Publication
TITRE
The Doctrine of Inequitable Conduct May Have Arrived in Canada
DATE
23 février 2007
In a startling decision released on January 24, 2007, a judge of the Federal Court has deemed a patent to be abandoned based on the patentee's failure to disclose in good faith all appropriate facts in its patent application, and respond in good faith to the Patent Office during prosecution. According to Hughes J. in G.D. Searle & Co. et al. v. Novopharm Limited et al., 2007 FC 81, failing to make full disclosure in a patent application or in responses to the Patent Office shows a lack of good faith which can result in patent invalidation. Searle may have introduced into Canadian patent law a U.S.-style doctrine of "inequitable conduct", according to which patents are rendered invalid for breach of the patentee's duty of good faith. THE ALLEGATION OF ABANDONMENT
The allegation of abandonment in the Searle case was directed at Canadian Patent No. 2,177,576 (the "576 Patent"). The 576 Patent covers the drug celecoxib (marketed in Canada as CELEBREX®), which treats inflammation without the gastro-intestinal side effects commonly caused by other types of anti-inflammatory agents. This characteristic is based on the ability of celecoxib to selectively inhibit cyclooxygenase (COX) II. COX II selective inhibition is due to the presence of a particular chemical group in the celecoxib molecule.
Novopharm alleged that the 576 Patent had been abandoned by reason of the following statements made by Searle to the Patent Office during patent prosecution: (i) a statement that certain claims of a corresponding patent application had been allowed by the European Patent Office, when in fact only some of those claims had been allowed; and (ii) a statement that COX II selectivity based on the presence of a particular chemical group was "not derivable and nowhere suggested in the art", when in fact Searle had discovered that a prior art compound having a similar chemical group was a selective COX II inhibitor.
THE DECISION
Hughes J. rejected Novopharm's assertion of abandonment based on the first statement because the materiality of the statement was low and evidence of intent was lacking.With respect to the second statement, Hughes J. found that Searle should have advised the patent examiner of its discovery of the prior art compound, particularly since Searle had disclosed the discovery to the public before the Canadian filing date. Searle's failure to provide the Patent Office with this information either in its patent application or in its responses to office actions showed a lack of good faith. The 576 Patent was thus deemed abandoned based on a violation of section 73(1)(a) of the Patent Act, which requires applicants to respond in good faith and within a particular time to requisitions of the Patent Office.
THE IMPACT
While Hughes J.'s decision is currently under appeal, the decision may well have a significant impact on patentees and patent applicants in the interim and beyond. Patentees should expect the file histories of their patents in litigation to be subjected to increased scrutiny. For patent applicants, extra vigilance should be exercised in preparing responses to Patent Office requisitions. Particular attention should be paid to the accuracy and completeness of statements made in the patent disclosure itself and in responses to office actions, including in respect of prior art and proceedings before foreign patent offices.Cynthia Tape
The purpose of this document is to provide information as to developments in the law. It does not contain a full analysis of the law nor does it constitute an opinion of Ogilvy Renault LLP or any member of the firm on the points of law discussed.
For further information, please contact one of the following professionals:
Nadine D'Aguiar (416) 216-1907
ndaguiar@ogilvyrenault.com
Patrick E. Kierans (416) 216-3904
pkierans@ogilvyrenault.com
Cynthia L. Tape (416) 216-4063
ctape@ogilvyrenault.com
Joan M. Van Zant (416) 216-1868
jvanzant@ogilvyrenault.com
© Ogilvy Renault LLP 2007 - All Rights Reserved
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Personnes-ressources
Nadine D'Aguiar
Toronto
416.216.1907
ndaguiar@ogilvyrenault.com
Profil
Patrick E. Kierans
Toronto
416.216.3904
pkierans@ogilvyrenault.com
Profil
Cynthia L. Tape
Toronto
416.216.4063
ctape@ogilvyrenault.com
Profil
Joan Van Zant
Toronto
416.216.1868
jvanzant@ogilvyrenault.com
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