Brion Raffoul is delighted to welcome three (3) law students for 2020 summer internships! Joining our team are:
Tina is a law student at the University of Ottawa, graduating in 2022. She holds a Master of Applied Science in Electrical Engineering (specializing in nanotechnology) and a Bachelor of Applied Science Honours Degree in Nanotechnology Engineering (with co-operative education) from the University of Waterloo. Tina will be primarily focused on patent drafting and prosecuting for software, chemical, and mechanical inventions, and on IP licensing.
Alexandra Johnson Dingee
Alex is a law student at Western University, graduating in 2022. She holds a Bachelor of Science (Honours) in Biology from Queen’s University. Alex will be focused on patent drafting and prosecuting for medical, bio-tech, and biochem inventions, on trademarks, and on IP licensing.
Joshua is a law student at the University of Ottawa, graduating in 2022. He holds an Honours Bachelor of Applied Science degree in Biomedical Mechanical Engineering from the University of Ottawa and worked in the automotive industry before law school. Joshua will be primarily focused on patent drafting, searching, and prosecuting of mechanical inventions.
In these especially challenging times, one must be able to see through the fog of distracting information.
The same holds true for the bureaucratic process of filing for a patent. A case in point is a 3M Company patent (U.S. Patent No 3,064,329) for a molded nonwoven fabric article and related manufacturing process for making items such as porous breath-filtering face masks used by surgeons, physicians, and nurses subjected to contaminated atmospheres. Nowadays, we might call such items N95 masks.
Back in 1959, 3M equated their masks to women’s
undergarments. But notwithstanding the
distracting patent illustrations, this U.S. patent is not what some may think
of when considering N95 masks. Why is
The U.S. Patent & Trademark Office (USPTO) uses an
arcane classification system to pigeon-hole patent applications into the proper
“bucket” of technology. Although the
original patent classification of this 3M patent has changed during
reclassification efforts of the last 60 years, this patent is currently
classified in U.S. patent class 450, subclass 39. Here, the USPTO classifies inventions that
include “breast or chest, e.g., brassieres; molded preshaped shell-like cup,
e.g., plastic latex”.
Interestingly, the broadest claims of this patent actually
make no mention of breasts or brassieres.
Rather, brassieres are buried in two short claims towards the end of the
list of claims. So how can a brassiere
patent not be a brassiere patent, and why would 3M or any patent applicant
obfuscate the intended invention?
The answer can be as simple as the first rule of any good
persuasive writing: write for your audience.
The USPTO includes over 8,000 patent examiners that review
patent applications in discrete buckets of technology. Over time, each examiner
becomes expert in reviewing their own peculiar area of inventions. This pejoratively
means that each examiner knows a lot about very little.
One way that seasoned patent practitioners have learned to
use this to their advantage is to draft a patent application broadly enough to
cover the intended commercial product, but simultaneously insert enough flavour
into the application to shepherd the case into a preferred bucket of
technology. In the case of the 3M
patent, it is likely that the examiner who reviewed and granted that brassiere
patent was expert in women’s undergarments rather than N95 masks. In theory, this can make a patent
practitioner’s job a little easier when trying to persuade a USPTO examiner
that an invention is new and nonobvious.
Knowing how to effectively navigate the USPTO patent
classification system to get a patent application under the right examiner’s
nose can often affect the outcome of negotiations. So, when is a brassiere not a brassiere: when
the patent applicant calls it an N95 mask.
Indeed, a rose by any other name would smell as sweet!
Last week, the Government of Canada passed an omnibus bill in response to the COVID-19 crisis that adds special powers to the Patent Act to ensure medical supplies, medication or vaccines can be produced locally.
Under the new Section 19.4(1), upon application of the Minister of Health, the Commissioner of Patents shall authorize the Government of Canada and any person specified in the application to make, construct, use and sell a patented invention to the extent necessary to respond to the public health emergency described in the application.
The application must include the Chief Public Health Officer’s confirmation that “there is a public health emergency that is a matter of national concern”, as well as a description of that public health emergency (subsection (2)). Further, subsection (7) explicitly clarifies that the use or sale of a patented invention under such an authorization, in relation to a public health emergency, is not an infringement of the patent.
Upon granting the authorization, the patent holder would receive “adequate remuneration under the circumstances” as determined by the Commissioner of Patents.
Any authorizations made cease to have effect when the Minister of Health determines that they’re no longer needed, or one (1) year after grant, whichever comes first. Additionally, no authorization shall be granted after September 30, 2020.
The Brion Raffoul team was proud to make a donation to Partage Vanier through the proceeds of our holiday bake sale and a matched donation by the firm. It was fitting that we gave back to this amazing community on our move day(!) after being there for 8 years.
Partage Vanier is the most used food bank in Ontario, feeding approximately 450 families a month. The foodbank relies solely on donations from the community to feed its patrons. To donate to Partage Vanier click here.
