Patents

• Author: David Vaver
• Pages: 270-422

270

CHA PTER 3

PAT E N TS

Inventions may be patented and protected under the Patent Act.1 This

chapter focuses on patents, with a sidelong gla nce at protection under

the Plant Breeders’ Rights Act (PBR Act).2

A. INTRODUCTION

Patents may be granted by the Patent Off‌ice (PO) for new, unobvious,

and useful inventions — ideas with practical industrial application: new

machines, products, proces ses, and improvements to ex isting technol-

ogies or knowledge. The grant lasts for twenty years from the date of

f‌iling the application, the international standard since 1994.3

1 R.S.C. 1985, c. P-4, as am. & renumbered [P Act]. See also Pate nt Rules, 1996

(SOR/96-423) [PR]; Canadian Inte llectual Property Of f‌ice, Manual of Patent

Off‌ice Practice (1998 ed., updated to De cember 2009) [MOPOP]. Patents are

granted under st atute; no common law right to a patent ex ists: Apotex Inc.

v. Sanof‌i-Synthelabo Canada Inc., [2008] 3 S.C.R. 265 at [12] [Sanof‌i]; Purdu e

Pharma v. Pharmasc ience Inc., 2009 FC 726 at [15] [Purdue].

2 Plant Breeders’ Rights Act, S.C. 1990, c. 20 [PBR Act].

3 P Act, above note 1, s. 45; s. 2 def. “f‌iling date” (for the f‌il ing date of an applica-

tion made under the Pate nt Cooperation Treaty of 1970 (as am.), 2 October 1989,

Can. T.S. 1990 No. 22 [PCT], see section A(5), “International Patenting,” in th is

chapter); Agreement on Trade-Related Aspect s of Intellectual Property Rights, In-

cluding Trade in Counterfeit Goods (1994), 25 IIC 209, art. 33 [TRIPs]. Countries

used to expe riment with different p atent periods. The f‌irst Can adian Patent

Patents 271

A major purpose of the patent system i s to stimulate the cre ation

and development of new technologies: to add “the fuel of interest to the

f‌ire of genius,” as Abraham Lincoln put it.4 At the same time, a patent

is supposed to give the public i nformation about t he technologies to

which it relates th at might other wise be kept secret. Further experi-

ment and advance by all are thus encouraged and, on the patent’s ex-

piry, the invention goes into the public domain for anyone to exploit as

they wish.5

Without patents, ideas have little protection. As soon a s a prod-

uct implementing the new idea hits the market, anybody can copy it

and compete with the original producer without incurr ing the in itial

costs of invention and product development. A patent gives its holder

a lengthy breath ing-space to enable the invention to be developed and

marketed, or e xploited through l icensing, without competition except

from non-infringing substitutes. The patent holder can t hus recoup its

initial outlay plus recover a prof‌it commensurate with the value the

market puts on the invention.6

Unlike a copy right, a patent does not just prevent copying: it con-

fers an absolute monopoly. Nobody may make or ex ploit the patented

invention, even if she arrives at it independently, has never heard of the

earlier inventor or patent, and does not mean to infr inge.7

Act of 1869 (S.C. 1869, c. 11 [1869 Act]) had a f‌ive-year term, renewable tw ice

for additional f‌ive-yea r terms, but eventually t he American term of seventee n

years was copied a nd retained until 1989. England st ayed until 1978 with the

fourteen-year ter m set by its Statute of Monopolies 1624, 21 Jac. 1, c. 3, s. 6. See

generally, W. Hayhurst, “Intellect ual Property Laws of Ca nada: The British

Tradition, the Amer ican Inf‌luence and the French Factor” (1996) 10 I.P.J. 265.

4 A. Lincoln, “Sec ond Lecture on Discoveries a nd Inventions” (1859), in D. Vaver,

ed., Intellectual Proper ty Rights: Critical Concepts in Law (London & New York:

Routledge, 2006) vol. 3, 31 at 36 [Vaver, Critical Concepts]; Chiron Corp. v. Orga-

non Teknika Ltd. (No. 10), [1995] F.S.R. 325 at 332 (Pat. Ct.).

5 Kirin-Amgen Inc. v. Hoechst Marion Rou ssel Ltd., [2004] UKHL 46 at [77] [Kirin-

Amgen]. These aspect s are sometimes wrapped i n the language of bargai n or

social contr act: but see section A(4)(a), “Bargain,” in chapter 1.

6 The comparable parag raph from the 1st edition was cited i n Polansky Electronics

Ltd. v. AGT Ltd., 1999 ABQB 816 at [35].

