[1] Pfizer Canada v. Ratiopharm Inc. 2010 FC 612 at paragraph 84, referring to Apotex Inc.v. Merck & Co. 2006 FCA 323, [2007] 3 F.C.R. 588 at paragraph 55.
[2] “Regularly filed application” means any application which bears as its filing date the date on which it is received by the Office or an application filed in the Office at the national stage of an international application.
[3] Bodenhausen, G.H.C. Guide to the Application of the Paris Convention for the Protection of Intellectual Property. BIRPI, 1969. pp 37-38
[4] See Article 3 of the Paris Convention.
[5] Restoration of priority is addressed by Rule 26bis.3 of the PCT
[6] Bristol-Myers Squibb Co. v. Canada (Commissioner of Patents) 82 C.P.R. (3d) 192 affirming 77 C.P.R. (3d) 300 at paragraphs 28-30.
[7] Other recognised intergovernmental authorities include the Eurasian Patent Organization (EAPO) and the Gulf Cooperation Council Patent Office (GCCPO).
[8] See Article 11(4) of the PCT.
[9] The European Patent Office (EPO) grants patents enforceable in any Contracting State of the European Patent Convention (EPC) [see Article 2(2) of the EPC] unless the applicant for the European patent has withdrawn a Contracting State from designation [see Article 79(3) of the EPC]; a granted patent must, however, be validated in each Contracting State.
[10] Subsection 90(1) of the Patent Rules refers to applicant and application; the patentee ceases to be an applicant for the purposes of subsection 28.4(3) of the Patent Act on the date the application issues to a patent and is therefore not entitled to withdraw priority from the patent.
[11] The term inventors’ certificate replaces the formerly used authors’ certificate but has the same effect. The change was made in the Paris Convention to avoid confusion with copyright authorship.
[12] See Article 4(I)(2) of the Paris Convention.
[13] See the definitions of “description” and “claims” in section 2 of the Patent Rules.
[14] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 37
[15] Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [(1989), 25 C.P.R. (3rd), 257 (S.C.C.)] at page 268; Apotex v. Wellcome Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 70; Electrolytic Zinc Process Co. v. French’s Complex Ore Reduction Co. [1930] S.C.R. 462 at paragraph 22; Leithiser v. Pengo Hydra-Pull of Canada Ltd. [(1974), 17 C.P.R. (2nd), 110 (F.C.A.)] at pages 113-115; Lundbeck Canada Inc. v. Minister of Health 2009 FC 146 at paragraph 135; Pfizer Canada Inc. v. Novopharm Limited 2009 FC 638 at paragraph 105. See also Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61, e.g. at paragraph 26, applying these requirements to prior disclosures being considered for the purposes of anticipation.
[16] Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at pages 154-155, Dickson J. quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.]
[17] Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 157
[18] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at page 111
[19] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)]
[20] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at pages 111-112, with these points being reasserted by Thurlow J. in Société des Usines Chimiques Rhone-Poulenc et al. v. Jules R. Gilbert Ltd. et al. [(1968), 55 C.P.R. (1st), 207 (S.C.C.)] at pages 225-226; Wandscheer et al. v. Sicard Limitée [(1947), 8 C.P.R. (1st), 35 (S.C.C.)] at pages 39-40.
[21] This position has been adopted by the courts so often that it has become axiomatic. See, e.g., Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 53; Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 160
[22] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 44, quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.] at page 184; Whirlpool v. Camco Inc. 2000 SCC 67 at paragraph 49, citing Lister v. Norton Brothers and Co. [(1986), 3 R.P.C. 199 (Ch.D.)] at page 203
[23] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 44
[24] From Beloit Canada Ltd. v. Valmet Oy [(1986), 8 C.P.R. (3rd), 289 (F.C.A.)] at page 294 we know them to be a “paragon of deduction” and from Whirlpool v. Camco Inc. 2000 SCC 67 at paragraph 74 we know them to be “reasonably diligent in keeping up with advances in the field to which the patent relates”. See also the comments on point in Janssen-Ortho Inc. v. Novopharm Limited 2006 FC 1234 at paragraph 113.
[25] Bayer Aktiengesellschaft v. Apotex Inc. [(1995), 60 C.P.R. (3rd), 58 (On.Ct.G.D.)] at page 79
[26] Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 99
[27] Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 254
[28] Axcan Pharma Inc. v. Pharmascience Inc. 2006 FC 527 at paragraph 38
[29] Bayer Aktiengesellschaft v. Apotex Inc. [(1995), 60 C.P.R. (3rd), 58 (On.Ct.G.D.)] at page 79; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraph 97; Lundbeck Canada Inc v. Minister of Health 2009 FC 146 at paragraph 36
[30] In respect of applications filed on or after October 1, 1996.
[31] The comments in GlaxoSmithKline Inc. v. Pharmascience Inc. 2008 FC 593 at paragraph 35, while they relate to expert witnesses at trial and not to examiners and inventors/applicants during examination, are illustrative.
[32] see, e.g., Apotex v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 37; Burton Parsons Chemical Inc. v. Hewlett-Packard (Canada) Ltd. [(1976), 17 C.P.R. (2nd), 97 (S.C.C.)] at page 105
[33] Pfizer Canada Inc. v. Novopharm Limited 2009 FC 638 at paragraph 108; Sanofi-Aventis Canada Inc. v. Apotex 2009 FC 676 at paragraph 233; Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 54. Note, however, that the Supreme Court in Free World Trust was addressing the date for claim construction rather than enablement.
[34] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 37. During examination, such obvious errors should be corrected whenever identified.
[35] TRW Inc. v. Walbar of Canada Inc. [(1991), 39 C.P.R. (3rd), 176 (F.C.A.)] at page 197
[36] Procter & Gamble Co. v. Bristol-Myers Canada Ltd. [(1978), 39 C.P.R. (2nd), 145 (F.C.T.D.)] at pages 159-160, aff’d [(1979), 42 C.P.R. (2nd), 33 (F.C.A.)]; see also Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraphs 33-37
[37] Rice v. Christiani & Nielsen [1929] Ex.C.R. 111 at paragraph 9, rev’d on other grounds
[38] H.G. Fox, Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed., Carswell (Toronto)] at page 171; the last sentence in the first paragraph was quoted with approval in Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [(1989), 25 C.P.R. (3rd), 257 (S.C.C.)] at page 270
[39] Janssen-Ortho Inc. v. Novopharm Ltd. 2004 FC 1631 at paragraph 54; quoted in Bristol-Myers Squibb Canada Co. v. Novopharm Ltd. 2005 FC 1458 at paragraph 71, Aventis Pharma Inc. v. Apotex Inc. 2005 FC 1504 at paragraph 126. Note that in the foregoing cases the Courts were addressing the question of obviousness, and whether engaging in routine testing made the result of that testing unobvious. However, the link between the obviousness analysis and the evaluation of sufficiency is addressed in Sanofi-Aventis Canada Inc. v. Ratiopharm Inc. 2010 FC 230 at paragraphs 57-80. See also the comments in Pfizer Limited v. Ratiopharm 2010 FCA 204 at paragraphs 16 to 27.
