should obtain a professional patent search and patentability opinion.

If you hire a professional patent search firm you may want to also consider adding an international patent search. Some search firms may already include an international patent search in the price, or at least a search of certain foreign databases. While US patent searches are essential, international patent searches are preferable if you can afford the extra cost.

The patent process can be expensive. The last thing you want to do is spend a lot of money preparing and filing an application when there is easy to find prior art that will prevent a patent. For this reason many inventors and businesses will choose to begin the process by paying for some kind of patent search. The expense of a patent application is saved if knock-out prior art is located. If no serious road blocks are found the patent search will normally lead to a better, stronger patent application and potentially smoother application process.

The reason US patent searches lead to a better, strong patent application is because the first application filed is absolutely critical. All aspects of your invention must be disclosed, nothing new can be added without compromising the all important filing date (aka priority date). After having done a patent search the initial disclosure can be specifically written to carefully define your invention so as to focus on what is most likely the patentable feature or components.

Who can do a US patent search?

Anyone can do a patent search using the online Patent Office database, but this database only contains patents issued since 1976, so such a search is not complete. Google has a patent search engine is very quick, and it includes patents going all the way back to into the early 1800s. Unfortunately, Google Patents has a limited number of searchable fields. Still, Google Patents is an excellent first place to start, particularly where you don’t know exactly what you are looking for.

How can you not know what you are looking for? The answer is simple. You know your invention, but likely won’t know the exact language patent practitioners typically use to describe the features and functions of your invention.

Many years ago I was doing a search on a bubble mailer, but couldn’t find anything initially. After spending a little time searching it became clear that the term “bubble mailer” was not the way that patent practitioners were describing this. I could have given up, but knew there had to be something. After searching I finally found a reference that described something similar. When I revised my search terms I found a trove of related references. To find the best results with a word search  you need to know how patent practitioners describe things in patent applications and issued patents, that is when the most relevant prior art will be located. Using Google Patents at least initially is very helpful because they search synonyms.

Next Steps in Your Patent Search

After you find some relevant patents you might find it helpful to switch over to FreePatentsOnline.com, which allows for specific fields to be searched. Indeed, using both FreePatentsOnline.com and Google patent search makes a lot of sense.

The best and most reliable patent search will be done by a professional that is intimately familiar with both advanced searching techniques and classification systems. If you are not familiar with advanced search techniques and classification you are almost certainly going to miss the most relevant prior art in your own search. So search on your own to see if you can find something without spending any money, and to educate yourself on what information is included in patents. Then before you file remember that it is better to spend hundreds of dollars on a professional patent search now than to spend many thousands of dollars only to learn later that a patent cannot be obtained.

Why can’t I just get a cheap patent search?

Before you purchase a no-frills patent search it is important to know what you are getting. Frequently, overseas providers are the ones offering bargain basement prices. These searchers may not speak English as their first language, and sending technical information overseas can violate US export laws. Respect for propriety rights may also be limited, making it culturally acceptable to take or share propriety information.

Having someone who does not speak English as their first language and who does not live in the US do a patent search is extremely dangerous. I have no doubt overseas searchers are intelligent, but the way you find references is by knowing how patent attorneys and patent agents would or could describe various features and components. Therefore, intimate familiarity with the English language and common usages of the English language are absolutely essential.

A cautionary tale about bad patent searches

One example on this point. Many years ago my firm had a client who literally invented a new hog trap. An overseas search company performed the patent search. We knew immediately that the search could not be relied upon. Of course, one of the problems is sometimes when you obtain bargain basement US patent searches it is hard to know if the search is reliable, which is why pay a little extra for a professional search by a reputable search firm make sense.

In this cautionary example the patents found related to a pipelines for commercial and industrial applications. Devices known as “pipeline pigs” are used to conduct maintenance on pipeline without requiring the pipeline to be shut down. According to Wikipedia these devices originally got their name because when used a high pitch squealing noise is made, which sounds like a pig. Obviously, the searcher who didn’t understand our inventor’s hog trap simply searched synonyms, trading hog for pig. We knew that the search was unreliable, but sadly bad searches frequently lead to elation because the search uncovers nothing even close, which makes the patent search suspect.

