Utility Emphasis Lacking in the Examination of Aggregations

The distinction between combinations and aggregations is a well-accepted principle of patent law. A combination is an assemblage of known elements whose combined use leads to a result that is different from the sum of the results of the individual elements. Whereas, an aggregation is an assemblage of elements that each produce their expected result leading to an assemblage that is merely the sum of its parts. Combinations are patentable, while aggregations are not. The patent bargain, which offers an inventor a 20-year monopoly on the claims of their invention in exchange for enabling disclosure, is not offered to aggregations since there is no social benefit in the disclosure of obvious inventions.

When an Examiner considers subject matter of an application to be an aggregation, the defect is identified under section 28.3 of the Patent Act as being obvious. Obviousness subject matter is broadly described as lacking an inventive step. Aggregations are believed to lack an inventive step since the absence of integration between elements makes their results predictable. However, since the patent system is founded on incentivizing the dissemination of knowledge for the advancement of society, should aggregations that lead to advances in social utility be considered defective simply because there is no integration of elements?

A well-known English proverb states that “necessity is the mother of invention”. This implies that the driving force for invention is need. In response to this proverb, author Agatha Christie stated “I don’t think necessity is the mother of invention – invention, in my opinion, arises directly from idleness, possibly also from laziness. To save oneself trouble.” Neither of these quotes incorporate any consideration of the patent system; however, they point to a flaw in the way obviousness is used to invalidate an application.

Reckendorfer v. Faber (1875) is a U.S. Supreme Court decision on the validity of patent for an eraser fixed to one end of a wooden pencil. In the decision, Justice Hunt writes that “a combination, to be patentable, must produce a different force, effect, or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; otherwise it is only an aggregation of separate elements.” Consequently, the application of a piece of rubber to one end of a pencil was ruled an aggregation. When the eraser is removed from the pencil, the pencil and eraser continue to function as intended. Strictly speaking there is no integration of elements; however, the eraser and pencil when manufactured together produce a product that has a utility greater than the utility of the elements by themselves. In other words, the aggregation produces “a utility step”. A pencil with an eraser attached saves oneself trouble.

As indicated in Article 27 of the TRIPS agreement, an inventive step is necessary for patent eligibility in member states. Member states adopt their own tests for determining the presence of an inventive step. In the U.S., the use of “secondary considerations” allude to the imperfect nature of its test for obviousness. Secondary considerations may include evidence of commercial success, long-felt but unsolved needs, failure of others, copying by the industry and unexpected results. Evidence of secondary considerations can prove an invention is non-obvious even though, in theory, it appears to be obvious.

The ingenuity of an invention is often inextricably linked to its utility. Consequently, separate tests for utility and obviousness present a problem. Utility, after all, is what society needs for the patent system to have value. The current Canadian test for obviousness provided in Sanofi does not contemplate utility advancements because utility occupies a separate requirement. The test for obviousness contemplates only whether differences between the state of the art and the inventive concept of the claim would have been obvious to the person skilled in the art. Prior to Sanofi, the most recent Canadian comprehensive obviousness checklist was that of Justice Sharlow from Novopharm, the levofloxacin infringement case. The list incorporates many of the secondary considerations used in the U.S. and is still used in Canadian patent law. However, I believe law on obviousness remains inadequate for to its failure to incorporate utility analysis as a secondary consideration to prove non-obviousness.

Aggregations which produce a utility step suffer from hindsight bias when undergoing the obviousness test. An useful aggregation will tend to look obvious after the fact. Hindsight bias is thought to be safeguarded by viewing prior art through the eyes of a person not having knowledge of the claimed invention. An additional safeguard from hindsight bias requires the Examiner or judge to articulate why it would have been obvious to combine prior art to arrive at the claimed invention. I believe these safeguards to be overly idealistic.

There is a small, but significant, number of countries that offer utility model protection (also known as petty patents or innovation patents). In the utility model, the stringent requirement of non-obviousness is lowered, or absent altogether, for protection that lasts between 7 and 10 years (depending on the country). I believe the utility model represents a strong compromise between the desire to incentivize improvements for the benefit of society while offering shorter terms of protection to indicate the level of inventiveness does rise to that of a patent. I believe they are a practical solution for utility step aggregations. Canada currently does not offer utility model protection.


Justin Philpott is a JD Candidate at Osgoode Hall Law School. Justin is currently enrolled in Osgoode’s Intellectual Property Law Intensive Program. As part of the program requirements, students were asked to write a blog on a topic of their choice.

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