Practical implications of the Federal Court’s definition of “forced” divisional patent applications in NCS Multistage
In NCS Multistage Inc. v. Kobold Corporation, 2023 FC 1486, the Federal Court examined what constitutes a forced divisional patent application (as opposed to a voluntary divisional patent application).
In particular, the Federal Court examined whether two patents were forced divisions. Both divisions were made following a patent examiner’s objections for lack of unity of invention. The Federal Court found neither patent was the result of a forced division; both divisions were made voluntarily.
The decision is currently under appeal before the Federal Court of Appeal[1], but the question of forced divisional applications is not at issue.
A “forced” divisional application is protected from double patenting allegations concerning the parent patent
Under section 36[1] of the Patent Act, a patent can only be granted for one invention. If a patent application covers more than one invention, an applicant may file a divisional application (subsection 36(2) of the Patent Act) or, on the direction of the Commissioner of Patents, must do so (subsection 36(2.1) of the Patent Act).
In 1981, in Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 SCR 504, the Supreme Court of Canada indicated that patents resulting from divisional applications directed by the Patent Office are immune to double patenting attacks concerning the parent patent. According to the Supreme Court of Canada, “a patentee should not be prejudiced by enforced divisional applications.”
What constitutes a “forced” divisional application?
Prior Federal Court jurisprudence conflicts on what constitutes a forced divisional application
In Abbott Laboratories v. Canada (Health), 2009 FC 648, the patent examiner had raised a unity of invention objection, which led to the division of the patent in question. The Federal Court followed Consolboard and found that there was evidence that the divisional patent was divided out of the parent patent “at the request of the Commissioner of Patents” and should therefore not be found invalid for double patenting: “it would be unfair and inequitable to find that the ‘395 Patent should be invalidated, only because the Applicants had followed the directions of the Commissioner.”
During the patent infringement trial in Biogen Canada Inc. v. Taro Pharmaceuticals Inc., 2020 FC 651, the plaintiffs referred to the patent application at issue as a “forced divisional” (in contexts that did not concern double patenting). During the patent examination process, the examiner had raised a unity of invention objection and issued an Office Action. In response, the applicant filed a divisional application. The Federal Court found that referring to the patent as a “forced divisional” was an overstatement and the applicant’s decision to file a divisional application was voluntary, because the Patent Office’s objection was in an Office Action and not a “final action”.
In NCS Multistage, the Federal Court found that dividing an application following an examiner’s objection does not create a forced divisional application
In NCS Multistage, the Federal Court found that the double patenting allegation concerning the allegedly “forced” divisional patent (the 652 Patent) was not properly before the Court because the allegation was not included in the statement of defence and counterclaim. However, the Federal Court addressed the double patenting arguments in the alternative it was wrong on this conclusion.
The 652 Patent was the result of a division of the 636 Patent, which in turn was a division of the 676 Patent. The Federal Court examined whether each of these divisions was forced but concluded both patents were the result of voluntary divisions.
The 676 Patent was divided to form the 636 Patent following two examiner requisitions. The Federal Court found this was a voluntary division because there was no indication the divisional application was based on or in response to the examiner objections.
The divisional application for the 652 Patent was filed as a “voluntary amendment” under section 36[2] of the Patent Act following multiplicity of invention objections from the Patent Office. The Federal Court concluded it too was a voluntary divisional.
The Federal Court worried that finding otherwise would risk opening the door to misuse of the patent prosecution process, by which an applicant would file several patents in a single application and benefit from protection from double patenting after the Patent Office suggests division.
Further, the Federal Court found that only divisions made under subsection 36(2.1) of the Patent Act would be considered forced divisional applications. Divisions made under subsection 36(2) of the Patent Act are voluntary.
Earlier in the decision, the Federal Court refers to the 652 Patent and the 636 Patent as “forced” divisions, but this appears to be an error in light of the Court’s later reasoning.
Practical impacts of the NCS Multistage decision
Pursuant to the Federal Court’s decision in NCS Multistage, decisions made during patent prosecution can impact a patentee’s defence to an invalidity action alleging double patenting.
If an applicant divided their application following an examiner’s objection (as was the case in NCS Multistage), the divisional patent would likely be considered “voluntary” and would not benefit from the immunity from double patenting allegations with respect to the parent patent.
The Federal Court doesn’t specify the circumstances that would lead to a “forced” division but suggests that only a division made under subsection 36(2.1) of the Patent Act would be sufficient would be sufficient to ground the immunity from double patenting.
The Patent Office’s practice when objecting on the basis of lack of unity of invention
There are numerous steps before the Commissioner issues a Notice of Direction
According to the Manual of Patent Office Practice (MOPOP)[2], there are numerous steps between the moment an examiner identifies a lack of unity of invention and when the Commissioner issues a Notice of Direction directing the applicant to limit the claims in the application:
- The examiner notifies the applicant in an examiner’s report issued under subsection 86(2) of the Patent Rules.
- If the applicant does not limit their claims to a single invention, the examiner may refer the question to the Commissioner of Patents; however, this referral will typically only occur after the examiner has issued at least two reports.
- The application is then sent to the Unity Review Board to assess whether the Unity Review Board believes the application lacks unity of invention and this has been clearly communicated to the applicant.
- Finally, the Commissioner reviews the application and, if the application lacks unity of invention, the Commissioner will issue a Notice of Direction to the applicant under the authority of subsection 36(2.1) of the Patent Act directing that the claims be limited to one invention only.
The Patent Office’s practice is not to issue a Final Action if an application lacks unity of invention
According to the MOPOP, the Patent Office’s practice is that the referral to the Commissioner does not take the form of a Final Action.
Otherwise, if the applicant was to limit their claims to one invention only, the Patent Rules would require the examiner to withdraw the rejection and would result in allowing the application, which hasn’t been fully examined. Furthermore, if the Commissioner concluded that the application lacked unity of invention, the Patent Rules would preclude any further amendment to the application.
A copy of the decision may be found here.
Footnotes
[1] Federal Court of Appeal File No. A-309-23
[2] Manual of Patent Office Practice (MOPOP), s. 21.07 (last modified in October 2019) and s. 21.07.06 (last modified in November 2013).