[40] Pfizer Canada Inc. v. Canada (Minister of Health) 2006 FCA 214 at paragraph 24
[41] Janssen-Ortho Inc. v. Apotex Inc. 2008 FC 744 at paragraph 111; Pfizer Canada Inc. v. Canada (Minister of Health) 2006 FCA 214 at paragraphs 26 and 27
[42] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 70
[43] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 70
[44] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 37
[45] Norac Systems International Inc. v. Prairie Systems & Equipment Ltd. 2002 FCT 337 at paragraph 16, rev’d in part on other grounds 2003 FCA 187
[46] Dimplex North America Ltd. v. CFM Corp. 2006 FC 586 at paragraph 80, aff’d 2007 FCA 278; citing Norac Systems International Inc. v. Prairie Systems & Equipment Ltd. 2002 FCT 337
[47] H.G. Fox, Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed., Carswell (Toronto)] citing at pages 150-151 Mullard Radio Valve Company Ltd. v.Philco Radio and Television Corporation of Great Britain Ltd. [(1935), 52 R.P.C. 261] at page 287; quoted in Eli Lilly Canada Inc. v. Novopharm Ltd. 2007 FC 596 at paragraph 188 and in Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1978), 39 C.P.R. (2nd), 191 F.C.T.D.)] at page 216
[48] Norac Systems International Inc. v. Prairie Systems & Equipment Ltd. 2002 FCT 337 at paragraph 41; Almecon Industries Ltd. v. Anchortek Ltd. 2001 FCT 1404 at paragraph 45, aff’d 2003 FCA 168, citing Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1978), 39 C.P.R. (2nd), 191 F.C.T.D.)] at page 216
[49] Metalliflex Ltd. v. Rodi & Wienenberger Aktiengesellschaft [(1960), 35 C.P.R. (1st), 49 (S.C.C.)] at pages 53-54
[50] see, e.g., Novopharm Limited v. Janssen-Ortho Inc. 2007 FCA 217 at paragraph 26; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraphs 376-377; Pfizer Canada Inc. v. The Minister of Health 2008 FC 13 at paragraphs 99 and 118
[51] The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex.Ct.)] at page 98
[52] The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex.Ct.)] at page 98
[53] Lester v. Commissioner of Patents [(1946), 6 C.P.R. (1st), 2 (Ex.Ct.)] citing at page 3 British Celanese Ltd. v. Courtaulds Ltd. [1935] 52 R.P.C. 171 at page 193
[54] Domtar Ltd. v. MacMillan Bloedel Packaging Ltd. [(1977), 33 C.P.R. (2nd), 182 (F.C.T.D.)] at pages 189-190; Bergeon v. De Kermor Electric Heating Co. [1927] Ex. C.R. 181 at paragraphs 29 and 81; Schmuel Hershkovitz v. Tyco Safety Products Canada Ltd. 2009 FC 256 at paragraph 148; Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 27
[55] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 32
[56] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1952), 15 C.P.R. (1st), 133 (P.C.)] at pages 144-145
[57] Section 80 of the Patent Rules applies to applications filed after October 1, 1996. There is no equivalent to this rule for earlier-filed applications.
[58] Note that, for applications filed prior to October 1, 1996 and October 1, 1989, respectively, the requirement that an invention have a title are governed by sections 134 and 170 of the Patent Rules.
[59] This practice was first communicated in the practice notice Title of Invention [C.P.O.R. Vol. 137, No. 4, January 27, 2009].
[60] This requirement is governed by subsection 135(4) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(4) of the Patent Rules for applications filed before October 1, 1989.
[61] There is no such requirement in the Patent Rules governing applications filed prior to October 1, 1996.
[62] This requirement is explicitly governed by subsection 74(1) of the Patent Rules for applications filed on or after October 1, 1996, by subsection 135(3) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(3) of the Patent Rules for applications filed before October 1, 1989.
[63] The permissibility of chemical and mathematical formulae, and the like, is provided by subsection 74(2) of the Patent Rules for applications filed on or after October 1, 1996; for applications filed prior to October 1, 1996 this may only be implied by the lack of any proscription to formulae per se.
[64] The permissibility of such presentation in applications filed on or after October 1, 1996 is implied from subsection 74(2) of the Patent Rules. Explicit permission for such presentation is provided by subsection 135(3) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(3) of the Patent Rules for applications filed before October 1, 1989.
[65] This requirement is governed by subsection 135(2) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(2) of the Patent Rules for applications filed before October 1, 1989.
[66] This requirement is governed by subsection 135(2) of the Patent Rules for applications filed before October 1, 1996 and by subsection 171(2) of the Patent Rules for applications filed before October 1, 1989.
[67] No such explicit provision exists for applications filed prior to October 1, 1996.
[68] This requirement is governed by paragraphs 141(1)(g) of the Patent Rules for applications filed before October 1, 1996 and by paragraph 177(1)(g) of the Patent Rules for applications filed before October 1, 1989.
[69] This requirement is governed by section 140 of the Patent Rules for applications filed before October 1, 1996 and by section 176 of the Patent Rules for applications filed before October 1, 1989.
[70] These requirements are governed by section 137 of the Patent Rules for applications filed before October 1, 1996 and by section 173 of the Patent Rules for applications filed before October 1, 1989.
[71] Information regarding the publication of US patent documents is provided based on an interpretation of US practice as expressed in the USPTO’s Manual of Patent Examining Procedure, 8th Ed. (August 2001) as revised July 2008. See, e.g., sections 101 and 103.
[72] Shell Oil v. Commissioner of Patents [(1982), 67 C.P.R. (2nd), 1 (S.C.C.)] at pages 10-11
[73] Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine, Canada, Ltd. [1931] Ex.C.R. 180
[74] Tennessee Eastman v. Commissioner of Patents [(1972), 8 C.P.R. (2nd), 202 (S.C.C.)]
[75] Shell Oil v. Commissioner of Patents [(1982), 67 C.P.R. (2nd), 1 (S.C.C.)] at pages 10-11
[76] Commissioner of Patents v. Ciba Ltd. [(1959), 30 C.P.R. (1st), 135 (S.C.C.)] at page 141; aff’g [(1957), 27 C.P.R. (1st), 82 (Ex.Ct.)]
[77] "machine noun" The Oxford Dictionary of English (revised edition), Oxford University Press 2005; "machine" The Concise Oxford Dictionary of Mathematics, Oxford University Press 2005
[78] Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraph 159. The court relied on the definitions of the term in the Oxford English Dictionary and the Grand Robert de la langue française
[79] Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraphs 157-163
[80] Canada (Attorney General) v. Amazon.com, Inc. 2011 FCA 328 at paragraph 66
[81] Shell Oil v. Commissioner of Patents [(1982), 67 C.P.R. (2nd), 1 (S.C.C.)] at page 14
[82] Riello Canada, Inc. v. Lambert [(1986), 9 C.P.R. (3rd), 324 (F.C.T.D.)] citing at pages 335 and 336 Reynolds v. Herbert Smith & Co., Ltd. [(1902), 20 R.P.C., 123 (Ch.D.)]
[83] Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraph 158
[84] Schlumberger Canada Ltd. V. Commissioner of Patents [(1981), 56 C.P.R. (2nd) 204 (F.C.A.)] at page 206
[85] Harvard College v. Canada (Commissioner of Patents) [2002] S.C.C. 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraphs 159 to 163
[86] Re Application No. 44,282 of Leubs (1971) C.D. 80 (relating to wood panels wherein the novelty lay in particular inscribed designs); Re Application No. 245,995 for a Townhouse building design [(1979) C.D. 605, 53 C.P.R. (2nd), 211 (P.A.B.)] (relating to architectural plans or designs); Re Application 040,799 of Cowan (1971) C.D. 79.; Lawson v. Commissioner of Patents [(1970), 62 C.P.R. (1st), 101 (Ex. Ct.)]
[87] Re Application No. 565,417 of Pilot Ink Co. [(1997) C.D. 1224, 86 C.P.R. (3rd), 66 (P.A.B.)]
[88] Re Application No. 996,098 of Boussac (1973) C.D. 143
[89] Re Dixon Application No. 159, 204 [(1978 C.D. 493, 60 C.P.R. (2nd), 105 (P.A.B.)], the Commissioner cited with approval the conclusions reached in the UK cases Cooper’s Application [(1902) 19 R.P.C. 53] and Fishburn’s Application [(1940) 57 R.P.C. 245]
[90] Re Application No. 003,389 of N.V. Organon [(1973) C.D. 144, 15 C.P.R. (2nd), 253 (P.A.B)] at page 258
[91] Canada (Attorney General) v. Amazon.com, Inc. 2011 FCA 328 at paragraph 58
[92] Lawson v. Commissioner of Patents [(1970), 62 C.P.R. (1st), 101 (Ex. Ct.)] at page 115, in respect of “plans”
[93] Schlumberger Canada Ltd. V. Commissioner of Patents [(1981), 56 C.P.R. (2nd) 204 (F.C.A.)] at page 206
[94] Re Application No. 040,799 of Cowan (1971) C.D. 79
[95] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 57
[96] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 52
[97] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 56, citing Re Application of Abitibi Co. (1982), 62 C.P.R. (2d) 81, (Patent Appeal Board and Commissioner of Patents), at p. 91
[98] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 54
[99] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 53
[100] AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 55
[101] Teva Canada Ltd. v. Pfizer Canada Inc. 2012 SCC 60 at paragraph 40; AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 58
[102] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 46; AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraphs 55-56
[103] Feherguard Products Ltd. v. Rocky’s of BC Leisure Ltd. [(1995), 60 C.P.R. (3rd), 512 (F.C.A.)] at pages 516 to 517.
