CA: Deux décisions d’automne 2009 sur le “duty of candour” au Bureau des brevets

Contraster la position du juge Hughes dans:

Mycogen Plant Science, Inc. v. Bayer Bioscience N.V., 2009 FC 1013 (CanLII)

[17]           I addressed the question of a duty of candour upon an applicant for a patent in dealing with the Patent Office in G.D. Searle & Co. v. Novopharm Ltd., 2007 FC 81 (CanLII), [2008] 1 F.C.R. 477, reversed on other grounds, 2007 FCA 173 (CanLII), [2008] 1 F.C.R. 529. I wrote at paragraphs 71 to 73:

 71     Since at least 60 years ago there has been a doctrine of good faith in respect of patents. President Thorson of the Exchequer Court in Minerals Separation North American Corporation v. Noranda Mines Ltd., [1947] Ex. C.R. 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 (Finance), 2007 SCC 1 (CanLII), [2007] 1 S.C.R. 3, 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.

 [18]           Justice Shore expressed a contrary opinion in Janssen-Ortho Inc. v. Apotex Inc. 2008 FC 744 (CanLII), 2008 FC 744 at paragraph 201:

201     It is clear that there is no express duty of candour contained in the Patent Act or the Patent Rules and that the word “candour” does not even appear in this legislation. While a duty of candour and good faith exists during the prosecution of patent applications in the United States Patent Office, a similar duty does not exist in Canada. The facts alleged by Apotex in its NOA are addressed by subsection 30(1) of the Patent Act and paragraphs 40(l)(a), 40(1)(c) and section 45 of the Patent Rules. There is no basis in Canadian law for the separate allegation of breach of candour put forth by Apotex. As the Federal Court of Appeal stated in Flexi-Coil Ltd. v. Bourgault Industries Ltd., the disclosure required “can only be… that which the statute, the rules and the jurisprudence already require. Furthermore, even if the duty of disclosure had been extended as suggested by counsel, the impact of the extension would be felt not at the level of the validity of the patent but at the level of the remedies where equitable considerations might come into play.” (Stewart Affidavit paras. 68-70, AR v. 29 Tab 42 p. 9081; Flexi-Coil Ltd. v. Bourgault Industries Ltd. 1999 CanLII 7650 (F.C.A.), (1999), 237 N.R. 74, 86 C.P.R. (3d) 221 at 231-232 (FCA), aff’ing 1998 CanLII 7338 (F.C.), (1998), 80 CPR (3d) 1, 78 A.C.W.S. (3d) 373 (F.C.T.D.).)

[19]           Given the uncertainty of the state of the law as to the duty of candour, I cannot find that it is plain and obvious that a plea of lack of candour cannot succeed if appropriate relief as a result can be claimed.

Par rapport à:

Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102 (CanLII)

[329]      Although it came to a different conclusion on the facts of the case, it is noteworthy that the Federal Court of Appeal in G.D. Searle did not take issue with Justice Hughes’ review of the law with respect to the duty of good faith in the prosecution of patent applications.  I accept Justice Hughes’ review as an accurate overview of the obligations on an applicant.  In particular, I agree with the analogy that he drew between an application for a patent and an ex parte court proceeding.

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