The Duty of Good Faith in Patent Prosecution: Where Will It Arise Next?

Under the Patent Act, an applicant for a Canadian patent has two statutory obligations to act in good faith. Section 53 requires the applicant to be honest and complete in the description of the invention in the specification; section 73 requires the applicant to respond in good faith to the Patent Office.

The Federal Court has also suggested there may be a more general duty to act in good faith beyond that specifically set out in the Patent Act. This general duty can be framed in terms of the bargain theory. In return for full, frank and fair disclosure of its invention, an applicant will be granted a twenty year monopoly to that invention. If the applicant's disclosure and/or dealings with the Patent Office are misleading, then the patent has been granted on a false premise and/or the applicant's bargain with the public has not been honoured. Those arguing against a more general duty will note that the Patent Act specifically sets out and limits the good faith obligations to the circumstances described in the legislation.

In the context of discussing the requirements for the patent specification, Dr. Fox explains that because a patent represents a bargain between the inventor and the public with some consideration flowing in both directions, "the utmost good faith must be observed by the applicant in disclosing his invention and in framing his specification, which must not contain any false representation or be willfully misdescriptive or misleading in any material part"2. Section 53 has codified this good faith requirement and provides a penalty for failing to honour it; if any material allegation in the specification is found to be intentionally misleading, the patent is void. In a more general statement, Dr. Fox goes on to say that good faith is "a necessary incident. The inventor must act uberrima fide and and there must be no false suggestion".3

Under section 35 of the Patent Act, every patent application filed with the Canadian Patent Office must be examined by a competent examiner for compliance with the Patent Act and Patent Rules. During this examination, the patent applicant is given the opportunity to address areas of alleged non-compliance by responding to requisitions from the examiner to which the applicant may either amend its application so that it does comply or make arguments as to why the application already complies. Pursuant to section 73(1)(a) of the Patent Act, these responses by the applicant must be made in good faith, failing which the patent application goes abandoned.

There are two Canadian court decisions (Lundbeck v. Ratiopharm, 2009 FC 1102 and G.D. Searle v. Novopharm Limited, 2007 FC 81) that find a breach of the duty of good faith under section 73(1)(a) of the Patent Act in the PMNOC context. This paper reviews those decisions and sections of the Patent Act and Patent Rules to comment on the extent of the duty of good faith under section 73(1)(a) in Canada. We then examine other decisions which have found or rejected a more general duty of good faith in dealing with the Patent Office in Canada. Next, we provide a summary of the U.S. inequitable conduct doctrine and the statutory differences which make reference to U.S. inequitable conduct jurisprudence in Canada problematic. Finally, the article concludes with suggested best practices relating to the duty of good faith for both patent prosecutors and patent litigators.

1. The Duty of Good Faith in Patent Prosecution in Canada

   1. The Duty of Good Faith in the Patent Act and Patent Rules

      The duty of good faith in patent prosecution in Canada arises by statute in section 73(1)(a) of the post-1996 Patent Act. Section 73(1)(a) prescribes "[a]n application for a patent in Canada shall be deemed to be abandoned if the applicant does not reply in good faith to any requisition made by an examiner in connection with an examination, within six months after the requisition is made or within any shorter period established by the Commissioner."

      The language of the section defines both who owes the duty of good faith and under what circumstances the duty is owed.

      Who Owes a Duty of Good Faith in Patent Prosecution?

      The duty of good faith according to section 73(1)(a) is owed by the applicant. Unlike in the United States, the applicant's patent agent (or associate patent agent) in Canada does not owe a duty of good faith independent of that of the applicant.

      While Rule 22 of the Patent Rules provides "any act by or in relation to a patent agent or an associate patent agent shall have the effect of an act by or in relation to the applicant", there is no court decision that extends the s. 73 duty of good faith to the patent agent to disclose anything known to him that does not relate to the activities of the applicant.

      Since the duty of good faith is owed by the applicant, the applicant's knowledge may be presumed to include, for example, prior art references cited in prosecution of related and corresponding foreign patent applications. This imputed knowledge can be considerable in cases where the applicant has, for instance, submitted a long list of prior art in an information disclosure statement before the U.S. Patent Office in a corresponding U.S. application.

      Under What Circumstances Is the Duty of Good Faith Owed?

      The duty of good faith under section 73(1)(a) of the Patent Act is owed in replying to any requisition made by an examiner in connection with an examination. Consequently, not every communication with the Patent Office is subject to the duty of good faith under section of 73(1)(a) of the Patent Act.

      Requisitions may be made under the following sections of the Patent Rules:

      Rule 23 – appointment of patent agents Rule 29(1) – corresponding examination information and related documents Rule 29(2) – identification of first publication Rule 30(1) – payment of final fee Rule 30(2) – non-compliance with Act or Rules - amend or argue against defects Rule 30(4) – final action for non-compliance with Act or Rules - amend or argue against defects Rule 30(5) – payment of final fee after final action rejection withdrawn Rule 58(4) – translations of international applications Rule 58(5) – evidence that applicant is the legal representative Rule 71 – translations of documents Rule 89 – certified copies of priority documents Rule 94 – application completion requirements Rule 104.1 – date of deposit of biological material Rule 136 (sandwich Patent Act) – translations of documents Rule 143 (sandwich Patent Act) – certified copies of priority documents Rule 172 (old Patent Act) – translations of documents Rule 180 (old Patent Act) – certified copies of priority documents When is the Duty of Good Faith Breached?

      The duty of good faith is breached by a lack of good faith, and therefore does not require proof of bad faith or fraud by the applicant (although such evidence would demonstrate a lack of good faith). Since this intent threshold is lower than fraud or bad faith, the Court has considered the materiality of the alleged breach to the examination of the application in view of the fact that finding a breach of the duty of good faith will almost always invalidate a patent in a litigation proceeding.

      Examples of where a lack of good faith has been found are provided in the two cases below.

   2. Breach of the Duty of Good Faith Under s. 73(1)(a) in Canadian Case Law

      1) G.D. Searle v. Novopharm Limited

      In G. D. Searle v. Novopharm Limited, 2007 FC 81, Novopharm alleged that Searle misled the Canadian Patent Office in two respects during the course of the prosecution of the application for the 576 patent at issue. The first was to say that the European Patent Office had allowed claims identical to claims 1 to 16 to proceed to a patent, whereas in fact the European Patent Office had done so in respect of only claims 1 to 8. The second was to not disclose certain information...