The Federal Court of Appeal has held that an issued Canadian
patent cannot be invalidated on the ground that the applicant
failed to respond in good faith to a requisition from the Patent
Office made during the prosecution of the application. In
Weatherford Canada Ltd. v. Corlac Inc., 2011 FCA 228,
dated July 18, 2011, the Court of Appeal held that the operation of
section 73 of the Patent Act is extinguished once the
patent issues. To the extent that decisions of the Federal Court
have suggested otherwise, the Court of Appeal held that "they
should not be followed." In the Court's analysis, it is
subsection 53(1), rather than section 73(1), which governs
misrepresentations in relation to issued patents.
In Weatherford, the defendants in an action for patent
infringement had alleged that the patent was invalid because the
applicant had failed to respond in good faith to a requisition made
by the Patent Office during the prosecution of the application. The
defendants relied on section 73 of the Patent Act, which
provides in part:
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
The Federal Court rejected this attack on legal and factual
grounds. The Court of Appeal affirmed, holding that section 73 is
not directed to the validity of a patent once it issues. The
Federal Court of Appeal's decision in Weatherford
seeks to provide clarification on the state of Canadian law, which
recent decisions of the Federal Court had suggested might allow a
Canadian patent to be invalidated for lack of good faith
prosecution. In Weatherford, the Federal Court of Appeal
reaffirmed the long-held view that there is "no provision in
the Patent Act that an untrue allegation, even amounting
to a misrepresentation, made in the course of the prosecution of
the application for the patent in the Canadian Patent Office has
any effect on the validity of the patent." Lovell
Manufacturing Co. v. Beatty Brothers Ltd. (1962), 41 C.P.R. 18
at p. 40 (Ex. Ct.).
Although the Court in Weatherford refused to expand the
scope of section 73, Canadian patent applicants are reminded of
their obligation to act in good faith in their ex parte
dealings with the Patent Office. As the Federal Court of Appeal
noted in Weatherford, a Canadian patent will be void
pursuant to section 53 of the Act "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 wilfully made
for the purpose of misleading." It remains Canadian law that
an inventor "must act uberrima fide and give all
information known to him that will enable the invention to be
carried out to its best effect as contemplated by him."
Noranda Mines Ltd. v. Minerals Separation North American
Corp. (1947), 12 C.P.R. 99 at pp. 111-12 (Ex. Ct.).
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