Good Faith In Canadian Patent Law

If you have an invention and you wish to protect it, obtaining a patent is likely the best available option. To gain a monopoly over your invention you must be cautious while filing and during the process. A requirement of the Patent Law is to act in good faith during the patent process. As a part of an extensive amendment of the Patent Act in October 1996, section 73(1)(a) was introduced. It states that ‘an application for a patent in Canada shall be deemed abandoned if the applicant does not reply in good faith to any requisition made by the examiner in connection with an examination, within six months after the requisition is made or within any shorter period established by the Commissioner’.

After filing an application and paying the required examination fee, a patent application is examined by a patent examiner for compliance with the Patent Act and Patent Rules. If any claims are found to be non-compliant during examination, the applicant is given a chance to address the areas of non-compliance by responding to the office action prepared by the examiner. The applicant may either amend the claims or make arguments as to why the application is already in compliance. Such responses, under Section 73(1)(a), must be made in good faith. If the applicant’s disclosure and dealings with the Patent Office is found to be intentionally misleading then the patent application may be abandoned. A duty of good faith is clearly owed by the applicant. While an applicant may have a patent agent to help him in obtaining a patent, the duty of good faith is still on the applicant.

Another statutory requirement of good faith can be found in Section 53 of the Canadian Patent Act. It requires the applicant to be honest and complete in the description of the invention. The applicant must act in good faith in his disclosures and dealings with the Patent Office.

Breach Of The Duty Of Good Faith

The duty of good faith is breached by lack of good faith. The case of G.D.Searle vs. Novopharm Limited clearly illustrates this. In the case, the patent was abandoned under section 73(1)(a) because Searle had not disclosed information related to the prior art Matsuo reference, which appeared in the patent application and then in the responses. However, in Weatherford vs. Corlac, where there were several allegations including bad faith, the patent was not abandoned on the basis of good faith. While it was not necessarily a deviation from the good faith requirement in Searle, the decision provided clarity on the scope of the duty of good faith. In the decision, the court emphasized that Section 73(1)(a) is directed toward the prosecution of the patent process. This can be concluded as section 73(1)(a) was applicable only to the proceedings of prosecution in the Patent Office. Once issued, a patent cannot be invalidated under section 73(1)(a) of the Patent Act.

Whether there is a more general duty of good faith outside the circumstances of section 53 and 73 is unsettled. While it goes without saying that the description of the invention and dealings with the Patent Office must be fair and honest to obtain a patent, absence of a defined good faith obligation may create uncertainty in patent applicants and courts as to their obligations.

Patents can be complex and the issuance of patents are governed by many different regulations and case law. A patent agent can help you deal with this and help to ensure that your application and dealings are in good faith.