[104] Metalliflex Ltd. v. Rodi & Wienenberger AG [1961] SCR 117 & [(1960), 35 C.P.R. (1st), 49 (S.C.C.)] at pages 53-54
[105] Re Application No. 003,389 of N.V. Organon [(1973) C.D. 144, 15 C.P.R. (2nd), 253 (P.A.B)] at page 258
[106] Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents) [(1989), 25 C.P.R. (3rd), 257 (S.C.C.)] at page 270.
[107] Re Application for Patent Containing Claims that Read on Mental Steps [(1972) C.D. XXX, 23 C.P.R. (2nd), 93]; Re Application 269,230 of Itek Corporation (1981) C.D. 896
[108] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 46
[109] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 46
[110] Pfizer Canada Inc. v. Apotex Inc. 2007 FC 26 at paragraph 70; aff’d 2007 FCA 195
[111] Pfizer Canada Inc. v. Novopharm Limited 2009 FC 638 at paragraph 82, aff’d 2010 FCA 242 at paragraph 82, aff’d 2012 SCC 60 at paragraph 40
[112] Bell Helicopter Textron Canada Ltd. v. Eurocopter 2013 FCA 219 at paragraphs 48-51 and 135-162
[113] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 70
[114] Aventis Pharma Inc. v. Apotex Inc. 2005 FC 1283, 43 C.P.R. (4th) 161 at paragraph 164; aff’d on this point 2006 FCA 64, 46 C.P.R. (4th) at paragraph 30; AstraZeneca Canada Inc. v. Apotex Inc., 2017 SCC 36 at paragraph 46
[115] Apotex Inc. v. Wellcome Foundation Ltd. 2002 SCC 77 at paragraph 69
[116] Monsanto Co. v. Commissioner of Patents [(1979), 42 C.P.R. (2nd), 161 (S.C.C.)] at page 176, citing Olin Mathieson Chemical Corp. et al. v. Biorex Laboratories Ltd. et al. [1970] R.P.C. 157
[117] Pfizer Canada Inc. v. Canada (Minister of Health) 2007 FCA 209 at paragraph 152\
[118] Pfizer Canada Inc. v. Apotex Inc. 2007 FC 26 at paragraph 70; aff’d 2007 FCA 195
[119] Eli Lilly Canada Inc. V. Apotex Inc. 2009 FCA 97 at paragraphs 10 to 18; Eli Lilly Canada Inc. v. Novopharm Limited 2009 FC 235 at paragraph 101; Servier Canada v. Apotex Inc. 2008 FC 825 at paragraph 99
[120] Apotex Inc. v. Pfizer Canada Inc. 2011 FCA 236 at paragraph 52
[121] Eli Lilly Canada Inc. v. Apotex Inc. 2008 FC 142 at paragraphs 163-164; Eli Lilly Canada Inc. V. Apotex Inc. 2009 FCA 97 at paragraph 12
[122] Eli Lilly v. Apotex Inc. 2009 FCA 97 at paragraph 18; this requirement extends equally to any factual basis needed to support a sound prediction of an advantage possessed by a selection from a broader group, see Pfizer Canada Inc. v. Canada (Minister of Health) 2008 FC 500 at paragraph 97 and GlaxoSmithKline Inc. v. Pharmascience Inc. 2008 FC 593 at paragraph 71
[123] Eli Lilly Canada Inc. v. Novopharm Ltd. 2010 FCA 197 at paragraph 120
[124] Applications are assigned to an examiner working in the field to which the claimed invention belongs, and are examined sequentially, according to the request for examination date.
[125] Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 [Amazon FCA] at paragraph 43
[126] Purposive construction is performed by the court to objectively determine what the person skilled in the art would, as of the date of publication of the patent application and on the basis of the particular words or phrases used in the claim, have understood the applicant to have intended to be the scope of protection sought for the disclosed invention (see Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 50; and Whirlpool Corp. v. Camco Inc., 2000 SCC 67 at paragraph 48).
Free World Trust and Whirlpool continue to guide the courts, with the benefit of expert testimony and cross-examination, to construe the claim in accordance with the principles of purposive construction outlined therein. (For an enumeration of the principles, see Free World Trust at paragraph 31).
However, Whirlpool was an impeachment proceeding that was not directed “to patent examiners in the course of examinations to determine whether applications for patents should be granted.” (see Genencor International Inc. v. Canada (Commissioner of Patents), 2008 FC 608 [Genencor] at paragraphs 62 and 70).
It should be recognized that the language of patent claims construed by judges is fixed, is the result of a negotiation with the Patent Office, was “accepted by the Commissioner of Patents as a correct statement of a monopoly that can properly be derived from the invention disclosed in the specification” (see Whirlpool at paragraph 49) and benefits from the presumption of validity accorded by subsection 43(2) of the Patent Act. In contrast, during examination of an application the language of the claim may change from that initially proposed by the applicant for a number of reasons (see Genencor at paragraphs 62 and 70 and Amazon FCA at paragraph 73).
[127] Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 50; Whirlpool Corp. v. Camco Inc., 2000 SCC 67 at paragraph 48
[128] Whirlpool Corp. v. Camco Inc., 2000 SCC 67 at paragraphs 49(f)(g), 52 and 53
[129] Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 51
[130] Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 at paragraph 73
[131] Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77 at paragraph 37; the Supreme Court in Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60 at paragraph 32 reiterates this point, and speaks of the importance of the patent bargain in advancing science and technology.
[132] AstraZeneca Canada Inc. v. Apotex Inc., 2010 FC 714 at paragraph 33; Wenzel Downhole Tools Ltd. v National-Oilwell Canada Ltd., 2011 FC 1323 at paragraph 61; Jay-Lor International Inc. v. Penta Farm Systems Ltd., 2007 FC 358 at paragraph 55; Sanofi-Aventis Canada Inc. v. Apotex, 2009 FC 676 at paragraph 128; Merck & Co. Inc. v. Apotex Inc., 2010 FC 1265 at paragraph 86
[133] Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 at paragraph 43
[134] Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 at paragraph 42. It is also stated that the examiner must be “alive to the possibility that a patent claim may be expressed in language that is deliberately or inadvertently deceptive”, thus recognizing that, “for example, what appears on its face to be a claim for an “art” or a “process” may, on a proper construction, be a claim for a mathematical formula and therefore not patentable subject matter” (see Amazon FCA at paragraph 44).
[135] Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 58
[136] Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 55
[137] Canada (Attorney General) v. Amazon.com Inc., 2011 FCA 328 at paragraphs 59 to 63; following the reasoning of the court, the existence of a practical embodiment does not automatically imply that the elements of the embodiment are essential elements of the invention.
[138] Free World Trust v. Électro Santé Inc., 2000 SCC 66 at paragraph 52
[139] Halford v Seed Hawk Inc., 2006 FCA 275 at paragraph 14
[140] The Office does not consider the “self-inflicted wound” factor to be relevant during examination.
[141] Examiners should be mindful that, in this context, the identification of multiple problems and solutions within a single claim is not to be confused with lack of unity of invention within the meaning of section 36 of the Patent Rules (which emphasizes that the subject matter defined by the claims are to be linked by a single general inventive concept).
[142] Re Application for Patent of Prince Corp., 1982, 2 C.P.R. (3d) 223 (CD 942); and Shmuel Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at paragraph 148
[143] The “claim date” of a claim in an application or patent is the filing date of the application in Canada, unless there is a priority claimed. In the latter case the claim date is the filing date of the earliest priority application which supports the subject matter of the claim.
[144] Searches performed by Canadian examiners as part of CIPO’s obligations as an International Searching Authority are governed by the requirements of the PCT, and are not covered by this section of the manual.
[145] Subsection 30(1) applies where a final action was not issued, and 30(5) where the application is found allowable subsequent to a response to a final action.
[146] This refers to a final fee paid by the authorized correspondent on an application that has been allowed.
[147] Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 168 referring to “the well-known rule that only one patent may issue for a given invention”; and Teva Canada Ltd. v. Pfizer Canada Inc. 2012 S.C.C. 60 at paragraph 58 affirming that “a patent shall be granted for one invention only.”
[148] Or of a divisional application to cover several additional inventions disclosed in the parent application, or of one or several divisional applications each to cover one of several additional inventions disclosed in the parent application.
[149] Merck & Co., Inc. v. Apotex Inc. 2006 FC 524 at paragraph 203. Hughes J. also noted at paragraph 197 that “[d]uring the pendency of an application or several applications, the procedures to be followed are the prerogative of the Patent Office”.
