ARTICLE · 21 MAY 2012

Responding In "Good Faith" Clarified In Canada

Perley-Robertson, Hill & McDougall LLP/s.r.l.

Explore more from Perley-Robertson, Hill & McDougall LLP/s.r.l.

The Canadian Federal Court of Appeal case of Corlac Inc. v. Weatherford Canada Ltd. (2011 FCA 228 [Weatherford]) has provided a welcome clarification to good faith requirements in Canadian Patent Practice.

CanadaIntellectual Property

Mark Vickers

The Canadian Federal Court of Appeal case of Corlac Inc. v. Weatherford Canada Ltd. (2011 FCA 228 [Weatherford]) has provided a welcome clarification to good faith requirements in Canadian Patent Practice.

Section 73 of the Patent Act provides, in part, that:

73. (1) An application for a patent in Canada shall be deemed to be abandoned if the applicant does not (a) reply in good faith to any requisition made by an Examiner in connection with an examination, within six months after the requisition is made or within any shorter period established by the Commissioner;

In interpreting S. 73(1) of the Patent Act, an earlier line of cases of the Federal Court (i.e., G.D. Searle & co. v. Novopharm Ltd., 2007 FC 81, 56 CPR (4th)1 and Lundbeck Canada Inc. v. Ratiopharm Inc, 2009 FC 1102) had surprised the patent community. The Federal Court held that submissions to the Patent Office made during the prosecution of an application, which were judged by the Court not to

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Trademark Owner Who Failed To File Evidence In Expungement Proceeding Has Registration Reinstated On Appeal

CanadaIntellectual Property

Oyen Wiggs Green & Mutala

Comparative Advertising Online: When SEO And Social Media Tactics Create Trademark Risks

CanadaIntellectual Property

What’s The Misuse? Defence Of Copyright Misuse Survives Further Motion To Strike In Millennium Funding v. Bell Canada

CanadaIntellectual Property

A Court Order Is Not A Suggestion: Federal Court Finds Counterfeiter In Contempt

CanadaIntellectual Property

Intellectual Property In Canada: Protecting And Enforcing Your IP Assets

CanadaIntellectual Property

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Intellectual Property
- Patent

Related Comparative Guides

Comparative Guide

Intellectual Property

Comparative Guide

Patent Litigation

Comparative Guide

Franchise & Licensing

Comparative Guide

Trademark Disputes

See more popular content from

Intellectual Property

Québec's Bill 96 And Trademarks: Still In Force, And Being Enforced!

The regulations affecting trademarks weren't fully in effect until 2025. More than a year later, the number of complaints against businesses has never been higher.

CanadaIntellectual Property

Licensing vs. Franchising: Understanding The Difference In Ontario

In Ontario, business owners typically consider franchising versus licensing as they plan to grow their company. Both methods promote growth through the resources of a third party, but they work in dramatically different ways.

CanadaIntellectual Property

Pacific Legal PC

CIPO Fast Tracks Critical Minerals Patents

Canada's Intellectual Property Office has introduced a new expedited examination program for patent applications in critical technology sectors. The Key Technology Expedited Program waives the advanced examination fee and promises first office action within seven months for qualifying applications related to critical minerals supply chain innovations.

CanadaIntellectual Property

Oyen Wiggs Green & Mutala

CIPO Issues Practice Notice On Redacting Postal Addresses And Removing Unrelated Documents From TDRS

The Canadian Intellectual Property Office has issued new guidance on when trademark applicants can redact postal addresses or remove documents from public records. Understanding these strict requirements and exceptional circumstances is crucial for protecting privacy while maintaining compliance with Canada's trademark registration transparency obligations.

CanadaIntellectual Property

Oyen Wiggs Green & Mutala

Patenting Innovation In Data Centres: Protecting Configurations, Cooling Technologies, And The Green Advantage

The rapid expansion of data centre infrastructure has made these facilities a focal point for technological innovation and intellectual property investment. From server configurations to advanced cooling systems, the technologies deployed inside data centres represent significant R&D expenditure and competitive advantages. Patent protection offers operators and developers opportunities to safeguard innovations...

GlobalIntellectual Property

CanLII And Caseway Reportedly Settle AI Copyright Dispute

CanLII, Canada's free legal database, and Caseway, an AI legal research platform, have reportedly reached a settlement in their copyright dispute over the use of legal case data for artificial intelligence training purposes. The resolution addresses concerns about unauthorized use of publicly available legal materials and the boundaries of AI development in the legal technology sector.

CanadaIntellectual Property

Protecting Trade Secrets Using Non-Disclosure Agreements

Recent US case law has raised the possibility that the common practice of including an expiry date in a non-disclosure agreement or "NDA" (also known as a confidentiality agreement)...

GlobalIntellectual Property

Fast-Tracking Your Patent Application In Canada: CIPO Expands The Key Technology Expedited Program

For Canadian innovators, the patenting process can seem unreasonably slow. In an effort to address this, the Canadian Intellectual Property Office (CIPO) created various procedures to expedite the examination process in Canada. Knowing which fast track options exist, when they make sense, and how to use them effectively can provide a significant commercial advantage.

CanadaIntellectual Property

Patently Absurd, Episode 20: IP, The IPO, And Canada, Eh? (Podcast)

The patent landscape is evolving as entrepreneurs and investors seek new approaches to protecting IP rights consistently across jurisdictions. Organizations like the Intellectual Property Owners Association provide forums to voice concerns, analyze issues, and advance policies aimed at accelerating innovation across borders.

GlobalIntellectual Property

Trademarks Opposition Board Moves To Digital-Only Submission Of Confidential Information

Canada's Trademarks Opposition Board has introduced new requirements for handling confidential evidence in trademark proceedings, mandating the use of Canada Post's secure digital platform.

CanadaIntellectual Property