Case: F. Hoffmann-La Roche AG v. Commissioner
of Patents et al.
Nature of case: Sui generis application
Date of decision: September 30, 2013
In this case, the Federal Court dealt with a sui generis application by the Applicant, F. Hoffmann-La Roche AG, based on ss 53(2) of the Patent Act, who sought a declaration amending, or in the alternative, striking part of the disclosure of its own Canadian Patent No. 2,103,324 (the '324 Patent).
Notably, the applicant was not faced with any allegation that the '324 Patent was invalid nor was there any adverse challenge from another party concerning the error alleged by the Applicant in its own patent. The respondents in this application, the Commissioner of Patents and the Attorney General of Canada, simply declared that their interest in this application is limited to the availability of using ss 53(2) of the Patent Act in the circumstances at hand.
The Federal Court refused the application given that the Applicant did not meet the basic requirements for the application of ss 53(2); in essence, subsection 53 (2) cannot be relied upon as a stand-alone remedy. The Court stated that this subsection serves a limited purpose; it provides a patentee in litigation with a defence in cases where the patent may be declared void. In the instant case, the Applicant did not contend that its patent was void and no other party to the application had raised that issue.
The '324 Patent contains claims to compounds which have anti-tumor effects as well as to processes to make the compounds and is set to expire on November 17, 2013.
The Applicant's concern was that an allegation could be made to the effect that the '324 Patent overstated the promised utility of all the claimed compounds. The difficulty specifically turned on the use of the abbreviation "viz" in the part of a claim that read "viz., 4 to 7 times higher maximum concentration [...] than the other compounds, and less intestinal toxicity, and thus completed the present invention".
According to the Black's Law Dictionary, "viz" is short for the Latin word "videlicet", which means "namely; that is to say". The Applicant argued that if "viz." is taken to mean "namely; that is to say", it is not accurate with regard to what the claim should say. The Applicant submits that if a Latin abbreviation was to be used, it would have been preferable to use "e.g.", an abbreviation for "exempli gratia", or "for example".
The Applicant pointed to case law which stated that a patentee may be criticized for not having taken action to correct a mistake the patentee knew about.
The Applicant pleaded that it could not rely on any of the traditional grounds of patent amendment, as this is not a case concerning the correction of a clerical error (which falls under s. 8 Patent Act), reissue of the patent (s. 47 Patent Act) is only available within the first four years of issue, and the Applicant did not wish to rely on the disclaimer provision (s 48 Patent Act), which would limit the scope of the '324 Patent.
According to the Applicant, the patent statute must have a provision that would allow for the remedy sought in this case. Since s. 12 of the Interpretation Act stipulates that legislation must be deemed remedial, the lack of a proper remedy should make possible the use of ss 53(2) to deal with such mistake.
The Federal Court did not accept such broad reading of ss 53(2) as it would effectively render meaningless the four-year limit on patent reissue. According to the Court, when s 53 is read as a whole, it becomes apparent that, in order to qualify for the exceptional remedy of ss 53(2), the patentee must first fall under ss 53(1) which states that a patent will be void if any material allegation in the petition is untrue or if the specification and drawings contain more or less for obtaining the end for which they purport to be made. As such, it is "meant as a shield, not a sword". In the Federal Court's construction of ss 53(2), this provision contemplates an application to save that which would otherwise be void. In the wording of the Court, "it is not concerned with amendments to correct an involuntary error that would not, in any case, cause the patent to be void, as is contended by the applicant".
Link to decision:
The Federal Court decision may be found at:
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