Responding In 'Good Faith' Clarified In Canada

The Canadian Federal Court of Appeal case of Corlac Inc. v. Weatherford Canada Ltd. (2011 FCA 228 [Weatherford]) has provided a welcome clarification to good faith requirements in Canadian Patent Practice.

Section 73 of the Patent Act provides, in part, that:

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;

In interpreting S. 73(1) of the Patent Act, an earlier line of cases of the Federal Court (i.e., G.D. Searle & co. v. Novopharm Ltd., 2007 FC 81, 56 CPR (4th)1 and Lundbeck Canada Inc. v. Ratiopharm Inc, 2009 FC 1102) had surprised the patent community. The Federal Court held that submissions to the Patent Office made during the prosecution of an application, which were judged by the Court not to be made in "good faith", could result in the retroactive abandonment of an issued Patent.

The Federal Court had ruled "there is afforded during prosecution ample opportunity to make further disclosure or to correct an earlier statement or shortcoming. It is not harsh, or unreasonable, if after the patent issues, disclosure is found to lack good faith, that the Court deems the application and thus the patent, to have been abandoned.". This had set a high standard for good faith (and duty of candor) requirements in Canada.

In Weatherford, the Federal Court of Appeal has clarified that "[t]o be clear, the concept of abandonment in paragraph 73(1)(a) operates during the prosecution of the application for a patent. Its operation is extinguished once the patent issues.".

The Court in Weatherford, left no doubt the earlier cases of the lower Court were not to be followed, indicating "[t]o the extent that the Federal Court decisions in G.D. Searle and Lundbeck can be interpreted as standing for the proposition that paragraph 73(1)(a) can be relied upon for the purpose...