What Is the Standard of Review for Patent Litigation in Canada?
| DOI | 10.1093/jiplp/jpr216 |
| Pages | 205-210 |
| Date | 01 March 2012 |
| Year | 2012 |
| Published By | Oxford University Press |
What is the standard of review for patent
litigation in Canada?
Emir Aly Crowne*
Two standards
Since the landmark decision in Dunsmuir v New Bruns-
wick,
1
there are now two standards to be applied when
judicially reviewing the decision of an administrative
tribunal: correctness and reasonableness, patent unrea-
sonableness and reasonableness simpliciter having been
collapsed into one single category of ‘reasonableness’.
2
Questions of fact, discretion and policy (or questions
where the legal issues cannot be ‘easily separated’ from
the factual issues) will invite a review based on the
standard of reasonableness, whereas questions of law
and jurisdiction will attract a standard of correctness.
3
Patents are granted by the Commissioner of Patents.
The decision to grant a patent is an administrative de-
cision of the Commissioner.
4
It involves a mixed assess-
ment of fact and law. To be granted, a valid patent
must:
(i) consist of patentable subject matter
5
(a question
of law);
(ii) be novel
6
(a question of fact);
(iii) be inventive
7
(a mixed question of fact and law);
and
(iv) possess utility
8
(a question of fact).
Yet in patent litigation, courts have never applied ad-
ministrative law principles in determining the validity
of a patent. Courts have always proceeded on the basis
of a trial de novo to determine whether (on a balance
of probabilities)
9
the patent was valid and properly
granted by the Commissioner. Justice Johanne Gauthier
of the Federal Court drew attention to this fact in her
352 page decision in Eli Lilly et al. v Apotex Inc:
10
* This article is dedicated to my recently retired colleague Professor Charles
(Charlie) James, who taught Judicial Review for many years within the
Faculty; and to the Honourable Justice Johanne Gauthier of the Federal
Court (Canada), her obiter comment on the appropriate standard of
review for patent litigation in Eli Lilly et al. v Apotex Inc., 2009 FC 991
provided much impetus for this research. The author thanks Diya
Chopra, the University of Windsor’s BLG Research Fellow (2011), for her
research assistance, as well as the funding provided by Borden Ladner
Gervais LLP in support of that Fellowship. Email: emir@uwindsor.ca.
1 2008 SCC 9 [2008] 1 SCR 190 [Dunsmuir].
2 ibid at para 45.
3 ibid at para 51.
4 Subsection 4(1) and 4(2) of the Patent Act, RS, 1985, c P-4provide that:
The Governor in Council may appoint a Commissioner of Patents who
shall, under the direction of the Minister, exercise the powers and perform
the duties conferred and imposed on that officer by or pursuant to this Act.
The Commissioner shall receive all applications, fees, papers,
documents and models for patents, shall perform and do all acts and
things requisite for the granting and issuing of patents of invention,
shall have the charge and custody of the books, records, papers,
models, machines and other things belonging to the Patent Office and
shall have, for the purposes of this Act, all the powers that are or may be
given by the Inquiries Act to a commissioner appointed under Part II of
that Act. (emphasis added).
5 See Tennessee Eastman Co.v Commissioner of Patents [1974] SCR 111
(Can.) (denying an application for the surgical bonding of tissues);
Harvard College v Canada (Commissioner of Patents) [2002] 4 SCR 45
(holding that higher life forms are unpatentable); Schlumberger Canada
Ltd v Commissioner of Patents [1982] 1 FC 845 (CA) (holding that
computer programs per se are unpatentable).
6 Novelty is assessed on a worldwide standard.
7 Inventiveness is assessed by asking whether the non-inventive skilled
practitioner in the art would have thought the invention to be ‘obvious’
(or, would have come to the invention ‘easily and without difficulty’). If
the invention would have been ‘obvious’ to this person, no patent would
be awarded.
8 Utility generally means that the invention can be put to some legitimate,
useful industrial or commercial purpose.
9 See F.H. v McDougall, 2008 SCC 53 [2008] 3 SCR 41.
10 2009 FC 991 (affirmed on appeal 2010 FCA 240).
Journal of Intellectual Property Law & Practice, 2012, Vol. 7, No. 3 ARTICLE 205
#The Author (2012). Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpr216
The author
†Emir Aly Crowne is Associate Professor in the
Faculty of Law at the University of Windsor. He
also a barrister and solicitor in the Province of
Ontario.
This article
†In Canada, patents are administratively granted by
the Commissioner of Patents. Yet administrative
law principles have never been applied when deter-
mining the validityof a patent during litigation.
†Courts have always proceeded on the basis of a
trial de novo to determine whether (on a balance
of probabilities) the patent was valid and properly
granted.
†This paper examines the apparent tension
between the Patent Act, patent jurisprudence,
and administrative law principles in litigating the
validity of a patent.
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