[150] Libby‑Owens‑Ford Glass Co. v. Ford Motor Co. [(1970), 62 C.P.R. (1st), 223 (S.C.C.)] at pages 230-231, Ciba-Geigy AG v. Commissioner of Patents [(1982), 65 C.P.R. (2nd), 73 (F.C.A.)] at page 79
[151] Sociéte des Usines Chimiques Rhone‑Poulenc et al. v. Jules R. Gilbert Ltd. [1966] Ex. C.R. 59 at paragraphs 6-8
[152] In view of this, some content in this chapter mirrors or has been adapted from text found in the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011).
[153] Article 27(1) PCT states: No national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.
[154] Teva Canada Ltd. v. Pfizer Canada Inc. 2012 S.C.C. 60 at paragraph 64
[155] For an example of corresponding elements, see section 10.29 of the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011).
[156] This example is adapted from the example provided in section 10.23 of the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011).
[157] This example is adapted from the example provided in section 10.26 of the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011).
[158] The conclusion reached in section 10.43 of the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) can be understood in this light, presuming that a single line of reasoning cannot soundly predict why the various classes of herbicide B work with A to achieve the inventive result.
[159] See also the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) at 10.42.
[160] The conclusion reached in section 10.58 of the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) can be understood in this light, since compounds X, Y and Z do not share a structural feature responsible for their activity. It must be presumed that X, Y and Z are not members of a recognised class of compounds.
[161] Due regard should be given to the nature of the synthesis in performing this evaluation. The relationship of the structure of an intermediate to the final product will be quite different in, for example, a convergent synthesis than in a divergent synthesis, or in a ring-closing or rearrangement reaction than in an addition reaction. See also the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) at 10.18(f).
[162] See the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) at 10.18(e).
[163] This example is loosely based on the PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011) at 10.47, which provides specific chemical structures to illustrate the same point.
[164] A method for preparing a product would usually be considered to render the product it produces obvious, and there could consequently be an appearance of double-patenting if claims 2 and 3 appeared in different applications.
[165] PCT International Search and Preliminary Examination Guidelines published by the World Intellectual Property Office (Geneva, 2011).
[166] Note that where the applicant has made a request in section 4 of the Petition for fewer priority documents than requested for the original application, only those priority claims requested in section 4 will be considered to have been made in respect of the divisional application.
[167] An equivalent provision exists for applications filed prior to October 1, 1989, under subsection 36(4) of the Patent Act as it read immediately before that date.
[168] This interpretation is consistent with the provisions of subsection 36(4) of the Patent Act and of subsection 58(10) of the Patent Rules (which provides that an international application can only become one national phase application).
[169] Many time periods are calculated from the assigned filing date. Prematurely changing the electronic records of the Office may result in confusion and potential risks to the applicant.
[170] Merck & Co., Inc. v. Apotex Inc. 2006 FC 524 at paragraph 203
[171] Consolboard Inc. v. Macmillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 169
[172] Shire Biochem Inc. v. Minister of Health 2008 FC 538 at paragraph 61 ; Apotex Inc. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153, 2002 SCC 77 at paragraph 37
[173] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraphs 24-27 and 33-37
[174] Eli Lilly and Company v. Apotex Inc. 2009 FC 991 at paragraph 397; Shire Biochem Inc. v. Minister of Health 2008 FC 538 at paragraph 75.
[175] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 25
[176] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraphs 33-37
[177] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraphs 24-46; Lundbeck Canada Inc. v. Ratiopharm Inc. 2009 FC 1102 at paragraph 69; Abbott Laboratories v. Minister of Health 2008 FC 1359 at paragraph 59 (aff’d 2009 FCA 94).
[178] Bristol-Myers Squibb Canada Co. v. Apotex Inc. 2009 FC 137 at paragraph 35
[179] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 25, citing Synthon B.V. v. SmithKline Beecham plc 2005 UKHL 59 at paragraph 32
[180] Schmuel Hershkovitz v. Tyco Safety Products Canada Ltd. 2009 FC 256 at paragraph 100; Shire Biochem Inc. v. Minister of Health 2008 FC 538 at paragraph 65
[181] Abbott Laboratories v. Minister of Health 2008 FC 1359 at paragraphs 59 and 60; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraph 309; this principle is also inherent in wording of subsection 28.2(1) of the Patent Act.
[182] Abbott Laboratories v. Minister of Health 2008 FC 1359 at paragraph 75 (aff’d 2009 FCA 94)
[183] Steel Co. of Canada Ltd. v. Sivaco Wire and Nail Co. [(1973), 11 C.P.R. (2nd), 153 (F.C.T.D.)] at page 190, citing General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. [1972] R.P.C. 464 at page 486; Abbott Laboratories v. Canada (Minister of Health) 2006 FCA 187 at paragraph 24, citing Smithkline Beecham PLC's (Paroxetine Methanesulfonate) Patent, [2005] UKHL 59 at paragraph 22, itself citing Merrell Dow Pharmaceuticals Inc v N.H. Norton & Co. Ltd. [1996] R.P.C. 76 at page 90
[184] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 27
[185] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 26 citing Consolboard Inc. c. MacMillan Bloedel (Saskatchewan) Ltd. [1981] 1 RCS 504 [(1981), 56 CPR (2nd), 145 (CSC)] per Dickson J. at p. 534
[186] See, e.g., Schmuel Hershkovitz v. Tyco Safety Products Canada Ltd. 2009 FC 256 at paragraph 105
[187] Reeves Bros. v. Toronto Quilting [(1978), 43 C.P.R. (2nd), 145 (F.C.T.D.)] at page 157, apparently relying on a proposition stated at least as early as Hill v. Evans (1869), 4 DeG. F. & J. 988, 45 E.R. 1195 at page 301. The continued relevance of the factors enumerated in Reeves Bros. was discussed in Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraph 295.
[188] Lovell Manufacturing Co. v. Beatty Bros. Ltd. [(1962), 41 C.P.R. (1st), 18 (Ex. Ct.)] at page 45, citing Hill v. Evans (1869), 4 DeG. F. & J. 988, 45 E.R. 1195 at page 300
[189] Abbott Laboratories v. Canada (Minister of Health) 2006 FCA 187 at paragraphs 24 and 25; Eli Lilly and Company v. Apotex Inc. 2009 FC 991 at paragraph 397; AstraZeneca Canada Inc. v. Apotex Inc. 2010 FC 714 at paragraph 124
[190] Lightning Fastener Co. v. Colonial Fastener Co. [1933] S.C.R. 377 (affirming [1932] Ex. C.R. 101) at page 381.
[191] Shire Biochem Inc. v. Minister of Health 2008 FC 538 at paragraph 63
[192] Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at para. 42
[193] Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at paragraphs 35 and 42
[194] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 at paragraphs 216-220
[195] Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at para 42 citing Merrell Dow Pharmaceuticals Inc. v. H.N. Norton & Co. Ltd. (1995), [1996] R.P.C. 76 (H.L.) at p. 86
[196] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 citing Lux Traffic Controls Limited v. Pike Signals Limited, [1993] R.P.C. 107 (Pat. Ct.) at p.132
[197]. Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd 2012 FCA 333 at paragraphs 68 and 74
[198] Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at paragraph 42
[199] Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at paragraph 42; Gibney v. Ford Motor Co. of Canada [(1967), 35 Fox Pat. C. 143] at paragraph 61
[200] Abbott Laboratories v. Canada (Minister of Health) 2006 FCA 187 at paragraphs 23 to 25; Calgon Carbon Corporation v. North Bay (City) 2006 FC 1373 at paragraphs 114 to 136
[202] Abbott Laboratories v. Minister of Health 2008 FC 1359 at paragraphs 69-73; Lundbeck Canada Inc. v. Ratiopharm Inc. 2009 FC 1102 at paragraphs 20, 118 and 136;
[203] Astrazeneca AB v. Apotex Inc. 2007 FC 688 at paragraphs 50-53
[204] The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex. Ct.)] at pages 109-110, citing Clay v. Allcock & Co. (1906), 23 R.P.C. 745 at page 750
[205] Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 161, citing The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex. Ct.)] at pages 109-110
[206] Commissioner of Patents v. Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning [1964] S.C.R. 49, [(1963), 41 C.P.R. (1st), 9 (S.C.C.)] at page 17
[207] The requirement codified in section 28.3 of the Patent Act that an invention not be obvious in view of certain prior art implies a requirement for ingenuity - see Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraphs 109-110; Canamould Extrusions Ltd. v. Driangle Inc. 2003 FCT 244 at paragraph 61 (rev’d on other grounds); Baker Petrolite Corp. v. Canwell Enviro Industries Ltd. 2001 FCT 889 at paragraphs 94-96 (rev’d on other grounds); Harvard College v. Canada (Commissioner of Patents) [(2000), 7 C.P.R. (4th), 1 (F.C.A.)] at paragraph 105 (rev’d on other grounds); Diversified Products v. Tye-Sil [(1991), 35 C.P.R. (3rd), 350 (F.C.A.)] at page 366.
