Newco Tank Corp. and AG – Canada – Federal Court of
Appeal 2015FCA47 16 Feb 2015
The Federal Court of Appeal upheld the dismissal of an appeal
from a Re-examination Board which had considered Canadian Patent
2,421,384 and had determined that claims 12-14 were cancelled
because they were obvious in light of newly presented prior art and
the common general knowledge of a person of ordinary skill in the
The reviews by both levels of the Federal Court and by the
Re-examination Board turned, to some large degree, not just on the
obviousness of the concept (that waste heat from an internal
combustion engine could be used to heat fluid in a tank associated
with an oil well), but also that there was a need for a more
efficient manner of heating such a tank, instead of the prior art
method of burning propane in a fire tube through the tank to heat
its contents. Appellant (patentee) argued that the concept was
obvious only if the need itself was identified. Thus, in the
Appellant's view, identification of the need was not in the
prior art, and was inventive and non-obvious.
The identification of a requirement for efficiency was, all
levels of review determined, found in a statement made by the
patentee in the specification that there was a need for more
efficient heating. The statement referred to was to the effect that
" the current production tank heating method was
inefficient", and that the concept of the invention proposed a
Not a surprising conclusion, EXCEPT that the statement in
question was contained in the portion of the specification referred
to as the SUMMARY OF INVENTION.
Ordinarily, patent drafters consider materials in the Summary of
the Invention section of patent documents to describe new subject
matter, the concepts of the invention, and do not expect this
section to be cited as an admission of the state of the prior art.
In this case, the trial judge ruled that "it was reasonable
for the Board to consider the information found under the
"SUMMARY OF THE INVENTION" heading, to be part of the
background knowledge which the skilled person would have".
This case should be viewed as a cautionary note to patent
drafters that courts may choose to ignore headings when construing
patents, and may refrain from "elevating form over
substance" (per Mr. Justice Mosely at 2014FC287, p.16). Patent
drafters should therefore be fastidious when making statements
regarding the state of the art and any perceived shortcomings which
may be addressed by the invention.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).