The Toronto Chapter of the Licensing Executives Society (LES) (USA and Canada) is providing a Certified Licensing Professional (CLP) exam preparation course on March 25, 2020 from 8 am to 5:30 pm. Natalie Raffoul will join Michele Riley, Managing Director of Stout Risius Ross LLC and Paul Stewart, Managing Director of PASCO Ventures LLC, in providing a 9-hour, in-depth and substantive course that will help prepare professionals for the CLP Exam.
The course will be held at Torys LLP, 79 Wellington St. W., 33rd Floor (reception), Toronto, Ontario M5K 1N2
Register before February 14, 2020 for the early bird rate!
Brion Raffoul is pleased to announce that Natalie Raffoul has been selected as an IAM Global Leader. “When it comes to business method and software patents, few are as knowledgeable as Natalie Raffoul. More than just a prosecution pro, she is a savvy strategist who understands how to secure commercial advantages for clients in global marketplaces.” Click here to find out more.
As a patent agent, Ms. Raffoul specializes in procuring IP assets for her Canadian clients worldwide. She also advises on worldwide IP filing strategies and portfolio management, which includes trade secret considerations. Her technology expertise includes: electronics, communications and networking, manufacturing, consumer products, artificial intelligence, cybersecurity, and mobile applications.
As a lawyer, Natalie also advises on IP enforcement issues, in the pre-litigation context, and she is an expert in negotiating successful agreements for her clients, that cover IP rights in Canada and globally.
Natalie holds a degree in electrical engineering from Western University (London, Canada) and a Juris Doctor in law from Queen’s University (Kingston, Canada). She is also a registered patent agent.
The Brion Raffoul team looks forward to welcoming clients at our new offices, located at 329 Churchill Ave, Ottawa, when the practice moves to its newly renovated building in February, 2020.
Over the holidays, Brion Raffoul will be closed on December 25 and 26, 2019. The Canadian Intellectual Property Office (CIPO) is also closed these same days. Any patent, trademark or industrial design deadlines falling on December 25 and 26, 2019 are extended to December 27, 2019.
Wishing you a wonderful holiday season and a joyous new year!
Generating income is typically top of mind
for any business. For technology companies, this often means that sales and
marketing go hand-in-hand with product development. During product development,
confidential clauses in agreements shield companies from public disclosure of the
invention. However, the United States has an “on-sale” bar which prevents one
from patenting an invention that has been offered for sale for more than one
(1) year prior to the patent application filing date.
Recently, the U.S. Supreme Court held in Helsinn Healthcare S.A. v. Teva
Pharmaceuticals USA, Inc. (Helsinn)
that a sale made under confidentiality obligations (a so-called “secret sale”)
qualified as prior art under the “on-sale” bar in 35 U.S.C. 102(a).
In that case, Helsinn Healthcare S.A. entered into a confidential agreement that
granted a partner company the right to, inter
alia, sell Helsinn’s chemotherapy product. Helsinn filed the first patent
application on their product more than a year after executing the agreement.
The U.S. Supreme Court held that even though the agreement between Helsinn and
its partner company was confidential, the “secret sale” was a bar to
patentability and thus Helsinn lost their patent rights. Accordingly, although
confidentiality clauses may work in many circumstances, caution should be exercised when discussing new products with
prospective customers prior to filing a patent application.
So how does a company prevent the
self-inflicted wound of invalidating its patent before the application is even
filed? Consider what actually makes the “secret sale” a problem in the first
place. The US Supreme Court cited Pfaff v. Wells Electronics, Inc., which
provided the requirements for the conditions that create an on-sale bar:
the product must be the subject
of a commercial offer for sale; and
A commercial offer for sale will typically
require some manifestation of intent. However, determining when a product is
ready for patenting can be confusing. The court held in Pfaff that drawings or other descriptions of the invention that enable
a skilled artisan to practice the invention were sufficient to make a product “ready
for patenting”. Notably, the Court in Pfaff
held that even an offer for sale that
did not disclose the details of the invention could cause an inventor to lose
the right to patent.
Helsinn raises significant issues for early stage business activities. During early product development, offering
product solutions for sale can be easy and unintentional. For example, whiteboard
presentations to prospective customers may in fact provide enough detail of the
product to make the invention ready for patenting. Any suggestion of an offer
for sale during such discussions could easily run afoul of the on-sale bar. An
NDA is not enough, both parties should
be clear as to whether or not there is an intention to sell the product. The other option: file a patent application before
your one-year grace period lapses.
This article first appeared in IAM Yearbook: Building IP value in the 21st century 2020,a supplement to IAM, published by Law Business Research – IP Division. To view the guide in full, please go to www.IAM-media.com.
Brion Raffoul will be closed on October 14, 2019 for Canadian Thanksgiving. The Canadian Intellectual Property Office is also closed, so any patent or industrial design deadlines falling on October 12 to 14, 2019 are extended to October 15, 2019.