Canada: Responding To Canadian Patent Office Objections: Inherent Anticipation

This is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed.

The Objection

In a typical objection, the patent examiner asserts that the claimed compound is anticipated and cannot be patented because, although unknown at the time, the compound was inherently present in circumstances described in an earlier disclosure. The examiner will rely on section 28.2 of the Patent Act as the statutory basis for the objection.

This objection relates to the nature of the claimed invention, rather than an alleged failure of the patent application that discloses the claimed invention. Proof of novelty is not a requirement of Canadian patent specifications.

The Statutory Provision

In 1989, the Canadian Patent Act was revised to convert Canada from a first-to-invent regime to a first-to-file regime. Section 28.2 of the Patent Act is the provision which defines the patentability requirement of novelty in this new regime. The relevant part of the provision reads:

 28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed

(a) more than one year before the filing date by the applicant; [or]

(b) before the claim date by a person not mentioned in paragraph (a)

in such a manner that the subject-matter became available to the public in Canada or elsewhere;....

This provision is the Canadian equivalent of 35 U.S.C. §102, which establishes the novelty requirement in the US.

Addressing the Objection

Here are some reasons why you should consider arguing in traverse of a section 28.2 objection to a claimed compound on the basis that it was inherently present in circumstances described in an earlier disclosure:

  •  According to section 28.2, the anticipation assessment under Canadian law is directed to the entirety of the subject matter defined by a claim.
    • This subject matter is identified by reading the words of the claim. For example, in the Whirlpool case, the Supreme Court of Canada noted that "the scope of the monopoly remains a function of the written claims".
    • Section 28.2 aligns with subsection 27(4) of the Patent Act, which confirms that the "subject-matter of the invention for which an exclusive privilege or property is claimed" is solely defined in the "claim or claims" at the "end" of the "specification".
    • There can be no anticipation if the cited reference does not place into the possession of the public the entirety of the claimed subject matter.
  • Since the existence of the claimed compound was not mentioned in the prior art reference, the objection can only be based on prohibited 20/20 hindsight. In the absence of the applicant's specification, the patent examiner could not have asserted that the prior publication disclosed the claimed compound.
  • Case law confirms that an enabling disclosure is required to establish that a claimed invention was made available to the public.
    • There is no basis for suggesting that the claimed compound was enabled by a prior disclosure that does not even mention the existence of the compound. A method for making or using a claimed compound cannot be enabled when the compound itself was not known to exist.
  • It is important to distinguish inherency of disclosure from inherency of subject matter.
    • Since section 28.2 requires anticipation to be established on an element-by-element basis, inherency could, at most, be relied upon to supply an element that is not expressly described in a prior reference, but can reasonably be inferred from the earlier teachings of that reference.
    • The proper question to ask is:  Does the prior disclosure inherently teach the missing element? The inquiry is misdirected if it simply seeks to determine if the missing element was inherently present in circumstances described in the prior publication.
    • For example, if an applicant narrowly claims a bus comprising an engine and a specifically-defined articulated joint, it would be fair to suggest that a prior publication which discloses a bus with the same articulated joint, but makes no reference to an engine, anticipates the claimed invention:  the skilled person would necessarily understand a bus to include an engine, whether or not it is mentioned.
  • In most cases, an objection based on anticipation by inherency will fundamentally contradict the express language of section 28.2 and the balance established by the patent system.
    • It is unfair to deny patent protection for a claimed invention of which the public was previously unaware. The subject matter of such an invention was not, in fact, available to the public or enabled prior to the relevant date.
  • The unfairness of the objection is magnified in those cases where the patent examiner suggests that the claimed compound is also unpatentable because utility of the compound was not proved in applicant's specification.
    • Presumably, such an objection is grounded in the belief that the applicant did not establish possession of the claimed invention at the time of filing.
    • How, then, can a prior publication that neither mentions the claimed compound's existence, nor proves its utility, be considered an anticipatory disclosure of the same invention?
  • The Supreme Court of Canada has suggested that a purposive construction of patent claims requires identification of essential and inessential elements prior to assessing validity or infringement.
    • The specific language of section 28.2 of the Patent Act does not permit anything less than identification in a prior disclosure of the entirety of the claimed subject matter, including all recited elements (essential or otherwise).

Next up: Responding to an objection to the claimed invention under s. 2 of the Patent Act on the basis that it fails to fulfill the "promise of the patent". 

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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