The Canadian Federal Court of Appeal case of Corlac
Inc. v. Weatherford Canada Ltd. (2011 FCA 228
[Weatherford]) has provided a welcome clarification to good faith
requirements in Canadian Patent Practice.
Section 73 of the Patent Act provides, in part,
that:
73. (1) An application for a patent in Canada shall be deemed to
be abandoned if the applicant does not (a) reply in good faith to
any requisition made by an Examiner in connection with an
examination, within six months after the requisition is made or
within any shorter period established by the Commissioner;
In interpreting S. 73(1) of the Patent Act, an earlier
line of cases of the Federal Court (i.e., G.D. Searle & co.
v. Novopharm Ltd., 2007 FC 81, 56 CPR (4th)1 and Lundbeck
Canada Inc. v. Ratiopharm Inc, 2009 FC 1102) had surprised the
patent community. The Federal Court held that submissions to the
Patent Office made during the prosecution of an application, which
were judged by the Court not to be made in "good faith",
could result in the retroactive abandonment of an issued
Patent.
The Federal Court had ruled "there is afforded during
prosecution ample opportunity to make further disclosure or to
correct an earlier statement or shortcoming. It is not harsh, or
unreasonable, if after the patent issues, disclosure is found to
lack good faith, that the Court deems the application and thus the
patent, to have been abandoned.". This had set a high standard
for good faith (and duty of candor) requirements in Canada.
In Weatherford, the Federal Court of Appeal has
clarified that "[t]o be clear, the concept of abandonment in
paragraph 73(1)(a) operates during the prosecution of the
application for a patent. Its operation is extinguished once the
patent issues.".
The Court in Weatherford, left no doubt the earlier
cases of the lower Court were not to be followed, indicating
"[t]o the extent that the Federal Court decisions in G.D.
Searle and Lundbeck can be interpreted as standing
for the proposition that paragraph 73(1)(a) can be relied
upon for the purpose of attacking the validity of a patent, they
should not be followed." (underline added).
Whereas S. 73 of the Patent Act is operative in respect
of a patent application, once a patent issues, S. 53(1) of the
Patent Act then becomes operative.
Section 53 of the Patent Act, provides, in part, that:
53. (1) 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 willfully made for the purpose of
misleading.
The mutual exclusivity of S. 73 and S. 53 of the Patent
Act was noted by the Court in Weatherford, in that
"it is for the Commissioner to determine whether an
Applicant's response to a requisition from an Examiner is made
in good faith, not for the Courts. The Courts do not issue
patents".
Responding in good faith to requisitions made by the Patent
Office remains an important (if not critical) requirement. The
decision in Weatherford will help allay concerns that
alleged lack of "good faith" in representations made
during prosecution of patent applications may result in
retroactively abandoned patents, pursuant to S. 73 of the
Patent Act.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Specific Questions relating to this article should be addressed directly to the author.
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