Genencor International Inc. v. Canada (Commissioner of Patents)

Genencor International Inc. v. Canada (Commissioner of Patents)
Court (s) Database
Federal Court Decisions
Date
2008-05-15
Neutral citation
2008 FC 608
File numbers
T-262-06
Notes
Reported Decision
Decision Content
Date: 20080515
Docket: T-262-06
Citation: 2008 FC 608
BETWEEN:
GENENCOR INTERNATIONAL, INC
Appellant
and
COMMISSIONER OF PATENTS
and ATTORNEY GENERAL OF CANADA
Respondents
REASONS FOR JUDGMENT
GIBSON J.
INTRODUCTION
[1] On the 15th of April, 2004, Novozymes A/S (“Novozymes”) requested re-examination of Canadian Patent No. 2,093,422 (the “Genencor Patent”) pursuant to subsection 48.1(1) of the Patent Act[1], (the “Act”)[2]. The re-examination process described in sections 48.1 to 48.4 of the Act followed. All claims of the Genencor Patent were cancelled with the result that the Genencor Patent was deemed never to have been issued[3]. An appeal to this Court by the patentee followed pursuant to section 48.5 of the Act. The appeal was heard at Montreal on the 6th of February, 2008. The Commissioner of Patents filed only the affidavit of Murray Wilson[4], interim Chairperson of the Patent Appeal Board, on the appeal and took no part in the hearing. At the request of the Court, counsel for Genencor International, Inc. (“Genencor”) and the Attorney General of Canada (the “Attorney General”) filed further written submissions on the 6th of March, 2008, on the issue of standard of review.
[2] These are the reasons of the Court for its decision to dismiss the appeal.
THE BACKGROUND
1) The legal framework
[3] Sections 48.1 to 48.5 of the Act read as follows:
48.1 (1) Any person may request a re-examination of any claim of a patent by filing with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, and by paying a prescribed fee.
48.1 (1) Chacun peut demander le réexamen de toute revendication d’un brevet sur dépôt, auprès du commissaire, d’un dossier d’antériorité constitué de brevets, de demandes de brevet accessibles au public et d’imprimés et sur paiement des taxes réglementaires.
(2) A request for re-examination under subsection (1) shall set forth the pertinency of the prior art and the manner of applying the prior art to the claim for which re-examination is requested.
(2) La demande énonce la pertinence du dossier et sa correspondance avec les revendications du brevet.
(3) Forthwith after receipt of a request for re-examination under subsection (1), the Commissioner shall send a copy of the request to the patentee of the patent in respect of which the request is made, unless the patentee is the person who made the request.
(3) Sur réception de la demande, le commissaire en expédie un double au titulaire du brevet attaqué, sauf si celui-ci est également le demandeur.
48.2 (1) Forthwith after receipt of a request for re-examination under subsection 48.1(1), the Commissioner shall establish a re-examination board consisting of not fewer than three persons, at least two of whom shall be employees of the Patent Office, to which the request shall be referred for determination.
48.2 (1) Sur dépôt de la demande, le commissaire constitue un conseil de réexamen formé d’au moins trois conseillers, dont deux au moins sont rattachés au Bureau des brevets, qui se saisissent de la demande.
(2) A re-examination board shall, within three months following its establishment, determine whether a substantial new question of patentability affecting any claim of the patent concerned is raised by the request for re-examination.
(2) Dans les trois mois suivant sa constitution, le conseil décide si la demande soulève un nouveau point de fond vis-à-vis de la brevetabilité des revendications du brevet en cause.
(3) Where a re-examination board has determined that a request for re-examination does not raise a substantial new question affecting the patentability of a claim of the patent concerned, the board shall so notify the person who filed the request and the decision of the board is final for all purposes and is not subject to appeal or to review by any court.
(3) Le conseil avise le demandeur de toute décision négative, celle-ci étant finale et ne pouvant faire l’objet d’un appel ou d’une révision judiciaire.
(4) Where a re-examination board has determined that a request for re-examination raises a substantial new question affecting the patentability of a claim of the patent concerned, the board shall notify the patentee of the determination and the reasons therefor.
(4) En cas de décision positive, le conseil expédie un avis motivé de la décision au titulaire du brevet.
