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Inequitable Conduct in Canada – Disarming the “Atomic Bomb”

This is a guest post from Brian W. Gray of Norton Rose.

This week a significant decision for patent owners was released from our Canadian Federal Court of Appeal. A copy of the case is found at the end of this post. The case highlights some interesting contrasts with U.S. law.

Perhaps the most significant is the fact that the court made clear that a general duty of good faith is not part of Canadian patent law. The court noted the U.S. problems with the doctrine of inequitable conduct at paragraph 128 mentioning the “ever expanding doctrine of inequitable conduct.” At paragraph 150, the court took note of the recent CAFC decision in Therasense and that court’s description of inequitable conduct as the “atomic bomb” of patent law.

The court made the point that the requirement to respond in good faith to a requisition (examiner’s report) in section 73 (1) (a) of the Canadian Patent Act was not for the courts to decide (paragraph 150) and that the section 73 duty could not be used to invalidate an issued patent. There is another provision in our statute (section 53) that does apply to issued patents but it only relates to untrue material allegations in the petition or to omissions or additions in the specification if willfully made for the purpose of misleading.

The court also made some interesting observations about anticipation in the context of a disclosure and prior sale of a device for testing, deciding the disclosure was subject to confidentiality based on practice in the industry and that the prior sale did not make the invention “available to the public.” This of course contrasts with the U.S. “on sale” bar and also shows that in many situations the Canadian standard of “available to the public” will produce a different result with respect to novelty than the U.S. public use and on sale standard,

The case also illustrates the rather relaxed standard of the Canadian courts concerning misnomer of inventors, where in many cases, particularly where the issue of inventorship does not affect ownership, our courts have found such errors not to be “material.” See paragraphs 114 and 129.


therasense 2


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