[208] Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraphs 99, aff’d 2007 FCA 217. Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158.
[209] Janssen-Ortho Inc v Novopharm Ltd, 2004 FC 1631 para. 37.
[210] The requirement codified in section 28.3 of the Patent Act that an invention not be obvious in view of certain prior art implies a requirement for ingenuity - see Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraphs 109-110; Canamould Extrusions Ltd. v. Driangle Inc. 2003 FCT 244 at paragraph 61 (rev’d on other grounds); Baker Petrolite Corp v Canwell Enviro Industries Ltd 2002 FCA 158 at paragraphs 94-96 (rev’d on other grounds); Harvard College v. Canada (Commissioner of Patents) [(2000), 7 C.P.R. (4th), 1 (F.C.A.)] at paragraph 105 (rev’d on other grounds); Diversified Products v. Tye-Sil [(1991), 35 C.P.R. (3rd), 350 (F.C.A.)] at page 366.
[211] Beloit Canada Ltd. v. Valmet Oy [(1986), 8 C.P.R. (3rd), 289 (F.C.A.)] at page 293
[212] Diversified Products v. Tye-Sil [(1991), 35 C.P.R. (3rd), 350 (F.C.A.)] at page 366
[213] Xerox of Canada Ltd. v. IBM Canada Ltd. [(1977), 33 C.P.R. (2nd), 24 (F.C.T.D.)] at page 52, citing Samuel Parkes & Co. Ltd. v. Cocker Bros. Ltd. [(1929), 46 R.P.C. 241] at page 248.
[214] The King v. Uhlemann Optical Co. [(1951), 15 C.P.R. (1st), 99 (S.C.C.)] at pages 104-105; Wandscheer v. Sicard Ltd [1948] S.C.R. 1 [(1947), 8 C.P.R. (1st), 35 (S.C.C.)] at page 48; both cases citing Samuel Parkes & Co. Ltd. v. Cocker Bros. Ltd. [(1929), 46 R.P.C. 241] at page 248.
[215] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraphs 61-64; Janssen-Ortho Inc. v. Novopharm Limited 2007 FCA 217 at paragraph 25.
[216] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 67. The approach is based on that taken in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd. [1985] R.P.C. 59 (C.A.) and refined in Pozzoli SPA v. BDMO SA [2007] EWCA Civ 588 and may be termed the Windsurfing/Pozzoli approach.
[217] Merck & Co., Inc. v. Pharmascience Inc. 2010 FC 510 at paragraphs 32 and 35
[218] Bayer Aktiengesellschaft v. Apotex Inc. [(1995), 60 C.P.R. (3rd), 58 (On.Ct.G.D.)] at page 79; Johnson & Johnson Inc. v. Boston Scientific Ltd. 2008 FC 552 at paragraph 97; Lundbeck Canada Inc v. Minister of Health 2009 FC 146 at paragraph 36; Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 at paragraph 122
[219] From Beloit Canada Ltd. v. Valmet Oy [(1986), 8 C.P.R. (3rd), 289 (F.C.A.)] at page 294 we know them to be a paragon of deduction. See also the comments on point in Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraph 113.
[220] Bayer Aktiengesellschaft v. Apotex Inc. [(1995), 60 C.P.R. (3rd), 58 (On.Ct.G.D.)] at page 79; Merck-Frosst - Schering Pharma GP v. Teva Canada Limited 2010 FC 933 at paragraphs 68 and 69
[221] Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 99; Lundbeck Canada Inc. v. Ratiopharm Inc. 2009 FC 1102 at paragraph 29; Sanofi-Aventis Canada Inc. v. Apotex 2009 FC 676 at paragraph 80
[222] Almecon Industries Ltd. v. Nutron Manufacturing Ltd. (1997) 72 C.P.R. 3d 397 at page 401.
[223] Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 74; Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 254; Newco Tank Corp v. Canada (Attorney General) 2014 FC 287 at paragraph 28.
[224] Axcan Pharma Inc. v. Pharmascience Inc. 2006 FC 527 at paragraph 38
[225] Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 236
[226] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 44, quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.] at page 184; Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 49, citing Lister v. Norton Brothers and Co. [(1886), 3 R.P.C. 199 (Ch.D.)] at page 203
[227] Free World Trust v. Électro Santé Inc. 2000 SCC 66 at paragraph 44
[228] Servier Canada Inc. v. Apotex Inc. 2008 FC 825 at paragraph 254
[229] Ratiopharm Inc. v. Pfizer Limited 2009 FC 711, at paragraph 30, aff’d 2010 FCA 204
[230] GlaxoSmithKline Inc. v. Pharmascience Inc. 2008 FC 593 at paragraph 35
[231]. Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraph 90.
[232] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 at paragraph 121
[233] Merck & Co., Inc. v. Pharmascience Inc. 2010 FC 510 at paragraph 40; AstraZeneca Canada Inc. v. Apotex Inc. 2010 FC 714 at paragraph 39
[234] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 37
[235] Sanofi-Aventis Canada Inc. v. Apotex 2009 FC 676 at paragraph 304
[236] Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 74
[237] Eli Lilly and Company v. Apotex Inc. 2009 FC 991 at paragraph 97, citing General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd, [1972] RPC 457 at pages 482-483
[238] Eli Lilly and Company v. Apotex Inc. 2009 FC 991 at paragraph 421
[239] Shire Biochem Inc. v. Minister of Health 2008 FC 538 at paragraph 25; Eli Lilly Canada Inc. v. Novopharm Ltd. 2007 FC 596 at paragraph 142; Pfizer Canada Inc. v. Novopharm Ltd. 2005 FC 1299 at paragraph 78; Whirlpool Corp. v. Camco Inc. [(1997), 76 C.P.R. (3rd), 150 (F.C.T.D.)] at page 186
[240] Allergan Inc v Canada (Health) and Cobalt Pharmaceuticals, 2014 FC 566 at paragraph 25; Allergan Inc v Canada (Health) and Apotex Inc, 2014 FC 567 at paragraph 25
[241] Janssen-Ortho Inc. v. Novopharm Ltd. 2006 FC 1234 at paragraph 113, aff’d 2007 FCA 217 at paragraph 25; these factors are considered to remain relevant in view of the guidance of the Supreme Court in Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61.
[242] Canadian Gypsum Co. v. Gypsum, Lime & Alabastine, Canada Ltd. [1931] Ex. C.R. 180 at paragraph 12
[243] Sanofi‑Aventis Canada Inc. v. Ratiopharm Inc. 2010 FC 230 at paragraphs 83-87; Commissioner’s Decision 1304 at paragraph 43
[244] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 68
[245] Wenzel Downhole Tools Ltd. v. National-Oilwell Canada Ltd., 2011 FC 1323 at paragraphs 193 to 197 where the obvious-to-try test was applied to downhole drilling equipment. Comments on the appropriateness of the test were made on appeal (see 2012 FCA 333) at paragraphs 91 to 108, especially paragraph 95.
[246] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 59-69, especially at 59, 64, 68 and 69; Sanofi-Aventis v. Apotex Inc., 2013 FCA 186 at paragraphs 74-80
[247] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 68
[248]. The King v. American Optical Co. [(1950), 13 C.P.R. (1st), 87 (Ex. Ct.)] at page 98
[249] Schmuel Hershkovitz v. Tyco Safety Products Canada Ltd. 2009 FC 256 at paragraph 148 referring to R.H. Barrigar, Canadian Patent Act Annotated, 2nd ed. (Aurora: Canada Law Book, 2008) at PA-28.11-12; Domtar Ltd. v. McMillan Bloedel Packaging Ltd. (1977), 33 C.P.R. (2d) 182 at 189-91 (F.C.T.D.), affirmed (1978), 41 C.P.R. (2d) 182 (F.C.A.).