Does a professional patent search come with a guarantee?

Unfortunately, no guarantees can be provided. Pending patent applications are published 18 months after filing, which means not all relevant prior art can be found even with a professional patent search. Even with an exhaustive and professional patent search cannot locate everything pending and not yet published. Additionally, when you do apply for a patent it is extremely likely that the patent examiner will rely on at least some patents that you did not know about.  Examiner rejection are sometimes unanticipated. It can also be due to the fact that the description of the invention is unintentionally overbroad.  Sometimes it is because an examiner will weave together multiple patents to make a rejection.

Receiving a rejection from a patent examiner is as normal and common as paying taxes every April 15th. The key to obtaining a patent is to have an application with sufficient disclosure (both broadly defining and narrowly defining your invention) so that if an examiner does make a rejection or find prior art that you can amend your application as necessary to satisfy the examiner and obtain a patent. Therefore, it is important to understand that the goal of a patent search is not to guarantee that there is no relevant prior art that will bar patentability, but rather to investigate whether pursuing with the expense of a patent application makes sense. Patent searches allow you to make fully informed business decisions.

What about US patent searches from invention promotion companies?

There is absolutely a dark side to the invention marketplace, and inventors need to be careful. No better example exists than the Federal Trade Commission winning an injunction against World Patent Marketing, a company charged with devising a fraudulent scheme to use consumer funds to enrich themselves.

Part of the typical invention scheme is to tell you what you want to hear. Suspect companies tell you that they are excited to work with you and recommend a patent search that will cost around $800 (typically). Then they come back with great news, they cannot find any patents that relate to your invention, which should be a red flag. With nearly 10,000,000 issued US patents and many millions of published patent applications it would be quite rare for an invention to address a problem never before considered by anyone.

There are reputable companies you can work with in the invention space. When looking for a reputable company it is important to understand that the hallmark of a legitimate company is they will not do absolutely everything you need. Be careful when a company promises to be a one-stop-shop. While it is perfectly legitimate for companies work together, it is extremely unusual for any company to provide a professional patent search, engineering support, licensing services and legal services. Indeed, the ethics rules largely prohibit patent practitioners from working with these types of companies. So be careful (and suspicious) if you never get any direct contact with a patent attorney or patent agent.

Do I Need a Patent Attorney for a US Patent Search?

There is a longer answer here that deals with whether it is wise to pursue a patent application without a patent professional, but given the topic here relates to US patent searches for now suffice it to say that if you only pay for a professional patent search you are going to get just a list of patents that are relevant, or maybe copies of the patents. When you purchase patent searches you do not get a patentability opinion, nor do you get to talk to someone to help you interpret the results of the search. Most inventors want and need to have the results interpreted and explained by either a patent attorney or a patent agent, so if that is the service you are looking for be careful when you go directly to a patent search firm and purchase only a patent search.

For competent, thorough US patent searches alone you would pay at least $400 for something that is relatively simple and up to $800 to $1,000 for a search alone on something complex, or deals with software. This cost is for the professional patent search alone, and does not include the cost of an attorney to review the search and offer an opinion about patentability.

Before you hire anyone – here is a class you can take on your own time to start the search and save money – https://www.udemy.com/diy-patent-search-how-to-save-on-patents/

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ByCarolyn Keane

San Diego Inventors Forum – Speed Pitch Application

 

TOP DOG DIRECT

SPEED PITCH APPLICATION

San Diego Inventors Forum

DEADLINE FOR APPLICATIONS:  January 18, 2018

EVENT:  Thursday, February 8, 2018, 10:30am

Name:

City/State:

Cell Phone:

Email:

Name of Product:

Short (3 line) Description of Product:

Website (if applicable):

Image (include in body of the email only)

REQUIREMENTS:

  • Prototype or final product available to present
  • Consumer product
  • Reach a mass audience (Please know statistics on the size of potential audience)
  • Can retail from $9.99 – $39.99
  • Demonstrable — WOW demonstration
  • Easy to understand
  • New product that is not on the market
  • Short, two-minute pitch

Please send your application to:

Inventors@TopDogDirect.com

Subject Line Must Read:  February 8, 2018 San Diego Inventors Forum Pitch

 

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ByCarolyn Keane

MIT’s Take on Entrepreneurship

ENTREPRENEURSHIP IS A CRAFT.
HONE IT.

