According to the Canadian Patent Act, to be granted a
patent, an invention must not have been "available to the
public" before the patent application was filed with the
Canadian Patent Office. This is known as "novelty".
However, every rule has its exceptions.
One of these exceptions was discussed in a decision from the
Federal Court of Canada1. This exception is rarely
invoked. The judge based his reasoning on old decisions, the
earliest dating from 1904. The exception is based on an
"experimental use" of the invention:
"[E]xperimental use in order to bring the invention to
perfection, does not constitute public use[...]. This applies in
particular where, of necessity, the experimental use must be
conducted in public."
In this case, Bayer performed clinical studies with the general
public which were necessary to prove that a drug was safe. Bayer
took reasonable steps to ensure the confidentiality of the relevant
documents and to ensure that unused tablets were returned. The
theoretical possibility that some tablets were retained and
analyzed was just that, theoretical. These clinical studies were
therefore not considered a public use. Here are some other
circumstances where the exception was applied
The inventor of a snowplow tested his invention in Quebec City
by attaching it to a tram and using it openly in the streets for
years before filing a patent application. The inventor said the use
was experimental and that he was fine-tuning his invention based on
his observations. The Court found that the publicly tested snowplow
had never gone beyond the experimental phase, and said the public
use of an invention by the inventor for the purpose of perfecting
it does not make an invention accessible to the public as long the
public acts were reasonable, necessary and done in good faith.
The Animal Feeder
A farmer had a patent on an animal feeder. Before he filed the
patent application, the farmer used the feeder on his farm which
was accessible to the public. The Court found that the farmer had
no choice but to test his invention with his own cattle because
they were on his farm and would eventually be sold. His public use
was therefore considered experimental.
For a public use to qualify as an "experimental use",
the use has to be :
necessary and reasonable. In other words, it was impossible to
test the invention secretly and the inventor took reasonable steps
to ensure a degree of confidentiality; and
done for the sole goal of perfecting the invention, and not for
a commercial purpose.
Even if this exception exists, it is risky to rely on it. The
exception is not applied in the same way in all countries where
inventors might wish to protect their inventions, and does not
apply at all in some regions (e.g. Europe). One should therefore
keep inventions confidential and secret until a patent application
Bayer Inc. v. Apotex Inc. 2014 FC 436
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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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