(5) A patentee who receives notice under subsection (4) may, within three months of the date of the notice, submit to the re-examination board a reply to the notice setting out submissions on the question of the patentability of the claim of the patent in respect of which the notice was given.
(5) Dans les trois mois suivant la date de l’avis, le titulaire en cause peut expédier au conseil une réponse exposant ses observations sur la brevetabilité des revendications du brevet visé par l’avis.
48.3 (1) On receipt of a reply under subsection 48.2(5) or in the absence of any reply within three months after notice is given under subsection 48.2(4), a re-examination board shall forthwith cause a re-examination to be made of the claim of the patent in respect of which the request for re-examination was submitted.
48.3 (1) Sur réception de la réponse ou au plus tard trois mois après l’avis mentionné au paragraphe 48.2(4), le conseil se saisit du réexamen des revendications du brevet en cause.
(2) In any re-examination proceeding under subsection (1), the patentee may propose any amendment to the patent or any new claims in relation thereto but no proposed amendment or new claim enlarging the scope of a claim of the patent shall be permitted.
(2) Le titulaire peut proposer des modifications au brevet ou toute nouvelle revendication à cet égard qui n’ont pas pour effet d’élargir la portée des revendications du brevet original.
(3) A re-examination proceeding in respect of a claim of a patent shall be completed within twelve months of the commencement of the proceedings under subsection (1).
(3) Le réexamen doit être terminé dans les douze mois suivant le début de la procédure.
48.4 (1) On conclusion of a re-examination proceeding in respect of a claim of a patent, the re-examination board shall issue a certificate
48.4 (1) À l’issue du réexamen, le conseil délivre un constat portant rejet ou confirmation des revendications du brevet attaqué ou, le cas échéant, versant au brevet toute modification ou nouvelle revendication jugée brevetable.
(a) cancelling any claim of the patent determined to be unpatentable;
(b) confirming any claim of the patent determined to be patentable; or
(c) incorporating in the patent any proposed amended or new claim determined to be patentable.
(2) A certificate issued in respect of a patent under subsection (1) shall be attached to the patent and made part thereof by reference, and a copy of the certificate shall be sent by registered mail to the patentee.
(2) Le constat est annexé au brevet, dont il fait partie intégrante. Un double en est expédié, par courrier recommandé, au titulaire du brevet.
(3) For the purposes of this Act, where a certificate issued in respect of a patent under subsection (1)
(3) Pour l’application de la présente loi, lorsqu’un constat :
(a) cancels any claim but not all claims of the patent, the patent shall be deemed to have been issued, from the date of grant, in the corrected form;
a) rejette une revendication du brevet sans en rejeter la totalité, celui-ci est réputé, à compter de la date de sa délivrance, délivré en la forme modifiée;
(b) cancels all claims of the patent, the patent shall be deemed never to have been issued; or
b) rejette la totalité de ces revendications, le brevet est réputé n’avoir jamais été délivré;
(c) amends any claim of the patent or incorporates a new claim in the patent, the amended claim or new claim shall be effective, from the date of the certificate, for the unexpired term of the patent.
c) modifie une telle revendication ou en inclut une nouvelle, l’une ou l’autre prend effet à compter de la date du constat jusqu’à l’expiration de la durée du brevet.
(4) Subsection (3) does not apply until the time for taking an appeal has expired under subsection 48.5(2) and, if an appeal is taken, subsection (3) applies only to the extent provided in the final judgment on the appeal.
(4) Le paragraphe (3) ne s’applique qu’à compter de l’expiration du délai visé au paragraphe 48.5(2). S’il y a appel, il ne s’applique que dans la mesure prévue par le jugement définitif rendu en l’espèce.
48.5 (1) Any decision of a re-examination board set out in a certificate issued under subsection 48.4(1) is subject to appeal by the patentee to the Federal Court.
48.5 (1) Le titulaire du brevet peut saisir la Cour fédérale d’un appel portant sur le constat de décision visé au paragraphe 48.4(1).
(2) No appeal may be taken under subsection (1) after three months from the date a copy of the certificate is sent by registered mail to the patentee.
