By Adam Bobker and Noel Courage
Disclosure of prior art
Federal Court of Appeal clarifies section of Canadian Patent Act.
A
characteristic of a strong patent is that it is clearly novel and inventive over prior art (public domain information). The Canad-
ian Patent Office conducts a search for relevant prior art that it will consider before granting the patent. There is no ongoing duty on Canadian
patent applicants to disclose prior art. A list of prior art need only be submitted if and when the Canadian Patent Office requisitions prior art. The requisition is usually limited to
requiring the applicant to provide prior art cited in corresponding patent appli- cations filed in the United States and Europe. If the applicant fails to make a good faith response by submitting all the requisitioned prior art within the time allowed, the Patent Office will i) deem the application abandoned and ii) send the applicant a notice that there is a one- year period to satisfy the requisition and reinstate the application (Patent Act, R.S.C. 1985 S. 73(1)(a)). Absent a requisition, the situation
in Canada is similar to that in Europe and most other patent offices, where voluntary prior art disclosures are per- mitted, but left to the applicant's discre- tion (in contrast, the U.S. has a broad, ongoing duty to disclose prior art). Some applicants make voluntary disclo- sures in Canada because they want the patent to appear stronger after having been granted over all the closest known prior art. Other applicants choose not to voluntarily disclose prior art to avoid incurring additional costs and arguing about prior art that is a "red herring." Until Corlac Inc. v. Weatherford Canada Inc., a recent Federal Court
of Appeal decision (an application for leave to appeal to the Supreme Court of Canada is pending), the validity of issued Canadian patents had often been challenged on the basis of an alleged lack of good faith in responding to such prior art requisitions. The argument was that the patent application should have been deemed by law to have been abandoned during prosecution because a response to a patent office requisition was not made in good faith and the time for doing so had expired.
Now this type of challenge appears
to have been eliminated by Corlac, in which the appeal court held that these earlier trial-level decisions ought not to be followed, and that the court should not retroactively scrutinize submissions to the patent office made during the prosecution of the patent application. An issued patent can still be invali-
dated in court on the narrower, separate basis of wilfully misleading statements (or omissions) to the patent office about the invention. These include i) failure to make adequate disclosure of how to implement the invention or ii) improper statements about
the appli-
cant and inventors that are material to the patent (Patent Act, s. 53(1)). Here,
Absent a requisition, the situation in Canada is similar to that in Europe and most other patent offices, where voluntary prior art disclosures are permitted, but left to the applicant's discretion.
The court was asked to retroactive-
ly abandon such applications even though the patent office had treated the response as satisfactory years before. At first, this type of challenge was widely considered to be a long shot since there had been no previous
success. That
changed when a pair of Federal Court trial-level decisions, G.D. Searle & Co. v. Novopharm Ltd. and Lundbeck Can- ada Inc. v. Ratiopharm Inc., upheld the argument. In those cases, the court held that certain of the applicants' submis- sions to the patent office made many years before in response to prior art requisitions were not made in good faith and, therefore, the applications were retroactively deemed to have been abandoned. As the one-year period to reinstate had long since passed, the patents were invalid.
courts enforce the public interest in ensuring the patent was granted to the right person and that it will show others how to practise the invention. It appears that in the future, courts
will leave it to the patent office to police alleged defects in the prior art disclosed to the patent office or inaccurate argu- ments about prior art. This is much less risky for applicants because in the rare case where the patent office abandons an application for lack of good faith response to a requisition, the applicant will receive notice and a year to correctively reinstate the application. IH
Adam Bobker and Noel Courage are
partners with Bereskin & Parr LLP in Toronto. Adam was one of the counsel who represented Weatherford in the Fed- eral Court of Appeal.
INHOUSE DECEMBER 2011/JANUARY 2012 • 11
