The facts are that Mr. Grenke ("Grenke") filed a
patent application naming himself and Mr. Torfs ("Torfs")
as co-inventors. Torfs died shortly after the petition was filed.
Subsequently, Grenke swore an affidavit stating that he was the
sole inventor of the patent.
The application eventually issued as the '937 patent. Grenke
sublicensed the patent to Weatherford. When Corlac manufactured and
sold a similar device, Weatherford brought an action against Corlac
for patent infringement. At trial, the Federal Court found the
patent was valid and had been infringed by Corlac.
On appeal, Corlac alleged the patent was invalid because Grenke,
in his affidavit, breached Section 73 of the Canadian Patent
Act by failing to respond in good faith to a requisition made
by the Patent Office during the prosecution of the application
within the six-month period.
Section 73(1)(a) requires an applicant to act in good faith when
responding to any requisition made by an Examiner. Failure to
comply with Section 73(1)(a) results in the patent application
being deemed abandoned.
Corlac argued that Grenke's non-compliance with Section 73
should have resulted in the patent application being deemed
abandoned and the invalidation of any subsequently issued patent.
Effectively, Corlac argued that a breach of Section 73 should apply
to invalidate the patent, post-issuance.
The Federal Court of Appeal (the "FCA") rejected
Corlac's argument and held that "the concept of
abandonment in paragraph 73(1)(a) operates during the prosecution
of an application for a patent. Its operation is extinguished once
the patent issues."
The FCA stated that post-issuance, a party wishing to allege
misrepresentation is restricted to relying on Section 53(1), which
provides, among other things, that a patent is void if any material
allegation in the petition of the applicant in respect of the
patent is untrue.
The Weatherford decision provides some certainty on the
state of Canadian patent law in the wake of recent Federal Court
cases suggesting Canadian patents might be invalidated for lack of
good faith prosecution.
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