Date: 20070411
Docket: T-262-06
Citation: 2007FC376
Ottawa, Ontario, Wednesday, this 11th day of April 2007
PRESENT: MADAM PROTHONOTARY MIREILLE TABIB
BETWEEN:
GENENCOR INTERNATIONAL, INC.
Appellant
- and -
COMMISSIONER OF PATENTS
Respondent
- and -
NOVOZYMES A/S
Proposed Intervenor
REASONS FOR ORDER AND ORDER
[1] Novozymes A/S (“Novozymes”) was denied status as a Respondent in the present proceeding, an appeal brought by Genencor International Inc. (“Genencor”) against a decision of the Commission of Patents to revoke a patent previously issued to Genencor. Novozymes now seeks intervenor status, pursuant to Rule 109 of the Federal Courts Rules and the Order of Justice Pinard dated August 24, 2006 (reported as Genencor International, Inc. v. Commissioner of Patents et al., 2006 FC 1021).
Facts
[2] The relevant facts and procedural history of this matter are as follows:
- Canadian Patent 2,093,422 (the ‘422 Patent) was issued to Genencor on April 3, 2001.
- On April 15, 2004, Novozymes requested a re-examination of all claims of the ‘422 Patent, pursuant to section 48.1 of the Patent Act, R.C.S., c. P-4, on the basis that the claims were either anticipated or obvious in view of several prior art references.
- On September 3, 2004 a re-examination board convened by the Commissioner of Patents (the “Board”) determined that substantial new questions had been raised with respect to the patentability of the subject matter claimed by the ‘422 Patent, citing 5 of the prior art references cited by Novozymes.
- Both Genencor and Novozymes filed submissions with the Board in respect of these questions. One of the issues in Genencor’s appeal concerns whether the Board in fact considered the representations it received from Novozymes, and if so, whether that was appropriate.
- On May 9, 2005, the Board made another determination, to the effect that a substantial new question of patentability subsisted with respect to a single prior art reference, namely, Canadian Patent Application 2,082,279 filed by Rasmussen et al. (“Rasmussen”). It requested further submissions from Genencor on that question.
- Again, both Genencor and Novozymes filed submissions, and again, there is an issue as to whether Novozymes’ submissions were and could properly have been considered by the Board.
- On November 16, 2005, the Board determined that all claims of the ‘422 Patent were anticipated by Rasmussen and unpatentable; all claims were therefore cancelled.
- On February 14, 2006, Genecor commenced the within appeal against the Board’s decision, naming as sole respondent the Commissioner of Patents.
- While the Commissioner filed a notice of appearance, he indicated, by letter of his counsel dated March 6, 2006, his current intention not to make representations as to the substantive merits of the appeal.
- On May 31, 2006, Novozymes filed a motion for an order that it be added as a party respondent to the appeal, or subsidiarily, that it be granted leave to intervene therein.
- It is to be noted that Genecor only discovered, from the materials filed in support of Novozymes’ motion, that Novozymes had been provided with copies of Genecor’s representations to the Board and had made representations of its own to the Board. Thus, Genencor’s amendment to the notice of appeal to add, as grounds of appeal, the impropriety of the Board receiving and considering submissions from Novozymes on the re-examination process only came after Novozymes’ motion was made. On that specific issue, the Commissioner has now taken an adverse position and will be making submissions on the appeal.
- On July 13, 2006 Prothonotary Morneau granted Novozymes’ motion to be added as a Respondent, on the basis that Novozymes had been a party or at least a quasi-party to the re-examination process, which he construed as a continuous process. He did not need to rule upon the subsidiary relief sought, that Novozymes be granted leave to intervene, and did not do so. Genencor appealed.
- On August 24, 2006, Justice Yvon Pinard reversed the Prothonotary’s decision, finding that Novozymes had been neither a party nor a quasi-party to the process leading to the decision under appeal. He gave Novozymes 10 days within which to file a new motion for leave to intervene if it intended to do so.
