We live and conduct business in a burgeoning sharing economy driven by services such as Uber™ and Airbnb™. Thus, the development of shared office spaces such as HiVE™ and ShareDesk™ should come with no surprise. These shared working spaces provide flexible and often cheaper office solutions where businesses can co-inhabit, interact and often collaborate. However, sharing an office space may adversely impact a business’s ability to obtain valid patent protection.
Publicly disclosing an invention may impede a business from obtaining valid patent protection for their invention in Canada and the United States if a patent application for the disclosed invention is not filed within one year following the disclosure. Further, many countries outside of Canada and the U.S. employ an absolute novelty standard whereby valid patent protection is not available if the invention is disclosed prior to filing for patent protection.
However, not all disclosures impede valid patent protection in Canada.
First, to jeopardize an inventor’s ability to obtain valid patent protection in Canada, a disclosure must be “public.” Canadian courts have generally interpreted “public” to require disclosing an invention to at least a single person on a non-confidential basis. For example, in Gibney v Ford Motor Co of Canada Ltd (1967), 52 CPR 140 (Exch Ct), the Court held that the installation of a protective shield for a car generator under the hood of a customer’s car amounted to a public disclosure of the protective shield. The Court was of the view that the inventor took insufficient steps to protect the confidentiality of the invention and that any person who looked under the hood of the customer’s car could and would have seen the protective shield. Accordingly, the Court stated that “as soon as the unidentified customer drove out without any injunction or restriction placed upon him, [the invention] then became available to anyone who wanted to lift up the hood and look at it.”
Even if a disclosure is “public”, patent protection in Canada is not necessarily precluded. The disclosure must enable a reasonably skilled person to perform or manufacture the claimed invention. Even where an invention can be performed or manufactured on the basis of trial and error experimentation stemming from the disclosure, the disclosure would be construed as an “enabling disclosure.” However, the Supreme Court of Canada has stated that there can be no enabling disclosure in circumstances where a reasonably skilled person is placed under an undue burden to perform or manufacture the claimed invention.
Whether the disclosure of an invention qualifies as an enabling disclosure or not will depend on the facts surrounding the disclosure, and to add a further complication, some forms of disclosure are exempted in Canada. For example, experimental use, such as public experimental use of an invention to bring the invention to perfection, has been exempted in certain circumstances. The Federal Court has expressed the view that the experimental use exception “applies in particular where, of necessity, the experimental use must be conducted in public”.
In Bayer Inc v Apotex Inc, 2014 FC 436, Apotex argued that Bayer should be statutorily barred from obtaining valid patent protection for the contraceptive YAZ™, as Bayer’s European and US clinical studies for YAZ™ effectively amounted to a public enabling disclosure more than a year before the filing date of Bayer’s patent application for YAZ™. The Federal Court held that Bayer’s clinical studies were on an experimental basis articulating that they “were necessary to prove that the drug was safe and effective”. Further, the Federal Court found that “Bayer took reasonable steps to ensure the confidentiality of the relevant documents and to ensure that unused tablets were returned”. In another example, a farmer placed an experimental feeder at the back of his farm such that only an oil delivery man would have possibly been able to see the experimental feeder. The Federal Court was satisfied that, at all material times, the farmer was experimenting with the feeder and thereby the disclosure was not a public disclosure disentitling the inventor from valid patent protection.
In the context of shared office spaces, inventors should take care to keep their inventions confidential. For example, a complete circuit schematic diagram of an electronics invention sketched on a white board visible to an entire shared office space could potentially be construed as an enabling public disclosure and could bar valid patent protection in Canada. Similarly, leaving an assembled breadboard or breakout board on top of a desk within the shared office space would likely amount to an enabling public disclosure if at least one person not bound by a confidentiality agreement had access to the board. By contrast, leaving a finished prototype open to the public, provided the internal functioning of the prototype would be unknown and not discoverable by a person of reasonable skill in the art (i.e., a “black box” prototype), may not amount to an enabling public disclosure to bar patent protection in Canada. For information regarding what is meant by making the subject matter of an invention “available to the public”, see our earlier article here.
