Despite statements by the Supreme Court of Canada1 ("SCC") that patent law is entirely statutory, it has been recognized by the SCC and other levels of the Federal Court that double patenting is judge-made law. The SCC in fact refers to the decision in Whirlpool Corp. v. Camco Inc2., and not a section of the Patent Act, as support for the concept that there may only be one patent covering an invention.
Section 36(1) of the Patent Act is often cited as support for the concept of double patenting but this section states only that:
a patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention.3
This section discusses "a" or one patent, not the two patents required for an assessment of double patenting and appears instead to be addressing the opposite problem to double patenting, namely multiple inventions claimed in one patent. This interpretation accords with the consideration of section 36(1) in the Manual of Patent Office Practice ("MOPOP") in Chapter 144, the section relating to unity of invention. This interpretation also accords with the remainder of section 36 that addresses procedurally how to limit claims in an application that describes more than one invention. Section 36 does not address the procedure to follow if more than one patent claims the same invention, providing further support that this section was not intended to address this situation.
As a result of being judge-made, the law has evolved in a fractional manner, with each decision addressing only the issues before the Court in a given case. Accordingly, many questions remain. Further problems arise as a result of case law that developed in the context of patents filed and issued pursuant to the "old" Patent Act 5, wherein the term of the patent commenced at the date of issuance of the patent and continued for 17 years. Thus, situations could and did arise in which earlier filed patents issued after later filed patents and thus expired after the later filed patents. The applicability of such case law, particularly in light of the broad language used by the Court in discussing the "earlier" and "later" patents, is unclear.
The Court and practitioners alike require guidance with respect to this concept in order to properly advise clients, consider whether an allegation of double patenting is warranted in litigation, and make a proper determination on the merits of any case. Much as the concept of obviousness began in common law, and was ultimately included as section 28.2 of the Patent Act 6, if the concept of double patenting continues to exist in Canadian patent law, legislative consideration may be necessary.
Footnotes
1 Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at para. 12
2 Ibid. at para. 95, citing Whirlpool Corp. v. Camco Inc., 2000 SCC 67 at para. 63.
3 Patent Act, R.S.C. 1985, c. P-4, as am., s. 36(1).
4 Canadian Intellectual Property Office, "Manual of Patent Office Practice" (December 2013) at Ch. 14, online: http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/vwapj/rpbb-mopop-eng.pdf/$file/rpbb-mopop-eng.pdf.
5 Patent Act, R.S.C. 1985, c. P-4, as am., s. 46.
6 Patent Act, R.S.C. 1985, c. P-4, as am., s. 28.2.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
