Inequitable Conduct in Canada – Disarming the “Atomic Bomb”

Posted on July 25, 2011 by Warren Woessner

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.

Weatherford-AppealReasons

therasense 2

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Patent Office Proposes New Materiality Rules

Posted on July 22, 2011 by Warren Woessner

On July 21st,  the Patent Office published a notice of proposed rulemaking, in the wake of the Therasense decision (a copy is found at the end of this post), awkwardly entitled “Revision of the Materiality to Patentability Standard for the Duty to Disclose Information in Patent Applications” 76 Fed. Reg. 43631 (July 21, 2011). The declared intent of the rules is just that – “to revise the materiality standard as defined in Therasense, for the inequitable conduct doctrine.” The new standard is intended to reduce “the incentive to submit [IDS] statements containing marginally relevant information and [to enable] applicants to be more forthcoming and helpful to the Office.”

The text goes on to explain that in Therasense, the Court defined materiality using a “but-for-plus” standard. But just what does the “but-for-plus” standard comprise? The Court in Therasense declined to adopt Section 1.56(b) as it now stands in defining inequitable conduct. Current Rule 1.56(b) says that information is material if it is not cumulative and  (1) it establishes, by itself or in combination with other information, a prima-facie case of unpatentability of a claim, or (2) it refutes or is inconsistent with a position, etc. [read McKesson – copy is found at the end of this post].The Court rejected part (1) because it gave no weight to rebuttal evidence and rejected part (2) because it “anything bearing any relation to obviousness could be found material” when unobviousness is an issue. McKesson, slip. op. at 33-34.

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Judge Michel Takes “Patent Reform” Bills To Task

Posted on July 15, 2011 by Warren Woessner

In an interview with Intellectual Property Watch, former Chief Judge Paul R. Michel set forth, in one place, all of the most problematic (Ed.: read, “worst”) features of the Leahy Smith America Invents Act, versions of which have been passed by the House and the Senate.

The interview focuses both on the special interest features of the Senate bill such as those invalidating tax strategy patents and expanding prior user rights. He also notes the weaknesses in the House bill potentially limiting PTO full access to all the user fees it collects. He notes the flaws in the one-year grace period for inventor-generated disclosures and opposes the additional burdens on patentees imposed by post-grant review.

Wearing my patent prosecutor hat, I see little to like about this bill. Its roots are in oft-parroted but flawed analyses that suggest the U.S. economy is somehow being damaged by “flawed patents.” However, almost every feature of the bill simply makes patent protection more difficult to obtain, or weakens patent protection, for small start-ups and universities, as well as for mega-industries. Coupled with anti-patent decisions such as KSR, Bilski and Ariad, (the “jury” is still out on Prometheus, Myriad and Classen) pioneering inventions, particularly in early-stage technologies, are in for a very bumpy ride.

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BSC v. J & J – Written Description Requirement Spreads its Wings

Posted on July 11, 2011 by Warren Woessner

On June 7th, in a Fed. Cir. panel decision written by Judge Moore, the panel affirmed the invalidation of four J&J patents (a copy of these patents is available at the end of this post) for failure to meet the written description requirement of s.112(1). The patents claimed drug eluting stents, used to keep angioplastied arteries from re-closing, or undergoing restenosis. Boston Scientific Corp. v. Johnson & Johnson, App. No. 2010- 1230-1234 (Fed. Cir. June 7, 2011). The stents disclosed in the specifications all released rapamycin, a macrocyclic lactone, but the claims were broader, and used terms like “rapamycin or a macrocyclic lactone analog of rapamycin” or a” macrocyclic triene analog of rapamycin.” However, no such rapamycin analogs were disclosed in the specification.

The “problem” with the summary judgment below, at least as J&J saw it, was that a number of workable rapamycin analogs were known to the art as of the effective filing date of the applications. In fact, BSC was using one of them in its stents. J&J felt it could rely on the court’s holding in Capon v Eshhar, 418 F.3d 1349 (Fed. Cir. 2005) which affirmed that claims to chimeric DNA molecules were adequately supported by the specification in combination with evidence that many examples of useful subunits were known.

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