- Justice Pinard’s decision has since been upheld by the Federal Court of Appeal (Novozymes A/S v. Genencor International Inc. et al., 2007 FCA 129).
Novozymes’ Arguments:
[3] A common thread runs through, colours and apparently gives strength to all aspects of Novozymes’ arguments: It is the contention that the statutory scheme set out in sections 48.1 to 48.5 of the Patent Act was intended by Parliament to provide a summary procedure for third parties to seek revocation of some or all claims of an issued patent, similar or analogous to the summary expungement procedure of section 45 of the Trade Marks Act (R.S.C. 1985, c. T-13) (for ease of reference, sections 48.1 and 48.5 of the Patent Act are reproduced in appendix to these reasons). Viewed that way, it would be Parliament’s intention to give to the instigators of a re-examination, such as Novozymes, an adversarial role in the process and to recognize their status as persons directly affected by the outcome, not only of the administrative process, but of any eventual appeal.
[4] If that view of the purpose and intent of the procedure outlined in sections 48.1 to 48.5 of the Patent Act were adopted, it would go a long way in assisting Novozymes to meet most of the jurisprudential criteria developed to determine whether intervenor status is to be granted, as they are set out, for example, in Pfizer Canada Inc. v. Canada, (2001), 15 C.P.R. (4th) 490 (F.C.J.):
- Novozymes could be said to be directly affected by the outcome, since the process was intended to include it and protect its interest.
- There would exist a justiciable issue or a veritable public interest, since the process intended to include third parties such as Novozymes as participants.
- There would be an apparent lack of any other reasonable or efficient means to submit the questions to the Court, since the process intended to remedy the costs, delays and complexities involved in challenging the validity of a patent in an impeachment action under section 60 of the Patent Act by providing this alternative summary process to third parties.
- The interest of justice would be better served by allowing the intervention, as it would give effect to the intention of Parliament, to afford third parties a summary process for challenging the validity of patents in a manner similar to section 45 of the Trade Marks Act.
[5] Novozymes’ interpretation of the purpose and intent of sections 48.1 and 48.5 of the Patent Act is, however, at odds with the findings of both Justice Pinard and the Federal Court of Appeal. In particular, the Court of Appeal confirmed that part of Justice Pinard’s decision which concluded that the relevant provisions contemplate a two stage process, of which only the first stage is intended to include participation of third parties such as Novozymes:
“[7] Re-examination pursuant to sections 48.1 to 48.5 of the Act is a two-step process. Both stages do not involve the same parties. The first stage involves the filing of a request by a requester (section 48.1), the establishment of a re-examination board by the Commissioner in response to this request (section 48.2(1)) and the preliminary decision by the re-examination board as to whether the request raises a substantial new question of patentability (sections 48.2(2) to (4)).
[8] The second stage follows the re-examination board’s determination that a substantial new question of patentability is raised (section 48.2(4)). The requester is not a party to this second phase of the process. Only the re-examination board and the patentee are parties to that phase. Only the patentee is given notice of such determination (section 48.2(4)) and is entitled to make submissions (section 48.2(5)), to propose amendments to the patent (section 48.3(2)) and to receive a copy of the certificate (section 48.4(2)). Only the patentee is given a right of appeal (section 48.5).
[9] Although Novozymes, as the requester, triggered the re-examination process, it did not and could not participate in the second stage of the re-examination process.”
[6] According to this reasoning, Parliament did not intend third parties instigating a re-examination process to participate in the re-examination past the point where the Board determines whether substantial new questions of patentability are raised, and did not intend to give such third parties a role in a subsequent appeal of the Board’s decision on re-examination.
[7] Clearly, Parliament did not intend, as Novozymes would have it, to provide third parties with a summary process to directly challenge a patent. Far from being comparable to the summary process contemplated in s. 45 of the Trade Marks Act, it seems to me that the re-examination process has far more in common with the examination process leading to the decision of whether a patent should be granted; both processes contemplate and allow some input by third parties as to relevant prior art and publications, but neither contemplate nor permit these third parties to have the right to appeal the decision resulting from the examination or re-examination, or to have standing as respondents to an appeal launched by the applicant or patentee. Counsel for Novozymes could not refer the Court to any reported case where a third party has sought intervenor status in an appeal taken by an applicant of the Commissioner of Patent’s decision to refuse a patent, nor did she suggest that the legislative scheme of the examination process should militate in favour of facilitating or fostering such interventions.
