Overbreadth Confirmed as a Valid Ground of Patent Invalidity

On July 28, 2021, the Federal Court of Appeal of Canada (the Court) issued a decision in the case of Seedlings Life Science Ventures, LLC v. Pfizer Canada ULC, 2021 FCA 154. In this appeal, Seedlings Life Science Ventures, LLC (Seedlings) challenged the Federal Court’s finding that the claims at issue of Seedling’s patent were invalid for overbreadth. 

Amongst other arguments, Seedlings argued that overbreadth is not a proper ground for invalidity. The Court disagreed, and confirmed that overbreadth remains a proper ground of invalidity, explaining that there are two ways that a patent claim can fail for overbreadth: (i) the claim can be broader than the invention disclosed in the specification; or (ii) the claim can be broader than the invention made by the inventor.

The Court held that the concept of claim invalidity for overbreadth arises from the combination of the requirements that a patent specification (i) correctly and fully describe the invention; and (ii) include claims defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed.

The Court reasoned that one may consider overclaiming as a natural consequence of the bargain theory of patent law, where, in return for disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to exploit it.  The Court also noted that overbreadth might be considered the other side of the coin of insufficiency.

Summary By: Vanessa Komarnicki