Motion to Amend Pleadings in Conflict Proceedings Allowed:  Relief Based on Lack of Candour in Patent Application Prosecution Submissions Might Succeed
Mycogen Plant Science, Inc. v. Bayer Bioscience N.V., 2009 FC 1013 (Hughes, J.)

October 6, 2009

Michael Crinson and Michael Niemkiewicz for the Plaintiff, Mycogen Plant Science, Inc.
Trent Horne and Kristina Milbourn for the Plaintiff, Monsanto Technology LLC
Chris Van Barr and Martha Savoy for the Defendant, Bayer Bioscience N.V.

Mycogen Plant Science, Inc. and Monsanto Technology LLC, two of the three plaintiffs for actions arising out of conflict proceedings in the Canadian Patent Office (CPO) that had been ordered to proceed together, brought a motion to amend their pleadings. In the actions, the plaintiffs requested a re-determination of the Commissioner’s decision as to who was first to invent the subject matter of certain patent claims as under the pre-October 1, 1989 “first to invent” regime.

The proposed amendments addressed submissions by Bayer Bioscience N.V. based on an affidavit filed with CPO during its patent application’s prosecution. The plaintiffs allege that these submissions demonstrate bad faith and a lack of candour. Bayer had relied on the affidavit during the patent’s prosecution before the USPTO. Subsequently, a U.S. court had declared the patent unenforceable, holding that Bayer had submitted a knowingly false declaration within that affidavit and failed to submit negative results refuting its claims.

Hughes J. allowed the motion to amend the pleadings, subject to the order that Monsanto particularize allegations in one paragraph and remove assumptions and speculations in another. His decision is being appealed to the Federal Court of Appeal, with the Notice of Appeal filed on October 16, 2009.

Hughes J. reasoned that, provided amendments to pleadings serve the interests of justice and do not result in an injustice to the opposite party that cannot be compensated in costs, they will be allowed. On a motion to amend pleadings, the facts set out in the proposed amendments are taken to be proved. In order to succeed, the party resisting the amendments must demonstrate that it is plain and obvious that the amended allegations cannot succeed.

As the state of the law regarding conflict proceedings generally and the duty of candour in patent application prosecutions is in flux, it is neither plain and obvious that the allegations within the proposed amendments cannot succeed nor that a claim for relief or defence cannot be raised based on the plea of lack of candour pursuant to section 43(8) of the pre-October 1, 1989 version of the Patent Act, R.S.C. 1985, c. P-4. This section provides, inter alia, that in conflict proceedings, the Federal Court may determine that one of the applicants is entitled as against the others to the issue of a patent including the claims in conflict as applied for by him.

By: Eugene Derényi, Stikeman Elliott LLP