(2) Il ne peut être formé d’appel plus de trois mois après l’expédition du double du constat au titulaire du brevet.
[4] Sections 48.1 to 48.5 were added to the Act in 1987[5]. A cursory review of the Parliamentary history indicates that no particular reference was made in Parliament or in Parliamentary Committee
to these provisions. That being said, the purpose of the provisions would appear to be to provide a relatively summary and inexpensive alternative to a full-blown impeachment process by litigation or an opportunity for a patentee to have the Patent Office reconsider the claims of an issued patent.
[5] This would appear to be the first appeal to be considered by this Court from the re-examination process.
2) The patent at issue
[6] The following description is extracted with little modification from Genencor’s amended memorandum of fact and law, paragraphs 13 to 23, which paragraphs are uncontradicted before the Court.
[7] The Genencor Patent is directed to a detergent composition comprising a fungal cellulase which imparts improvements in softening, colour retention/restoration, feel and strength loss to cotton-containing fabrics washed in a wash medium containing such a composition. Cellulases are known in the art to be useful in detergent compositions for the purposes of enhancing the cleaning ability of the composition, for use as a softening agent and for improving the feel of cotton fabrics.
[8] Cellulases are enzymes that break down or hydrolyze cellulose, which is a long chain polymer, into smaller units. These smaller units include glucose, cellobiose and cello-oligosaccharides and the like.
[9] Cellulases are produced in fungi and bacteria. Those produced in fungi have been extensively used because certain fungi produce a complete cellulase system capable of degrading crystalline forms of cellulose and because they can be produced in large quantities.
[10] The softening and colour restoration properties of cellulase have been attributed to the endoglucanase components in cellulase compositions but the exact mechanism of action of the cellulase is not fully understood.
[11] While the benefits associated with the use of cellulase in detergent components are known, there also exists an important drawback. The main disadvantage is that cellulase degrades cotton-containing fabrics resulting in a loss of strength of the fabrics. This has led to a reluctance to use cellulase compositions in commercial detergent applications.
[12] Genencor alleges that it has found that fungal cellulase compositions containing endoglucanases can be used in detergent compositions and if the cellulase compositions contain less than about 5 weight percent of CBH I type components, the detergent compositions will impart less strength loss to the fabrics.
[13] As disclosed in the Genencor Patent, the amount of cellulase, and not the relative rate of hydrolysis of the specific enzymatic components to produce reducing sugars from cellulose impart the desired detergent properties to the cotton-containing fabrics, namely colour restoration, improved softening and improved cleaning to detergent compositions. As such, the claims of the Genencor Patent specify that the detergent composition comprises from about 0.01 to about 5 weight percent of a fungal cellulase composition based on the weight of the detergent composition. The cellulase composition itself comprises one or more EG type components and less than about 5 weight percent of CBH I type components based on the weight of protein in the cellulase composition.
[14] The Genencor Patent, comprising twenty-one (21) claims, has detergent composition claims (claims 1 to 7), method for enhancing the softness of a cotton-containing fabric claims (claims 8 to 14) and method for retaining/restoring the colour of a cotton-containing fabric claims (claims 15 to 21). There is one independent claim for each of these three (3) different sets of claims.
3) Novozymes’ request for re-examination
[15] As previously indicated in these reasons, a firm of patent and trade-mark agents filed on behalf of Novozymes a request for re-examination of the Genencor Patent, dated the 15th of April, 2004. In the request, Novozymes relied on eight (8) items of prior art of which the first was Canadian Patent Application Number 2,082,279 to Rasmussen et al., filed the 8th of May, 1991 (the “Rasmussen application”). In summary, and in light of the prior part submitted, Novozymes submitted that:
1. The subject matter of claims 1-21 of the [Genencor] patent was disclosed by Rasmussen in the Rasmussen application which was filed in Canada before the Genencor patent’s claim date contrary to paragraph 28.2(1)(c) of the Patent Act.
2. Claims 1 to 21 of the Genencor patent are obvious in view of Rasmussen.
3. Claims 1 to 21 of the Genencor patent are anticipated in view of another reference.
4. Claims 1 to 21 of the Genencor patent are obvious in view of a combination of two other references.
5. Claims 1 to 21 of the Genencor patent are obvious in view of a combination of four other references.
6. Claims 1 to 21 of the Genencor patent are obvious in view of a combination of five references including the Rasmussen application.
