Common Patent Misconceptions – Myth #3

This article is part of a series on commonly held misconceptions about patents. Many prospective patentees often have unfounded reservations about patenting their inventions. The aim of this series of short articles is to debunk these common myths around patent protection.

Patent Myth #3: My idea is too obvious for patenting.

When assessing whether an invention is patentable, broadly speaking, there are three core aspects that must be considered. These aspects are novelty, nonobviousness and utility. In this article, we’ll focus on the second aspect, nonobviousness, which, in essence, means that the invention must possess some sort of “inventive spark”.

Often times, inventors may believe that an invention they have come up with isn’t really inventive. There can be a number of reasons for this thinking. Maybe the inventors have made an improvement to an existing technology, or maybe the invention combines a few known aspects in a new way. Whatever the case may be, inventors should try to maintain an “inventive until proven obvious” stance when faced with a situation like this.

An example of a success story in relation to this is the Haberman® Feeder. After her daughter was born with a cleft palate, Mandy Haberman invented a special bottle for infants that experience difficulties suckling. Haberman obtained patents for the bottle, which was a huge success, as were many of Haberman’s other products.

A key marker of a successful product is the appearance of infringers, which was the case with Haberman’s products. In court, the infringers argued that the patent in question was invalid for obviousness, a very common tactic exercised by infringers when they are cornered. The court found otherwise though and explained the invention was not obvious for a number of reasons, including that fact that even much larger companies in that space had been unable to address the problem it had solved.

Haberman explained to the World Intellectual Property Organization (WIPO), “Because I had patents, I was able to go to court, defend my idea, enforce my patent rights and that meant that I kept my monopoly in the market. This made me a lot of money; if I had not had the patents, I would not have made anything”. She later also initiated legal proceedings to defend her IP rights in the US and Europe, where the validity of her patents was established. Haberman stated that, “As a result of my US patents being declared valid in court, other companies have since requested licenses”.

A key takeaway from the Haberman story is that patents are powerful tools which may be both used to defend one’s rights, as well as asserted against others offensively. However, neither option would be available to an inventor who did not obtain their patent rights. The mindset that one’s invention is too obvious to even attempt patenting can only result in the inability to counter when copycats eventually arise.

If you have created or invented something which you feel may be patentable, please feel free to reach out to MBM for a free consultation.

For more information please contact:

Osman Ismaili, Patent Lawyer

T: 613.801.1054
E: oismaili@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.

Importance of Determining Inventorship Prior to Patent Issuance

Determining inventorship, prior to patent issuance, can save an applicant the costly procedural and evidentiary burden required for correcting the named inventors post patent issuance. Since Canadian patent law requires that each patent application list the sole inventor(s) of the claimed invention, divisional applications derived from an application having two or more inventors must list only the inventors that contributed to the claimed invention.

Although a patent may still be issued for an application not listing the sole inventor(s) of the claimed invention, the patentee may be required to correct the records of the Patent Office to reflect the sole inventor(s). However, post patent issuance, to correct the records of the Patent Office, the patentee must bring an application to the Federal Court (“Court”). In doing so, the patentee must follow the evidentiary and procedural requirements for removing a named inventor and/or adding an inventor to the named inventors of the issued patent. This was the case in Inguran LLC dba STgenetics v Commissioner of Patents, 2020 FC 338, for which the patentee, STgenetics, brought an application to the Court for an order to remove six of the twelve named inventors from the records of the Patent Office relating to four issued patents.

To obtain the order for removing named inventors, ST genetics had to meet the test outlined in Imperial Oil Resources Ltd v Canada (Attorney General), 2015 FC 1218. The test asks two questions:

      1. Does it appear that one or more of the named inventors have no part in the invention? and

      2. Has an affidavit been provided to satisfy the Court that the remaining inventors are the sole       inventors?

In order to meet the test, STgenetics provided affidavits from both inventors determined to have contributed to the issued patents and from non-inventors incorrectly named as inventors. The determined inventors deposed that they contributed to the issued patents, and the non-inventors deposed that they did not contribute to the issued patents.

Based on STgenetics’ evidence, the Court determined that STgenetics met the procedural and evidentiary burden required for removing the names of the non-inventors. Accordingly, the Court ordered the Commissioner of Patents (“Commissioner”) to vary the records of the Patent Office with respect to the inventorship of the issued patents.

Although STgenetics’ application to the Court was successful, the application and the evidentiary burden to satisfy the Court of the relevant jurisprudential tests and procedural requirements could have been avoided had the inventorship been determined prior to the issuance of the patents. STgenetics, could have simply, prior to receiving the notice of allowance, requested the Commissioner to remove the names of the non-inventors. Had STgenetics done so, it could have saved the time and money spent in pursuing the Court application.

For more information please contact:

Jamal Hakimi, Patent Lawyer
T: 613.801.0509
E: jhakimi@mbm.com

This article is general information only and is not to be taken as legal or professional advice. This article does not create a solicitor-client relationship between you and MBM Intellectual Property Law LLP. If you would like more information about intellectual property, please feel free to reach out to MBM for a free consultation.