Toronto, Ontario, August 14, 2006
PRESENT: The Honourable Mr. Justice Hughes
BETWEEN:
Plaintiff
and
GENENCOR INTERNATIONAL, INC.; DSM N.V.;
ALTIA GROUP LTD.; and ZYMOGENETICS, INC.
Defendants
REASONS FOR JUDGMENT AND JUDGMENT
[1] This is an action arising out of proceedings respecting conflicting applications for patents filed with the Patent Office. Such proceedings are increasingly rare since they pertain only to applications filed before October 1, 1989. After that date Canada changed its patent system to a “first-to-file” system common in most other countries, thus virtually eliminating the need for conflict proceedings in the Patent Office.
[2] The Patent Act RSC 1985, c. P-4 section 43 as it pertains to applications filed before October 6, 1989 provides that where two or more applications are pending before the Patent Office, the Commissioner of Patents may declare them to be “in conflict” if they appear to relate to the same invention. The Commissioner will call for evidence and submissions as to who was the first to invent the subject matter of claims “in conflict” and award to the first to invent, the claim or claims in conflict of which they were the first to invent. A party may challenge the Commissioner’s award by way of an action in the Federal Court. This is such an action. In such action the Court may do several things including confirming the Commissioner’s award, or award a claim or claims to another of the parties or award substitute claims to one or more of the parties in substitution for those considered by the Commissioner.
[3] In this action there is filed, by way of pleading, only a Statement if Claim which states that five different parties had filed applications for a patent which were put in conflict. Ten claims, C1 to C10, were the subject of the conflict, all of which were awarded by the Commissioner to the defendant, Genencor. The plaintiff, Novozymes commenced this action challenging that award asking that it be awarded the conflict claims C1 to C10 instead. No other pleading or evidence is before the Court. Other than the defendant, Genencor, no other defendant appears to have participated in this action.
[4] The plaintiff, Novozymes and defendant, Genencor now come to this Court seeking a consent judgment. The judgment sought provides, in effect, confirmation of the Commissioner’s award of claims C1 to C10 to Genencor. The Court has no problem in doing so. The judgment sought also provides that the defendant, Genencor be precluded from seeking certain other claims in its application. Again, the Court has no problem with this since Genencor is consenting to that provision.
[5] The problem arises with that part of the judgment sought wherein the plaintiff seeks to be awarded certain substituted claims. The Court cannot do this for two reasons. The first is that the plaintiff did not, in its prayer for relief in the Statement of Claim, seek such substituted claims. The second reason is that there is no evidence before this Court that could lead it to conclude that it would be proper to award such substituted claims to the plaintiff. While the Court has jurisdiction to award substituted claims, it should only do so where a proper evidentiary foundation is provided. Mere consent of the parties is not enough. Lacking such evidence, the proper forum is the Patent Office where the application may be further examined and representations made and considered as to whether these substituted claims are appropriate.
[6] Therefore, the Court makes the following Judgment upon the plaintiff’s motion for judgment made in writing and dated July 31, 2006:
JUDGMENT
On reading the consent of the plaintiff and the defendant Genencor International, Inc. it appearing that the named defendants, DSM N.V., Altia Group Ltd. and Zymogenetics, Inc. are not participating in this action and have not filed defences though duly served with the Statement of Claim herein:
THIS COURT ADJUDGES that:
1. A patent including the conflict claims as set out in Schedule “A” as Claims C1 to C10 shall issue to Genencor International, Inc.
2. Genencor International, Inc. shall cancel, and shall not re-introduce, any claims reciting Aspergillus oryzae in its application number 516,993 or in any divisional application of that application.
3. This action is otherwise dismissed without costs.
“Roger T. Hughes”
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-136-06
STYLE OF CAUSE: NOVOZYMES A/S v. GENENCOR INTERNATIONAL,
INC.; DSM N.V.; ALTIA GROUP LTD.; and
ZYMOGENETICS, INC.
CONSIDERED AT TORONTO, ONTARIO PURSUANT TO RULE 369
WRITTEN REPRESENTATIONS BY:
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Gervas W. Wall
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Jeremy E. Want
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SOLICITORS OF RECORD:
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DEETH WILIAMS WALL LLP Barristers and Solicitors Toronto, Ontario
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SMART & BIGGAR Ottawa, Ontario
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SCHEDULE “A” – Claims awarded to Genencor International, Inc.
C1 A vector for transforming a filamentous fungus comprising a DNA sequence encoding a heterologous polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said heterologous polypeptide wherein said signal sequence is capable of causing secretion of said heterologous polypeptide from said filamentous fungus.
C2 A filamentous fungus containing the vector of claim C1 and capable of secreting the heterologous polypeptide encoded by said vector.
C3 A process for making a heterologous polypeptide which comprises transforming a filamentous fungus with the vector of claim C1 and culturing the transforming fungus to express said polypeptide.
C4 A process for making a transforming filamentous fungus comprising transforming a filamentous fungus with the vector of claim C1.
C5 A process for making a polypeptide heterologous to a filamentous fungus which comprises
(a) transforming a filamentous fungus with a vector comprising a DNA sequence encoding said polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and
(b) culturing the transforming fungus to express and secrete said polypeptide.
C6 A vector for transforming a filamentous fungus comprising a DNA sequence encoding a heterologous polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and wherein said DNA sequence encoding said polypeptide is foreign to said promoter sequence.
C7 A filamentous fungus transformed with a vector comprising a DNA sequence encoding a heterologous polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and wherein said DNA sequence encoding said polypeptide is foreign to said promoter sequence.
C8 A process for making a polypeptide heterologous to a filamentous fungus which comprises
(a) transforming a filamentous fungus with a vector comprising a DNA sequence encoding said polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and wherein said DNA sequence encoding said polypeptide is foreign to said promoter sequence and
(b) culturing the transformed fungus to express said polypeptide.
C9 A process for making a transformed filamentous fungus comprising transforming a filamentous fungus with a vector comprising a DNA sequence encoding a heterologous polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and wherein said DNA sequence encoding said polypeptide is foreign to said promoter sequence.
C10 A process for making a polypeptide heterologous to a filamentous fungus which comprises
(a) transforming a filamentous fungus with a vector comprising a DNA sequence encoding said polypeptide, a DNA sequence encoding a signal sequence operably linked thereto and a DNA sequence encoding a promoter sequence operably linked to said signal sequence, said promoter sequence being functionally recognized by said filamentous fungus and including transcription and translation control sequences to cause expression of said DNA encoding said signal sequence and said polypeptide wherein said signal sequence is capable of causing secretion of said polypeptide from said filamentous fungus and wherein said DNA sequence encoding said polypeptide is foreign to said promoter sequence and
(b) culturing the transformed fungus to express and secrete said polypeptide.