In a recent Federal Court of Appeal decision in Canada (Corlac Inc. and National Oil Well Canada Ltd. v. Weatherford Canada Ltd., 2011 FCA 228) the court clarified whether there is a general duty of good faith on the part of patent applicants in Canada. Paragraph 73(1)(a) of the Patent Act is clear that a patent application is considered abandoned if the applicant does not “reply in good faith” to the examiner. However, once the patent issues, any “good faith” duty is extinguished since the duty relates only to good faith in the prosecution of the patent application. The court has clarified that any alleged breach of this duty cannot be used to attack the validity of an issued patent. Post-issuance, other remedies must be used, such as section 53(1), for allegations of misrepresentation.

In Canada, this clarification of the law helps to allay fears that an “inequitable conduct” doctrine was creeping into Canadian law (for example, G.D. Searle & Co.  et al. v. Novopharm Limited et al. (in 2007) and Janssen-Ortho Inc. v. Apotex Inc. (in 2008) both explored these concepts).

This marks a distinction from US patent law, where the inequitable conduct doctrine can be used to attack an issued patent. Even in the US, the United States Court of Appeals for the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011), has scaled back the impact of this approach, calling it the “atomic bomb” of patent law. In patent law, this is one bomb that has been defused in Canada.

Calgary – 07:00 MDT