[250]. Crila Plastic Industries Ltd. v. Ninety-eight Plastic Trim Ltd. 18 C.P.R. (3d) 1 at pages 1 and 7 to 9, affirming 10 C.P.R. (3d) 226, referring to Domtar Ltd. v. McMillan Bloedel Packaging Ltd. (1977), 33 C.P.R. (2d) 182 at 189-91 (F.C.T.D.), affirmed (1978), 41 C.P.R. (2d) 182 (F.C.A.).
[251] Visirecord of Canada Ltd. v. Malton [1958] Ex. C.R. 116 at paragraph 59, citing Lightning Fastener Company Limited v. Colonial Fastener Company, Limited [1932] Ex. C.R. 101 at page 106
[252] Visirecord of Canada Ltd. v. Malton [1958] Ex. C.R. 116 at paragraph 60, citing Lowe-Martin Company Ltd. v. Office Specialty Manufacturing Company Ltd. [1930] Ex. C.R. 181 at page 187
[253] Johnson Controls, Inc. v. Varta Batteries Ltd. [(1984), 80 C.P.R. (2nd), 1 (F.C.A.)] at pages 12-13
[254] Visirecord of Canada Ltd. v. Malton [1958] Ex. C.R. 116 at paragraph 61, citing The Railroad Supply Co. v. The Elyria Iron and Steel Co. [1917] Patent Office Gaz. (U.S.) vol. 239, at page 658
[255] Visirecord of Canada Ltd. v. Malton [1958] Ex. C.R. 116 at paragraph 62, citing Helson v. Dominion Dustless Sweepers Co. Limited (1923), 23 O.W.N. 597 at page 598
[257] Uview Ultraviolet Systems Inc. v. Brasscorp Ltd. 2009 FC 58 at paragraph 224.
[258] Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 168
[259] Whirlpool Corp. v. Camco Inc. 2000 SCC 67 at paragraph 63-67
[260] Abbott Laboratories v. The Minister of Health 2009 FC 648 at paragraph 187, referring to Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 169, itself referring to Commissioner of Patents v. Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning [1964] S.C.R. 49, [(1963), 41 C.P.R. (1st), 9 (S.C.C.)] at page 13
[261] Commissioner of Patents v. Farbewerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning [1964] S.C.R. 49, [(1963), 41 C.P.R. (1st), 9 (S.C.C.)] at page 13.
[262]. GlaxoSmithKline Inc. v. Apotex Inc. 2003 FCT 687 at paragraphs 89‑91
[263] GlaxoSmithKline Inc. v. Apotex Inc. 2003 FCT 687 at paragraph 37.
[264] GlaxoSmithKline Inc. v. Apotex Inc. 2003 FCT 687 at paragraphs 87‑91; Bayer Inc. v. Canada (Minister of National Health and Welfare) 154 F.T.R [(1998), 82 C.P.R. (3rd), 359 (F.C.T.D.), aff'd (2000), 6 C.P.R. (4th), 285 (F.C.A.] at paragraph 33. See also Apotex Inc. v. Merck & Co. 2006 FCA 323 at paragraph 49.
[265] Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 169
[266] I.G. Farbenindustrie A.G.'s Patents [(1930), 47 R.P.C. 289] at pages 322-323; these criteria appear to have been endorsed in Canada at least as early as 1947 in Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at pages 163-164) and were endorsed by the Supreme Court in Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 10.
[267] GlaxoSmithKline Inc. v. Pharmascience Inc. 2008 FC 593 at paragraph 70 and at paragraph 51 with reference to Dreyfus and Others Application [(1945), 62 R.P.C. 125 (H.L.)] at page 133; I.G. Farbenindustrie A.G.'s Patents [(1930), 47 R.P.C. 289] at page 327
[268] Eli Lilly Canada Inc. v. Novopharm Limited 2010 FCA 197 at paragraphs 27, 30; Ratiopharm Inc. v. Pfizer Limited 2009 FC 711 at paragraph 175, aff’d 2010 FCA 204 at paragraph 33
[269] Pfizer Canada Inc. v. Canada 2006 FCA 214 at paragraph 4
[270]. Pfizer Canada Inc. v. Ranbaxy Laboratories Limited 2008 FCA 108 at paragraph 59; Eli Lilly Canada Inc. v. Apotex Inc. 2007 FC 455 at paragraph 89
[271] I.G. Farbenindustrie A.G.'s Patents [(1930), 47 R.P.C. 289] at page 323
[272] see, e.g., Eli Lilly Canada Inc. v. Novopharm Limited 2009 FC 235 at paragraph 100; Eli Lilly Canada Inc. v. Novopharm Ltd. 2007 FC 596 at paragraph 162; Ratiopharm Inc. v. Pfizer Limited 2009 FC 711 at paragraph 179;
[273] Ratiopharm Inc. v. Pfizer Limited 2009 FC 711 at paragraph 175, aff’d 2010 FCA 204 at paragraphs 27-28
[274] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 9; I.G. Farbenindustrie A.G.'s Patents [(1930), 47 R.P.C. 289] at page 321
[275] Pfizer Limited v. Ratiopharm Inc. 2010 FCA 204 at paragraphs 27-28
[276] Source code for computer programs may, however, be subject to the protection of the Copyright Act as a literary work.
[277] Schlumberger Canada Ltd. v. Commissioner of Patents [(1981), 56 C.P.R. (2nd),204 (F.C.A.)] at page 206
[278] i.e. provide a technological solution to a technological problem
[279] Re Application for Patent Containing Claims that Read on Mental Steps [(1972), 23 C.P.R. (2nd), 93] ; Re Application 269,230 of Itek Corporation (1981) C.D. 896
[280] Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. [(2002), 17 C.P.R. (4th), 478 (F.C.A.)] at paragraphs [35] and [42]
[281] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 at paragraphs [216] to [220]
[282] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 citing Merrell Dow Pharmaceuticals Inc. v. H.N. Norton & Co. Ltd. (1995), [1996] R.P.C. 76 (H.L.) at p. 86
[283] Bauer Hockey Corp. v. Easton Sports Canada Inc. 2010 FC 361 citing Lux Traffic Controls Limited v. Pike Signals Limited, [1993] R.P.C. 107 (Pat. Ct.) at p.132
[284] Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. [(2002), 17 C.P.R. (4th), 478 (F.C.A.)] at paragraph [42]
[285] Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. [(2002), 17 C.P.R. (4th), 478 (F.C.A.)] at paragraph [42]
[286] see, e.g., the comments in Re Application 2,349,479 of U-Haul International Inc. (2010) C.D. 1298 at paragraphs [37] to [42]
[287] Re Application of U-Haul International Inc. (2010) C.D. 1298 at paragraphs [37] to [42]
[288] Office Practice Regarding Signals C.P.O.R. Vol. 135, No. 33, August 14, 2007
[289] A signal is considered to be propagating even if it is moving in a closed loop.
[290] United Nations Convention on Biological Diversity, Article 2. Use of Terms, 1992 [(http://www.cbd.int/convention/text/); retrieved: 31 October 2011]
[291] Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraphs 197-199
[292] Re Application of Abitibi Co. [(1982) C.D. 933, 62 C.P.R. (2nd), 81 (P.A.B.)]
[293] Harvard College v. Canada (Commissioner of Patents), 2002 SCC 76; [(2002), 21 C.P.R. (4th), 417 (S.C.C.)] at paragraphs 153-166
[294] For the purposes herein, a totipotent stem cell is defined as a cell capable of giving rise to all types of differentiated cells found in an organism, as well as the supporting extra-embryonic structures of the placenta. A single totipotent cell could, by division in utero, reproduce the whole organism. This definition is adopted from that provided in the Glossary on the National Institutes of Health, Stem Cell Information website, https://stemcells.nih.gov/ , retrieved November 2014
[295] For the purposes herein, embryonic stem cells are defined as primitive (undifferentiated) cells that are derived from preimplantation-stage embryos, are capable of dividing without differentiating for a prolonged period in culture, and are known to develop into cells and tissues of the three primary germ layers. Multipotent cells have the ability to develop into more than one cell type of the body. Pluripotent stem cells are capable of differentiating into all tissues of an organism, but are not alone capable of sustaining full organismal development. These definitions are adopted from those provided in the Glossary on the National Institutes of Health Stem Cell Information website, https://stemcells.nih.gov/, retrieved November 2014
[296] Monsanto Canada Inc. v. Schmeiser, 2004 SCC 34; [(2004), 31 C.P.R. (4th), 161 (S.C.C.)] at paragraph 17
[297] Re Application No. 2,306,317 of L’Oréal [(2011) C.D. 1312, 94 C.P.R. (4th) 274 (P.A.B.)]
