In Wenzel Downhole Tools Ltd et al v National Oilwell Canada Ltd et al, 2012 FCA 333, the Federal Court of Appeal (Court) clarified that a patent will be declared invalid for anticipation by prior use if a member of the public simply had the opportunity to access information that would enable a person skilled in the art to perform the invention, regardless how difficult it would be for that person to access the information. The Plaintiff, Wenzel Downhole Tools Ltd (Wenzel), invented a bi-directional thrust -bearing assembly for use in motors suited for oil and gas drilling applications. A defendant, Dreco Energy Services Ltd, independently constructed an assembly covering Wenzel’s invention, incorporated the assembly into a larger tool, and rented the tool to a third party that used the tool at a job site in Texas in early 1990. Wenzel later filed a patent application for the invention in October 1990. Wenzel sued the defendants in 2005 for patent infringement for making, selling and renting an assembly protected by its patent. At trial, the defendants argued that Wenzel’s patent had been anticipated on the basis that the use of the assembly at the job site was an enabling disclosure that preceded the filing date of Wenzel’s patent application. Wenzel countered that no enabling disclosure had been made because the assembly was completely encased in a metal tube of a large tool. This meant that it would have been necessary to dismantle the tool off-site to visually inspect the assembly and observe its functionality. The trial judge held that an enabling disclosure was made in this case because the third party had the opportunity to dismantle the tool and could access the information needed to perform the invention. On appeal, the Court upheld the trial judge’s ruling, finding that the third party had unrestricted access to the tool, any information derived from such access was not protected by confidentiality, and the method of dismantling the tool and examining its internal structure was well known. The Court clarified that the degree of difficulty in dismantling the tool or whether the tool had actually been dismantled were irrelevant to the central question whether an enabling disclosure, in fact, had been made. To illustrate this principle, the Court distinguished the present case from Bauer Hockey Corp et al v Easton Sports Canada Inc et al, 2010 FC 361, aff’d 2011 FCA 83 (Bauer), which held that the act of wearing hockey skates showing an invention in a public arena, which only allowed visual inspection of the invention from afar, did not amount to an enabling disclosure of the invention. In the present case, unlike the situation in the Bauer case, the rented tool incorporating the invention was in the possession of the third party, who was free to dismantle and inspect the invention at any time during the rental. Summary by: Darren Hall

E-TIPS® ISSUE

13 01 30

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