[8] It therefore seems to me that Novozymes’ bid to intervene in this matter must be assessed on the basis of the particular facts and circumstances of this appeal, and of the specific contribution Novozymes proposes to make to the proceeding, unaided by any wider notion of how Parliament would have intended a role for Novozymes or a means of protecting its interest. If legislative intent has any bearing on whether leave to intervene should be granted, then it would seem that the intent was rather to exclude third parties such as Novozymes than to include them. Such an intention should not be ignored, or worse, thwarted by the application of the Court’s rules of practice.
Criteria for leave to intervene
[9] The parties are ad idem that the following considerations apply to a determination of whether to grant intervenor status:
“1) Is the proposed intervenor directly affected by the outcome?
2) Does there exist a justiciable issue and a veritable public interest?
3) Is there an apparent lack of any other reasonable or efficient means to submit the question of the Court?
4) Is the position of the proposed intervenor adequately defended by one of the parties to the case?
5) Are the interests of justice better served by the intervention of the proposed third party?
6) Can the Court hear and decide the cause on its merits without the proposed intervenor?”
(See: Pfizer Canada Inc. v. Canada, supra; C.U.P.E. v. Canadian Airlines International Ltd., [2000] F.C.J. No. 220 (F.C.A.)).
[10] Is Novozymes directly affected by the outcome?
[11] For the reasons set out above, I discount Novozymes’ argument to the effect that its involvement in the re-examination process gives it status as a person “directly affected” by the outcome of this appeal by analogy to the summary process of s. 45 of the Trade Marks Act. The Court of Appeal’s decision stands as a conclusive determination that Parliament’s intention to afford or recognize Novozymes’ interest and involvement in the process ended when the Board determined that substantial questions of patentability were raised.
[12] While there is a dispute engaged between Genencor and the Commissioner of Patents in this application as to the extent to which Novozymes’ representations in the second stage of the process were considered and if so, the effect thereof on the lawfulness of the Board’s decision, Novozymes has no interest in the determination of that question, in view of the aforementioned determination that Parliament had not intended its participation.
[13] Novozymes’ interest in the outcome is therefore confined to the interest it may have as the alleged owner of the Rasmussen application, on the basis of which the Board determined that the patent’s claims were anticipated. Novozymes submits that such an interest would be sufficient to give it standing to commence an impeachment action pursuant to s. 60(1) of the Patent Act. That may be the case, even though Genencor contests this. However, and whatever the merits of Novozymes’ contention that its interest as owner of the Rasmussen application would be sufficient in an impeachment action, it remains that Novozymes’ interest is a purely economic one. Such an interest may be recognized as sufficient for the purpose of s. 60 of the Patent Act, but for the purpose of obtaining intervenor status, a would-be intervenor must show a direct legal interest, distinct from an economic interest: Apotex Inc. v. Attorney General of Canada, [1986] 2 F.C. 233.
[14] Here, the determination as to the patentability of Genencor’s claims, in the context of this administrative appeal, can have no determinative effect on any of Novozymes’ legal rights or remedies arising out of the Rasmussen application. Conversely, allowing that Novozymes has a legal interest in the administrative determination of the patentability of Genencor’s claim justifying its intervention on this appeal could lead to troubling issues and consequences in the event Genencor’s appeal were successful: The appeal herein is engaged on the limited grounds and evidence included in the re-examination record; even if Novozymes succeeded in opening this appeal up to include prior art submitted to the Commissioner of Patent in the initial stages of the review, it remains a limited enquiry as to anticipation and obviousness. If it is accepted that the Court’s determination on this appeal affects or determines Novozymes’ rights, would Novozymes not then be bound, in future proceedings, by any determination to the effect that the Genencor patent is not anticipated or rendered obvious by the Rasmussen application or other cited prior art? Novozymes of course took the position that even if granted leave to intervene in these proceedings, any adverse decision would not limit its rights in a subsequent impeachment action. This confirms to me that Novozymes’ legal interests are not affected by this appeal.
