Cour d’appel fédérale: la suite de l’affaire Searle

La suite de cette décision qui portait entre autres sur la question d’un abandon suite à une réponse faite de “mauvaise foi” à un rapport d’examen en vertu de l’article 73 de la Loi sur les brevets, a pris une toute autre tournure à la Cour d’appel fédérale: la Cour a en effet déterminé que Searle était un demandeur à la date de la revendication (contrairement au juge de première instance) et sa divulgation publique qui invalidait le brevet en première instance est OK puisqu’elle était à l’intérieur de la période de grâce de 1 an:

[28]           It is apparent that the Applications Judge found Searle to be the applicant solely as a result of the assignments made in 1996.  Based on this finding, he held that Searle was not the applicant on the claim date (November 14, 1994) with the result that it could not benefit from the one year grace period provided in subparagraph 28.3(a) of the Act.

[29]           The ramifications of this finding are critical as the remaining issues that the Applications Judge proceeds to address hinge on his finding that Searle was not the applicant as of November 14, 1994.  Both his conclusion of obviousness and abandonment are dependant on this finding as follows.

[30]           First, Dr. Seibert’s disclosure at the June 1994 Conference and in the Seibert Article made the invention obvious and as Searle was not the applicant, these disclosures were not covered by the grace period.

[31]           Second, by failing to reveal that this information had been disclosed in responding to the examiner’s requisition relating to obviousness in October 1996, Searle exhibited bad faith and misled the examiner contrary to paragraph 73(1)(a) of the Act.  As a result, he concluded that the ‘576 Patent was deemed abandoned and thus, invalid.

[34]           In my analysis, reviewed on a correctness standard, in proceeding as he did, the Applications Judge did not afford procedural fairness to Searle, thereby committing an error of law (see McConnell v. Canada (Human Rights Commission), 2005 FCA 389 at para.7).  Furthermore, the determination that Searle is not the applicant under section 2 of the Act is not supported by the record.  It is true that the assignment agreements were only executed in May-July of 1996. However, this does not establish that Searle was not the owner of the invention as of the time of discovery.  Obviously, a person who is the owner of the rights of the invention can be an applicant.  In my view, the Applications Judge erred when he limited the definition of applicant in this case “to a legal representative of the named inventors Talley et al.” (see the passage of the Reasons for Judgment quoted at para. 27 above).

[…]

[39]           All documentary evidence on this record shows Searle as the applicant.  In addition, it is evident from Dr. Seibert’s oral evidence that she was hired by Searle as part of the biology team to perform research to investigate the potential use of compounds to treat inflammation that would minimize gastrointestinal toxicity.  Accordingly, it is clear that the Searle Researchers were hired to invent, and that any product they invented, belonged to Searle from the onset.

[40]           In my analysis, the assignments by the employees in 1996 simply confirmed Searle’s pre-existing right to the invention and were provided in accordance with the Patent Office’s procedure to have evidence on record as to who owns the patent prior to its grant.  The fact that the assignments were made for a nominal consideration supports that view.

[41]           In sum, it was not open to the Applications Judge to hold that Searle was not the applicant as of the claim date, both as a matter of procedural fairness and based on the record before him.

[42]           It follows, therefore, that as an applicant, Searle falls within the grace period provided for in subparagraph 28.3(a) of the Act and that any disclosure made by Dr. Seibert in June of 1994 or in her article, is exempt from any consideration as to obviousness.

Voir : G.D. Searle & Co. v. Novopharm Limited, 2007 FCA 173, (April 30, 2007)
http://decisions.fca-caf.gc.ca/en/2007/2007fca173/2007fca173.html

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