Patent File Wrapper Estoppel Comes to Canada

In a transfer that stunned many within the IP neighborhood, a finances invoice that acquired royal assent earlier than the vacations, launched file wrapper estoppel to Canadian patent regulation.

Invoice C-86 (hyperlink) included quite a lot of adjustments to mental property laws together with enacting the School of Patent Brokers and Commerce-mark Brokers Act, reforming the Copyright Board, and quite a few amendments to the Patent Act, Commerce-marks Act and Copyright Act.

One of many adjustments to the Patent Act, permits for the patent file wrapper or file historical past to be used to rebut declare building of a patent. The file wrapper refers to the correspondence again and for the between the patent workplace and a patent applicant that features arguments as to why a patent must be granted and any amendments to the patent software.

New part 53.1(1) of the Patent Act, reads as follows. Subsections (2) and (3) relate to divisional and re-issued patents and a brand new part 123.1 relates to Certificates of Supplementary Safety.

53.‍1 (1) In any motion or continuing respecting a patent, a written communication, or any a part of such a communication, could also be admitted into proof to rebut any illustration made by the patentee within the motion or continuing as to the development of a declare within the patent if

(a) it’s ready in respect of

(i) the prosecution of the applying for the patent,

(ii) a disclaimer made in respect of the patent, or

(iii) a request for re-examination, or a re-examination continuing, in respect of the patent; and

(b) it’s between

(i) the applicant for the patent or the patentee; and

(ii) the Commissioner, an officer or worker of the Patent Workplace or a member of a re-examination board.

The usage of the file wrapper to assist outline the scope of the claims of a patent is nicely established in the US. The US Supreme Court docket summarized this doctrine as “a rule of patent building, constantly noticed, {that a} declare in a patent as allowed have to be learn and interpreted with reference to claims which were cancelled or rejected, and the claims allowed can’t, by building, be learn to cowl what was thus eradicated from the patent.” (Schriber-Schroth Co. v. Cleveland Belief Co., 311 U.S. 211 (1940)). This rule is primarily utilized when contemplating what equal options, a “doctrine of equivalents”, could also be included throughout the that means of a declare time period. The doctrine of equivalence is just not an idea that has a direct parallel in Canadian patent regulation.

In Canada, the settled regulation had been that the file wrapper was not to be thought of for the aim of patent declare building. The Supreme Court docket of Canada said (Free World Belief v. Électro Santé Inc., [2000] 2 SCR 1024),

To permit such extrinsic proof for the aim of defining the monopoly would undermine the general public discover perform of the claims, and enhance uncertainty in addition to fuelling the already overheated engines of patent litigation. The present emphasis on purposive building, which retains the give attention to the language of the claims, appears additionally to be inconsistent with opening the pandora’s field of file wrapper estoppel.

I earlier wrote about different makes use of of the file historical past that litigants had been placing earlier than the court docket, or not less than making an attempt to put earlier than the court docket (see Is File Historical past Estoppel Coming to Canada?). In 2016, Justice Locke mentioned, in Pollard Banknote Restricted v. BABN Applied sciences Corp., 2016 FC 883, a case I used to be concerned in, how file wrapper estoppel might have utilized in that case, if it was relevant to declare building. He famous that, “for now Canadian regulation seems fairly settled that extrinsic proof is just not related to declare building”:

I might count on that SG’s argument would by no means have made it to a trial within the US the place the precept of file wrapper estoppel applies. There, SG would probably not have been allowed to argue a declare building that makes an attempt to recapture floor conceded throughout prosecution of the patent software to keep away from prior artwork.

This case highlights a possible danger in taking an easier method to declare building by ignoring extrinsic proof, such because the prosecution historical past of the patent in go well with. As revealed in my evaluation above, excluding such extrinsic proof resulted in a really totally different building of the phrase “a detachable steady scratch-off coating protecting each the printed indicia in mentioned play space and the bar code” than would in any other case have been the case.

Within the UK, the Supreme Court docket in 2017 launched its resolution in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 which allowed for variants in declare building. The choice additionally mentioned how the patent file historical past could also be thought of when analyzing potential variants. Lord Neuberger wrote (at paragraph 88),

Whereas it will be boastful to exclude the existence of another circumstances, my present view is that reference to the file would solely be applicable the place (i) the purpose at subject is actually unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the purpose, or (ii) it will be opposite to the general public curiosity for the contents of the file to be ignored. The primary kind of circumstance is, I hope, self-explanatory; the second could be exemplified by a case the place the patentee had made it clear to the EPO that he was not searching for to contend that his patent, if granted, would lengthen its scope to the kind of variant which he now claims infringes.

With the legislative change to declare building now in power in Canada, and relevant to presently pending litigation, in addition to any new litigation, it will likely be fascinating to see how judges apply this new part to permit “proof to rebut any illustration” made by the patentee. Sections 53.1 and 123.1 “apply in respect of any motion or continuing that has not been lastly disposed of on the approaching into power of that part 53.‍1” on December 13, 2018.

Judges will probably be requested to contemplate US and UK precedents as to how the patent file historical past could also be utilized, and the scope of contemplating the file historical past for declare building, significantly as the brand new part seems directed to use by a defendant to “rebut any illustration made by a patentee” fairly than as a basic help in declare building.


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