Commissioner's Decision No. 1328

This decision relates to a refusal by the Examiner to issue a patent on the basis of obviousness double patenting. The within application is a divisional application and there are two further divisional applications issued from the same parent patent. The application relates to a metered dose inhaler for fluticasone propionate.

In conducting the analysis for double patenting, the Examiner excluded certain elements from the claims on the basis that they were non-essential and added other elements on the basis that they are found in the description. The Patent Appeal Board (PAB) indicated that finding an element to be non-essential only because it is known in the art is not supported by the jurisprudence, and to the extent that the Examiner found the elements to be non-essential for this reason, the PAB did not agree. The PAB presumed all elements to be essential for the double patenting analysis.

The PAB considered several preliminary issues. In particular, the PAB found that double patenting could exist even though the claims of the application expire on the same date as the other divisional patents and the parent patent. The PAB found that, notwithstanding that the NOC Regulations have been amended so that a second person does not need to address any patent that has not yet been added to the Patent Register at the time of filing its submission for approval, a patent holder should not be able to receive additional patents. The PAB also found that, while double patenting is to be based on a comparison of the claims, claims are to be construed in accordance with the principles of purposive construction, which includes taking into account the specification as a whole.

The PAB found that the claims of the divisional application were not patentably distinct from the claims of the cited patents and the Commissioner of Patents refused to grant the patent.