A Distinctly Canadian Patent Fight

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image002.gifAs NHL cancellations are pushed through Nov. 30th, hockey fans must resort to other means of entertainment. Try patent cases.

In Easton Sports Canada Inc. v. Bauer Hockey Corp. , 2011 FCA 83 (CanLII), the court reviewed allegations that Easton infringed Bauer’s Patent No. 2302935 (the ‘953 Patent). The ‘953 Patent was originally granted on November 20, 2001 and expires on September 4, 2018. One of the issues on appeal was whether the invention was disclosed during on-ice tests of the prototype skate.

A patent is invalid if the invention was disclosed by the inventor more than one year before the filing date of the patent. In this case, Easton attacked the validity of the ‘593 Patent by arguing that Bauer revealed the invention at a test event - a hockey game between Bauer employees, where the prototype skates were worn. The test event was open to the public and Easton argued that a spectator could have observed the skates and made out the essential elements of the invention. At trial and on appeal, the court rejected this argument.  Although the skates could be observed, they were not available for close inspection or dismantling by spectators, and merely observing the players wearing the skates during a game did not, in this case, “disclose or enable” the invention.

Lessons for business?

  • Dislcosure of your invention prior to filing a patent application can be fatal to patentability.
  • Confidentiality agreements can be a useful tool to ensure that invention disclosure is not public - but these agreements should not be seen as a complete one-size-fits-all solution.
  • Any testing of the product - particularly field testing in a location where the public may have access - must be handled very carefully.
  • In Canada and the US, there is a 1-year grace period in which to file a patent application after the first disclosure, but that grace period is not available in all countries, and disclosure result in loss of patent rights in critical overseas markets.

Get advice from experienced patent counsel on patentability and the risks of early disclosure.