PATENTS: DUTY OF CANDOR IN CANADA? During

PATENTS: DUTY OF CANDOR IN CANADA?
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ERIKA PAAPE
ROBIC, LLP
LAWYERS, PATENT AND TRADE-MARKS AGENTS
During prosecution of a patent application in Canada, communications with the
Examiner must be done in good faith. In the case of Lundbeck v. Ratiopharm (2009
FC 1102), published on November 23, 2009, not respecting this duty gave the
Federal Court reason to invalidate a patent.The judgment of the Court is related to a
patent claiming a combination of two pharmaceutical compounds used in treatment
of Alzheimer's disease. The Examiner rejected the combination of the two
compounds as being obvious, since the use of these two compounds, when taken
separately, was well known. In response to this rejection, the Applicant presented
four technical papers, in which similar combinations had the effect of reducing the
effectiveness of one of the compounds. The articles presented by the Applicant
were accompanied by declarations from the Applicant to the Examiner that the prior
art clearly taught avoiding the claimed combination and that the prior art as a whole,
would not have motivated a person skilled in the art to combine the two compounds
for treatment of the disease.
Prior to this exchange, the Examiner had also asked that prior art cited in
corresponding foreign patent applications be also brought to his attention. Not
having any corresponding foreign applications, the Applicant submitted, in response
to this first Office Action, an International Search Report. This report contained a
technical paper (the Wenk paper) giving some hypotheses on the use of the claimed
combination. This Wenk paper was not mentioned to the Examiner in the response
to the second Office Action.
Section 73(1)(a) of the Patent Act mentions that "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 made by an Examiner in connection with an
examination [...] (our emphasis added)".
The Federal Court pointed out that the Applicant's statement, according to which the
prior art as a whole would not have motivated the person skilled in the art to
combine the two compounds was false as the Wenk paper was part of this prior art.
Moreover, the Court concluded that the declaration stating that the prior art clearly
taught to avoid the claimed compound did not offer an impartial presentation of the
prior art. According to the Court, the Wenk paper was an important reference to be
included in the analysis of obviousness of the invention, as opposed to the other
© CIPS, 2010.
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With ROBIC, LLP a multidisciplinary firm of Lawyers, and Patent and Trade-mark Agents. Published
in the Winter 2009 Newsletter of the firm (Vol. 13, No. 4). Publication 068.116E.
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four articles that the Applicant preferred to point out to the Examiner. The Court
concluded that the Applicant's response did not represent a complete, honest and
impartial disclosure.
The Court then concluded that the allegation of abandonment in view of section
73(1)(a) of the Patent Act was justified and that, even if the Court did not consider
that the claims of the patent were anticipated or obvious in view of the Wenk paper.
The fact that this paper was provided in answer to the first Office Action was not
sufficient to show that the Applicant met its obligation of good faith under section
73(1)(a), given the contradictory declaration made by the Applicant in the second
response.
The Lundbeck case highlights that during prosecution of a patent application in
Canada, the Applicant and the patent agent on file have an obligation to address the
prior art in a complete, honest and impartial manner during correspondence with the
Patent Office. One must be prudent not only when analyzing the scope of the prior
art, but also in the manner of qualifying that prior art, while avoiding, as much as
possible, overly broad declarations.
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