Law Times

Page 12 September 22, 2014 • Law Times www.lawtimesnews.com Canada's rules on double patenting confusing By arshy maNN Law Times he idea behind the pro- hibition against double patenting seems like common sense. "You can't get two patents for the same idea," says Aaron Ed- gar, a lawyer with Edgar Chana Law. But the way the law around double patenting has developed in Canada makes it a source of confusion for many intellectual property lawyers. Unlike many aspects of pat- ents, the prohibition against double patenting isn't the result of a statute but instead arose in the common law. The leading case for double patenting is Whirlpool Corp. v. Camco Inc., a Supreme Court of Canada decision in 2000 that dealt with washing-machine patents. In that case, the Supreme Court laid out two tests to deter- mine if a patent falls under the prohibition on double patent- ing: "same invention" and "obvi- ousness." The first test is fairly simple: A person shouldn't get a patent for something already patented. The obviousness test, how- ever, leads to more difficulties. "The obviousness test is basi- cally a test based on if a skilled person in the art would be able to come to the same invention knowing what's common gen- eral knowledge and also what are the other previous teachings in the area," says Edgar. Edgar notes that when the obviousness test comes up in a case, it's always a question of mixed law and fact. This becomes difficult because the courts have to determine what would be obvious to a skilled person in the art, something that isn't always clear. One of the earliest Canadian cases to deal with the issue of "obviousness" was Commission- er of Patents v. Fabwerks Hoechst Aktiengeselschaft Vormals Meis- ter Lucius & Bruning, a 1963 Supreme Court of Canada deci- sion. In that case, the patent in question was a diluted version of a previously patented medicine. The court found while the two substances weren't identical, the dilution would have been an obvious next step to someone skilled in the art. "A person is entitled to a pat- ent for a new, useful and inven- tive medicinal substance but to dilute that new substance once its medical uses are established does not result in further inven- tion," according to the ruling. "In this case, the addition of an inert carrier, which is a com- mon expedient to increase bulk, and so facilitate measurement and administration, is nothing more than dilution and does not result in a further invention over and above that of the medicinal itself." In the Whirlpool decision, the judges did cite a statute as the basis for the prohibition on double patenting, namely s. 36 of the Patent Act. However, the language of the section doesn't help clarify some of the confusion. "A patent shall be granted for one invention only but in an ac- tion or other proceeding a pat- ent shall not be deemed to be invalid by reason only that it has been granted for more than one invention," according to s. 36. Chantal Saunders, a partner at Borden Ladner Gervais LLP, pointed out in a recent post that this section doesn't appear to be about double patenting at all. "This section discusses 'a' or one patent, not the two patents required for an assessment of double patenting and appears instead to be addressing the op- posite problem to double pat- enting, namely multiple inven- tions claimed in one patent," she wrote. Because of the prohibition against double patenting, Ed- gar says there's a lot of pressure to make sure the applicant in- cludes everything in the initial patent application. "In the U.S., you're able to file subsequent applications that are called continuations," he says. "But in Canada, because of dou- ble patenting, you can't really file your later patents, so it's really important that you get every- thing into the patent application at the time of filing because if you don't, you're not going to be able to file something later on." According to Edgar, the best strategy is to try to get the patent office to say there are multiple inventions right from the start. "You don't want to be in a situation where you're saying things are multiple inventions because then the patent office is able to say that because they didn't suggest the inventions were different, you now have double patenting," he says. Daphne Lainson, a lawyer with Smart & Biggar/Fether- stonhaugh, says the government is reportedly likely to amend the Patent Act in order to increase patent-term protections under the Canada-European Union free-trade deal. "If that happens, then it will be interesting to see how open the government is to potential further changes to the law that will help to clarify certain is- sues," she says. "And it would be worthwhile to have some greater statutory clarity around double patent- ing." LT FOCUS Sponsor a page of exclusive content or book your display ad in e Legal Resource Guide (GTA Edition) and put your name in front of more than 150,000 GTA-area consumers, in selected high-income neighbourhoods. Share your expertise in your area of practice and be the first name that comes to mind when community residents have a need for legal services. Aimed at mid-to upper-income earners aged 35 to 60, e Legal Resource Guide is an unbeatable marketing opportunity for lawyers and law firms that specialize in practice areas that matter to your potential clients. 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