In Unicrop Ltd. v. Canada (Attorney General) (2010 FC 61), the Federal Court (FC) upheld the Commissioner of Patents’ decision finding Canadian Patent Application No. 2,531,185 (the ‘185 Application) abandoned. The FC confirmed that only the “authorized correspondent” could act on behalf of the applicant to pay fees and request reinstatement. The FC also held that equitable relief was not available where granting it would be contrary to statutory requirements. (more…)
Archive for the ‘Canada: Patents’ Category
FC holds failure to identify adverse prior art in disclosed reference violates duty of good faith; invalidates Alzheimers treatment for anticipation, obviousness, and utility
In Lundbeck Canada v. Minister of Health, 2009 FC 1102, the Federal Court of Canada (FC) dismissed Lundbeck’s prohibition application against Ratiopharm in respect of two patents relating to memantine hydrochloride. Canadian patents 2,014,453 (‘453 patent) and 2,426,492 (‘492 patent) were listed by Lundbeck on the Patent Register under section 4 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (PMNOC Regulations). The patents relate to memantine, a drug used to treat individuals with Alzheimers. The ‘453 patent outlines the mechanism of action for memantine and the ‘492 patent suggests a method for combining memantine with other acetylcholine inhibitors (ACE inhibitors) to provide a synergistic effect. Ratiopharm served a Notice of Allegation on Lundbeck alleging that both the ‘453 and the ‘492 patents were invalid. The FC ruled that Ratiopharm’s allegations of invalidity were justified with respect to both patents. In doing so, the FC employed the tests for anticipation, obviousness, utility and found a lack of good faith prosecution due to the failure to specifically identify adverse material in a disclosed prior art reference. (more…)
FC Declines to Dismiss Issued Application for Prohibition After the Issuance of a NOC Where Validity of Underlying Patent Being Appealed
In Pfizer Canada Inc. v. Canada (Health) (2009 FC 1165), the Federal Court (FC) dismissed Ratiopharm’s motion to set aside the Federal Court of Appeal’s (FCA) decision (2006 FCA 214) granting an order of prohibition, and to dismiss the application for prohibition. The FC also dismissed Pfizer’s motion to quash or adjourn Ratiopharm’s motion until the determination of an appeal of Ratiopharm’s successful impeachment (2009 FC 711) of Pfizer’s Canadian Patent 1,321,393 (‘393 Patent). In so doing, the FC held that it cannot dismiss an application for prohibition based on subsequent litigation, except perhaps where fraud is alleged in that application and successfully argued in the subsequent litigation. (more…)
Canadian FC Holds Patent Commissioner Restricted to Accepting or Rejecting Patent Application After Issuing Final Action
In Belzberg v. Canada (Commissioner of Patent), 2009 FC 657, the Federal Court (FC) set aside the Commissioner of Patents’ (“the Commissioner”) decision to return a patent application for further examination and requisitions. The FC ordered the Commissioner to grant Belzberg’s patent application. The FC held that once an examiner issues a rejection labelled “Final Action” the Commissioner may only refuse or grant an application. sdfsdfdsf (more…)
FC Refuses s.8 PMNOCR Summary Judgment where Construction of Regulatory Scheme Unsettled
In Apotex Inc. v. Pfizer Canada Inc. (2009 FC 631), the Federal Court (FC) dismissed Pfizer Canada Inc.’s (Pfizer) motion for summary judgment. Due to the complicated statutory interpretations of s.8 of the Patented Medicines (Notice of Compliance) Regulations (PMNOCR), summary judgment had never been granted in the past. The issue was whether Apotex’s Statement of Claim failed to disclose a genuine issue for trial so that summary judgment should be granted. In particular, whether Pfizer’s application for an order of prohibition caused any damages allegedly suffered by Apotex, such that Pfizer is liable under s.8 of the PMNOCR. The question of whether the outcome of any proceeding could be considered when determining whether Pfizer’s had wrongly delayed Apotex’s generic drug approval weighed against summary judgment. (more…)
FC Goes Beyond Specification to Assess Utility and Introduces Deception by Inference into s. 53 of Patent Act
In Ratiopharm Inc. v. Pfizer Limited (2009 FC 711), the Federal Court of Canada (FC) granted a declaration that Canadian Patent 1,321,393 (‘393 Patent) is invalid pursuant to s.60(1) of the Patent Act. The Court accepted all five grounds of invalidity put forward by the generic challenger. In invalidating the ‘393 Patent, the FC reviewed evidence beyond the patent specification to assess the level of utility specifically promised in the disclosure. The FC also indicated that “wilfully mislead”, under s.53 of the Patent Act, could be established by inference. Ratiopharm brought this action after the Federal Court of Appeal (FCA) (2006 FCA 214) rejected similar challenges in litigation under the Patented Medicines (Notice of Compliance) Regulations.
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Posted in Canada: Patents 
Tags: impeachment, invalidity, patented medicines, utility, wilful misleading 
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