Entrepreneurship and innovation are synonymous with MIT. Big thinkers from around the world come to MIT Sloan Executive Education to take advantage of our renowned faculty, research, and resources that can help turn their ideas into successful ventures or social impact.

We teamed up with Professor Bill Aulet of the Martin Trust Center for MIT Entrepreneurship to assemble a collection of resources to help you get your venture off the ground. The Entrepreneurship Toolkit includes links to articles, a webinar, a 15% discount code, and other sources of business-building wisdom.

We hope these resources help ignite your entrepreneurial spark and guide your next steps. Click below and get the Took Kit

why-mit-sloan-executive-education

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ByCarolyn Keane

14 Incredible Inventions That Were Discovered By Accident

Sometimes the best inventions are discovered by accident.

One day in 1928, Sir Alexander Fleming returned to his lab in London after a two-week vacation to find that mold had developed on a contaminated staphylococcus culture plate. The scientist was searching for a “wonder drug” to cure a wide variety of diseases. A moldy Petri dish was not a part of the plan, but Fleming noticed the culture had prevented the growth of staphylococci. Further examination revealed penicillin, a powerful antibiotic that could be used to treat everything from tonsillitis to syphilis.

Sir Alexander Fleming’s careless mistake became one of the most important medical discoveries in history. Thanks to penicillin, the rate of death due to infectious disease is now 5% of what it was at the beginning of the 20th century.

What could you create?

What could you create?

ACCIDENTAL BREAKTHROUGHS

Today’s infographic, from Broadbandwhatever, highlights some noteworthy accidental inventions in modern history and demonstrates that not all accidents are created equal.

OTHER NOTEWORTHY ACCIDENTAL INVENTIONS

Coca-Cola
The 1880s was the era of miracle elixirs and across America pharmacists were cooking up “cures” for every conceivable ailment. Atlanta-based pharmacist, John Pemberton, capitalized on the trend by selling a French Wine Coca concoction that was touted as a cure for headaches and nervous disorders. Pemberton’s business hit a speed bump in 1885, when Atlanta banned the sale of alcohol, so he omitted the wine and created a coca-based syrup that could be mixed with carbonated water and drank as a soda. He named this new “brain tonic” Coca-Cola.

Velcro
Swiss engineer George de Mestral was out hunting in the Alps with his dog when he noticed burrs sticking to its fur. To satisfy his curiosity about what makes burrs so “sticky”, Mestral viewed one under a microscope and observed the tiny hooks that allow it to latch on to surfaces like fabric and fur. For years, Mestral experimented with a variety of textiles before arriving at a solution: Velcro, which he eventually patented. The technology was useful, but really began to take off in popularity when Apollo astronauts used Velcro to keep objects secure in orbit.

Teflon
Next time you’re making breakfast, remember that Roy Plunkett is the reason you’re able flip pancake with ease. Long before CFCs became the environmental super-villain depleting the ozone layer, the chemist was aiming to create a new type of chlorofluorocarbon. One day, when Plunkett returned to a refrigeration chamber to check on an experiment, a canister that had contained gas had vanished leaving a few white flakes behind. Upon examining the mysterious substance, he realised it had a very high melting point and was very effective as a lubricant. Teflon was first used in military applications and is now famously applied to cookware around the world.

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ByCarolyn Keane

An Essential 9-Point Checklist for any Entrepreneur Looking to Sell an Online Business

An Essential 9-Point Checklist for any Entrepreneur Looking to Sell an Online Business

Image credit: SanneBerg | Getty Images
There are many reasons why an entrepreneur ultimately decides to exit a business. Some of the best incentives? Moving on to new opportunities; recapitalization; and, perhaps best of all, an especially lucrative buyout offer.

Related: 10 Questions to Ask Before Selling Your Business

No matter what the reason, if you’re the one moving on, take the necessary steps to extract the maximum value possible from your sale. With all the blood, sweat and tears you’ve put into building your business, don’t let yourself be shortchanged on the way out.

Here are nine actionable steps you can take to better prepare your business to be sold to a discerning buyer, along with suggested resources to help you accomplish them.

