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Federal Court of Appeal significantly limits good faith requirement for patents in Canada

In a precedent-setting decision released July 18, 2011, the Federal Court of Appeal in Corlac v. Weatherford ("Weatherford"), 2011 FCA 228 significantly narrowed the good faith requirement for patents in Canada. In this important decision, Steven Garland and Colin Ingram of Smart & Biggar successfully represented the Intellectual Property Institute of Canada (IPIC) on its intervention directed to the good faith issue.

Section 73 of Canada's Patent Act provides that an "application for a patent in Canada shall be deemed to be abandoned if the applicant does not ... reply in good faith to any requisition made by an examiner in connection with an examination" (emphasis added).

On the facts of this appeal, the Court considered whether the patent in suit was invalid due to misrepresentations in an inventor's affidavit filed during prosecution. During prosecution of the patent application in Weatherford, the applicant asked that a Mr. Torfs be removed as a co-inventor. This resulted in a request from the Patent Office for an affidavit. In reply, the applicant filed an affidavit by the other named inventor, a Mr. Grenke. The Trial Judge had found that Torfs was, in fact, an inventor and that Grenke's affidavit was motivated by his perception that Torfs was trying to 'cut him out' of other patents.

The appellant argued that if it is established (at any time, either before or after a patent is granted) that an applicant did not respond in good faith to a requisition during the prosecution of the application, then by operation of law, the application is deemed to have been abandoned. The Court refused to accept this argument. The Court considered that it is for the Patent Office to determine whether an applicant's response to a requisition from an examiner is made in good faith. Thus, section 73 only operates during the prosecution of the application for a patent and, in the words of the Court: "Its operation is extinguished once the patent issues."

In its holding, the Court specifically addressed two earlier first instance decisions of the Federal Court of Canada — namely, G.D. Searle v. Novopharm ("G.D. Searle"), 2007 FC 81 and Lundbeck v. ratiopharm ("Lundbeck"), 2009 FC 1102 — stating that "[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."

The Court noted that a different section of the Act applies after issuance of a patent, namely subsection 53(1). Notably, however, subsection 53(1) is narrower in scope than section 73. Specifically, subsection 53(1) provides as follows:

53.(1) A patent is void if any material allegation in the petition ... 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 Court did not find any violation of section 53. In so holding, the Court noted that the Trial Judge had not actually found Grenke to have made a willfully misleading statement and the Court was not prepared to impose the "draconian remedy" provided by subsection 53(1) in the absence of an analysis by the Trial Judge as to Grenke's belief regarding inventorship at the relevant time.

The Court also upheld the conclusion of the Trial Judge that Grenke's misstatement was not material for the purpose of subsection 53(1) at least in part because Grenke had acquired whatever interest Torfs or his employer had in the patent at the time it was issued. The Court further noted that naming Torfs as a co-inventor would have no impact on how the public makes use of the art taught by the patent. The Court specifically rejected the appellant's submission that an intentional misstatement as to inventorship will always be material for the purposes of subsection 53(1).

The decision of the appellate court is welcomed for its clarification that any question regarding whether a reply to an examiner's requisition was in good faith is a question that will be extinguished if a patent is obtained, unless the situation is such as to invoke the narrower requirements of section 53 of the Patent Act.

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