The Patent Bargain
In Canada, patents are premised on a bargain: in exchange for disclosing and teaching your invention to the public, the Government of Canada via the Canadian Intellectual Property Office (CIPO) grants a 20 year term of monopolistic rights to exclude others from making, using, selling, and/or importing your invention into Canada. Amongst other criteria, the patent must be directed to eligible subject matter which is new, useful, and non-obvious (inventive).
Though issues of inventiveness and subject-matter eligibility often represent the main obstacles to obtaining a patent, inventors should not overlook the importance of sufficiently disclosing their invention as required to fulfill the patent bargain.
The Person of Ordinary Skill in the ART (POSITA)
Section 27(3) the Patent Act sets forth the requirement for a patent specification to describe an invention in sufficient detail. In particular, the specification must “correctly and fully describe the invention and its operation” in such “full, clear, concise and exact terms” as to enable any “person skilled in the art or science” to “make, construct, compound or use it”. In other words, the teachings of a patent specification must disclose the invention in such clear terms as to enable the POSITA to replicate the claimed invention.
Furthermore, patent law imputes the POSITA with Common General Knowledge (CGK) that is “generally known and accepted without question by the bulk of those who are engaged in the particular art”.1 Accordingly, a POSITA serves to interpret a specification in an “informed” manner, further armed with the knowledge of widely adopted principles. Thus, identifying the POSITA and the CGK can assist in determining the breadth of disclosure required to fulfil the sufficiency requirement in a patent specification.
An Example in Quantum Entanglement
A Canadian Patent Appeal Board decision from 20201 (the “Decision”) considered among other issues, whether an application relating to remote communications using photoluminescence or thermoluminescence of quantum-entangled particles was sufficiently disclosed, providing insight into quantum related considerations for the POSITA and the CGK.
More particularly, the Decision considered whether the specification enabled a POSITA, as further informed by the CGK, to reliably produce entangled samples as required by the claimed invention. The Decision first concluded that the specification did not provide instructions to the POSITA on how to produce entangled trapped electrons in samples of photoluminescent or thermoluminescent materials. The Decision then further considered whether a POSITA would be imputed with knowledge to reliably generate entangled electrons, ultimately concluding that the state of the CGK at the time the patent application was filed (2005) did not impute the POSITA with such knowledge. The Decision thus held that specification as drafted failed to sufficiently disclose the invention as claimed, and that the CGK could not otherwise fill in the gaps in the specification.
Though Applicants may be tempted to omit details in their patent specification, doing so may risk the validity of the patent. As such, Applicants may wish err on being over-inclusive in disclosing an invention, to ensure adequate disclosure and marginalize the potential reliance on matters that may be within the purview of the POSITA or the CGK. Failure to do so may otherwise leave Applicants vulnerable to disputing contested grounds from the perspective of the POSITA, risking the patent’s validity on a fictitious construct.