1. Detailed financials

Having strong accounting principles in place, from the beginning, will help put you in a position to succeed.

Industry stalwart Quickbooks provides you with all the tools you need to track your financials and generate detailed reports. It makes the process easy, too — Quickbooks automatically syncs with most bank accounts– drastically cutting down on data entry.

2. Verified traffic

Google Analytics is an indispensable tool for monitoring and verifying your website traffic. It’s the first step to knowing who your prospects are, what they want, where they’re coming from and how far they’ve gotten through your conversion funnel. If you have a website and haven’t set up Google Analytics, stop whatever else you’re working on and do it now.

Being able to show verified traffic to a buyer, over as long a time frame as possible, will greatly enhance the salability of your business.

3. Stand-alone branding

Building a brand strongly tethered to a founder’s persona might feel right when you first start. But if that brand becomes successful, it’s preferable that the messaging not be too closely tied to its founder. That can actually become an obstacle when it’s time to sell, particularly if the founder is to have no ongoing role in the business after the exit.

Related: Time to Sell Your Business? You’ll Need Metrics.

Consider building a stand-alone brand right from the get-go. Your brand should be aligned with your values and your company’s core mission. A smart branding strategy can help you achieve those aims without the founder being the “face” of the business.

Unfortunately, there’s no quick fix for building a brand. But it’s more important than ever.

Branding guru David Lemley’s Retail Voodoo site, while not specifically geared toward online businesses, is a great resource for learning more about the importance of branding strategy and its potential ROI.

4. Keyword analysis

Knowing what keywords your prospects are searching for can help you, and any potential buyer, assess whether your site is built on a solid search engine optimization (SEO) foundation.

To find out what keywords your site should be targeting, use tools like SEMrush to uncover which organic and paid keywords drive traffic to your competitors. The Google Keyword Tool enables you to get the most accurate search volume and PPC (price per click) data for those keywords.

A site that ranks high in search engine result page (SERP) listings on relevant keywords will earn a higher valuation. Prospective buyers can be assured that their acquisition target is ahead of the game for organic traffic and has a clear marketing strategy for both free and paid clicks.

5. Content marketing

ROI in content marketing has a reputation for being slippery to measure. Despite this, content is the foundation of SEO. Having a proven content marketing strategy, with positive search traffic results to back it up, can measurably increase the value of your business.

Content marketing isn’t just about your blog. It applies to many channels: social media, product descriptions, guest posts, Youtube videos, etc. Anything content-related that drives traffic to your site and promotes lead conversion fits under this umbrella.

Once upon a time, all you needed for a solid SEO strategy was to stuff your site with keywords. Google is much too smart for that now, as are your customers. There’s simply no substitute for quality content. Deploy it, using a coherent strategy for improving your search rankings. Your bottom line, and your valuation, will grow.

6. Outsourcing

Outsourcing is an important element in fostering limited owner involvement — a key factor buyers look for in any online business acquisition. While building the right remote team takes work, having it in place, and having your standard operating procedures (SOPs) well documented, will greatly improve the salability of your business.

While there are many options for outsourcing, often industry-specific ones, two of the most reputable companies remain Upwork and Toptal.

7. Legal

Make sure you have clear and verifiable rights to all of your intellectual property. This includes any trademarks, copyrights or patents your business might hold. These can be an invaluable asset to your company, and any serious buyer will want to ensure that these are owned (and thus able to be sold) free and clear.

Additionally, make sure to get non-disclosure-agreements (NDA) in place with anyone you enter into negotiations with. Do this before you start talking seriously — and certainly before you reveal any sensitive information, financial or otherwise.

An option here is offshoring, or outsourcing of legal assistance, through legal process outsourcing (LPO). For relatively simple tasks, such as forming an LLC or S-Corp or running a trademark search, LegalZoom may be another viable option.

When it comes to something as important as protecting your IP, however, always employ our own counsel.

8. Know your value.

After you’ve taken all of the steps above, you or a qualified professional should be in a very good position to assess the true value of your business. There are industry standard-valuation methods for this: Typically the seller discretionary earnings (SDE) model is used to value a business worth under $5 million, while “earnings before interest, taxes, depreciation and amortization” (EBITDA) is used for companies valued over that amount.

