Law Times

Law Times • February 6, 2012 FOCUS PAGE 13 Continued from page 11 allowing inventors to keep more funds for research, development, and the cre- ation of new industries and jobs. Eventually, the legislation will ren- der moot patent interference practices because filing first will establish priority. The new system, however, creates a system of derivation petitions to deal with claims that an invention was a copy from an earlier one. The system allows complainants to file a petition attacking the validity of the patent with the U.S. Patent and Trademark Office or by way of action in civil court within one year of the patent's issue or publication date. Both the Canadian and U.S. systems now provide for a one-year grace period on public disclosures by inventors. But under the new U.S. act, prior art dis- closed within one year of an application's effective date won't be citable against the invention. The U.S. effective date, how- ever, is either the application's filing date or the priority date if priority is in issue. By contrast, the one-year grace period in Canada requires that the Canadian application have a filing date within one year of disclosure by the inventor. "For example, the same public dis- closure by an inventor would not be cit- able as prior art on a subsequently filed U.S. application that claimed priority to a Canadian application even though the U.S. application could be filed up to two years after the initial public disclosure by the inventor," says Kevin O'Neill, who's also with Gowlings in Ottawa. As well, the new act allows inventors to support utility or sound prediction with post-filing data, while Canada does not. The upshot is that a Canadian filing must include sufficient data at the time of filing within one year of an initial pri- ority filing or within a year of an initial public disclosure. It's a difference that can affect the filing strategy. "The requirement for a Canadian application to contain data that supports utility claims must be balanced with the desirability of filing as early as possible in the U.S.," says Baker. "So an applicant wishing to file in both countries must ensure that the data required will be available within one year of an initial filing or inventor disclosure." From a litigation perspective, the new act introduces two new post-grant opposition remedies. Inter partes review replaces the inter partes re-examination process. The new procedure allows a complainant to challenge a patent within nine months of issue on grounds of anticipation or obviousness. The standard for deter- mining whether the application should proceed is "that there is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request." The legislation, however, leaves the existing ex parte re-examination pro- cess intact. However, a patent owner dissatisfied with the result can no lon- ger appeal to the District Court but must proceed in the federal circuit. The second new mechanism is post-grant review, which expands the defence of prior commercial use that was previously limited to busi- ness method patents to any type of patent. The upshot is that holders of trade secrets that opted to maintain the confidentiality of their inventions and refrained from seeking patents will be able to protect themselves against infringement claims by later inventors. Although Canada allows anyone to request re-examination, applicants must support their case with prior art and set forth the pertinence of it as well as the manner of applying it to the claim. "Our system, however, allows amendments to the patent claims under attack to overcome the prior art, which might allow patentees to strengthen their patents," says O'Neill. "That raises questions about whether the patent would better be attacked in court." Finally, the new act prohibits suing multiple defendants in a single lawsuit if the joinder is based solely on the alleged infringement of the same patent. "What this provision tries to do is to circumvent filings against multiple defen- dants in plaintiff-friendly jurisdictions like Delaware and Texas, where the pur- pose of the multiple filings was to avoid a forum conveniens argument in favour of one defendant or another," says Elkins. Although several of the new act's provisions took effect when the legisla- tion became law and others will have taken effect by press time or shortly thereafter, many won't be operative for some time yet. LT Now Accepting Applications for Classes Starting in September 2012 Part-time, Executive LLM program for corporate counsel and practising lawyers Information Sessions Wednesday, December 7, 2011 5:30 - 7:00 pm Friday, December 9, 2011 8:00 - 9:30 am Tuesday, February 14th, 8:00 to 9:30am Thursday, February 16th, 5:30 to 7:00pm U of T Faculty of Law, Faculty Lounge 78 Queen's Park, Toronto No registration required. Please feel free to drop in anytime during these hours. Taught by U of T Faculty of Law professors, together with top international faculty from INSEAD Business School, NYU School of Law, and Rotman School of Management. For more information and to apply: http://www.law.utoronto.ca/programs/GPLLM.html Supported by the Association of Corporate Counsel (ACC) - Ontario Chapter and in partnership with Carswell, a Thomson Reuters business. GLLM_LT_Feb6_12.indd 1 www.lawtimesnews.com 12-01-30 10:57 AM Leahy-Smith legislation 'biggest substantive change' since 1952

• Cover