[298] Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 [(1989), 25 C.P.R. (3rd), 257(S.C.C.)] at pages 263-265 (cited to C.P.R.)
[299] Tennessee Eastman v. Commissioner of Patents [(1972), 8 C.P.R. (2nd), 203 (S.C.C.)]; Imperial Chemical Industries Ltd. v. Commissioner of Patents [(1986), 9 C.P.R. (3rd), 289 (F.C.A.)]
[300] This conclusion is inferred from the decision in Re Application 319,105 of Boehringer Mannheim G.m.b.H. (1987) C.D. 1108, allowing a diagnostic method involving the removal of blood from the body
[301] Re Application 394,006 of Catheter Technology Corporation (1986) C.D. 1082
[302] Re Application No. 532,566 of General Hospital Corporation (1996) C.D. 1209;
Re Application No. 559,960 of Senentek (1997) C.D. 1213
[303] Re Application No. 003,389 of N.V. Organon [(1973) C.D. 144, 15 C.P.R. (2nd), 253 (P.A.B.)]; Re Application for Patent of Goldenberg [(1988) C.D. 1119, 22 C.P.R. (3rd), 159 (P.A.B.)]
[304] Re Application No. 862,758 (1970) C.D. 33; Re Application No. 954,851 of Biehl (1971) C.D. 63
[305] Axcan Pharma Inc. v. Pharmascience Inc., [2006] FC 527 [(2006), 50 C.P.R. (4th), 321 (F.C.)]
[306] Re Application No. 003,772 of Ijzerman (1975) C.D. 254; Merck & Co. v. Apotex Inc. [2005] FC 755 [(2005), 41 C.P.R. (4th), 35 (F.C.)]
[307] Re Application for Patent of Goldenberg [(1988) C.D. 1119, 22 C.P.R. (3rd), 159 (P.A.B.)]
[308]. The term “analyte” is used broadly herein to mean a chemical substance or biomarker that is the subject of analysis.
[309] AstraZeneca Canada Inc. v. Apotex Inc., 2010 FC 714 at paragraph 33; Wenzel Downhole Tools Ltd. v National-Oilwell Canada Ltd., 2011 FC 1323 at paragraph 61; Jay-Lor International Inc. v. Penta Farm Systems Ltd., 2007 FC 358 at paragraph 55; Sanofi-Aventis Canada Inc. v. Apotex, 2009 FC 676 at paragraph 128; Merck & Co. Inc. v. Apotex Inc., 2010 FC 1265 at paragraph 86
[310] To better illustrate, consider a situation where the measurement of analyte X had been routinely performed in urine samples (i.e., the measurement of X in urine was CGK to the POSITA) but in the instant application it is apparent that the inventors have instead performed the measurement of X in saliva. Although the means by which X is measured is the same (e.g., chromatography), using a saliva sample instead of a urine sample would not represent the standard sample source for measuring X and thus would be “non-standard to that means”.
[311] For example, consider a situation where it was routine to test for the presence of analyte X after exposure to environmental hazard Z (i.e., the measurement of X after exposure to Z was CGK to the POSITA) but in the instant application the testing for analyte X was performed precisely 36-48 hours post-exposure. Although the assay used to detect X is the same, in this case performing the assay within a window of 36-48 hours post-exposure is not routine and thus would be “non-standard to that means”.
[312] Radio Corporation of America v. Raytheon Manufacturing Co. [(1957), 27 C.P.R. (1st), 1 (Ex.Ct.)] at page 14
[313] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at page 111; the cited passage has been referred to more recently in, e.g., Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd. [2001] FCT 889 [(2001), 13 C.P.R. (4th), 193 (F.C.T.D.)] (rev’d on other grounds) and 671905 Alberta Inc. v. Q’Max Solutions Inc. [2001] FCT 888 [(2001), 14 C.P.R. (4th), 129 (F.C.T.D.)] (varied [(2003), 27 C.P.R. (4th), 385 (F.C.A.)]). Minerals Separation was referred to in both Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 157 and Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents), [1989] 1 S.C.R. 1623 [(1989), 25 C.P.R. (3rd), 257(S.C.C.)] at page 268 as in a general sense setting out the requirements of a sufficient disclosure.
[314] Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at pages 154 to 155, Dickson J. quoting H.G. Fox from his Canadian Law and Practice Relating to Letters Patent for Inventions [(1969), 4th Ed.]
[315] Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 157
[316] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at page 111; this passage endorsed in Consolboard Inc. v. MacMillan Bloedel (Saskatchewan) Ltd. [(1981), 56 C.P.R. (2nd), 145 (S.C.C.)] at page 157
[317] Re Application 2,017,025 of Yeda Research and Development Corporation [(2007) C.D. 1273]
[318] Reeck, Gerald et al., “ ‘Homology’ in proteins and nucleic acids: A terminology muddle and a way out of it” (1987), 50 Science 667
[319] Altschul, S. et al., “Basic Local Alignment Search Tool” (1990), 215 Journal of Molecular Biology 403
[320] Janssen-Ortho Inc. v. Novopharm Limited, 2006 FC 1234 [(2006), 57 C.P.R. (4th), 6 (F.C.)] at paragraph 99, aff’d 2007 FCA 217 [(2007), 59 C.P.R. (4th), 116 (F.C.A.)]. The requirement of section 28.3 has been variously described by the courts as one of “ingenuity”, “inventive ingenuity”, “invention”, “inventiveness”, and “non-obviousness”. These terms can be used more or less interchangeably to describe the requirement codified in s.28.3.
[321] Apotex Inc. v. Sanofi-Synthelabo Canada Inc. 2008 SCC 61 at paragraph 67
[322] Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1947), 12 C.P.R. (1st), 102 (Ex.Ct.)] at page 111
[323] Pioneer Hi-Bred Ltd. v Canada (Commissioner of Patents), 1989 S.C.R. 1623 [(1989), 25 C.P.R. (3rd), 257(S.C.C.)] at page 271
[324] Re Application of Abitibi Co. [(1982) C.D. 933, 62 C.P.R. (2nd), 81 (P.A.B.)]; Re Application No. 291,870 of Connaught Laboratories [(1982) C.D. 962]
[325] Cobalt Pharmaceuticals Company v. Bayer Inc., 2015 FCA 116 at paragraph 67 and Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60 at paragraph 90
[326] Re Application No. 2,451,493 (2016) C.D. 1398 at paragraph 22 citing Novartis Pharmaceuticals Canada Inc. v. Teva Canada Ltd., 2013 FC 283
[327] Re Application No. 2,451,493 (2016) C.D. 1398 citing Re Immunex Corporation Patent Application No. 583,988 [(2010) C.D. 1302, 89 C.P.R. (4th) 34 (P.A.B.)] at paragraph 67-68
[328] Re Genentech Inc. Patent Application No. 2,407,304 [(2010) C.D. 1307, 92 C.P.R. (4th) 241 (P.A.B.) at paragraph 68]
[329] Re Genentech Inc. Patent Application No. 2,407,304 [(2010) C.D. 1307, 92 C.P.R. (4th) 241 (P.A.B.) at paragraph 67]
[330] Re Immunex Corporation Patent Application No. 583,988 [(2010) C.D. 1302, 89 C.P.R. (4th) 34 (P.A.B.) at paragraph 69]
[331] Apotex Inc. v. Pfizer Canada Inc. 2014 FCA 250 at paragraph 64
[332] Apotex Inc. v. Pfizer Canada Inc. 2014 FCA 250 at paragraph 64, citing Eli Lilly Canada Inc. v. Novopharm Limited 2010 FCA 197 at paragraph 76
[333] Natural Colour Kinematograph Co. v. Bioschemes Ltd. 32 R.P.C. 256 at page 266; this passage also cited in Minerals Separation North American Corp. v. Noranda Mines, Ltd. [(1952), 15 C.P.R. (1st), 133 (P.C.)]
[334] Any such amendment, of course, must not introduce new subject-matter such as to contravene subsection 38.2(2) of the Patent Act.
[335] Natural Colour Kinematograph Co. v. Bioschemes Ltd. 32 R.P.C. 256 at page 266. The use of “ambiguous” in this context should be understood in the context of the entire passage, wherein it was earlier stated that a patent is invalid if it relies on “language which, when fairly read, is avoidably obscure or ambiguous”.
