Product Claims Constitute Double Patenting Under the Old Act, When Product-by-Process Claims Have Been Granted in the Parent Patent
Bayer Schering Pharma Aktiengesellschaft v. Canada (Attorney General), 2009 FC 1249 (Boivin, J.)

December 8, 2009

Gunars A. Gaikis and Jeremy E. Want for the Applicant
F. B. (Rick) Woyiwada for the Respondent

Bayer Schering Pharma Aktiengesellschaft (“Bayer”) appealed a decision of the Commissioner of Patents (“the Commissioner”) in which the Commissioner refused to grant a patent on Patent Application No. 508,336 (“the Application”).

The Application was filed as a divisional application of a “Parent Application” which issued as the “Parent Patent.” The Parent Patent claimed a process for preparing a product having a defined chemical structure, as well as the product when produced by the claimed process.  The Application claimed a compound having the same chemical structure as the product claimed in the Parent Patent, but without any limitation of production by a particular process. 

The Application, and therefore the appeal, was governed by the Patent Act as it read immediately before October 1, 1989 (“the Old Act”), which did not permit patents for food or medicines produced by chemical methods, except when prepared by a described and claimed process. 

The Commissioner rejected the claims of the Application on a number of grounds, but particularly on the basis of “obviousness double patenting.” 

Before considering the issue of double patenting, the Court first considered the standard of review appropriate to a decision of the Commissioner and determined that the standard for the case at bar was reasonableness, notwithstanding Bayer’s submissions that the appropriate standard was correctness. The Court primarily based its determination upon the holdings of Dunsmuir v. New-Brunswick (2008 SCC 9 (CanLII), 2008 SCC 9, [2008] 1 S.C.R. 190) and Canada (Minister of Citizenship and Immigration) v. Khosa, (2009 SCC 12 (CanLII), 2009 SCC 12, [2009] 1 S.C.R. 339), and concluded that, in light of the Commissioner’s specialized expertise in the patent area, decisions of the Commissioner would not be reversed in the absence of palpable and overriding error.

Upon application of this standard of review, the Court considered the leading case on double patenting (Whirlpool Corp. v. Camco Inc., 2000 SCC 67 (CanLII), 2000 SCC 67, [2000] 2 S.C.R. 1067), together with the test for obviousness as stated in Proctor & Gamble Co. v. Beecham Canada Ltd. (1982), 40 N.R. 313, 12 A.C.W.S. (3d) 491 (F.C.A.), and agreed with the Commissioner’s stance that the claims of a divisional application must exhibit “novelty or inventive ingenuity” over the claims of a previous patent or patent application, and that otherwise they are aspects of the same thing and are not separate inventions.  In the case at bar, because there was no material difference between the compound claimed in the Application and that granted in the Parent Patent, the Court found that the compound claims of the Application were not inventive.  The Court therefore found that double patenting existed between the Application and the Parent Patent.

The Court did not consider any other questions raised during the appeal, given its determination on the basis of double patenting.

By: Alaka Chatterjee, Gowling Lafleur Henderson LLP