United States: U.S. Looks At ´Gold-Plating´ To Enhance Patents

Last Updated: December 2 2008
Article by Vincent M. De Grandpré

Originally published in The Lawyers Weekly.

In the recent U.S. presidential campaign, Senator Barack Obama proposed giving inventors the option of "gold-plating" their patents — subjecting them to a more rigorous review at the patent office in exchange for an enhanced presumption of validity.

This was a striking proposal for two reasons. First, politicians don't usually campaign on technical legal issues. Second, U.S. patents already enjoy a strong presumption of validity. This standard can only be rebutted by "clear and convincing evidence." In stark contrast, Canadian patents have virtually no presumption of validity — Canadian and U.S. law are far apart on this issue.

The Canadian Patent Act provides that a patent shall be valid "in the absence of any evidence to the contrary." Courts have held that this "weakly worded" presumption evaporates quickly. If an attacking party presents any evidence that is capable of disproving the validity of the patent, the presumption is spent.

It is difficult to imagine any circumstances in which the Canadian presumption of validity carries any practical effect. To make matters worse, when pharmaceutical patents are alleged to be invalid in proceedings brought under the Patented Medicines (Notice of Compliance) Regulations, it is the patentee that bears the burden of disproving the invalidity allegation (see Abbott Laboratories v. Canada (Minister of Health), [2007] F.C.J. No. 543). Strictly speaking, proceedings under the regulations do not result in declarations of patent invalidity, but they do cause judicial comments that may effectively dispose of patents on which innovative companies have relied after making considerable investments.

Simply put, the statutory presumption of patent validity plays no role in Canada.

Recent public opinion on U.S. patents has been shaped in large part by the proliferation of highly publicized lawsuits brought by socalled patent trolls. These lawsuits have fuelled the view that the patent system is clogged with frivolous patents.

Some of these "paper patents" will be asserted years from now by organizations that never developed the technologies but will nonetheless rely on the strong presumption of validity attaching to U.S. patents. These organizations will assert them against successful companies that brought allegedly infringing, innovative products to the market.

Given the uncertainties relating to patent infringement actions, particularly before the juries that make factual determinations in the U.S., innovative companies often feel they have little choice but to settle such claims. This problem is most significant in industries whose products often combine numerous technologies and inventions (electronics, for example) or in industries marked by fast-paced progress (e-commerce, for example).

Many reforms have been suggested to fix the U.S. patent system. A proposal by Professor Mark Lemley, a leading patent scholar, has drawn considerable attention (Professor Lemley is reportedly advising Senator Obama on innovation and technology issues).

One aspect of his proposal is to allow inventors to subject their applications to enhanced scrutiny in the patent off ice in exchange for an enhanced presumption of validity. Courts would not be allowed to second-guess the patent off ice's view on prior art it reviewed during prosecution.

This gold-plating of patents, as it is casually described, would be accompanied by a weakened presumption of validity attaching to non-gold-plated patents — from a "clear and convincing evidence" to a "preponderance of evidence" standard.

Under this system, the patentee can decide which standard it wishes to obtain, and patent examiners would know which applications to focus on. This is the proposal that Senator Obama presented in his presidential platform.

The gold-plating of patents is but one aspect of a more extensive proposal to address a certain type of litigation largely confined to the U.S., to restore some balance. There would be no need for any "plating" of Canadian patents.

Yet Canadian law has not reached the correct balance either. The absence in Canada of any meaningful presumption of patent validity is unsatisfactory. The Canadian Intellectual Property Office (CIPO) examines over 28,000 patent applications annually.

For the 2006/2007 financial year, CIPO's expenditures amounted to almost $130 million, 78 percent of which related to patents.

Canada has more than 580 certified patent agents, a large proportion of whom spend much of their time prosecuting Canadian patent applications. Prosecuting a single application takes years and often costs more than $10,000 in professional services.

If Canadian courts give no deference to the prosecution and CIPO's allowance of patent applications, why spend such sizable resources on patent prosecution? Canada may not need gold-plated patents, but some plating would be reasonable.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.