Canada: Patents - 2016 Year In Review

Last Updated: March 3 2017
Article by Ken Bousfield

In 2016 we discussed a number of interesting patent cases. Leaving aside cases directed toward features related specifically to pharmaceuticals or to the Patent Medicines Notice of Compliance Regulations (PMNOC) the beginning of 2017 provides an opportunity to reflect again on the following cases and events from 2016:

1. File Wrapper Estoppel – Pollard Banknote v. BABN Technologies Corp

File wrapper estoppel is a long and well developed doctrine in U.S. patent law.  By contrast, in Canada prosecution file history materials are generally not admissible in subsequent proceedings.  In a trilogy of cases1 in the 1950's and 1960's Thorson, P., of the Exchequer Court (the predecessor of the Federal Court) rejected the admissibility of the prosecution file histories. Oddly, Thorson P., cited as support the US case Catalin Corp. of America v. Catalazuli Mfg. Co.2, a decision that is one of the cornerstones of US file wrapper estoppel. The decisions were subject to critical comment at the time.3 More recent case law has occasionally edged toward the admissibility. However, in Pollard Banknote Limited v. BABN Technologies Corp., (2016) FC 883 The Federal Court of Canada was not prepared to countenance clearly contradictory positions in prosecution and litigation. In October, Stephen Beney and Nicholas Aitken had pertinent comments, found here.

2. Promise of the Patent and Utility –  AstraZeneca v. Apotex

Since Turner v. Winter4 where an inventor has made a precise, explicit, disclosure of performance or use, the invention must satisfy that description5. Recently, however, PMNOC proceedings have tended to presume that all patents have "promises", whether or not such a promise exists. Yet in a non-pharmaceutical case it was possible to overlook remarkably narrow explicit promises that actually did exist.6 The rather strained, unicorn-hunting nature of promise-finding has been controversial, and has put Canada off-side of its U.S. and European trading partners. The Supreme Court of Canada has granted leave to Appeal from the FCA decision in AstraZeneca Canada Inc. v. Apotex Inc.7, on this highly contentious issue. In March, Melanie Szweras and Scott MacKendrick weighed in at " Utility - The Heightened Disclosure Pendulum Swings Again", Mike Fenwick at " Supreme Court Promises to Review Contentious Patent Matter" and Adam Bobker and Daniel MacKay at " Leave to Appeal to SCC: AstraZeneca Canada Inc et al v Apotex Inc et al (FCCA)".

3. The Problems of Internet Enforcement

Finding a remedy for sales of infringing goods over the internet is often an enormous challenge to patent, trade mark, copyright, and design owners, and one that raises thorny issues of extra-territorial effect. Rather than leave IP owners without a remedy, in Google Inc., v. Equustek Solutions Inc.8, the BC Court of Appeal granted an injunction requiring Google to take down web-sites not merely on, but also on , the BC Court of Appeal granted an injunction requiring Google to take down web-sites not merely on, but also on The Supreme Court of Canada granted Google leave to appeal. Adam Bobker and Janice Calzavara discussed the issue in " Leave to Appeal to SCC: Google Inc v Equustek Solutions Inc (BCCA)".

4. Patents and Competition –    New Intellectual Property Enforcement Guidelines

The Competition Bureau issue a set of updated guidelines for the enforcement of Competition law in respect of Standard Essential Patents. Paul Horbal and Victor Krichker wrote about the new guidelines in " How will the Canadian Competition Bureau deal with enforcement of Standard Essential Patents?".

5. Other Topics and Cases

Rule 216 – Summary Decisions

In October, Alain Alphonse discussed the Federal Court of Canada's use of Rule 216 of the Federal Court Rules in Cascade Corporation v. Kinshofer GmbH 9 o resolve a patent dispute by summary procedure in " Patent Infringement Claim Dismissed after Summary Trial - Cascade Corporation v. Kinshofer GmbH et al., 2016 FC 1117."

PMNOC s. 8 – Not a Vehicle for Unjust Enrichment Claims

In February, Adam Bobker and Anastassia Trifonova discussed the Supreme Court of Canada's dismissal of an attempt by Apotex to use s. 8 of the PMNOC to ground an action for unjust enrichment in Apotex Inc. v. Eli Lilly and Company10 at " Striking Out Unjust Enrichment Claims under s. 8 for Good - the Supreme Court of Canada Denies Leave to Appeal".

Patent Act s. 8 Corrections - Gray Manufacturing

The reluctance of the Patent Office to exercise the Commissioner's discretion to correct documents in the Patent Office Records has been notable in recent years. Commenting on Gray Mfg Co. Inc., v. Canada (A.G.)11. Ken Bousfield poked fun at the Office in " Sunny Days, Sunny Ways? Gray Manufacturing: Federal Court Becomes Office of Administrative Corrections". 

Inventions by Government Employees – Brown v. Canada12

In a move that caused some concern in the profession, the Federal Government attempted to employ a rarely used section of the Patent Act to defeat the reasonable interests of a patentee where the inventor was alleged to have been a government employee. The Court viewed the effort with skepticism. Noel Courage commented at " Canadian Feds Issue Patent, Then Try to Invalidate It in Court".


1. O'Cedar of Canada Ltd., v. Mallory Hardware Products Ltd., (1956) 24 CPR 103; Riddell v. Patrick Harrison & Co., (1957), 28 C.P.R. 85; and Lovell Mfg. Co. v. Beatty Bros. Ltd., (1962) 41 C.P.R. 18.

2. 79 F. 2d 593 (1935), per L. Hand at 594, pointing out that file wrapper estoppel should apply whenever the applicant makes a substantive amendment directed toward allowability, but not where the amendment is formal.

3. See Gordon Henderson Editorial Note in Lovell, supra., at p. 23, for example.

4 Turner v. Winter (1787), 1. Webst P.C. 77 at 82, cited by Parker J., in Alsop's Patent at (1907), 24 RPC 733 at 753.

5. "[If] the Patentee says that by one process he can produce three things and he fails in any one, the consideration of his merit, and for which the patent was granted, fails, and the Crown has been deceived in the grant."

6. See CA 2 207 787 at p. 2, lines 2 – 14; 2012; Eurocopter, s.a. v. Bell Helicopter Textron Canada, 2012 FC 113; upheld 2013 FCA 219.

7. AstraZeneca Canada Inc. v. Apotex Inc., 2015 FCA 158

8. Equustek Solutions v. Google Inc., 2015 BCCA 265

9. Cascade Corporation v. Kinshofer GmbH, 2016 FC 1117

10. Apotex Inc. v. Eli Lilly and Co., 2015 ONCA 305

11. Gray Manufacturing Company, Inc., v. Canada, 2016 FC 55

12. Brown v. Canada, 2016 FCA 37

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

Click to Login as an existing user or Register so you can print this article.

Ken Bousfield
In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions