Antedating in patent law
by Neil Padgett A valid priority claim can allow a patent application to benefit from the filing date of an earlier patent application so as to exclude certain prior art from consideration. Indeed, a valid priority claim is similarly important when filing in Canada, making it important to understand both the similarities and the differences between Canada and the U. Yeda Research At issue in Yeda Research was the citability of a novelty-destroying reference. law, in order for the claims of a patent to benefit from the filing date of an earlier application, various requirements must be satisfied.
Present-day American patent law still acknowledges that some parts of a patent claim may constitute "insignificant post-solution activity".
Point of novelty is a term used in patent law to distinguish those elements or limitations in a patent claim that are conventional or known from those elements or limitations that are novel, i.e. The term is also applied to a patentability test--the point of novelty test--which determines patentability (usually, obviousness) by considering the point(s) of novelty after dissecting out the conventional part. Flook the Supreme Court analyzed patent-eligibility (statutory subject matter) under a point of novelty test, citing Neilson v. The purpose of the patent-eligibility doctrine concerning insignificant post-solution activity, however, is that adding such limitations to a claim does not involve adding an "inventive concept" to the otherwise ineligible underlying idea.
In a Jepson claim, the conventional parts of the claim elements are placed in a preamble, such as "In a grease gun comprising a cylinder enclosing a piston longitudinally movable in said cylinder, said cylinder having a nozzle at a distal end thereof," which is followed by a transitional phrase such as "the improvement comprising," which is followed by a recitation of the element or elements constituting the point of novelty, such as "said nozzle having a fluted opening at a distal end thereof." A conceptual problem may arise in applying the point of novelty method of analysis when the elements at the point of novelty cooperate or co-act with the conventional elements or part of them in a novel way. The "contribution approach" in European patent law is similar to the American "point of novelty" approach.
Should you have any questions about priority claims in Canada, please contact a member of our firms’ Patents group.
The preceding is intended as a timely update on Canadian intellectual property and technology law.