9. Know your buyer.

One of the many reasons to consider approaching an M&A advisor to help with the sale of your business is that he or she will have already done the due diligence required to vet qualified buyers. These professionals will entertain offers only from candidates who have met stringent criteria. If you elect to go it alone, all of this responsibility falls on you, the seller.

Related: Expert Advice to Help You Prepare to Sell Your Business

Final thoughts

Building a successful business, and growing it to the point where it might attract attention from a buyer, is no small feat. Neither is coming to the decision that it’s time to move on. You may be ready to take your foot off the gas on this particular vehicle, but don’t stop before crossing the finish line. Follow the steps outlined above to ensure you get the maximum possible return when selling your online business.

 

https://www.entrepreneur.com/article/304690?utm_source=newsletter&utm_medium=email

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ByCarolyn Keane

How to Write a Business Plan

How to Write a Business Plan

Now that you understand why you need a business plan and you’ve spent some time doing your homework gathering the information you need to create one, it’s time to roll up your sleeves and get everything down on paper. The following pages will describe in detail the seven essential sections of a business plan: what you should include, what you shouldn’t include, how to work the numbers and additional resources you can turn to for help. With that in mind, jump right in.

Executive Summary

Within the overall outline of the business plan, the executive summary will follow the title page. The summary should tell the reader what you want. This is very important. All too often, what the business owner desires is buried on page eight. Clearly state what you’re asking for in the summary.

Related: How to Start a Business With (Almost) No Money

Business Description

The business description usually begins with a short description of the industry. When describing the industry, discuss the present outlook as well as future possibilities. You should also provide information on all the various markets within the industry, including any new products or developments that will benefit or adversely affect your business.

Market Strategies

Market strategies are the result of a meticulous market analysis. A market analysis forces the entrepreneur to become familiar with all aspects of the market so that the target market can be defined and the company can be positioned in order to garner its share of sales.

Competitive Analysis

The purpose of the competitive analysis is to determine the strengths and weaknesses of the competitors within your market, strategies that will provide you with a distinct advantage, the barriers that can be developed in order to prevent competition from entering your market, and any weaknesses that can be exploited within the product development cycle.

Design & Development Plan

The purpose of the design and development plan section is to provide investors with a description of the product’s design, chart its development within the context of production, marketing and the company itself, and create a development budget that will enable the company to reach its goals.

Operations & Management Plan

The operations and management plan is designed to describe just how the business functions on a continuing basis. The operations plan will highlight the logistics of the organization such as the various responsibilities of the management team, the tasks assigned to each division within the company, and capital and expense requirements related to the operations of the business.

Financial Factors

Financial data is always at the back of the business plan, but that doesn’t mean it’s any less important than up-front material such as the business concept and the management team.

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ByCarolyn Keane

Supreme Court of Canada Promises New Utility Test for Patents

What does “useful”, one of the basic requirements for the patentability of an invention, mean in Canadian patent law? On June 30, 2017, in AstraZeneca Canada Inc. v. Apotex Inc.(AstraZeneca), the Supreme Court of Canada (SCC) ruled that the threshold for utility is low — a mere scintilla will do. In fact, requiring anything more is not only overly onerous; it is incongruent with the Patent Act and antagonistic to the bargain theory on which patent law is based.

 PROMISE AS PART OF PATENT BARGAIN

To be eligible for a patent, the law requires that an invention must be, among other things, new, useful and non-obvious. Should a new, useful and non-obvious invention be denied patentability because a patent application and the resulting patent include a superfluous statement as to a specific level of utility that is not fulfilled at the time the application was filed?

The “bargain theory” of patent law is based on the grant to an applicant of the exclusive rights in an invention for a limited period of time in consideration for disclosure of the invention to benefit society. In recent years, a statement of utility in a patent has been considered a “promise”, forming part of the bargain. If a promise extended beyond that which could reasonably have been understood as a hoped for advantage at the time of filing the application, the patent was held invalid for a lack of utility. This is no longer the case.

In AstraZeneca, in a unanimous ruling, the SCC struck down what had come to be called the “promise doctrine” as “unsound”. In doing so, the SCC reversed years of judge-made law and more closely aligned the utility requirement with that of most of the industrialized world.

