Misstatements And Inequitable Conduct In Canada After Weatherford

In Canada, there are two main provisions in the Patent Act which relate to the conduct of a party when obtaining a patent. Section 53(1) relates to misrepresentations to the Patent Office and section 73(1)(a) relates to good faith responses to the Examiner. The provisions read as follows:

53. (1) 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 willfully made for the purpose of misleading.

73. (1) An application for a patent in Canada shall be deemed to be abandoned if the applicant does not

(a) 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.1

In recent years, the Federal Court considered a few cases where a party raised issues of a lack of good faith and/or material misrepresentation as part of their challenges to the validity of the patent in suit.

The decisions resulting from these cases were of great concern to patentees, as they seemed to invoke changes in the law as it had previously existed. However, the Federal Court of Appeal made several more recent decisions, clarifying this issue.

GOOD FAITH RESPONSES

The Federal Court, in a Notice of Compliance (NOC) Proceeding, considered the Patent Act, and held that "[t]here is no provision in the Patent Act or Rules that directly provides to a third party a right to invalidate a patent for fraud or lack of good faith during prosecution of the application."2 However, the Court then considered the American law relating to inequitable conduct, the Australian law relating to fraud or misrepresentation, the history of section 73 and the doctrine of good faith prior to its implementation in 1996.

The Court held that obtaining a patent was an ex parte proceeding. During prosecution, responses must be full, frank and fair, and there is ample opportunity to correct mistakes.3 Furthermore, it "is not harsh or unreasonable, if after the patent issues, and disclosure is found to lack good faith, that the Court deems the application and thus the patent, to have been abandoned."4

Following Searle was a decision in Lundbeck5 where the Court again considered an allegation that the patent was abandoned during prosecution due to a response to an office action that was allegedly not made in good faith. The factual situation related to a particular piece of prior art. The article in question, Wenk, was mentioned in an International Search Report. However, when the Examiner issued an office action, arguing that the invention was obvious, he did not cite the Wenk article. In the response to the obviousness objection, the patent agent responded to the art cited, then cited several other pieces of art and concluded with a statement that:

In fact, in view of the prior art, which showed that NMDA antagonists attenuate the effect of...