PATC Module 2 – Infringement/Validity Added Subject Matter Division Practice 1

Added Subject Matter s.38.2(2) and (3) of the Patent Act prohibit amendments to the specification or the drawings that add “matter not reasonably to be inferred from the specification or drawings as originally filed” Rule 32: After a notice of allowance has been sent, no amendment, other than correction of a clerical error that is obvious on the face of the application can be made if it requires a further search by the examiner and leaves the application non-compliant with the Act. 2

Added Subject Matter If an inventor has come up with improvements to an invention after filing a first application, it can be incorporated into a second, expanded application. The second application can claim priority from the first application if filed within one year of the first. Otherwise, no procedure for filing an application that includes the new material and keeps the benefit of the earlier filing date for the original subject matter 3

Divisional Practice Unity of invention: s.36(1) A patent shall be granted for one invention only... Rule 36: “For the purposes of section 36 of the Act [...] an application does not claim more than one invention if the subject-matters defined by the claims are so linked as to form a single inventive concept.” MOPOP Chapter 14--Appendix includes examples of claims directed to single and multiple inventions; e.g.: Claim1: A process of manufacture comprising steps A and B Claim 2: Apparatus specifically designed for performing step A Claim 3: Apparatus specifically designed for performing step B Unity of invention exists between claim 1 and 2, or between claims 1 and 3. There is no unity between claims 2 and 3 since there is no common special technical feature between the two claims.

Divisional Practice Voluntary Divisional: s.36(2) Where an application (“the original application”) describes more than one invention, the applicant may limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application, if the divisional application is filed before the issue of a patent on the original application Compulsory Divisional: s.36(2.1) Where an application (“the original application”) describes and claims more than one invention, the applicant shall, on the direction of the Commissioner, limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application...

Divisional Practice New Matter in a Divisional: MOPOP 14.06.02 “The specification and drawings of a divisional application must be restricted to what has been described in the specification and drawings of the parent application.” “If new matter... is in included in the specification or drawings of a divisional application when it is filed, the applicant is advised by examiner’s report that the new application is not entitled to divisional status.” can remove the new matter, retain divisional status or can remove designation as a divisional application, retain the new matter, with a new effective filing date

Divisional Practice Further Divisionals MOPOP 14.06.03: “A divisional application may itself be divided. The further divisionals may be filed after the original parent application has issued, as long as they are filed before the issue of their particular parent application” Note that the claimed invention of each subsequent divisional must find support in the first filed application.

Improper Divisional A divisional application can be considered “improper” if it fails to claim a different invention. Case Examples: Canada v. Fabwerke Hoechst, 1963 (SCC) Bayer Inc. v. Canada, 2000 (FCA) GSK Inc. v. Apotex, 2003 (FCTD)

Improper Divisional There is some overlap with the concept of double patenting (reviewed previously): E.g. in Merck v Apotex (2006, FCA), the Court held that a divisional application that fails to claim a different invention would not for that reason alone be held invalid: “... when considering the harm that may result from an improper divisional, it becomes clear that the principle of double patenting provides a sufficient remedy.... In summary, Hughes J correctly held that an improper divisional does not, in the absence of double patenting, give rise to a loss of patent rights.”