[15] Does there exist a justiciable issue and a veritable public interest?
[16] Genencor appears to concede the existence of a justiciable issue, but contests the existence of a veritable public interest. I agree. Novozymes relies on the general statement that there is a public interest in ensuring that untenable or invalid intellectual property registrations are not maintained. That may be so and may justify interventions by some third parties in some circumstances, where the issues to be determined go to the interpretation of legislation or issues of principle, but Novozymes has not suggested that any such issues arise in this appeal with respect to the correctness of the Board’s determination of anticipation. As far as the record before me suggests, the issues involved in this appeal are fairly common questions involving the application of known legal principles to the facts of the case. There is no public interest involved in the subject matter of Novozymes’ proposed intervention.
[17] Is there an apparent lack of any other reasonable or efficient means to submit the question to the Court?
[18] So far as the issue of interest to Novozymes is concerned, being the patentability of the claims, an impeachment action under s. 60 of the Patent Act imposes itself as the appropriate vehicle to submit the question to the Court. Novozymes’ contention that such a process is too expensive and cumbersome and that intervention is the only means to achieve a summary process akin to s. 45 of the Trade Marks Act as intended by Parliament is, for the reasons set out above, rejected.
[19] Is the position of the proposed intervenor adequately defended by one of the parties in the case?
[20] The record shows that the only other party to this appeal, the Commissioner of Patents, does not intend to defend the substantive issue of whether the patent claims are anticipated by the Rasmussen application.
[21] The Commissioner of Patents has stated that his decision is based on the principle that it is inappropriate for the Commissioner to defend his own decision on the merits, as stated in the Federal Court of Appeal’s decision in Genex Communications Inc. v. Canada (Attorney General), [2005] F.C.J. No. 1440 (F.C.A.). I am not convinced that the principle cited applies so absolutely or sweepingly in an appeal such as the present, nor do I need to make a determination in that respect. Whatever the reason for the Commissioner’s decision not to defend that question, I am not convinced that the absence of a defence as to the correctness of the Board’s decision is a sufficient consideration in this instance to allow Novozymes’ intervention.
[22] As mentioned above, the re-examination process set out in sections 48.1 to 48.5 of the Patent Act has much in common with the patent application examination process under the Patent Act. In both processes, Parliament appears to have, quite deliberately, contemplated an appeal process whereby a right of appeal is conferred solely on the unsuccessful applicant or patentee, without an identifiable respondent other than the Commissioner of Patents. Accordingly, it is to be presumed that the Commissioner’s role as a Respondent, as limited or restricted as it may be by the principles in Genex, is nonetheless sufficient, combined with the applicable standards of appellate review and the reasons articulated in the decision under appeal, to stand as adequate defence to the substantive merits of the decision.
[23] I also note that in appeals of the refusal of a patent, the Commissioner of Patents has, in the past, taken vigorous defensive positions where he judged that the appeal raised matters of public importance: See for example: Monsanto Co. v. Commissioner of Patents, (1979), 42 C.P.R. (2d) 161, Ciba-Geigy AG v. Commissioner of Patents, (1989), 25 C.P.R. (3d) 257 and Commissioner of Patents v. President and Fellows of Harvard College, [2002] 4 S.C.R. 45. Accordingly, I find that the fact that there will be no party on the appeal to actively defend the merits of the Board’s decision does not constitute a factor justifying granting leave to Novozymes to intervene in this case.
[24] Novozymes further argues that, were it granted leave to intervene, it would not merely support the correctness of the Board’s underlying decision, but would also add to the record before the Court additional portions of the record of the re-examination (which it claims Genencor intentionally omitted) concerning other prior art submitted by Novozymes. Novozymes submits that this other evidence is relevant and necessary to the appeal, in that it would allow the Court to fulfil its role on appeal, not merely to review the correctness of the reasons given by the Board, but also to assess whether the ultimate conclusion reached by the Board would in any event have been justified and correct based on the other prior art and evidence before it.
