In NCS v Kobold, the Federal Court explained the circumstances in which a double patenting argument could apply in the context of divisional patent applications. NCS sued Kobold for patent infringement and Kobold responded by asserting that NCS’s patents were invalid. Kobold also counterclaimed, alleging that NCS had infringed its 830 and 571 Patents.
NCS, the plaintiff, owned the 676 Patent (the parent patent), which was divided to create the 636 Patent, and subsequently divided again to form the 652 Patent. Kobold alleged that the 652 Patent was invalid for double patenting and asserted its own 830 and 571 Patents. NCS responded, in part, by alleging the 571 Patent was invalid for double patenting in view of Kobold’s 830 Patent.
NCS argued that Kobold should not be allowed to allege that the 652 Patent is double patented since it had not raised this issue in its pleadings. The Court agreed with NCS, stating that without a formal request for specific relief in its Statement of Defence, Kobold’s request was not properly before the Court. However, the Court considered double patenting because the issue was included in the parties’ Joint Statement of Issues.
The Court identified two approaches to determine whether a divisional is voluntary or forced. In the first approach, the Federal Court in Abbott held that divisional applications connected to unity of invention objections are forced, as it would be unfair to invalidate a patent because the patentee followed the directions of the Commissioner. The second approach in Biogen found that, where objections were not by way of a final action, they cannot form the basis of a forced divisional. In this case, the Court favoured an informed middle ground, which would not penalize applicants for electing a divisional but which would preclude them from doing so merely to secure claims and obtain a parent patent’s priority date. However, the Court warned against applying the approach in Abbott too broadly:
 First, following the approach in Abbot FC, this assertion potentially opens a door to misuse the patent prosecution process. Every inventor could file as many patents as they desire in a single application, and then when the Patent Office suggests a division, the inventor has protection from double patenting attacks because the divisionals were “forced.”
The Court determined that the 652 Patent was a voluntary divisional of the 636 Patent, and that the 636 Patent was itself a voluntarily divisional of the parent 676 Patent. As a result, both the 652 and 636 Patents were vulnerable to double patenting arguments. With respect to the 652 Patent, the Court concluded that it stemmed from a multiplicity of invention objection made under subsection 36(2) of the Patent Act which allows voluntary divisionals, and not subsection 36(2.1), which enforces them. Despite finding the 652 Patent to be a voluntary divisional, Justice McVeigh concluded that the 652 Patent was not invalid for double patenting in view of the 676 Patent because the individual claims of the 652 Patent were not identical to those of the 676 Patent. The issues regarding the 636 Patent were ultimately resolved prior to the trial.
With respect to NCS’s allegation that certain claims of Kobold’s 571 Patent were invalid due to double patenting over the 830 Patent, the Court found that, except for claim 13 (which was not at issue), the asserted claims of the 571 Patent offered a potentially simpler solution and a distinct inventive concept to address the same issue as the 830 Patent. Therefore, the asserted 571 Patent claims were not invalid for double patenting.