Time to Revisit Exclusion of the Prosecution History in Patent Litigation
The Canadian Intellectual Property Review (CIPR) is a double-blind peer reviewed journal. It is sent to over 1,800 IPIC members at no cost and can be purchased by non-members for a fee. If you would like to browse the articles included in the CIPR, please consult our database below.
Any author, member or non-member can submit an article for consideration in the CIPR. The CIPR Editorial Board welcomes both short pieces (2,000 to 5,000 words) that may be included in the Notes section of the issue or longer, more in-depth articles. The maximum length of articles, including references, is 20,000 words. Articles may be submitted in French or English. Each article should be accompanied by a 150-word abstract.
All submissions undergo a double-blind review process: the reviewers are not given the authors' identities and the identities of the reviewers are shielded from the authors. Additionally, articles submitted must be original and must not have been previously published elsewhere.
If you would like to submit an article for an upcoming issue of the CIPR please contact admin@ipic.ca.
Canadian Intellectual Property Review
Share
Time to Revisit Exclusion of the Prosecution History in Patent Litigation
Issue: Volume 30 no 2
Author(s): Nathaniel Lipkus and Matthew Frontini
Abstract:
Canada, like many other countries, makes the entire prosecution history of a patent available to the public. Despite its existence as a certified public document, the patent prosecution history is inadmissible for the purposes of construing the claims of the patent or interpreting the scope of the patent monopoly when such issues arise in litigation. This judge-made rule is inconsistent with how legal documents are generally interpreted and out of step with how the rest of the world treats patent prosecution histories.
Canada’s exclusion of the prosecution history from consideration during patent construction is based on questionable doctrinal origins and detrimentally affects the public notice function of patents. The exclusionary doctrine has also insidiously harmed the traditional patent doctrines of obviousness and utility in Canadian law. An approach that allows the consideration of the prosecution history would improve the predictability of these doctrines and enhance the public notice and definitional functions of the patent. We suggest that the exclusionary rule perpetuated in Canadian law be relaxed and harmonized with the practices of other jurisdictions to ensure that patents reflect the bargain actually struck between the patentee and the public.