[336] Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102, 79 C.P.R. (4th) 243 at paragraphs 228-229
[337] Lundbeck Canada Inc. v. Ratiopharm Inc., 2009 FC 1102, 79 C.P.R. (4th) 243
[338] Minerals Separation North American Corp v Noranda Mines Ltd [(1947), 12 C.P.R. (1st), 102 Ex.Ct.)] at page 111
[339] Re: Application No. 139,256 (Patent No. 1,029,723) [1977] 51 C.P.R. (2d) 95 at 103; Re Application No. 315,073 [(1981) C.D. 904]; Re Application No. 2,313,707 [(2013) C.D. 1353]
[340] DBC Marine Safety Systems Ltd v Canadian Patents (Commissioner), 2007 FC 1142 at para 31 aff’d 2008 FCA 256.
[341] DBC Marine Safety Systems Ltd v Canadian Patents (Commissioner), 2007 FC 1142 at paras 33-34 aff’d 2008 FCA 256.
[342] A further report would not be written, for example, solely to advise the applicant that the next report may be made final, where the report otherwise simply reiterates the arguments presented in the previous report.
[343] A further report may not be necessary, for example, where the examiner has previously identified a defect as a non-compliance with one section of the Act or Rules, but later realises that for the same or substantially the same reasons the defect in question results in non-compliance with a further section of the Act or Rules or that the defect should have been identified as non-compliance with a different section of the Act and Rules than that previously identified.
[344] If the examiner had previously identified something as belonging to the common general knowledge, and the applicant had acknowledged this in correspondence, it would not be necessary to further substantiate that it is, in fact, common general knowledge. Similarly, if a claim with five elements was identified as being anticipated in view of a document D1, and the applicant agrees that D1 teaches four of the five claimed elements, it is not necessary to elaborate on those features in the reasons for the rejection; the point of disagreement is whether D1 discloses the fifth element.
[345] Despite the fact that any apparent defects will be identified, a review begins with the presumption that the search and examination prior to the review stage is complete and comprehensive.
[346] The PAB was created in a “Notice to the Patent Profession” (re: creation of the PAB, general guidelines, and hearing procedure) C.P.O.R., Aug. 4, 1970
[347] Canada. (2013). Regulatory Impact Analysis Statement, Rules Amending the Patent Rules. In Canada Gazette, Part II, Vol. 147, No. 26, 18 December 2013.
[348] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 74 aff’d 2010 FCA 190
[349] Monsanto Co. v. Canada (Commissioner of Patents) (1976), 28 CPR (2d) 118 at 119
[350] Hershkovitz v. Tyco Safety Products Canada Ltd., 2010 FCA 190 at para 25
[351] Bristol-Myers Squibb Canada Co. v. Apotex Inc., 2009 FC 137 at para 47
[352] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 75
[353] Richards Packaging Inc v. Canada (Attorney General), 2007 FC 11 at para 10 aff’d 2008 FCA 4
[354] Sanofi-Aventis Canada Inc. v. Hospira Healthcare Corp., 2009 FC 1077 at para 142
[355] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 79
[356] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 79
[357] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 78
[358] Hershkovitz v. Tyco Safety Products Canada Ltd., 2010 FCA 190 at para 25
[359] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 76
[360] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 81
[361] Sanofi-Aventis Canada Inc. v. Hospira Healthcare Corp., 2009 FC 1077 at para 111
[362] Hershkovitz v. Tyco Safety Products Canada Ltd., 2010 FCA 190 at para 47
[363] Bristol-Myers Squibb Canada Co. v. Apotex Inc., 2009 FC 137 at para 43
[364] Hershkovitz v. Tyco Safety Products Canada Ltd., 2009 FC 256 at para 93; Canadian Celanese Ltd. v. B.V.D. Co. Ltd., [1939] 2 DLR 289 at 294
[365] Genencor International v. Commissioner of Patents 2008 FC 608 at para 4
[366] Prenbec Equipment Inc v. Timberblade Inc. 2010 FC 23 at para 34
[367] Genencor International v. Commissioner of Patents 2008 FC 608 at para 38
[368] Newco Tank Corp. v. Attorney General of Canada 2014 FC 287 at para 34
[369] Newco Tank Corp. v. Attorney General of Canada 2014 FC 287 at para 36
[370] Prenbec Equipment Inc v. Timberblade Inc. 2010 FC 23 at para 17
[371] Genencor International v. Commissioner of Patents 2008 FC 608 at para 39
[372] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at para 254
[373] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at 653; Bergeon v. DeKermor, [1927] 2 DLR 99 at para 38
[374] Commissioner’s Decision #1330 at para 43-44
[375] Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd. (1967), 52 CPR 51 at para 74
[376] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at para 254
[377] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at para 255; Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd. (1974), 17 CPR (2d) 97 at 107; Creations 2000 Inc v. Canper Industrial Products Ltd. (1988), 22 CPR (3d) 389 at 406 aff’d 34 CPR (3d) 178
[378] Commissioner’s Decision #1289 at para 67-68; Commissioner’s Decision # 1279 at para 11, 14
[379] Commissioner’s Decision # 1297 at para 26, 44
[380] Commissioner’s Decision #1289 at para 46
[381] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649
[382] Paul Moore Co. Ltd. v. Commissioner of Patents (1979), 46 CPR (2d) 5 at 10
[383] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at 654; Mobil Oil Corp v. Hercules Canada Inc. (1994), 57 CPR (3d) 488 at para 498, 499 rev’d on other grounds 63 CPR (3d) 473; Commissioner’s Decision # 1173 at para 8
[384] Mobil Oil Corp v. Hercules Canada Inc. (1994), 57 CPR (3d) 488 at para 499
[385] Commissioner’s Decision #1289 at para. 41; Commissioner’s Decision #1333 at para. 26
[386] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at para 654; Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd. (1967), 52 CPR 51 at para 68-69
[387] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at para 654
[388] Commissioner’s Decision #134 at 5; Commissioner’s Decision #326 at 9; Commissioner’s Decision #420 at 1; Commissioner’s Decision #783 at 4-5; Commissioner’s Decision #906 at 10 Commissioner’s Decision #1148 at 17; Commissioner’s Decision #1186 at 5
[389] Burton Parsons Chemicals Inc. v. Hewlett-Packard (Canada) Ltd. (1974), 17 CPR (2d) 97 at para 108
[390] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at para 259
[391] Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd. (1967), 52 CPR 51 at para 68, 70-71; Mobil Oil Corp v. Hercules Canada Inc. (1994), 57 CPR (3d) 488 at para 501; Commissioner’s Decision #1289 at para 21
[392] Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd. (1967), 52 CPR 51 at 68, 70-71; Mobil Oil Corp v. Hercules Canada Inc. (1994), 57 CPR (3d) 488 at para 501
[393] Curl-Master Manufacturing Co. Ltd. v. Atlas Brush Ltd. (1967), 52 CPR 51 at para 70-71
[394] Commissioner’s Decision #56 at para 7
[395] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at para 659
[396] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at 254
[397] Commissioner’s Decision #1093 at para 6-7; Commissioner’s Decision #1173 at para 3
[398] Hershkovitz v. Tyco Safety Products Canada Ltd., 2010 FCA 190 at para 24
[399] Northern Electric Company Ltd. v. Photo Sound Corporation, [1936] SCR 649 at para 652-653; Creations 2000 Inc v. Canper Industrial Products Ltd. (1988), 22 CPR (3d) 389 at 406 aff’d 34 CPR (3d) 178 at para 406
[400] Urea Casale S.A. v. Stamicarbon B.V. 2002 FCA 10 at para 22
[401] Farbwerke Hoechst Aktiengesellschaft vormals Meister Lucius & Bruning v. Commissioner of Patents (1966), 50 CPR 220 at para 245-46
[402] Bayer Aktiengesellschaft v. Commissioner of Patents (1980), 53 CPR (2d) 70 at para 73
[403] Bayer Aktiengesellschaft v. Commissioner of Patents (1980), 53 CPR (2d) 70 at para 74
[404] Dow Chemical Co. v. Canada (Attorney General) 2007 FC 1236 at para 26-27; Scannex Technologies v. Canada (Attorney General) 2009 FC 1068 at para 30
[405] Bayer Aktiengesellschaft v. Commissioner of Patents (1980), 53 CPR (2d) 70 at para 74
[406] Bayer Aktiengesellschaft v. Commissioner of Patents (1980), 53 CPR (2d) 70 at para 73