THE PROMISE DOCTRINE

The requirement that an invention must be useful is enshrined in the definition of “invention” in the Patent Act (Act). But how is usefulness or “utility” assessed?

In a 1981 decision, instead of defining what utility is, the SCC defined what utility is not. The SCC said that there is a lack of utility if “the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the [patent] specification promises that it will do“. It is the latter part of this statement that led to the promise doctrine.

Over the years, the Federal Court of Canada has interpreted and applied the above language to construe a statement in a patent that speaks of an advantage, directed to what the invention will or will not do, as a promise. This “promise of the patent [was] the yardstick against which utility [was] measured” and had to be either specifically demonstrated or soundly predicted at the filing date of the application. In Canada, unlike some other countries, evidence of events after the filing of the application is prohibited. Additionally, if a patent included multiple promises, each had to satisfy the utility requirement independently.

BACKGROUND

In the above action, Apotex sought to invalidate AstraZeneca’s patent for the commercially and functionally successful esomeprazole drug, sold under the NEXIUM trade-mark, comprising salts of one of the two mirror image molecules contained in the previously known mixture, omeprazole. Both drugs are used to decrease stomach acid and treat gastric reflux and related conditions; the difference being that the single molecule was found to work better than the mixture.

Apotex succeeded at trial on its argument that AstraZeneca’s patent included a promise of utility beyond a “hoped for advantage”. Specifically, the construed promise said that the new drug is more effective than the previously known mixture and provides less variation in patients’ response.

Esomeprazole did provide an improved therapeutic profile, which did lead to a lower degree of individual variation. However, AstraZeneca did not specifically know this at the time the application was filed and only became aware of it through clinical trials that took place later. The trial court held that, on a purposive construction, the patent as a whole did not provide a sufficient basis to soundly predict this result at the filing date. Therefore, the patent lacked utility and was invalidated. The decision was upheld on appeal.

The result in AstraZeneca was due in part to the fact that the patent was a “new use” case, in which the esomeprazole molecule was previously known and the foundation for the invention was the new (or improved) use. A new use patent is subject to an elevated disclosure requirement, which is meant to prevent an applicant from making an unverified promise to obtain a monopoly on an invention that, but for the promise, would be in the public domain. Importantly, however, even under this standard, if no promise was made in the specification, a “mere scintilla” of utility would have sufficed and the patent would stand.

NEW TEST FOR UTILITY

On further appeal, the SCC considered whether a patented invention that includes a statement that could be construed to be a promise should be required to satisfy that promise at the time of filing of the application.

The biggest challenge the SCC appeared to have with the promise doctrine was that the promise could be found anywhere in the claims or the patent’s description, although the claims alone are traditionally analyzed for the other requirements of patentability and the description is only considered when there is ambiguity in the claims. The SCC concluded that there is no basis in the Act for looking to the description to satisfy utility, and doing so conflates two distinct requirements (utility and disclosure).

The SCC abolished the promise doctrine and replaced it with another, simpler test of utility that requires determination of:

  • The subject matter of invention, as defined by the claims; and
  • Whether that subject matter is capable of use for a practical purpose.

The SCC noted that any degree of usefulness related to the purpose of the invention satisfies this requirement.

WHAT’S ALL THE FUSS ABOUT?

The only reference in the Act to utility is the reference to “useful” in the definition of “invention”. The promise doctrine appears to have gone far beyond this requirement. As the doctrine became entrenched, numerous patents for drugs were invalidated for an absence of utility despite the commercial success of the drugs.

The costs to the innovative pharmaceutical industry of dealing with the promise doctrine were significant. To illustrate, after two of Eli Lilly’s Canadian patents were invalidated by the promise doctrine, it initiated a C$500-million claim against the Government of Canada, alleging that the doctrine violated the intellectual property standards under the North American Free Trade Agreement (NAFTA). Although the NAFTA challenge failed, the value of challenging the promise doctrine demonstrates how significant the SCC decision on utility will be for patentees going forward.

 

http://www.jdsupra.com/legalnews/supreme-court-of-canada-promises-new-94248/

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