Traditionally, Canada has not had a duty of candour comparable to that of the United States. As recently as 1999, the Canadian Federal Court of Appeal held that the duty of disclosure must be provided for in statute, rules, or jurisprudence1 and that any existing duty would not affect the validity of the patent but could affect equitable remedies.2 However, very recent Canadian Federal Court decisions including G.D. Searle3 and Lundbeck4 have challenged tradition and indicate that applicants should deal with the Canadian Patent Office while employing the highest duty of candour or risk having subsequently issued patents invalidated by Canadian courts.
The U.S. Threshold
The United States has long been a benchmark jurisdiction for placing the highest expectations of candour upon applicants and their representatives, both during prosecution before the United States Patent and Trademark Office and during litigation before the Federal Courts. The lengths applicants and their attorneys must go in order to discover and disclose relevant prior art has varied throughout history. Recent jurisprudence has held that United States applicants and their representatives must conduct reasonable inquiries to uncover prior art.5 United States courts have even gone so far as to hold that applicants and their representatives should make inquiries from third parties to uncover prior art that the applicants believe may exist.6 Inequitable conduct is not statutorily defined. Inequitable conduct is the judicial application of the equitable doctrine of unclean hands, which holds that a plaintiff is not entitled to obtain an equitable remedy because the plaintiff is acting unethically or has acted in bad faith with respect to the claim of infringement.
Section 73(1)(a) of the Canadian Patent Act and Section 29 of the Patent Rules codify the good faith requirement when replying to prior art requisitions made by an examiner during prosecution. Hence a duty to disclose prior art references only arises by statute when an examiner specifically requisitions identification of prior art cited in corresponding foreign cases related to the application under examination.
Despite the specificity of the language of Section 73(1)(a), the Canadian Federal Court in G.D. Searle recently expanded this requirement to encompass a general obligation to act in good faith when dealing with the Patent Office and equated Patent Office practice with ex parte proceedings before a court. While this judgement was later overturned, the Federal Court of Appeal remained silent on the issues pertaining to the duty of good faith that the lower court raised.
Similarly, the Lundbeck decision held that prior art must be "fully and fairly described" by applicants when responding to requisitions from the Patent Office. Broadly interpreted, this case could mean that applicants and their representatives must review all submitted prior art references and accurately describe the relevance of those references to the Examiner.
One recent case relied on the principles outlined in G.D. Searle and Section 53 of the Patent Act. Section 53 of the Patent Act states that a patent is void if any material allegation in the petition of the applicant in respect of the patent is untrue, or if the specification and drawings contain more or less than is necessary for obtaining the end for which they purport to be made, and the omission or addition is wilfully made for the purpose of misleading. The Court held that statements in a patent that the invention is unique and outstanding went beyond the invention actually created. These statements were held to be material and were made with sufficient intent that they met the criteria outlined in section 53.7 This decision may now place upon the applicant a duty to be strictly accurate in the description of the invention.
Historically, an applicant's statements to the Canadian Patent Office during prosecution have generally not been relevant after the patent is granted. However, if these recent cases are any indication, statements made in the file history may become a significant risk to patentees defending the validity and enforceability of their patents.
While the law pertaining to the duty of candour before the Canadian patent office remains unsettled, cautious Applicants should prosecute applications with a similar level of candour as in the United States in order to protect the validity and enforceability of any patents that ultimately issue.
1. Bourgault Industries Ltd. v. Flexi-Coil Ltd. (1999), 86 C.P.R. (3d) 221 (F.C.A.).
2. Cadbury Schweppers Inc. v. FBI Foods Ltd.,  1 SCR 142.
3. G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81.
4.Lundbeck Canada Inc. et al. v. Ratiopharm inc., et al., 2009 FC 1102.
5. Brasseler v. Stryker, 267 F.3d 1370 (Fed. Cir. 2001).
6. DaimlerChrysler v. Fueling, 276 F.Supp.2d 1054 (S.D. Cal. 2003).
7. Ratiopharm Inc. v. Pfizer Ltd., 2009 FC 711.
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