7. Claims 3 to 7, 10 to 14 and 17 to 21 of the Genencor patent are anticipated and/or obvious in view of one other reference.
[16] The Novozymes’ submission concludes:
In view of the above submissions, a substantial new question of patentability affecting each of claims 1 to 21 in the [Genencor patent] has been raised, and it is submitted that all of the claims are unpatentable and should be cancelled.
4) The parties
[17] Genencor International Inc. is the patentee of the patent at issue and the Appellant to this Court. The Commissioner of Patents is, through the re-examination board (the “Board”), the source of the decision under appeal.
[18] Notably, Novozymes, the initiator of the request for re-examination, is not a party. That issue, that is to say, the appropriateness of Novozymes being a party to this appeal, was settled by the Federal Court of Appeal in Genencor International, Inc. v. Canada (Commissioner of Patents)[6]. In that decision, the Court quoted Rule 338(1) of the Federal Courts Rules[7] which reads as follows:
338. (1) Unless the Court orders otherwise, an appellant shall include as a respondent in an appeal
338. (1) Sauf ordonnance contraire de la Cour, l’appelant désigne les personnes suivantes à titre d’intimés dans l’appel :
(a) every party in the first instance who is adverse in interest to the appellant in the appeal;
a) toute personne qui était une partie dans la première instance et qui a dans l’appel des intérêts opposés aux siens;
(b) any other person required to be named as a party by an Act of Parliament pursuant to which the appeal is brought; and
b) toute autre personne qui doit être désignée à titre de partie aux termes de la loi fédérale qui autorise l’appel;
(c) where there are no persons that are included under paragraph (a) or (b), the Attorney General of Canada.
c) si les alinéas a) et b) ne s’appliquent pas, le procureur général du Canada.
The Court concluded that Novozymes was not a “party in the first instance” within the meaning of Rule 338(1)(a). It wrote at paragraphs 7 to 9 of its reasons:
Re-examination pursuant to sections 48.1 to 48.5 of the Act is a two-step process. Both stages do not involve the same parties. The first stage involves the filing of a request by a requestor…, the establishment of a re-examination board by the Commissioner in response to this request… and the preliminary decision by the re-examination board as to whether the request raises a substantial new question of patentability… .
The second stage follows the re-examination board’s determination that a substantial new question of patentability is raised… . The requestor is not a party to this second phase of the process. Only the re-examination board and the patentee are parties to that phase. Only the patentee is given notice of such determination… and is entitled to make submissions…, to propose amendments to the patent… and to receive a copy of the certificate… . Only the patentee is given a right of appeal… .
Although Novozymes, as the requestor, triggered the re-examination process, it did not and could not participate in the second stage of the re-examination process.
[references to provisions of sections 48.1 to 48.5 of the Act omitted]
In light of the above, and particularly given the determination by the Commissioner of Patents not to take an active part in the appeal, pursuant to Rule 338(1)(c), the Attorney General of Canada was added as a Respondent. While the Attorney General, as Respondent, chose not to intervene on the “merits” of the decision under appeal, he did “defend the position that both the process provided by statute and the principles of natural justice were respected in the present instance”. The failure of the Court to have before it a respondent speaking to the merits of the decision under appeal resulted in serious difficulties for the Court. In reality, the Court heard only “one side” of the issues on the merits. More will be said about that later in these reasons.
[19] Novozymes sought leave to be added as an intervener in the appeal. That motion was rejected by Prothonotary Tabib. Prothonotary Tabib’s Order was appealed[8]. The appeal was rejected by Justice Hansen[9].
5) The re-examination process
[20] As earlier noted, by correspondence dated the 15th of April, 2004 and filed the 22nd of April, Novozymes requested re-examination of the Genencor Patent in accordance with subsection 48.1(1) of the Act. As required by subsection 48.2(1) of the Act, the Commissioner of Patents established a three-member re-examination board (the “Board”) and referred Novozymes’ requests to it for determination. Notice of the request for re-examination of the Genencor Patent was given by the Commissioner to Genencor by letter dated the 10th of June, 2004 enclosing a copy of the request for re-examination and a copy of the prior art submitted in support of the request[10]. The Commissioner noted that the request fulfilled the requirements of subsections 48.1(1) and (2) of the Act. He further advised that a re-examination board had been established and advised of the names of the members of that Board. Finally, he advised:
Within three months of the date hereof, the Re-examination Board will give notice of its determination as to whether a substantial new question of patentability is raised by the request.
