Canada's laws provide a one-year grace period for public
disclosures by the applicant (or by a person who obtained knowledge
of an invention from the applicant) calculated from the Canadian
filing date. The particulars of Canada's grace period are
detailed in our article
"Public disclosures of inventions – what you need to
know about Canada's grace period." In a recent line of
cases centered in the Alberta oil sands, Canada's courts have
considered what constitutes public disclosure of an invention by
the inventor, which would trigger the start of the grace
The Supreme Court of Canada, in Apotex v Sanofi-Synthelabo
Canada, 2008 SCC 61, held that "disclosure"
of an invention can be established by, among other things, prior
use of the claimed invention in public. To establish prior use in
public, it is necessary to show that the invention was
"available" to at least one member of the public under no
obligation of confidentiality. While a plain reading suggests that
an invention that is hidden from view or whose inner workings are
inaccessible when publicly used would not be "available"
to the public, in two recent decisions, the Federal Court has
considered additional factors in reaching differing conclusions
when faced with such indicia.
In Wenzel Downhole Tools Ltd v National-Oilwell Canada
Ltd, 2012 FCA 333, the plaintiff invented a
drill apparatus which was rented out to customers more than one
year prior to the plaintiff filing a patent application. During
rental periods, the drill was encased in a box, and was not visible
or easily accessible to renters. Additional information on the
invention was available to renters upon request, but no request was
received. Even with no evidence that the inner workings of the
drill apparatus had been seen, or that the additional information
relating thereto had been accessed, the trial and appeal judges
found that the renters had an "opportunity to access"
that was not circumscribed or prohibited by agreement. The trial
and appeal judges decided that opportunity was sufficient to
constitute disclosure of the invention, and held the patent
A different result was reached in similar circumstances in Varco
Canada Ltd v Pason Systems Corp ("Varco"), 2013 FC 750. In Varco, a prototype of
the plaintiff's drilling apparatus was used on a third
party's oil rig more than one year before the filing date of a
patent application. The inventor testified that he only explained
the invention to the rig's operators in very general terms, and
that he personally performed all test drilling. When not in use,
the box containing the drilling apparatus was locked, and it was
not possible to see inside or otherwise access the invention's
inner workings. Phelan J. of the Federal Court Trial Division found
that these facts were consistent with an intent to keep the
invention confidential, notwithstanding the absence of a
confidentiality agreement, and that the use did not constitute an
enabling public disclosure. The patent was held to be valid and
The above cases do not evince any general proposition regarding
the public use of inventions which are not visible or are
inaccessible. Rather, the meaning of "available" to the
public is a fact-dependent question and must be assessed on a
case-by-case basis. Accordingly, the owner or inventor of an
invention may not be able to rely on the mere fact that an
invention's inner workings are not visible or are inaccessible
to preserve its confidentiality during periods of public use. In
cases where some public use of an invention is unavoidable prior to
the Canadian filing date of a patent application, conducting such
use under written obligations of confidentiality signed by all
participants may provide the applicant with some assistance if
faced with a validity challenge. Regardless, following an instance
of public use with a promptly filed patent application in Canada is
the safer route.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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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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