In Patent-Speak: When is a Brassiere an N95 Mask?

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 that?

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!

COVID-19 Crisis: Canadian Government amends Patent Act to produce patented medical supplies

By Liz Gray and Natalie Raffoul

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.

Offering for sale could be a public disclosure of your invention: get patent pending before selling!

By: Dennis Haszko

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)[1]. 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
  • the invention must be ready for patenting. [2]

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.

Key Takeaway

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.


[1] US Supreme Court, No. 17 – 1229, 2019.

[2] US Supreme Court, No. 97-1130, 1998.

Brion Raffoul Welcomes Leber IP Law to Ottawa

Brion Raffoul and Leber IP Law enjoyed a great evening at Captive Escape Rooms last night! Escape rooms are a great team building exercise that Brion Raffoul has used in the past. Everyone has to work together in a time crunch situation to escape!

Brion Raffoul was happy to welcome US Patent Attorneys Celia Leber and Dave Robertson to Ottawa and we wish them safe travels home.