Federal Court of Canada clarifies burden of proving anticipation resulting from prior use or sale

Baker Petrolite Corp. vs. Canwell Enviro-Industries Ltd.

The Federal Court of Canada has clarified in Baker Petrolite Corp. vs. Canwell Enviro-Industries, guiding principles to address the anticipation resulting from a prior issue or sale.

The Case:

Applicant Baker Petrolite Corp. owned a Canadian patent for a method of removing hydrogen sulphide, a poisonous substance from natural gas. The applicant had sold this chemical product before a certain relevant date. The main issue on appeal was whether the sale had destroyed the novelty of the invention and as a result invalidated the patent in question.

Considering the question of anticipation in the context of disclosure by prior use or sale, the Court enunciated the following principals.

To destroy novelty, the prior use or sale must -

1. make available to the public the information which describes the inventions;

2. amount to an "enabling disclosure";

3. in the case of a chemical product, allow for the analysis and discovery of its composition or internal structure;

4. allow for the analysis by a person skilled in the art, without the exercise of inventive skill, in accordance with known analytical techniques available at the relevant time;

5. be sold to someone who is a member of the public and free to use it as she or he pleases; but

6. it is not necessary to demonstrate that the analysis was actually conducted or that it could have been conducted;

7. the complexity of work, the amount of time and work involved in conducting the analysis is not determinative; and

8. it is not necessary that the product that is the subject of the analysis be capable of reproduction.

Applying the above principles to the facts of the case, the Court found the patent to be invalid based on respondent Canwell's showing that the invention had been made available to the public.