In a recent decision, the Canadian Federal Court of Appeal found
that the duty of good faith based on s. 73(1)(a) of the
Canadian Patent Act cannot be relied upon to attack the
validity of an issued patent (Corlac Inc v Weatherford Canada
Ltd ("Weatherford"), 2011 FCA 228).
S. 73(1)(a) states that "[a]n 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".
Previous decisions of the Federal Court in GD Searle &
Co v Novopharm Ltd ("GD Searle"), 2007 FC
81, and Lundbeck Canada Inc v Ratiopharm Inc
("Lundbeck"), 2009 FC 1102, held that under s.
73(1)(a) patent applicants have a duty of candour to the
Patent Office akin to the duty a litigant has to be candid when
bringing an ex parte proceeding, and that failure to act
in good faith may result in retroactive abandonment of a patent. As
an ex parte proceeding is one-sided, the applicant
therefore has a high onus to present his or her position fairly and
Addressing these earlier decisions, the Court in
Weatherford stated 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
Instead, the Court held that s.73(1)(a) only operates
during the prosecution of the patent application. After the patent
issues, its operation is "extinguished" and s. 53(1) must
be utilized with respect to allegations of misrepresentation.
SS.73(1)(a) and 53(1) are "mutually exclusive."
S. 53(1) provides that "[a] patent is void if
any material allegation in the petition of the applicant in respect
of the patent is untrue".
During prosecution of the patent in Weatherford, a Mr.
Grenke asked that a Mr. Torfs be removed as an inventor. On request
from the Patent Office, Grenke swore an affidavit stating that he
was the true sole inventor of the patent. The trial Judge found
that Torfs actually was an inventor, and that Grenke's
affidavit was motivated by his perception that Torfs had cut him
out of other patents.
On applying s. 53(1), the court in Weatherford upheld
the Trial Judge's conclusion that Mr. Grenke's misstatement
regarding inventorship was not material. The Trial Judge's
finding with respect to motive did not translate into a finding
that Mr. Grenke made a wilful misleading statement. The Court was
not prepared to find the patent void under s. 53(1) in the absence
of an analysis of Grenke's belief regarding inventorship at the
relevant time. This decision leaves one to wonder how badly must
the applicant behave before his actions can invalidate a patent?
The reasons of the court are quite clear that acting contrary to s.
73(1)(a) can never invalidate an issued patent. The court found
that it was the duty of the Commissioner of Patents, during the
pendency of the application, to decide on s. 73(1)(a), and that s
73(1)(a) cannot be relied on for the purpose of attacking the
validity of a patent.
The decision was also groundbreaking in finding that there are
only 5 grounds on which one can invalidate a patent. Previously,
practitioners had no clear answer guide or limit to the bases upon
which validity can be attacked. Noting that the Canadian Patent
Act is a "complete code", the Court in
Weatherford stated that the grounds for attacking a
patent's validity are delineated in the Patent Act and
limited to: (1) utility under s. 2, (2) novelty (anticipation)
under s. 28.2, (3) obviousness (inventiveness) under s. 28.3, (4)
sufficiency of disclosure under s. 27(3) and (5) an untrue material
allegation or a willfully misleading omission or addition under s.
Considering the last basis for attacking a patent, it would
appear that there remains a duty of candour in Canada, but that
this duty is only breached if willfully breached. In the present
case, the trial judge never found that Grenke's removal of
Torfs was a willful misleading statement.
In recent years, decisions of the trial courts have found
patents invalid for breach of a poorly defined duty of candour. The
court in Weatherford considered the general good faith
requirement advanced by the appellants to be the "atomic
bomb" of patent law, and "ever-expanding".
Just as the US doctrine of inequitable conduct has been
tightened, the FCA found fit to restrict the requirement of good
faith in dealings with the patent office to only clear cases of
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