[21] By letter dated the 3rd of September, 2004[11], the members of the Board advised Genencor in part:
In summary, the Board is of the opinion that the prior art submitted by the requestor raises a substantial new question of obviousness with respect to claims 1 to 21.
Under subsection 48.2(5) the patentee may, within three months of the date of the notice, respond with a submission to the Board on these questions of patentability raised by the Board.
It is noteworthy that only the issue of obviousness survived the preliminary review.
[22] Genencor responded with extensive submissions under date of the 3rd of December, 2004[12]. It concluded:
The prior art referred to by the Board neither discloses nor suggests (alone or in combination) the novel detergent compositions claimed in the Genencor patent or methods for enhancing softness of cotton-containing fabric or retaining/restoring the colour of cotton-containing fabrics using same. The applied references merely teach what was already known in the art, endoglucanases or components having endoglucanase activity and their use in detergent compositions. However, there is no teaching or suggestion in such references of limiting the amount of CBH I type components to less than 5 weight percent, which improvement results in decreased strength loss of the fabric upon washing.
Accordingly, it is respectfully requested that the rejection of claims 1 to 21 on the grounds of anticipation and obviousness be withdrawn.
[23] Under date of the 9th of May, 2005, the Board again communicated with Genencor[13]. It concluded:
…The Board maintains that Rasmussen raises a substantial new question of patentability of the claimed invention with respect to claims 1 to 21.
It is noteworthy that the Board once again narrowed its concern, in this case to the Rasmussen application reference, but no longer restricted its reliance on that reference to obviousness.
[24] Genencor once again availed itself of the opportunity to respond. By communication dated the 9th of August, 2005[14], it concluded:
It is respectfully submitted that claims of the Genencor Patent, when properly construed, do not lack novelty in view of Rasmussen as Rasmussen does not disclose a detergent composition comprising a surfactant or a mixture of surfactants and a fungal cellulase composition comprising one or more EG type components and less than about 5 weight per cent of CBH I type components, as defined in the Genencor Patent. Accordingly, it is respectfully requested that the rejection of claims 1 to 21 on the ground of anticipation by Rasmussen be withdrawn.
[emphasis added]
[25] In the affidavit of Murray Wilson before the Court, Mr. Wilson who was at all relevant times chairman of the re-examination board the decision of which is here at issue, attested:
During the re-examination process, any correspondence that was sent to the patentee was also sent as a copy to the requestor [Novozymes] as a courtesy. The requestor is routinely copied on correspondence from the re-examination board to the patentee to indicate that the re-examination process is ongoing. At no time after the re-examination process was initiated was correspondence directly addressed to the requestor nor was the requestor invited to respond to any courtesy correspondence that it received from the re-examination board.
During various stages during the re-examination process, the requestor did submit additional material at their own discretion. Receipt of this material was never confirmed in writing to the requestor by the re-examination board and generally, as any submissions relating to any patent file, these were placed in the patent file.
The re-examination board did not consider the additional material in the subsequent submissions by the requestor. The Office has no control over the submissions of any person and routinely receives material, which is placed in the patent file without further consideration. Under section 10 of the Patent Act, there is a requirement for documents filed in connection with a patent to be open to public inspection in the Office, irrespective of any further consideration.
[emphasis added]
[26] In the course of cross-examination on his affidavit, Mr. Wilson provided assurances that none of the submissions of Novozymes provided after the initial request for re-examination were taken into account or, indeed, even read, by any member of the Re-examination Board.
