Attention à la véracité des déclarations dans les réponses aux rapports d’examen de brevets au Canada

L’affaire G.D. Searle & Co. v. Novopharm Limited, 2007 FC 81, (January 24, 2007) contient une autre longue décision du juge Hughes sur un dossier d’avis de conformité.

La décision contient une bonne analyse de l’article 73 (1) (a) de la Loi sur les brevets

73. (1) La demande de brevet est considérée comme abandonnée si le demandeur omet, selon le cas :

a) de répondre de bonne foi, dans le cadre d’un examen, à toute demande de l’examinateur, dans les six mois suivant cette demande ou dans le délai plus court déterminé par le commissaire; […]

En effet, il y avait une allégation que le demandeur n’avait pas bien répondu à une requête sous la règle 29 en affirmant que les revendications 1-16 d’une demande correspondante européenne étaient acceptées alors que seulement les revendications 1-8 étaient acceptées et les revendications 9-16 faisaient l’objet d’une demande divisionnaire.

De plus, une des réponses à un rejet de l’examinateur basé sur la non-évidence contenait une fausse déclaration par rapport au fait que l’invention représentait une amélioration par rapport à l’art antérieur:

Thus, the replacement of the methylsulfonyl group of the Matsuo compound with an aminosulfonyl group (the Applicant’s compound) did not result in an improvement over the prior art.  For the Applicant to suggest that such a substitution did result in an improvement (i.e., COX-II selectivity), when in fact the Applicant was aware that it was not an improvement, is a failure to respond in good faith to the Examiner’s requisition to show that the Applicant’s specific pyrazoles were an improvement over the prior art.

Le juge Hughes décide alors que la première faute n’est pas un motif d’abandon de la demande, alors que la deuxième faute en est un. Voici des extraits des conclusions du juge:

[67]           Section 73 was introduced into the Patent Act after the decision in Flexi-Coil.  In other sub-sections, Section 73 requires timely payment of appropriate fees. In Dutch Industries Ltd. v. Canada (Commissioner of Patents), [2002] 1 FC 325, the Federal Court held that a patent had lapsed for failure to pay sufficient maintenance fees on time. That decision on that point was upheld by the Federal Court of Appeal, [2003] 4 FC 67.

[68]           In Johnson & Johnson v. Boston Scientific Ltd., [2005]  4 F.C.R. 110, this Court held that failure to pay the appropriate level of fees at the time of filing the application for a  patent served to invalidate the subsequently granted patent. That decision was stayed pending proposed legislative revisions.

[69]           Thus, there is precedent for using section 73 of the Patent Act as a basis for, in effect, holding a patent to be invalid or lapsed. The Federal Court of Appeal in Flexi-Coil, supra, has held, pre section 73, that lack of candour can, at least, provide a basis for consideration by the Court as to equitable relief.

[70]           The Supreme Court of Canada states in the FBI case, quoted at paragraphs 30 and 31 of Flexi-Coil, supra, and also in Whirlpool Inc. v. Camco Inc., [2000] 2 S.C.R. 1067, at paragraph 37 and in AstraZeneca Canada Inc. v. Apotex Inc. 2006 S.C.C. 49, at paragraph 12, that disclosure by the patentee is an essential part of the bargain for which this country grants the patent monopoly.

[71]           Since at least sixty years ago there has been a doctrine of good faith in respect of patents.  President Thorson of the Exchequer Court in Noranda Mines Ltd. v. Minerals Separation North American Corp., [1947] ExCR 306, at page 317, said that the inventor must act uberrimae fide and give all information known to him that will enable the invention to be carried out to the best effect as contemplated by him.

[72]           A patent is a monopoly sought voluntarily by an applicant, there is no compulsion to do so.  An application for a patent is effectively an ex parte proceeding, only the applicant and the Patent Office examiner are involved in dialogue.  The patent, when issued, is afforded a presumption of validity by the Patent Act.

[73]           A patent is not issued simply to afford a member of the public an opportunity to challenge its validity (see e.g. by way of analogy to revenue legislation Kingstreet Investments Ltd. v. New Brunswick (Department of Finance), 2007 S.C.C. at paragraph 54).  An obligation arises on those seeking to gain a patent to act in good faith when dealing with the Patent Office.  The application for the patent includes a specification and draft claims.  The specification is the disclosure for which the monopoly defined by the claims is granted.  This disclosure, as the Supreme Court has said, should be full, frank and fair.  Further disclosure made in dialogue with the Patent Office examiner. Since at least October 1, 1996, communications with the examiner must be made in good faith.  It is to be expected that there will be full, frank and fair disclosure.  There is afforded during the prosecution ample opportunity to make further disclosure or to correct an earlier misstatement or shortcoming.  It is not harsh or unreasonable, if after the patent issues, and disclosure is found to lack good faith, that the Court deems the application and thus the patent, to have been abandoned.

[74]           I find that the representation that claims 1-16 of the European patent applications had been allowed, (the truth being that claims 1-8 had been allowed and the remainder had been transferred to another, divisional, application) does not provide a basis for finding abandonment of the application for lack of good faith. Claims 1-8 include the subject matter of claims 4 and 8 now at issue here.  The other claims 9-16 do not relate to claim 4 or 8 at issue here. A subsequent response provided the information that only claims 1-8 had been allowed, even though that information was not specifically referred to or highlighted.  There is nothing on the record to indicate that the information materially influenced the examiner, nor is there any information as to the intent of the applicant or its patent agent. The materiality is low and evidence of intent is lacking.

[75]           I find otherwise as to the responses dealing with the Matsuo reference. It is clear that the patent as applied for was intended to deal with compositions that not only treated inflammation but also had lesser undesirable side effects. The Applicant, Searle, failed to advise the Patent Office that not only had it already found that at least one of the Matsuo compounds had similar properties but also that Searle had disclosed this fact to the public before the application for the Canadian patent was filed.

[76]           I appreciate that if ­­­­­­­­­­­­­Searle had not made the public disclosure things might have been different.  If that were the case, such investigations could be kept secret as they are part of the research and inventive process. However, having made the fact public before filing the Canadian application, the story changes.

[77]           I have found that Searle cannot rely on the fact that there was a priority application or two predating the disclosure or rely on provisions of the Patent Act allowing disclosure by the inventors or those deriving information from the inventors up to one year prior to the Canadian filing date. 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.

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