7 P Act, above note 1, ss. 42 & 44; Monsanto Cana da Inc. v. Schmeiser, [2004] 1

S.C.R. 902, 2004 SCC 34 at [49]–[50] & [157]–[59], aff’g with varied reme dy

[2003] 2 F.C. 165 at [30] (C.A.), aff’g 2001 FCT 256 [Schmeiser]; Bristol-Myers

Co. v. Beecham Group Ltd., [1974] A.C. 646 at 677 (H.L.) [Bristol]; Synthon BV v.

Smithkline Beecham PLC, [2005] UKHL 59 at [22] [Synthon]; C. Cotropia & M.

Lemley, “Copying in Patent L aw” (2008) Stanford Public Law & Legal The ory

Working Paper Serie s, Research Paper No. 1270160 at 1–3. See section F(1),

“General,” in this ch apter.

INTELLECTUA L PROPERTY LAW272

The patent does not give it s holder a positive right to make or ex-

ploit the invention: t hat right already exists at common law.8 Patent

holders may therefore be curbed by licensing or labelling laws and,

indeed, by other patents. Suppose I patent a new class of chemical com-

pounds: someone m ay later discover and patent a subclass of it that

works better or differently.9 Neither of us can t hen work t he second

patent or part of the f‌irst one without the other’s consent, so we either

must vacate the f‌ield or cross-license our right s.

Patent applications and grant s are every where on the r ise. Around

1.85 million applications were f‌iled worldwide in 2007,10 and inter-

national applicat ions under the Patent Cooperation Treaty (PCT) alone

ran to 156,000 in 2009.11 The United States, Europe, Japan, Korea, and

China account for three-quarters of this volume. In 20 09 the United

States Patent and Trademark Off‌ice (USPTO) granted 165,000 patents

(8,600 to IBM and Samsung alone), and the European Patent Off‌ice

(EPO) granted 52,000. By contrast, in a comparable period (the 2008/9

year), Canada granted over 18,000 patents: most to Americans (8,500),

then Canadians (1,800 plus), Japanese (1,600), Germans (1,300), French

(800), and Britons (750). At the other end of the sca le were China and

India, with just 200 patents bet ween them — hardly more than Bar-

bados (51), New Zealand (45), and Brazil (20).12

Such st atistics can change quickly. Thus, offers of tax and other

incentives to local f‌irms and workers helped China to exper ience a

recent rapid increase in domestic patenting and has made it potentially

the world leader in both applications f‌iled and (to Western eyes) invalid

patents granted.13 Elsewhere patent ownership remains highly concen-

8 Harvard College v. Canada (Commissioner of Patents), [2002] 4 S.C.R. 45, 2002

SCC 76 at [64]–[65] (dissent), echoing [2000] 4 F.C. 528 at [117] (C.A.) [Har-

vard]; Schmeiser, above note 7 at [30] (C.A.), following Forget v. Specialty Tools of

Canada Inc. (1995), 62 C.P.R. (3d) 537 (B.C.C.A.) [Forget]; Pete rson Electronic Die

Co. v. Plastiseal Inc. (1972), 8 C.P.R. (2d) 222 (Fed. T.D.), aff’d on other grounds

(1974), 14 C.P.R. (2d) 48 (Fed. C.A.); Steers v. Rogers, [1893] A.C. 232 at 235

(H.L.) [Steers]; National Phonograph Co. of Australia Ltd . v. Menck, [1911] A.C. 336

at 347 (P.C.), rev’g on other grounds (1908), 7 C.L.R. 481 (Aust. H.C.) [Menck];

I.R.C. v. Desoutter Bros. Ltd. (1945), 174 L.T. 162 at 163 (C.A.); Grain Pool of West-

ern Australia v. Commonwealth (2000), 202 C.L.R. 479 at [81]–[85] (Austl. H.C.).

9 Sometimes ca lled a “selection” patent: see section B(3)(d)(i), “New Substances

and Selection Patent s,” in this c hapter.

10 WIPO, World Intellectu al Property Indicators, 2009 (Geneva: WIP O, 2009) at 14.

11 Above note 3; see al so section A(5), “Internat ional Patenting,” in this chapter.

12 CIPO Annual Repor t 2008-09: Creativity and Innovation, App endix C, Table 14,

online: ww w.cipo.gc.ca. Larger numb ers are rounded off.

13 E. Zhou & B. Stembridge, Pate nted in China: The Present and Future State of In-

novation in China (Phil adelphia: Thomson Reuters, 2008) at 17–18.