6) The make-up of the Board and related general practices
[27] As earlier indicated in these reasons, Murray Wilson, the affiant on behalf of the Respondent Commissioner of Patents, chaired the Board. In his affidavit sworn the 24th of November, 2006, he attested that he was “…currently employed as the interim Chairperson of the Patent Appeal Board with the Patent Office…”, a part of the Canadian Intellectual Property Office, that he had been employed as a member of the Patent Appeal Board since 1992, and that he began his employment as a Patent Examiner with the Patent Office in 1971. During his cross-examination on his affidavit, Mr. Wilson attested that, since 1971, he had always been employed within the Intellectual Property Office and that:
The Patent Appeal Board has responsibility for administering the re-examination process and the tradition, I guess, has been, in members of the Patent Appeal Board, [sic] is the chairman of the Re-examination Board and two (2) examiners from the examination branch are the other two (2) members, people generally with more expertise in that particular field.
He attested that, over the four (4) or five (5) years preceding his cross-examination he had been involved in every re-examination that had taken place and that, since the enactment of the re-examination procedure, there had been forty-seven (47) re-examinations. He continued by indicating that, to the date of his examination, all members of re-examination boards had been appointed from within the Intellectual Property Office and that no such Board had included an examiner who had examined the patent application leading to the patent that was under re-examination[15]. Finally, at page 465, he attested that in each case with which he was familiar, the report of a re-examination board was written by a member of the Board, other than the Chairman of the Board.
7) The decision under appeal and the reasons in support of that decision
[28] The decision under appeal and the reasons in support of the decision are attached as an Annex to these reasons.
THE ISSUES
[29] In the Memorandum of Fact and Law filed on behalf of Genencor, the following issues on this appeal are identified:
1. Did the Board err in improperly construing the claims of the Genencor Patent?
2. Did the Board err in applying the improper test for anticipation or alternatively in misapplying such test?
3. Did the Board err in concluding that the Rasmussen application anticipated the claims of the Genencor Patent?
4. Did the Board err in accepting and considering the new material and evidence submitted by requester Novozymes on March 14, 2005 and September 29, 2005 after the initial request for re-examination under section 48.1 of the Act was made?
5. Did the Board breach the principles of natural justice and procedural fairness by failing to inform Genencor of the new material and evidence submitted by requester Novozymes on March 14, 2005 and September 29, 2005?
6. Did the Board breach the principles of natural justice and procedural fairness by failing to provide Genencor with the opportunity to respond to the adverse submissions made against it on March 14, 2005 and September 29, 2005?
[30] In the Memorandum of Fact and Law filed on behalf of the Attorney General, counsel described the issues the Attorney General would address in the following terms:
1. Did the Board fail to respect the procedure set out in the Patent Act and/or breach the principles of natural justice and procedural fairness in rendering its decision dated November 16, 2005?
2. Notably, did the Board have a duty to disclose any unsolicited submissions made by Novozymes notwithstanding that these submissions were not read or considered in the decision-making process?
[31] In essence, the Attorney General ignored the first three (3) issues identified on behalf of Genencor. That position is entirely consistent with the earlier indication in the Attorney General’s memorandum that he “…does not intend to intervene on the merits of this decision”. I am satisfied that Genencor’s first three (3) issues relate to the “merits” of the decision while Genencor’s last three (3) issues address matters of natural justice and procedural fairness.
[32] As earlier indicated in these reasons, at the close of hearing, I invited counsel to address the issue of standard of review in supplementary submissions. Both counsel responded to my request by filing, on the 6th of March, 2008, supplementary written submissions with those on behalf of the Attorney General obviously having been prepared first with the result that Genencor’s supplementary submissions are in the nature of responding submissions. It is slightly ironic that both sets of submissions were filed the day before the decision of the Supreme Court of Canada in Dunsmuir v. New Brunswick[16] was issued. That decision dealt extensively with the issue of standard of review, albeit in the judicial review context, not the statutory appeal context. Despite the differing contexts, the Dunsmuir decision is to some degree instructive in this context.
[33] In what follows, I will deal first with the issue of standard of review, secondly, with the issues of procedural fairness and natural justice and finally, with the issues going to the merits of the decision under appeal.
