University of California v Commissioner of Patents [2014 FC 80]

Background

The Applicant – University of California – sought judicial review pursuant to s. 18.1 of the Federal Courts Act of a decision of the Commissioner of Patents under section 43 of the Patent Act in the context of patent conflict proceedings.

The applicant filed three patent applications over 30 years. Each patent is involved in the conflict proceeding as well as seven others.

Conflict proceedings are used where there are two or more applications pending that appear to be directed to the same subject matter. The steps in a conflict proceeding are set out in section 43 of the Patent Act. The steps are:

1. Identification of the conflict between two or more applications
2. Notify the applicants and include a copy of the conflicting claims and provide an opportunity to add the conflicting claims to their applications
3. Send a preliminary notice of the conflict to the applicants who have completed their applications
4. Invite the applicants to avoid the conflict by amending or cancelling conflict claims or by submitting prior art
5. Send a formal declaration of conflict if the applicants elect to keep the conflicting claims in their application. Applicants are then required to submit an affidavit of the record of the invention to establish date of invention
6. Examination of affidavits by the Commissioner and communication of the decision
7. Rejection or allowance of conflicting claims (option to file a judicial review in the Federal Court)

In the present case the Commissioner notified the Applicant of the conflicting claims and invited prior art submissions that may cause the conflicting claims to be unpatentable. The Applicant respondend with submissions including prior art and a discussion of patentability.

The Applicant submitted that the prior art published more than two years before a patent application should be cited against certain claims, that prior art published less than two years before filing but before the priority date should also be cited, and that all categories of prior art should be assessed with respect to novelty and obviousness.

On November 15, 2012 the Commissioner sent the applicant a letter in response to the submissions. The Commissioner stated that documents published more than two years prior to filing were considered however the Commissioner noted that the documents published less than two years prior to filing were not considered as it required information about the date of invention for the claims. The Commissioner stated that sufficiency of disclosure can only be assessed after submissions of affidavits pursuant to s.43 of the Act. The Commissioner noted that the Applicant has six months from the date of the letter to file the affidavits.

Analysis

The standard of review of the Commissioner’s decision is reasonableness.

The Commissioner included sufficient analysis in the November 15, 2012 letter. Prior art published two years before the application was examined which in turn reduced the number of conflict claims based on patentability.

The Commissioners position that a date of invention must be established before prior art published within two years of filing can be considered is reasonable. It would be unreasonable for the Commissioner to presume a date of invention. The date of invention is not a minor detail. The date should not be presumed but rather be determined based upon information provided by affidavit. The Commissioners request for such affidavits was reasonable.

Expediency and simplification are not grounds for approaching the patentability analysis in a different way. Conflict proceedings are meant to be conducted with a complete record. The records remain confidential to facilitate this process.

The Applicant has not been deprived of procedural rights. The Applicant has the option of instituting a de novo appeal before the Federal Court as provided for in s. 43(8) of the Act. Conflict proceedings to not finally dispose of the matter but rather only address it in the context of determining questions of first to invent.

The Applicant has failed to demonstrate a breach of procedural fairness or that the Commissioner’s decision was unreasonable. Judicial intervention is not justified. The Application for judicial review was dismissed.

Commentary

There are still outstanding old act patents that remain at the Canadian Intellectual Property Office. As noted by Alan Macek on his blog IPPractice it is clear that while old act patents are not being issued as frequently there are outstanding patents that continue to linger at the patent office despite having been filed pre 1989.