As NHL cancellations are pushed
through Nov. 30th, hockey fans must resort to other means of
entertainment. Try patent cases.
In Easton Sports Canada Inc. v. Bauer
Hockey Corp. , 2011 FCA 83 (CanLII), the court
reviewed allegations that Easton infringed Bauer's Patent No.
2302935 (the '953 Patent). The '953 Patent was originally
granted on November 20, 2001 and expires on September 4, 2018. One
of the issues on appeal was whether the invention was disclosed
during on-ice tests of the prototype skate.
A patent is invalid if the invention was disclosed by the
inventor more than one year before the filing date of the patent.
In this case, Easton attacked the validity of the '593 Patent
by arguing that Bauer revealed the invention at a test event - a
hockey game between Bauer employees, where the prototype skates
were worn. The test event was open to the public and Easton argued
that a spectator could have observed the skates and made out the
essential elements of the invention. At trial and on appeal, the
court rejected this argument. Although the skates could be
observed, they were not available for close inspection or
dismantling by spectators, and merely observing the players wearing
the skates during a game did not, in this case, "disclose or
enable" the invention.
Lessons for business?
Dislcosure of your invention prior to filing a patent
application can be fatal to patentability.
Confidentiality agreements can be a useful tool to ensure that
invention disclosure is not public - but these agreements should
not be seen as a complete one-size-fits-all solution.
Any testing of the product - particularly field testing in a
location where the public may have access - must be handled very
In Canada and the US, there is a 1-year grace period in which
to file a patent application after the first disclosure, but that
grace period is not available in all countries, and disclosure
result in loss of patent rights in critical overseas markets.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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