1. PATC Module 2 – Infringement/Validity
Good Faith/Candour
Untrue Allegation in Petition
Inventorship 1

2. Good Faith Policy: As seen in s.27, patents are issued in exchange
for new information provided to the public (bargain
principle)
The patentee (applicant) should bargain in good
faith, prosecute with candour
But should failure to prosecute the application with
candour void a patent?

3. Good Faith--Historical View
Fada Radio Ltd. v. Canadian General Electric Co. [1927] S.C.R. 520 (and subsequent cases)
Patents (at that time) issued with a grant, which included a statement to the effect that the provisions of the Patent Act had been complied with.
This statement was held to preclude attacks on validity based on failure to follow procedural requirements during prosecution.
An actual grant has not been attached to patents for decades, and no such statement now appears on or with the patent as issued (para. 65 of GD Searle).

4. Good Faith--Historical View
Bourgault Industries Ltd. v. Flexi-Coil Ltd. (1991), 86 C.P.R. (3d) 221 (FCA)
Lack of candour was argued, for failure to provide certain prior art to the Patent Office during prosecution.
The Court held that a duty of disclosure must be one provided for in the statute, rules or jurisprudence and that even if there was such a duty, it would not affect the validity of the patent (but could affect equitable remedies).

5. Good Faith--Statutory Basis
s.73(1) 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 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

6. Good Faith--Statutory Basis
REQUISITIONS:
Rule 30(2): requisition to amend the application in
order to comply with the Act, or provide arguments
as to why the application does comply
Rule 29(1): requisition for the identification of any prior art cited in respect of foreign applications describing the same invention
Rule 3: requisition payment of fees

7. Good Faith--Recent Developments
Eli Lilly and Co. v. Apotex (1998 FCTD)
“However, the recital in the patent grant that the applicant has complied with the Act is conclusive, in the absence of fraud, of such compliance, and the Court will not second-guess the Commissioner as to the conduct of the applicant during prosecution...”

8. Good Faith--Recent Developments
In Pason Systems Corp (2006), Hughes J. stated:
“The applicant and its agent owe a duty of candour to the patent office to make a full, fair, and frank disclosure of all of the relevant circumstances.”
He then quoted from the IPIC 2001 Code of Ethics:
“The most important attribute of a member of the Institute is integrity.... an agent must at all times conduct himself or herself with integrity and competence in accordance with the highest standards of the profession...”

9. Good Faith--Recent Developments
G.D. Searle & Co. v. Novopharm Limited 2007 FC 81 (FCTD)
Searle said only that the Matsuo reference, on its face, does not state that at least one of the compounds described in that reference did not cause gastric problems while being effective as against inflammation.
In fact, Searle had, before the Canadian Patent application had been filed (November 14, 1999), tested at least one of the Matsuo compounds, had found that it was useful in treating inflammation and did not cause gastric problems. The head of the biological team at Searle disclosed this finding to the public at a scientific conference held in June, 1994, and in August, 1994, submitted a scientific paper to a peer reviewed journal for publication.

10. Good Faith--Recent Developments
G.D. Searle (cont’d)
Hughes J: The essential point is that all appropriate facts should have been stated in the patent application itself, and disclosed to the Patent Office so as to allow the examiner to make an appropriate assessment and, if necessary, require amendment or cancellation respecting the specification and proposed claims. I find, therefore, that ‘good faith’ was not shown originally in submitting the application as filed with the Canadian Patent Office without fuller disclosure as to Matsuo nor was ‘good faith’ shown subsequently in responses to the Patent Office examiner dealing with Matsuo. As a result the application was, as provided in section 73 of the post-October 1, 1996, Act, abandoned.

11. Good Faith--Recent Developments
JOI and Daiichi v. Apotex 2008 FC 744 (FCTD)
Prior to October 1, 1996: lower standard of “good faith”; inadvertent errors in failing to respond accurately to all requisitions can be forgiven so that patent rights are not lost
DBC Marine Safety Systems 2007 FC 1142, aff’d 2008 FCA 256
Post October 1, 1996: failure to respond to a single requisition will trigger the deemed abandonment provisions of s.73(1); “where an applicant fails to respond to a requisition and the application is not reinstated within the year provided to rectify the situation, the patent application is abandoned as a matter of law. There is no discretionary decision which is reviewable by the Court.”

