Canadian court provides new relevance for third party submissions during patent prosecution

This past July, Canada's Federal Court of Appeal decision in Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228 (“Weatherford”) ruled in the duty of good faith owed to the Patent Office by an applicant.  In the process, the Court may also have created new relevance for pre-issue interventions by third parties during prosecution.

 

Section 73(1)(a) of the Canadian Patent Act deems an application to be abandoned if an applicant does not reply in good faith to an examiner’s requisition.  Once the one year grace period for reinstatement has expired, the application becomes irrevocably abandoned.  Prior to Weatherford, at least two lower court decisions of recent years had indicated that section 73(1)(a) could be used to challenge an issued patent, i.e. that it was open for a court to find that an applicant’s response during prosecution had been made in bad faith such that the application had been abandoned by operation of law - making the issued patent a nullity.  

 

In Weatherford, however, the Court made it clear that section 73(1)(a) only operates during the prosecution of the application, and that its operation is extinguished once the patent issues.  The Court further held that it is for the Commissioner – not a court - to determine whether an applicant’s response is made in good faith.  Accordingly, if a third party monitoring the prosecution history of a pending application believes that the applicant has responded in bad faith, then that party must speak to the Commissioner prior to issue or forever hold its peace.  

 

Canada’s Patent Act and accompanying Rules provide two avenues for third party attacks on a pending patent application.  Section 34.1 of the Patent Act permits third parties to file any prior art with the Commissioner which the third party believes to bear on the patentability of a pending claim, similar to subsection 122(e) of Title 35 as amended by the America Invents Act.  The prior art, which may consist of any printed publication, must be filed with a statement explaining its relevance.  Section 10 of the Patent Rules, however, allows for third party submissions that attack an application on virtually any grounds, including section 73(1)(a).  While submissions under either provision can be made anonymously, the submitting party may be wise to identify itself if it wishes to preserve the possibility of obtaining judicial review of the Commissioner’s decision. 

 

If compelling, and made more than one year after the response in question was due, submissions based on section 73(1)(a) could kill an application.  Moreover, there may be little downside to such submissions relative to those based on other grounds of attack.  For example, allegations of bad faith will either be successful or not, whereas prior art submissions may have the adverse effect of influencing the applicant to strengthen its claims through amendment.

 

Anecdotal evidence suggests that third party submissions can indeed be effective if clear and concise.  Accordingly, submissions based on section 73(1)(a) could provide a cost effective prophylactic for litigation where there is compelling evidence of bad faith on the part of the applicant.