• About
  • Offices
  • Careers
  • News
  • Students
  • Alumni
  • Payments
Background Image
Bennett Jones Logo 100 Years
  • People
  • Expertise
  • Knowledge
  • Search
  • Menu
  • Search Mobile
A B C D E F G H I J K L M N O P Q R S T U V W X Y Z
View all
Practices
Corporate Litigation Regulatory Tax View all
Industries
Capital Projects Energy Funds & Finance Mining View all
Advisory
Crisis & Risk Management Environmental, Social & Governance (ESG) Governmental Affairs & Public Policy
View Client Work
Insights News Events
New Energy Economy Series COVID-19 Resource Centre Business Law Talks Podcast
Subscribe
Bennett Jones Centennial Menu
People
Practices
Industries
Advisory Services
Client Work
About
Offices
News
Careers
Insights
Law Students
Events
Search
Alumni
Payments
Subscribe

Stay informed on the latest business and legal insights and events.

LinkedIn LinkedIn Twitter Twitter Vimeo Vimeo
 
Blog

Newco Tank Cautionary Note on Over-reliance on Headings by Patent Drafters

March 19, 2015

Newco Tank Corp. and AG Canada Federal Court of Appeal 2015FCA47 16 Feb 2015

The Federal Court of Appeal upheld the dismissal of an appeal from a Re-examination Board which had considered Canadian Patent 2,421,384 and had determined that claims 12-14 were cancelled because they were obvious in light of newly presented prior art and the common general knowledge of a person of ordinary skill in the art.

The reviews by both levels of the Federal Court and by the Re-examination Board turned, to some large degree, not just on the obviousness of the concept (that waste heat from an internal combustion engine could be used to heat fluid in a tank associated with an oil well), but also that there was a need for a more efficient manner of heating such a tank, instead of the prior art method of burning propane in a fire tube through the tank to heat its contents. Appellant (patentee) argued that the concept was obvious only if the need itself was identified. Thus, in the Appellant's view, identification of the need was not in the prior art, and was inventive and non-obvious.

The identification of a requirement for efficiency was, all levels of review determined, found in a statement made by the patentee in the specification that there was a need for more efficient heating. The statement referred to was to the effect that the current production tank heating method was inefficient, and that the concept of the invention proposed a solution.

Not a surprising conclusion, EXCEPT that the statement in question was contained in the portion of the specification referred to as the SUMMARY OF INVENTION.

Ordinarily, patent drafters consider materials in the Summary of the Invention section of patent documents to describe new subject matter, the concepts of the invention, and do not expect this section to be cited as an admission of the state of the prior art. In this case, the trial judge ruled that it was reasonable for the Board to consider the information found under the SUMMARY OF THE INVENTION heading, to be part of the background knowledge which the skilled person would have.

This case should be viewed as a cautionary note to patent drafters that courts may choose to ignore headings when construing patents, and may refrain from elevating form over substance (per Mr. Justice Mosely at 2014FC287, p.16). Patent drafters should therefore be fastidious when making statements regarding the state of the art and any perceived shortcomings which may be addressed by the invention.

PDF Download

Authors

  • Michael R. Whitt QC Michael R. Whitt QC, Partner, Patent Agent, Trademark Agent
  • Edward  (Ted) Yoo Edward (Ted) Yoo, Partner, Patent Agent, Trademark Agent

Bennett Jones Marks 100 Years of Service and Trust

Related Links

  • Insights
  • Media
  • Subscribe

Recent Posts

Blog

National Indigenous Economic Strategy Rebuilding Indigenous Economies

June 24, 2022
       

Blog

Achieving Net Zero by 2050: The MMV Plan as a Fundamental [...]

June 23, 2022
       

Blog

Anti-Money Laundering Rules Expanded to Include Payment [...]

June 21, 2022
       

Blog

Alberta Court Declines to Extend Limitation Period [...]

June 20, 2022
       

Blog

The Financial Innovation Act: Regulations and Coming [...]

June 20, 2022
       
Bennett Jones Centennial Footer 100 Years
Bennett Jones Centennial Footer 100 Years
About
  • Leadership
  • Diversity
  • Community
  • Innovation
  • Security
  • History
Offices
  • Calgary
  • Edmonton
  • Ottawa
  • Toronto
  • Vancouver
  • New York
Connect
  • Insights
  • News
  • Events
  • Careers
  • Students
  • Alumni
Subscribe

Stay informed on the latest business and legal insights and events.

LinkedIn LinkedIn Twitter Twitter Vimeo Vimeo
© Bennett Jones LLP 2022. All rights reserved.
  • Privacy Policy
  • Disclaimer
  • Terms of Use
Logo Bennett Jones