[25] There are several flaws in Novozymes’ argument. First, it incorrectly assumes that this additional evidence was considered but not ruled upon by the Board in reaching its decision, and that it can be used to support or justify the Board’s decision on other grounds. The record before me shows clearly – whether the Board was procedurally permitted to do so or not – that the Board effectively rendered its decision in two stages, and that it in fact concluded that the other prior art did not render the claims unpatentable.
[26] The Board’s initial decision on the first stage of the re-examination process, dated September 3, 2004, clearly lists two applications (including Rasmussen) and three publications as prior art, explains why that prior art raises a substantial new question of obviousness and seeks Genencor’s comments. Genencor replied, addressing all prior art. On May 9, 2005, referring to Genecor’s comments, the Board advises that it “has determined that the request still raises a substantial new question of patentability”. It then set out only the Rasmussen application as prior art, discusses why that prior art raises substantial questions, and seeks Genencor’s comments. Clearly, the Board’s letter constitutes a determination that it has been satisfied by Genencor’s earlier representations respecting the other prior art, and that the only prior art which still raises a substantial questions is Rasmussen. On November 5, 2005, the Board issued the decision under appeal, again clearly listing and discussing only, as prior art brought to the Board’s attention and raising a substantial question, the Rasmussen application.
[27] It seems to me that the decision under appeal is fully contained in the November 16, 2005 decision, considering only unpatentability on the basis of anticipation by Rasmussen. A decision had already been made, in May 2005, that the patent would not be cancelled on the basis of the other prior art cited by Novozymes, as that prior art did not anticipate or render obvious the claims of the patent. Thus, that other prior art does not, in my view, form part of the record of the decision, and even as an intervenor, Novozymes could not introduce it in the record of this appeal.
[28] Furthermore, to allow Novozymes to intervene so as to introduce that previously discounted prior art as alternative grounds to support the Board’s ultimate conclusion would be tantamount to allowing Novozymes to institute a cross-appeal from the Board’s determination that certain prior art submitted does not warrant the cancellation of the patent. It would give Novozymes, by way of leave to intervene, the very rights that the legislative scheme expressly denies it.
[29] Finally, even if it were arguable that the other prior art references formed part of the record and could be considered by this Court on appeal, the Commissioner of Patents, as respondent, would be the most appropriate person to raise and defend this argument, even under the strictures of the Genex principles. The Commissioner surely has a clear public interest duty in ensuring that the record placed before the Court on appeal is complete and accurate and the Commissioner is the person best placed to do so. The record before me shows that the Commissioner of Patents reviewed and approved the content of the appeal book prepared by Genencor, clearly indicating that it considers the record to be complete.
[30] Are the interests of justice better served by the intervention of the proposed third party?
[31] The only argument submitted by Novozymes on this criteria is based on comments made by the Court in Canadian Schenley Distilleries Ltd. v. Canada’s Manitoba Distillery Ltd., (1975), 25 C.P.R. (2d) 1, and Bally Schuhfabriken AG/Bally’s Shoe Factories Ltd. v. Big Blue Jeans Ltd./Ltée, (1992), 41 C.P.R. (3d) 205, about the difficulties faced by a Judge on appeal of a decision where no party appears to defend its merits. While the Court’s work may be made easier by the intervention of an active respondent, Novozymes’ counsel has not drawn my attention to any case where the desirability of having an actively involved respondent was considered as justifying granting intervenor status.
