CASE: Bayer Schering Pharma Aktiengesellschaft v. Canada (Attorney General) (Federal Court)

NATURE OF CASE: Obviousness double patenting – Application by way of appeal – Patent Act, s. 41

SUCCESSFUL PARTY: The Attorney General of Canada

DATE OF DECISION: December 8, 2009


On December 8, 2009, the Federal Court dismissed an appeal by Bayer of a decision of the Commissioner of Patents refusing to grant a patent for Patent Application No. 508,336 (the '336 Application) on the basis of obviousness double patenting.

The '336 Application claimed divisional status from a now issued Parent Application (the "Parent Patent") and is governed by the pre-October 1, 1989 Patent Act (the "Old Act"). Notably, as required by subsection 41(1) of the Old Act, patents for foods or medicines produced by chemical processes were only allowable when prepared by a described and claimed process. As such, while the Parent Patent claims the product produced by a process (as was required by the Old Act), the '336 Application only claims the product itself (as is now generally permitted by the legislation).

The first issue the Court considered was the appropriate standard of review for the Commissioner's decision. Bayer submitted that the standard of review should be correctness since all of the issues were questions of law. Although the Court noted that correctness has been recognized as the standard of review for questions in relation to the interpretation of the Patent Act, Boivin J. held that a reasonableness standard was appropriate in the case at bar given the Commissioner’s considerable expertise in the area of patents.

The Court then considered whether the Commissioner erred in rejecting the '336 Application on the basis of obviousness double patenting. The only issue in relation to double patenting was whether or not the impugned claims of the '336 Application were properly the subject of an obviousness double patenting objection based on the fact that they claimed the same product as the Parent Patent, only not in process-dependent form. Although Bayer referred to various decisions of the Federal Court of Appeal and Supreme Court of Canada to support its assertion that double patenting has no application when comparing a product claim with an earlier product-by-process claim, the Court was not convinced. Citing concerns about the unlawful extension of monopoly rights, Boivin J. upheld the Commissioner’s decision of obviousness double patenting in finding that there was no material difference, and therefore no inventive ingenuity, as between the product claims in the '336 Application and the product-by-process claims in the Parent Patent.


Bayer v. Canada (Attorney General) 2009 FC 1249