Justice Gibson Raises Concerns About Canada’s Patent Re-examination Provisions
In Genencor International Inc v Canada (Commissioner of Patents) 2008 FC 608, Justice Gibson of the Federal Court dismissed an appeal from the decision of a patent re-examination board (Board) to cancel all claims of Patent No 2093422 (Genencor Patent), owned by Genencor International Inc (Genencor).
Since 1987 when the re-examination provisions were added to the Patent Act (Act), there have been 47 re-examinations, but none has previously been appealed to the Federal Court, as permitted under section 48.5 of the Act.
Justice Gibson characterized the re-examination provisions as “a relatively summary and inexpensive alternative to a full-blown impeachment process by litigation.” Re-examination is a two-stage process. At the first stage, following a request from a requestor, a re-examination board (REB) is established by the Commissioner of Patents (Commissioner) and the preliminary decision is made by the REB whether the request raises a substantial new question of patentability. The second stage permits the patentee to make submissions to the REB and propose amendments to the patent, but the requestor is not a party to this stage, only the patentee and REB are. Further, only the patentee is given a right of appeal.
In this case, Novozymes A/S (Novozymes), a Danish company, requested re-examination of the Genencor patent under section 48.1 of the Act, submitting eight items of prior art that it asserted anticipated and made obvious all the claims of the Genencor patent. Following a determination by the Board that there was a substantial new question of patentability and after receiving submissions by Genencor, the Board determined that all claims were anticipated by an earlier patent submitted by Novozymes, the claims were therefore cancelled, and the Genencor Patent was deemed never to have been issued.
On appeal, Justice Gibson found that the Board’s decision was not subject to review other than in accordance with the Act, although the Act provides no guidance as to the standard of review. Based on the expertise of the Board and the purpose of the Act and the re-examination scheme, he found that a highly deferential standard of “reasonableness” was appropriate so that the decision should not be interfered with in the absence of a “palpable and overriding error.” Having found that at least two of the Board members were “skilled persons” with at least “ordinary knowledge” in the art, he further found that the Board made no palpable and overriding error in defining or applying the test for anticipation.
Genencor was effectively unopposed in this appeal. The Commissioner determined that it was inappropriate for him to defend his own decision on the merits based on the finding in Genex Communications Inc v Canada (Attorney General), 2005 FCA 283. In addition, the Federal Court of Appeal had already affirmed (2007 FCA 129) that Novozymes did not have standing on the appeal, as it was not a party to the second stage of the re-examination. Novozymes was also denied intervener status (2007 FC 376, aff’d 2007 FC 843) since it was found to have no legal interest requiring representation in the proceedings, although the Federal Court recognized the difficulties for a judge on appeal when no party appears to defend its merits.
In this appeal decision, Justice Gibson went further in a postscript to his reasons, saying that the Court was at a substantial disadvantage in these circumstances. If his finding on the standard of review was incorrect and a less deferential standard was appropriate, the position of the Court would be untenable on substantive issues. He emphasized the need for the Government or Parliament to find a legislative solution.
For the full reasons for judgment, see:
http://decisions.fct-cf.gc.ca/en/2008/2008fc608/2008fc608.html
Summary by: Tom Feather
