Willful Misleading Statements in a Patent Application Must Also be Material To Void Patent

On August 24, 2015, the Canadian Federal Court released its decision in SNF Inc v Ciba Specialty Water Treatment Ltd, 2015 FC 997, finding Canadian Patent No 2,515,581 (the 581 Patent) invalid as obvious.  An interesting aspect of this case is the conclusion of Justice Phelan that the 581 Patent contained wilfully misleading statements, but because the misleading statements were not material, the 581 Patent was not void under Section 53 of the Canadian Patent Act.

The test for application of Section 53 was summarized by Justice Phelan as requiring an impugned statement to be: (i) untrue; (ii) material; (iii) made in the drafting of the patent with willful intent to mislead; (iv) likely to mislead the “skilled person”.  Based on evidence provided by witnesses at trial, Justice Phelan found that the applicant for the 581 Patent knew the invention was an obvious modification to a prior art invention, but made willful and untrue statements about the prior art in their patent application with the intention of suggesting the contrary. However, Justice Phelan narrowly interpreted the materiality requirement under Section 53, indicating that “a statement is material if it affects how the public makes use of the invention taught by the 581 Patent”.  According to Justice Phelan, “there was no evidence that the false and misleading statements were material in this legal sense”, and accordingly, he found that the 581 Patent was not void under Section 53.

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