[32] Furthermore, and as discussed above, it appears that Parliament judged the Commissioner of Patents to be a sufficient opposition to an appeal of a re-examination decision. As was noted in Apotex Inc. v. Canada (A.G.), supra, the Rules of practice of the Court should not be applied so as to create a precedent whereby intervention by third parties will almost automatically be required in a process where Parliament has not contemplated their intervention:
“[11] (…)Applying this to the circumstances of the present case, giving Pfizer the status to intervene as a defendant might well require a general conclusion that the Minister of National Health and Welfare cannot adequately represent the owner of any proprietary interest in pharmaceutical products when an application is before the Minister for the licensing of a similar generic product, and that in all such cases the pharmaceutical firm having proprietary interests in the original product should be made a party-defendant in any application by another party for the licensing of a similar or competing product. As already stated, the statute does not so require, and the Court should not create new law by application of a rule of practice to require that such a party be added as a defendant. While Pfizer of course argues that it is only seeking to intervene on the facts of this particular case, in which it contends that the Minister has not properly applied the Regulations in considering Apotex's application, a finding favourable to Pfizer on the present motion would create a precedent which would likely lead to a multitude of similar applications in almost every case where a competitor seeks a notice of compliance to market as a generic drug a product similar to that of the originator of it.”
[33] I therefore find that the interest of justice will not be served by granting Novozymes leave to intervene.
[34] Can the Court hear and decide the cause on its merits without the proposed intervenor?
[35] I have no hesitation in answering this last question in the affirmative. As mentioned above, while the Court’s work would be made easier by the active involvement of a respondent, such an involvement is not necessary for the Court to fulfil its role in this matter.
Conclusion
[36] I therefore am not satisfied that Novozymes has established sufficient grounds to be granted intervenor status in this matter.
ORDER
IT IS ORDERED THAT:
1) Novozymes’ motion is dismissed, with costs to Genencor.
“Mireille Tabib”
Prothonotary
APPENDIX
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48.1 (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee.
(2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.
(3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request.
48.2 (1) Forthwith after receipt of a request for re-examination under subsection 48.1(1), the Commissioner shall establish a re-examination board consisting of not fewer than three persons, at least two of whom shall be employees of the Patent Office, to which the request shall be referred for determination.
(2) A re-examination board shall, within three months following its establishment, determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request for re-examination.
(3) Where a re-examination board has determined that a request for re-examination does not raise a substantial new question affecting the patentability of a claim of the patent concerned, the board shall so notify the person who filed the request and the decision of the board is final for all purposes and is not subject to appeal or to review by any court.
(4) Where a re-examination board has determined that a request for re-examination raises a substantial new question affecting the patentability of a claim of the patent concerned, the board shall notify the patentee of the determination and the reasons therefore.
(5) A patentee who receives notice under subsection (4) may, within three months of the date of the notice, submit to the re-examination board a reply to the notice setting out submissions on the question of the patentability of the claim of the patent in respect of which the notice was given.
48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply within three months after notice is given under subsection 48.2(4), a re-examination board shall forthwith cause a re-examination to be made of the claim of the patent in respect of which the request for re-examination was submitted.
(2) In any re-examination proceeding under subsection (1), the patentee may propose any amendment to the patent or any new claims in relation thereto but no proposed amendment or new claim enlarging the scope of a claim of the patent shall be permitted.
(3) A re-examination proceeding in respect of a claim of a patent shall be completed within twelve months of the commencement of the proceedings under subsection (1).
48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a patent, the re-examination board shall issue a certificate
· (a) cancelling any claim of the patent determined to be unpatentable; · (b) confirming any claim of the patent determined to be patentable; or · (c) incorporating in the patent any proposed amended or new claim determined to be patentable.
(2) A certificate issued in respect of a patent under subsection (1) shall be attached to the patent and made part thereof by reference, and a copy of the certificate shall be sent by registered mail to the patentee.
(3) For the purposes of this Act, where a certificate issued in respect of a patent under subsection (1)
· (a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form; · (b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or · (c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term of the patent.
(4) Subsection (3) does not apply until the time for taking an appeal has expired under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the extent provided in the final judgment on the appeal. 48.5 (1) Any decision of a re-examination board set out in a certificate issued under subsection 48.4(1) is subject to appeal by the patentee to the Federal Court.
(2) No appeal may be taken under subsection (1) after three months from the date a copy of the certificate is sent by registered mail to the patentee.