ANALYSIS
1) Standard of review
[34] Section 18.5 of the Federal Courts Act[17] reads as follows:
18.5 Despite sections 18 and 18.1, if an Act of Parliament expressly provides for an appeal to the Federal Court, the Federal Court of Appeal, the Supreme Court of Canada, the Court Martial Appeal Court, the Tax Court of Canada, the Governor in Council or the Treasury Board from a decision or an order of a federal board, commission or other tribunal made by or in the course of proceedings before that board, commission or tribunal, that decision or order is not, to the extent that it may be so appealed, subject to review or to be restrained, prohibited, removed, set aside or otherwise dealt with, except in accordance with that Act.
18.5 Par dérogation aux articles 18 et 18.1, lorsqu'une loi fédérale prévoit expressément qu'il peut être interjeté appel, devant la Cour fédérale, la Cour d'appel fédérale, la Cour suprême du Canada, la Cour d'appel de la cour martiale, la Cour canadienne de l'impôt, le gouverneur en conseil ou le Conseil du Trésor, d'une décision ou d'une ordonnance d'un office fédéral, rendue à tout stade des procédures, cette décision ou cette ordonnance ne peut, dans la mesure où elle est susceptible d'un tel appel, faire l'objet de contrôle, de restriction, de prohibition, d'évocation, d'annulation ni d'aucune autre intervention, sauf en conformité avec cette loi.
The appeal here before the Court falls squarely within the parameters of the foregoing section. The Act expressly provides in section 48.5 for an appeal to this Court from decisions of Re-examination Boards such as the decision here under appeal.
[35] I am satisfied that it is beyond doubt that the Board the decision of which is here before the Court is a decision of a federal board, commission or other tribunal made by or in the course of proceedings before that board, commission or tribunal. In the result, the decision here before the Court is not subject to review or to be restrained, prohibited, removed, set aside or otherwise dealt with, except in accordance with the Patent Act. Unfortunately, the Patent Act provides no guidance as to the circumstances under which such a decision may be restrained, prohibited, removed, set aside or otherwise dealt with by this Court. In these circumstances, I turn briefly to the guidance in place with regard to judicial review.
[36] In Mattel, Inc. v. 3894207 Canada Inc.[18], Justice Binnie, for the Court, wrote at paragraph 33:
In choosing the proper standard of review from the available options (correctness, reasonableness, or patent unreasonableness) the Court has regard to the elements of the test set out most recently in Dr. Q v. College of Physicians and Surgeons of British Columbia… . These elements have not greatly altered since U.E.S., Local 298 v. Bibeault, … where Beetz J., speaking for the Court, said at p. 1088:
…the Court examines not only the wording of the enactment conferring jurisdiction on the administrative tribunal, but the purpose of the statute creating the tribunal, the reason for its existence, the area of expertise of its members and the nature of the problem before the tribunal.
[citations and one reference, with related citation, omitted]
Dunsmuir[19] did not notably modify the nature of the inquiry but did re-identify it by substituting for the concept “pragmatic and functional analysis” the concept “standard of review analysis”[20].
a) Presence or absence of a privative clause or statutory right of appeal
[37] As earlier noted, the Act here provides a statutory right of appeal. Counsel for Genencor and the Attorney General are in agreement that, given the statutory right of appeal and the lack of guidance to the Court as to the outcomes open to it on the appeal, a more “searching” standard of review is supported by this factor. For this position, counsel cite Harvard College v. Canada (Commissioner of Patents)[21]. In that decision, dealing with the standard of review applicable to an appeal of a decision of the Commissioner of Patents to refuse a patent under section 41 of the Act, Justice Bastarache, for the majority wrote at paragraph 149:
Though it will not be determinative, the fact that the Patent Act contains no privative clause and gives applicants a broad right of appeal from the decision of the Commissioner is relevant and suggests a more searching standard of review… .
[citation omitted]
Justice Bastarache continued at paragraph 151:
The above in no way implies that decisions of the Commissioner will always be reviewed according to a correctness standard. If, for example, the question to be decided was whether or not a particular life form such as a fungus should be classified as a higher life form or as a lower life form, the Commissioner’s decision would likely be accorded deference. As noted, s. 40 of the Act states that it is the Commissioner who must be “satisfied” that a patent should not be issued. In such an instance, the Commissioner’s scientific expertise suggests that the courts defer to his decision in respect to whether he is satisfied that the life form falls within a category of patentable subject matter.
