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.
Le Forum International sur la Propriété Intellectuelle – Québec (FORPIQ) tiendra sa 10eme édition à Montréal le 1er mai 2019 sous le thème « Naviguer dans une ère où innovation ouverte et propriété intellectuelle s’entremêlent ». Brion Raffoul y sera représenté par l’une de ses agents de brevets, Dominique Lambert. Une programmation relevée et des discussions stimulantes en perspective!