Key Developments In Canadian Patent Law In 2011

The following article summarizes several developments in Canadian patent law, including a brief summary of amendments to the Patent Rules.

Summary

The growing rift in patent law principles between patents for most technologies and patents for pharmaceuticals is problematic. Practitioners face serious challenges in advising their clients as to the state of Canadian patent law and the validity of rights obtained from the Canadian Patent Office in light of the divergent evolution caused by pharmaceutical patent litigation.

The recent evolution of the doctrines of sound prediction, actual or "demonstrated" utility, false promise (which was an attack of fraud under Section 53 in Canada until recently) and disclosure/sufficiency has become problematic for numerous pharmaceutical patentees (for example, see the Strattera and Latanoprost cases below). As well, the jurisprudential changes emerging in these areas are difficult to reconcile with the principles of obviousness (see the Altace decision). In another development, the analysis applied to advantages in selection patent cases is no longer confined to issues of obviousness, given the Court's recent intensification of utility requirements.

There is some hope that the Supreme Court might assist on these issues in the upcoming Viagra appeal. However, the Supreme Court also had the opportunity to comment on the Strattera decision, yet declined to do so. Leave applications for Latanoprost and Altace have also been filed by the rights holders. Hopefully, the Court will look closely at the issues and take the opportunity to provide guidance in these increasingly complex and inconsistent areas of patent law.

Subject Matter

On November 24, 2011, the Federal Court of Appeal ruled in Canada (Attorney General) v. Amazon.com, Inc. that the Commissioner of Patents' practice of excluding business methods from patentability was incorrect. The Court agreed that no Canadian jurisprudence determines conclusively that a business method cannot be patentable subject matter. However, the Court refrained from ruling on whether the "one-click" patent at issue was patentable. Instead, the matter was remitted to the Commissioner for re-examination based on the Court's reasoning. On December 23, 2011, the Commissioner approved Amazon's application and issued a Notice of Allowance. On January 17, 2012, the patent issued.

It is anticipated that the Canadian Patent Office will issue revised examination guidelines in view of the Court of Appeal's decision. Until then, patent applicants ought to ensure a claimed invention is something more than just a programmed mathematical formula or algorithm that is implemented by a computer, and review the Amazon allowed claims as an example of what is meant by discernable effects or changes produced by an invention.

Fraud

In Weatherford Canada Ltd. v. Corlac Inc. (Weatherford), the Federal Court of Appeal ruled that patents cannot be attacked after they have issued on the ground of lack of good faith in their prosecution. The Court held that s. 53(1) of the Patent Act pertains to issued patents, whereas s. 73(1)(a) applies solely to patent applications.

The decision states that the operation of s. 73(1)(a) of the Patent Act...