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48.1 (1) Chacun peut demander le réexamen de toute revendication d’un brevet sur dépôt, auprès du commissaire, d’un dossier d’antériorité constitué de brevets, de demandes de brevet accessibles au public et d’imprimés et sur paiement des taxes réglementaires.
(2) La demande énonce la pertinence du dossier et sa correspondance avec les revendications du brevet.
(3) Sur réception de la demande, le commissaire en expédie un double au titulaire du brevet attaqué, sauf si celui-ci est également le demandeur.
48.2 (1) Sur dépôt de la demande, le commissaire constitue un conseil de réexamen formé d’au moins trois conseillers, dont deux au moins sont rattachés au Bureau des brevets, qui se saisissent de la demande.
(2) Dans les trois mois suivant sa constitution, le conseil décide si la demande soulève un nouveau point de fond vis-à-vis de la brevetabilité des revendications du brevet en cause.
(3) Le conseil avise le demandeur de toute décision négative, celle-ci étant finale et ne pouvant faire l’objet d’un appel ou d’une révision judiciaire.
(4) En cas de décision positive, le conseil expédie un avis motivé de la décision au titulaire du brevet.
(5) Dans les trois mois suivant la date de l’avis, le titulaire en cause peut expédier au conseil une réponse exposant ses observations sur la brevetabilité des revendications du brevet visé par l’avis.
48.3 (1) Sur réception de la réponse ou au plus tard trois mois après l’avis mentionné au paragraphe 48.2(4), le conseil se saisit du réexamen des revendications du brevet en cause.
(2) Le titulaire peut proposer des modifications au brevet ou toute nouvelle revendication à cet égard qui n’ont pas pour effet d’élargir la portée des revendications du brevet original.
(3) Le réexamen doit être terminé dans les douze mois suivant le début de la procédure.
48.4 (1) À l’issue du réexamen, le conseil délivre un constat portant rejet ou confirmation des revendications du brevet attaqué ou, le cas échéant, versant au brevet toute modification ou nouvelle revendication jugée brevetable.
(2) Le constat est annexé au brevet, dont il fait partie intégrante. Un double en est expédié, par courrier recommandé, au titulaire du brevet.
(3) Pour l’application de la présente loi, lorsqu’un constat :
a) rejette une revendication du brevet sans en rejeter la totalité, celui-ci est réputé, à compter de la date de sa délivrance, délivré en la forme modifiée;
b) rejette la totalité de ces revendications, le brevet est réputé n’avoir jamais été délivré;
c) modifie une telle revendication ou en inclut une nouvelle, l’une ou l’autre prend effet à compter de la date du constat jusqu’à l’expiration de la durée du brevet.
(4) Le paragraphe (3) ne s’applique qu’à compter de l’expiration du délai visé au paragraphe 48.5(2). S’il y a appel, il ne s’applique que dans la mesure prévue par le jugement définitif rendu en l’espèce. 48.5 (1) Le titulaire du brevet peut saisir la Cour fédérale d’un appel portant sur le constat de décision visé au paragraphe 48.4(1).
(2) Il ne peut être formé d’appel plus de trois mois après l’expédition du double du constat au titulaire du brevet.
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FEDERAL COURT
NAME OF COUNSEL AND SOLICITORS OF RECORD
STYLE OF CAUSE: Genencor International, Inc. v. Commissioner of Patents and Novozymes A/S
PLACE OF HEARING: Montreal, Quebec
DATE OF HEARING: January 9, 2007
REASONS FOR ORDER: MADAM PROTHONOTARY MIREILLE TABIB
APPEARANCES:
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Me Hélène D’Iorio
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Me Susan D. Beaubien
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NOVOZYMES A/S |
SOLICITORS OF RECORD:
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Gowling Lafleur Henderson LLP Montreal, Quebec
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Macera & Jarzyna LLP Ottawa, Ontario
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NOVOZYMES A/S
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John H. Sims, Q.C. Deputy Attorney General
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FOR THE RESPONDENT COMMISSIONER OF PATENTS |