The circumstances rendering other disclosures enabling public disclosures may be less obvious. For example, leaving a set of unconnected electrical components on an office desk may or may not amount to an “enabling disclosure”. It is conceivable that in simple situations where the components can be connected in only a single manner, such as where only one light emitting diode and one voltage regulator are openly left on a desk, the act of openly leaving the components on a desk within a shared office space could well amount to an “enabling disclosure”. In more complex situations, for example where an analog sensor, multiple amplifiers and multiple passive components are placed on a desk, whether the placement of the components on the desk amounts to an “enabling disclosure” will depend on able arguments grounded on the state of the art. How much trial and experimentation would be required to be able to make or use an invention and at what point a person of reasonable skill in the art is placed under an undue burden may be a question of fact highly dependent on the circumstances.
Notwithstanding that exceptions for certain public disclosures exist, even in cases where an inventor is fairly certain that a use is “experimental” or that a disclosure is of a “black box” nature, a court looking at the matter at a later date may disagree based on its assessment of the facts, and the need to litigate the issue may drive up the cost of enforcing the patent. In general, to lessen the risks associated with working in a shared office space and inadvertently publicly disclosing an invention, it is generally advisable for any business to take great care to ensure no confidential information is disclosed to others working in the shared office space, and to ensure that the proper safeguards are in place, including non-disclosure and other confidentiality agreements with those hired to assist in developing the invention.
Any businesses sharing an office space and making an inadvertent public disclosure of its confidential inventions should diligently track first public disclosure dates and seek professional advice immediately.
Finally, despite shared office spaces fostering collaboration and collegiality between businesses, inventors should take care to minimize collaborations relating to their inventions. In Canada, informal discussions with an unaffiliated individual may lead to the individual being considered an inventor of your invention if it can be said that the individual contributed to at least part of the inventive concept of your invention. Although courts have required the satisfaction of a high threshold, omitting this individual as an inventor from a patent application could subsequently void a granted patent under Canadian law. Further, as a co-inventor, the individual would become a co-owner of your company’s granted patent, potentially exploiting the patent rights or inhibiting dealings with your company’s patent. For information regarding what consequences co-ownership of patents may have, see our earlier article here.
Ultimately, sharing an office space may raise complex fact-dependent intellectual property related issues including (but not limited to) the issues discussed above. Careful consideration as to what safeguards and protective measures should be put in place is necessary if you are contemplating the use of a shared office space to develop potentially patentable inventions.
By Nikola Rajic, Stephanie Melnychuk and Jennifer A. Marles
END NOTES Paragraph 28.2(1)(a) of the Patent Act , RSC 1985, c P-4 (the “Patent Act”), states that “[t]he subject-matter defined by a claim in an application for a patent in Canada … must not have been disclosed 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”. Similarly, United States patent law provides a one-year grace period for disclosures made by an inventor under 35 USC § 102(b)(1)(A) which reads that “[a] disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor”.  Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61,  3 SCR 265.  Ibid, at para. 37.  Bayer Inc v Apotex Inc, 2014 FC 436 at para 119 [Bayer].  Ibid.  Supra note 4 at para 121.  Ibid.  Hi-Qual Manufacturing Ltd v Rea’s Welding & Steel Supplies, 55 CPR (3rd) 224 at 238-39 (FCTD), aff’d 61 C.P.R. (3d) 270 (FCA).  Ibid.  In Varco Canada Limited v Pason Systems Corp, 2013 FC 750, a new design for downhole rigs (the “invention”) used in the oil and gas industry was tested on a third party operating well prior to filing a patent application. The internal functioning of the invention could not be revealed by external inspection of the invention and the invention was locked to prevent internal inspection. On these facts, the Federal Court found that there was no opportunity for the public to analyze and inspect the internal functioning of the invention and thereby testing the invention on a third party operating well could not amount to a public disclosure of the invention. By contrast, in Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333, a new bearing assembly for oil and gas drilling motors was rented to and used by a third party without any obligation of confidentiality prior to the filing of a patent application for the bearing assembly. Although the internal functioning of the bearing assembly could not be determined by external visual inspection, the internal functioning could be discerned upon dismantling of the drilling tool, which could be fairly readily done. Accordingly, a majority of the Federal Court of Appeal found that use of the bearing assembly by a third party in the absence of an obligation of confidentiality amounted to a public disclosure.  Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at paras 94-96,  4 SCR 153 [Wellcome].  Paragraph 53(1) of the Patent Act, supra note 1, states that “[a] patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading.” In Wellcome, supra note 11 at para 94, the Supreme Court of Canada found that omission of an inventor from a patent application may void the patent under s. 53(1) of the Patent Act if the “omission was a ‘material’ misstatement that was ‘wilfully made for the purpose of misleading’.”