In our previous columns we have emphasised the importance of exercising duty of candour in the prosecution and preparation of patent applications in Canada. In Ratiopharm Inc v Pfizer Limited, Mister Justice Hughes was very critical of "self-serving" statements in patent applications and found a patent invalid partly on the basis that the invention failed to live up to its claims of being "outstanding" and "markedly better than prior art compounds". In Lundbeck v Ratiopharm (2009), Madam Justice Mactavish revisited the duty of candour during prosecution and held a patent invalid despite the fact that the applicants had expressly drawn a particular piece of prior art to the examiner's attention and despite the fact that she considered the invention was neither anticipated by it nor obvious over it. Her rationale was that the applicants made the general statement that the prior art as a whole taught away from combining two compounds, whereas that was not true of the particular reference in question. This underscores the need to consider the impact of each known reference before making any sweeping generalisations in submissions to the examiner.
What is also interesting about this case is that Mactavish reiterated Hughes' analogy that similar principles apply in dealings with the Patent Office as apply in ex parte applications before the court. The standards of disclosure in a court hearing with one of the parties absent are extremely high because the judge is "at the mercy" of the party seeking relief. As pointed out by Hughes, "a patent is not issued simply to afford a member of the public an opportunity to challenge its validity". The comparison of prosecution before the Patent Office with ex parte proceedings before the court is informative and underscores the importance of checking the accuracy of all representations made to the Patent Office both in the application itself and in submissions to the examiner.
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| Richard Mitchell |
Marks & Clerk Canada
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