Counsel urge that the language of subsection 48.5(1) of the Act does not confer as broad a discretion on this Court as is conferred by the language of section 41 of the same Act where the Court is instructed to “hear and determine” an appeal. With great respect, I do not read as much into the difference between the language of the two (2) sections of the same Act as do counsel. I will shortly turn to the subject of “deference”. For the moment, I determine this factor to be neutral.
b) The Board’s expertise
[38] It was not in dispute before me, and given what has been said earlier in these reasons regarding the makeup of re-examination boards, I do not regard it as disputable, that re-examination boards in general and the particular Board the decision of which is here under appeal reflect considerable expertise in relation to their mandates. This factor justifies a high degree of deference to the Board’s decision.
c) The purpose of the Act and of the re-examination scheme
[39] The written submissions on behalf of the Attorney General on this factor are, I am satisfied, compelling. Counsel for Genencor takes no issue with those submissions. In the circumstances, I will simply repeat them here:
21. The purpose of the Patent Act is to “encourage invention and to regulate the issuance of patents in Canada.”
Pope Appliance Corp. v. Spanish River Pulp and Paper Mills Ltd, [1929] A.C. 269 (Canada P.C.) cited in CertainTeed Corporation v. Canada (Attorney General), 2006, FC 436 at para. 25.
22. The re-examination procedure was introduced into the Patent Act through Bill C-22, “An Act to Amend the Patent Act” enacted in 1987.
23. Bill C-22 brought a number of fundamental changes to the Patent Act. These included the substantial limitation of compulsory licences as of right, the change from “first to invent” to “first to file”, deferred examination, compulsory laying open of patent applications for public inspection, term of protection and re-examination. Of all these changes the only issue that appears to have received particular attention from Parliament was the restriction of the compulsory licensing regime for patented drugs.
24. There does not appear to be any available extrinsic evidence of Parliamentary intent that could assist this Court in characterizing the re-examination scheme. Except for some minor amendments, there is no reference to the re-examination scheme in either the Parliamentary Debates or Committee Deliberations.
25. Viewed in its statutory context, in particular in light of the fact that interested parties retain the right to launch impeachment proceedings directly before the Federal Court under s. 60 of the Patent Act, the re-examination procedure appears designed to offer an inexpensive and simplified means for third parties as well as patentees to put prior art that had not previously been considered before the Board.
26. For all practical purposes, the role of third parties in the re-examination process is analogous to their role in the original process. In particular the rights of the requestor under subsection 48.1(1) are analogous to a third party’s rights under s. 34.1 Patent Act to file prior art with respect to a pending application:
34.1(1) Any person may file with the Commissioner prior art, consisting of patents, applications for patents open to public inspection and printed publications, that the person believes has a bearing on the patentability of any claim in an application for a patent.
(2) A person who files prior art with the Commissioner under subsection (1) shall explain the pertinency of the prior art.
27. In this respect, one would expect the standard of review applicable to an appeal of a re-examination decision under s. 48.5 to be the same as the standard applicable to the appeal of an ordinary refusal under s. 41 of the Patent Act.
28. Although it might be argued that the summary process and limited participation of the requestor suggest a less rigorous review, from the perspective of the patentee, the decision is functionally equivalent to a decision of the Commissioner under s. 40 of the Act. The cancellation of a patent under re-examination has exactly the same effect as a refusal to grant after the initial examination process.
29. The limited rights on appeal of the requestor can be explained by the fact that the requestor retains the right to launch a full impeachment proceeding under s. 60 of the Act.
30. Although it seems clear that Parliament intended the re-examination procedures to be simplified and inexpensive, because of the consequences, there is no basis to infer that Parliament intended the appeal to be any less substantive than where the matter otherwise comes before the Court.
[emphasis added]
[40] It is only with the last quoted paragraph that I differ. As counsel notes, it can only be inferred from the enactment of the re-examination process that Parliament intended it to be a simplified and relatively inexpensive alternative to impeachment proceedings under section 60 of the Act. It recognizes the expertise of those who have to date been chosen to make up re-examination boards. Resort to the re-examination process does not foreclose impeachment proceedings in circumstances where it is invoked. It is only in circumstances where re-examination, as here, results in a p