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Federal Court Revives Applicant Duty of Candour in Patent Prosecution

Justice Mactavish has breathed life into the applicant duty of candour when communicating with the Patent Office.  Justice Mactavish applied the reasoning of Justice Hughes from the overturned G.D. Searle decision that a duty of candour is implied by the obligation under section 73(1)(a) of the Patent Act to reply in good faith to any requisition of the examiner.    Specifically, the Court stated that prior art must be fully and fairly described by applicants and their agents when answering requisitions from the Patent Office.  In this proceeding under the Patented Medicines (Notice of Compliance) Regulations the respondent, ratiopharm, argued that the applicant breached its duty of good faith in failing to alert the patent examiner as to the importance of a particular reference.   The Applicant had disclosed the reference, but incorrectly characterized the state of the prior art as not showing what was shown by the reference.  The Court found this to be a breach of the duty of candour and found an allegation of abandonment was justified.  Justice Mactavish’s decision and reasons revive the duty of candour owed by an applicant during patent prosecution.  –  Lundbeck v. Ratiopharm, 2009 FC 1102

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