WIPO’s Service for Electronic Retrieval of Prior Filed Applications

One of the topics covered in a recent Webinar hosted by the PCT E-Services Unit on September 7th and 8th 2010, was the new Priority Document Access Service (DAS). This new service helps to reduce the amount of time required in obtaining and filing priority applications with multiple Patent Offices of second filing (these are the Offices that require a certified copy of a priority application).

The way this service works is it allows an Applicant to authorize one or more Patent Office(s) of second filing to retrieve the priority application electronically from the Patent Office of first filing. For instance, if an International Application is filed claiming priority to a U.S. patent application, this service would allow the Applicant to authorize the International Bureau to retrieve an electronic copy of the priority application directly from the United States Patent and Trademark Office to complete the requirement for a certified copy of the priority application. Please note, however, that prior to authorizing retrieval, the Applicant must first request the Office of first filing to make the priority application available to DAS (if the priority was filed in the US, Japan or Korea, the Applicant will need to file a request form). The Office of first filing will notify the Applicant when the priority document is electronically available in DAS by sending a corresponding access code. The Applicant is able to use the access code and priority application number to authorize an Office of second filing to retrieve the document.

As the service is still in its early stages, electronic availability of priority applications and their retrieval is currently limited to the following Offices: Australia, Spain, Great Britain, Japan, Korea, the United States and the International Bureau. The Chinese and European Patent Offices have been designated as next in line to make priority applications electronically available and perform retrievals, however, no notifications to date have been offered by either Office as to when this will happen. With respect to costs, according to a Representative at the PCT Safe help desk, there is currently no fee associated at the International stage with retrieving an electronic copy of a priority document, however, it is possible that the Patent Office, from which the priority application is being sought, may require a fee.

All in all it appears that plans to provide this service for other jurisdictions is currently being negotiated. Further progress in making Patent Office records electronically available is a good long-term development as it will help to simplify the filing process.

A helpful guide on how to use DAS is the September 7th and 8th 2010 Webinar, which is available here.

By Praneet Singh

Patentable Subject Matter and Claim Substance in Canada and the U.S.

On August 13, 2010, in the case of Ultramercial, LLC v. Hulu, LLC, California Central District Court Judge R. Gary Klausner ruled that U.S. Patent No. 7,346,545 “does not cover patentable subject matter.” The ‘545 patent contains two independent claims to a method for distribution of products over the Internet. Judge Klausner invalidated the patent, in part, because, “At its heart, therefore, the patent does no more than disclose an abstract idea,” and that “the additional limitations beyond the abstract idea at the core of the ‘545 patent do not limit the claimed invention in a meaningful way.”

There are some parallels between this decision and the current Canadian stance on patentable subject matter. One of the new Canadian Patent Office practices, outlined in Chapter 13 of the Manual of Patent Office Practice (MOPOP), and stemming from last year’s Canadian Patent Appeal Board’s decision on Amazon’s 1-click patent, is that the “substance” of a claim may be considered non-statutory, regardless of the claim’s form Re (Patent Application 2,246,933 (Amazon.com) (2009) C.D. 1290, Commisioner of Patents, Canadian Patent Office). For example, in a claim to an apparatus comprising a general-purpose computer configured to perform method X, a Patent Examiner may argue that all of the parts of the computer are known or obvious, and hence the only possible contribution is in method X itself. Furthermore, if method X happens to be a business method, or other non-technological method, or a description of a scientific principle or abstract theorem, the claim can be excluded from patentability.

The Ultramercial decision addressed method claims only, as opposed to apparatus or system claims. Indeed, much of the decision is dedicated to establishing that the ‘545 patent is neither tied to a machine nor transforms an article. In this regard, the Ultramercial decision does not go as far as the Patent Appeal Board did in Canada. The parallels may be a telling indicator, however, of how the comparative practices between the two countries may ultimately converge. In this regard, the 1-click decision is under appeal in Canada and the Ultramercial decision may yet be appealed in the United States. The story, it appears, is still evolving.

By Michael Maskery

Calculating Compensation for Government Expropriation

Under Section 19 of the Patent Act the Federal or any Provincial Government of Canada can apply for a compulsory license to any patent. This section has been in force for over 16 years but never used. Today the Canadian Intellectual Property Office announced a consultation on S. 19 to consider the mechanism by which compulsory licenses would be compensated. Details of the consultation process are available here.

One reason why Section 19 has not been used previously may be the existence of the Patented Medicine Price Review Board. The PMPRB currently oversees patented medicines and the prices that the patent holder can charge to the respective provincial governments. Because of the PMPRB the prices paid by Canadian Provincial Governments are often significantly lower than corresponding prices in the US, thereby reducing the economic incentive to seek a compulsory license.

While no compulsory licenses have been requested in the past, the Federal Government has indicated that it might seek a compulsory license in the event of a national health emergency. The push to produce sufficient H1N1 vaccine last year may be the factor which brought this issue back to CIPO's attention.

Any Patentee or applicant who may be subject to a compulsory license by the Federal or a Provincial Government should consider making a submission on this point before the November 8, 2010 deadline. Should you be interested in this, please contact Ariadni Athanassiadis.

By James Wagner

Recycled Use – Utility Must be Claimed and Supported

Utility

Where there is a new compound, utility can be described in the specification.  For a new use for an old compound, utility must be set out in the claims.

In AstraZeneca Canada Inc. v. Apotex Inc., 2010 FC 714 the invention at issue was a new method of separating the enantiomers of the drug Oesomeprazole.  The claim at issue was for a salt form of the (-) enantiomer at an optical purity of at least 99.8%.

J. Hughes held that the claim was directed to a previously known compound (the enantiomers had been separated previously), but at a high level of purity.  As the compound was previously known, its utility must be claimed.

[90] Even if claim 8 does not expressly claim utility, the claimed invention must possess utility. For example, one cannot simply prepare a compound, then claim it at various levels of purity, say 90%, 92%, 94%, 96%, etc., without stating why such purity level is useful. The invention is not simply a molecule or a molecule of a certain purity, it must, as the Federal Court of Appeal said in Merck & Co. v. Apotex Inc. (1995), 60 C.P.R. (31) 356 at page 373 “inherently” possess utility: (emphasis added)

Insufficiency

Insufficiency was addressed concurrently with utility.  Ultimately the general statement in the specification that an isolated enantiomer would provide “an improved therapeutic profile” was held to be the promise of the patent.

The lack of support for this promise (not even sufficient for a sound prediction), both in the specification and in the inventor’s possession, resulted in a successful challenge on this ground.

Anticipation

Prior art revealed method to separate optically distinct enantiomers, but did not describe specific purity.  Testing indicated that previous method could have been used to achieve same level of purity, but that it was not an inevitable result.  Consequently, J. Hughes held that there was no anticipation.

Obviousness

While the prior art didn’t necessarily result in higher purity levels, it showed one how to achieve them if desired, and there was expert evidence that higher purity is generally desired for pharmaceutical preparations.  Consequently, the claim of obviousness was held to be justified.

By James Wagner