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Patents - Double Patenting. NCS Multistage Inc. v. Kobold Corporation
In NCS Multistage Inc. v. Kobold Corporation (Fed CA, 2025) the Federal Court of Appeal allowed a patent appeal, here brought against a successful patent infringement counterclaim.
Here the court considers the patent concept of 'double patenting', contrasting it with that of 'obviousness':[51] The prohibition against double patenting rests on the premise that an inventor is entitled to only one patent for each invention: Whirlpool at para. 63; Apotex v. Sanofi-Synthelabo, 2008 SCC at para. 95. This prohibition is implicit in subsection 36(1) of the Patent Act, R.S.C. 1985, c. P-4:"Patent for one invention only"
"Brevet pour une seule invention"
"36.(1) A patent shall be granted for one invention only but in an action or other proceeding a patent shall not be deemed to be invalid by reason only that it has been granted for more than one invention."
"36."" (1) Un brevet ne peut être accordé que pour une seule invention, mais dans une instance ou autre procédure, un brevet ne peut être tenu pour invalide du seul fait qu’il a été accordé pour plus d’une invention" [52] The Supreme Court of Canada explained the rationale for the rule against double patenting in Whirlpool (at para. 63):The prohibition against double patenting relates back to the “evergreen” problem mentioned at the outset. The inventor is only entitled to “a” patent for each invention: Patent Act, s. 36(1). If a subsequent patent issues with identical claims, there is an improper extension of the monopoly. It is clear that the prohibition against double patenting involves a comparison of the claims rather than the disclosure, because it is the claims that define the monopoly. The question is how “identical” the claims must be in the subsequent patent to justify invalidation. [53] A patent may be invalid for double patenting if the inventor has received a prior patent for the same invention (same invention double patenting) or for an invention that is not patentably distinct from the second (obviousness double patenting): Whirlpool at para. 66; Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2016 FCA 119 at para. 27 (Mylan FCA). The test for obviousness double patenting is more flexible than that for same invention double patenting and asks whether the second patent claims a second invention that is different from that claimed in the first patent. The test was recently set out by this Court in Hospira Healthcare Corporation v. Kennedy Trust for Rheumatology Research, 2020 FCA 30 (Hospira):[99] … The question is not whether the scope of the claims of the two patents overlap so that they cover the same embodiments. Rather, the issue is whether there is a patentable distinction between the two patents such that the claims of the 630 Patent [the second patent] are not obvious in view of the claims of the 647 Patent [the first or parent patent]. … . In summary, the 630 Patent concerns a different invention from that claimed in the 647 Patent. [54] NCS and Kobold agree that the Federal Court correctly identified the test for obviousness double patenting, consistent with the formulation in Hospira:[1609] Kobold points out, and I agree, that the question is not whether there is an overlap in the embodiments claimed. Rather, the key question is an inventive difference. In obviousness double patenting analysis, the invention is at the heart of the patent: Eli Lilly Canada Inc v Mylan Pharmaceuticals ULC, 2015 FC 17 at para 128, aff’d [Mylan FCA]. ....
[58] Nevertheless, invalidity on the ground of double patenting continues to apply to divisional patents (Glaxosmithkline at para. 91):Furthermore, regardless of whether "the sin of double patenting" still exists, a patent holder should not be able to receive additional patents for the same invention. Support for this position can be found in the decision of Lutfy J. (as he then was) in Bayer Inc. v. Canada (Minister of National Health and Welfare) (1998), 1998 CanLII 8204 (FC), 154 F.T.R. 192, 82 C.P.R. (3d) 359, aff'd (2000), 2000 CanLII 15249 (FCA), 6 C.P.R. (4th) 285 (F.C.A.). ....
[72] The tests for obviousness and obviousness double patenting are different. This Court in Mylan FCA identified three differences between them, including the policy rationale, none of which relate to the required "“inventive step”" analysis for double patenting: Mylan FCA at paras. 28-30. At its core, invalidity for obviousness double patenting centres on whether the differences between the claims of the first and second patents constitute obvious steps to a person skilled in the art (POSITA). This question parallels the central inquiry in obviousness that has regard to the prior art that would have been known to the POSITA at the relevant time: Mylan FCA at para. 37, citing Merck & Co., Inc. v. Pharmascience Inc., 2010 FC 510 at para. 124.
[73] Obviousness is assessed on a claim-by-claim basis to establish each claim’s inventive concept but "“a single, overarching inventive concept connects every claim of a patent, with its genesis usually in the independent claim(s)”": Apotex Inc. v. Shire LLC, 2021 FCA 52 at paras. 55, 86 (Shire), leave to appeal to SCC refused, 39662 (October 7, 2021); Munchkin at para. 53. ....
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