12. Good Faith--Recent Developments
Lundbeck Canada v. Ratiopharm Inc FC 1102 (FCTD)
During prosecution, agents for the applicant responded to a Rule 29 requisition by identifying two documents cited in an International Search Report for a corresponding PCT application, one of which referred to as the “Wenk” article.
In responding to a subsequent Office Action, the agent argued against an obviousness rejection by stating that it was of “prime importance” to note that numerous prior art teachings taught against the claimed combination. Four other prior art references were cited and described by the agent in support of this contention.
Agents for the applicant concluded that it would have been counter-intuitive for one of skill in the art to arrive at the claimed combination in view of the teachings of the prior art as a whole available at the relevant date.

13. Good Faith--Recent Developments
Lundbeck (cont’d)
The court found that in fact the Wenk article did teach certain aspects of the claimed combination, and was therefore much more relevant than any of the four references relied upon by the agent in making its argument for allowance of the application.
But the claims in the issued patent were held to possess the requisite novelty and non-obviousness over the Wenk article.
Nevertheless, the Court held that:
A proper understanding of the prior art is clearly critical to patent
examination. The duty of good faith imposed by paragraph 73(1)(a) of the
post-1996 Patent Act requires that this prior art be fully and fairly
described by applicants and their agents when answering requisitions
from the Patent Office. That did not happen in this case...
The patent was found invalid for failure to reply in “good faith”.

14. Good Faith--Last Word
Corlac Inc. v. Weatherford Canada Ltd FCA 228
FCA overruled the FC decisions in G.D. Searle and Lundbeck by limiting s.73(1) to the good faith prosecution of applications, and not issued patents.
The concept of abandonment under s.73(1)(a) operates during prosecution of the application for a patent, and its operation is extinguished once the patent issues.
A validity attack on an issued patent on the basis of alleged misrepresentations to the Patent Office must be dealt with under s.53(1) of the Patent Act.

15. Petition--Untrue Material Allegation
s.27(2): “The prescribed application fee must be paid and the application must be filed in accordance with the regulations... and the application must contain a petition, 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 wilfully made for the purpose of misleading”
Rules, Form 3: the petition requires, among other things, the identification of the inventors
s.53(1): “A patent is void if any material allegation in the petition of the application in respect of the patent is untrue...”

16. Petition--Untrue Material Allegation
Two elements:
Was the allegation “material”?
Was it willful with the intention to mislead?

17. Petition--Untrue Material Allegation
Apotex Inc. v. Wellcome Foundation Ltd SCC 77:
“The appellants argue that, while as Addy J. says, it may be that the identity of the inventor is immaterial to the public in most instances, this is not necessarily true in all cases.  (…)
There is no need to consider the issue of materiality further in this case however, not only because of the conclusion that Drs. Broder and Mitsuya were not in fact co-inventors in this case, but also because there is no evidence whatsoever that the omission to name them was “wilfully made for the purpose of misleading”, as required by the concluding words of s. 53(1).”

18. Petition--Untrue Material Allegation
Alberta Inc. v. Q'MAX Solutions Inc FCA 241
“It is true that the petition named the Flemings as the sole inventors and did not name Mr. Smith. The respondent says that this case is distinguishable from Wellcome Foundation, supra, because in that case the persons who were named as inventors were in fact inventors whereas here, on the finding of the Trial Judge, the Flemings were not inventors. In my view, however, this distinction does not bring the case within subsection 53(1) where, as it appears here, the naming of themselves as inventors was not done by the Flemings wilfully for the purpose of misleading. In Dec International, Inc. v. A.L. LaCombe & Associates Ltd. (1989), 26 C.P.R. (3d) 193 (F.C.T.D.), it was held that a patent should not be declared invalid pursuant to what is now section 53 of the Patent Act in circumstances where the corporate employer, in good faith, named an employee who was found at trial not to be the inventor rather than the employee who was the true inventor.”

19. Inventorship So who are “inventors”? Two elements:
(i) Conception of the idea; and
(ii) Reduction to a definite and practical shape (Permutit v. Borrowman), or described (either in writing or verbally) sufficiently to make the invention (Chrisitiani v. Rice)

20. Inventorship Gerrard Wire Tying (1926):
Nor is a patent to joint inventors invalidated by the fact that one of them only first perceived the crude form of the elements and the possibility of their adaptation to complete the result desired. In fact the conception of the entire device may be attributed to one, but if the other makes suggestions of practical value, which assist in working out the main idea and making it operative, or contributes an independent part of the entire invention which helps to create the whole, he is a joint inventor even though his contribution be of minor importance.

21. Inventorship Apotex v. Wellcome (2002 SCC)
To the extent this [the quote from Gerrard Tire] suggests that an individual who contributes to the inventive concept may be a co-inventor without being the prime originator, I agree with it. To the extent, however, that it can be read to include as inventors those who help the invention to completion, but whose ingenuity is directed to verification rather than the original inventive concept, I respectfully, for the reasons already given, disagree.