An invention must be “new” in order to be patentable: Patent Act, s. 28.2. Inventions that are not new are said to be “anticipated”.
Section 28.2 of the Patent Act1 provides the requirement that the claimed subject matter of a patent must not have been previously disclosed (albeit in a somewhat technical and verbose manner):
28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the “pending application”) must not have been disclosed(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;(b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;(c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date; or(d) in an application (the “co-pending application”) for a patent that is filed in Canada by a person other than the applicant and has a filing date that is on or after the claim date if(i) the co-pending application is filed by(A) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or(B) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim,(ii) the filing date of the previously regularly filed application is before the claim date of the pending application,(iii) the filing date of the co-pending application is within twelve months after the filing date of the previously regularly filed application, and(iv) the applicant has, in respect of the co-pending application, made a request for priority on the basis of the previously regularly filed application.
There is a two part test for anticipation, which is a question of fact. The Supreme Court in Apotex Inc v Sanofi-Synthelabo Canada (Plavix)2 set out the following two elements to determine whether a piece of prior art (meaning anything published before the filing date of the patent) anticipates a claimed invention:3
This two-step approach is a refinement of previous jurisprudence on anticipation, a classical statement of which is found in Beloit Canada v Valmet Oy:4
One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without the possibility of error be led to the claimed invention.
Anticipation must be found in a specific patent or published document, and not bits and pieces from a variety of prior publications melded together. Courts are wary of hindsight analysis, thus, “[a]nticipation by publication is a difficult defence to establish because courts recognize that it is all too easy after an invention has been disclosed to find its antecedents in bits and pieces of earlier learning. It takes little ingenuity to assemble a dossier of prior art with the benefit of 20-20 hindsight.”5
Any document can be considered prior art, so long as it is available to the public. “[B]eing available does not require that access to the information be easy, simply that it be possible using known methods and instruments.”6 If a book is available in a public library, even if the book is in a different language, and even if one could prove that nobody had ever accessed the book, it would still count as public disclosure.7
For prior art to anticipate an impugned patent, a skilled person “must […] be able to perform or make the invention of the […] patent without undue burden.”8
Rothstein J. set out a summary of the jurisprudence relating to enablement in Plavix, and stated the following four non-exhaustive factors to be considered:9
Public use or sale of an invention, whether as a standalone product or as part of a product, can constitute anticipating public disclosure so long as such a use or sale would enable a member of the public to make or obtain the invention. In Baker Petrolite v Canwell Enviro-Industries,10 Rothstein J.A. (as he then was) laid down a test for determining when a public sale or use constitutes anticipating disclosure:11