The Federal Court of Appeal recently upheld the dismissal of an
appeal from a decision of a Patent Re-examination Board thus
establishing that re-examination may be a viable alternative to
challenge the validity of a Canadian patent.
Under s. 48.1 of the Patent Act, any person can request
the re-examination of one or more claims of an issued patent by
filing prior art with the Commissioner and paying a fee (currently
$1,000 for small entities and $2,000 for standard entities).
After receiving a re-examination request, the Commissioner is
required to establish a Re-examination Board comprising at least
three persons, two of which must be employees of the Patent
The claims at issue in Newco Tank Corp v. Attorney General
of Canada, 2015 FCA 47, aff'g 2014 FC 287 related to
heating liquid storage tanks by using exhaust heat. The
Commissioner received a request for re-examination supported by a
number of prior art references including six U.S. patents. After
consultation with the patentee, the Board rejected the claims on
the basis of obviousness using the four-part test prescribed by the
Supreme Court in Apotex Inc. v. Sanofi-Synthelabo Canada
Inc., 2008 SCC 61.
Newco's appeal to the Federal Court was rejected by Justice
Mosley who gave deference to the Board by applying the
reasonableness standard mandated by Dunsmuir v. New
Brunswick, 2008 SCC 9.
On Feb. 16, 2015, the Federal Court of Appeal upheld Justice
Mosley's decision and confirmed that, absent an error in law,
the appropriate standard to apply in reviewing decisions of a
Re-examination Board is reasonableness.
The current Canadian re-examination procedure still only
provides limited involvement to third parties in that
representations are limited to the prior art submitted during
re-examination. Additionally, re-examination may allow a patentee
to strengthen claims by making amendments during the re-examination
process. Given the Court of Appeal's decision, and depending
upon the nature of the prior art submitted and the claims at issue,
re-examination may be a cheaper alternative to a protracted and
costly impeachment action. Moreover, if successful, any decision of
the Re-examination Board will be given more deference than is
currently ascribed to the statutory presumption of validity
embodied in section 42 of the Patent Act.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
The prospect of an internal investigation raises many thorny issues. This presentation will canvass some of the potential triggering events, and discuss how to structure an investigation, retain forensic assistance and manage the inevitable ethical issues that will arise.
From the boardroom to the shop floor, effective organizations recognize the value of having a diverse workplace. This presentation will explore effective strategies to promote diversity, defeat bias and encourage a broader community outlook.
Staying local but going global presents its challenges. Gowling WLG lawyers offer an international roundtable on doing business in the U.K., France, Germany, China and Russia. This three-hour session will videoconference in lawyers from around the world to discuss business and intellectual property hurdles.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).