Good Faith In Patent Prosecution, A Canadian Perspective

Introduction

In the United States, judge-made doctrines of inequitable conduct in the Patent Office which could render a patent unenforceable have been a significant factor in increasing the cost and length of patent litigation in that country. In Therasense v Becton, Dickinson,1 the United States Court of Appeals for the Federal Circuit referred to the inequitable conduct doctrine as the "atomic bomb" of patent law.

In Canada, we have to date been largely spared the negative effects of such a doctrine.

Prior to 1996, it was settled that, in the absence of proof of fraud, the validity of a patent could not be challenged on the basis of failings of or on behalf of the patentee during prosecution of the patent application and in no case was enforcement of the patent refused on the basis of "inequitable conduct" during the patent application process.

As part of extensive amendment of the Patent Act effective October 1, 1996, section 73(1)(a) was introduced. It provides that an 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. An application which is deemed to be abandoned can be reinstated if the applicant requests reinstatement, takes the action that should have been taken in order to avoid the abandonment, and pays the appropriate fee within 12 months from the date of deemed abandonment.2

Two decisions of the judges of the Federal Court3 asserted a more general duty of good faith, supported in part by the reference to "good faith" in s. 73(1)(a), raising the spectre that we were headed down the US–style road of battles over the prosecution of the patent application in Canadian patent litigation.

In Weatherford v Corlac,4 the Federal Court of Appeal affirmed a decision of another Federal Court judge that s. 73(1)(a) was applicable only while the application was in the Patent Office and did not provide a post-grant basis for finding a patent to have been deemed to be abandoned.

This was a highly welcome decision. Patent litigation can be long and expensive as it is without introducing into Canadian law challenges based on patent prosecution acts or omissions which do not rise to the level of fraud.

However, an application for leave to appeal to the Supreme Court of Canada from the decision of the Federal Court of Appeal has been filed.5 Thus it remains to be seen whether the Supreme Court will take up this issue or leave it as determined by the Federal Court of Appeal.

Background

It has long been held that defects in the prosecution could not affect the validity or enforceability of an issued patent in the absence of fraud. In Fada Radio Limited v Canadian General Electric,6 Anglin CJC confirmed this view:

... [W]e are satisfied that any insufficiency in the material on which the Commissioner acts ... cannot, in the absence of fraud, which in this instance has not been suggested, avail an alleged infringer as a ground of attack on a new patent issued under s. 24. It is not a "fact or default, which, by this Act, or by law...