Motion to Set Aside Prohibition Order because of
Impeachment Action Dismissed Appeal with Respect to Utility Dismissed Decision of PMPRB Declared Null Leave Denied by Supreme Court of Canada with respect to
Data Protection Legislation Interlocutory Injunction in Passing-Off Action
Denied Expungement of Trade-mark Upheld Health Canada's Scientific Advisory Committee on Metabolic
and Endocrine Therapies published its Terms of Reference and Membership List and Biographies. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
NOC Proceedings
Pfizer Canada Inc. v. Canada
(Health)
Drug: amlodipine besylate
In 2006, the Federal Court of Appeal allowed an appeal from a
decision of the Federal Court and issued an Order of prohibition
(prohibition Order) preventing the Minister of Health from issuing
a Notice of Compliance until expiry of the patent. The decision of
the Federal Court can be found here. ratiopharm brought this motion pursuant
to Rule 399 of the Federal Courts Rules, to set aside the
Order of the Court of Appeal.
The motion was brought under Rule 399(2)(a) and (b), arguing a
matter that was discovered subsequent to the making of the
prohibition Order and because the prohibition Order was obtained by
fraud. The basis for the motion was the decision by the Federal
Court, and affirmed by the Court of Appeal, wherein Pfizer's
patent was found to be invalid in an impeachment action. ratiopharm
highlighted in its motion materials that it will be entitled to
seek compensation pursuant to Section 8 of the NOC
Regulations if the prohibition Order is set aside.
The Court agreed with Pfizer that the appeal is moot with respect
to a determination that a new matter has been discovered. However,
the Court of Appeal agreed with ratiopharm that the motion is not
moot with respect to the allegation of fraud. Specifically, the
Court of Appeal noted that the principle of finality does not apply
when the judgment is obtained by fraud.
The Court found that the subsequent finding of invalidity in the
impeachment action is not a new matter and accordingly does not
provide a basis upon which the prohibition Order should be set
aside. With respect to the allegation that the prohibition Order
was obtained on the basis of fraud, the Court noted that the fraud
must be material and in order to be material, it must have been
committed in the proceeding in which the prohibition Order sought
be set aside was rendered. The Court held that no perjured evidence
and no forged documents were filed in the NOC proceedings; nor was
there anything that indicated an intention to mislead. Furthermore,
the Court held that the NOC proceeding was not an adjudication of
the validity of the patent, and merely gave effect to the
presumption of the validity of the patent.
Thus, the Court dismissed the motion to set aside the prohibition
Order, holding that there was nothing on the record that showed the
prohibition Order to have been induced by or resulting from the
misrepresentations later found in the impeachment proceedings to
have been made to obtain the patent.Actions
Eli Lilly and Company v. Teva Canada
Limited
Drug: atomoxetine
This was an appeal by Lilly of a decision of the Federal Court
finding Lilly's patent invalid for lack of utility. The Federal
Court decision is found here and our summary is found
here. The Court of Appeal dismissed Lilly's appeal.
Lilly raised three legal issues on appeal. The Court of Appeal
found that the Judge did not err with respect to construing the
promise of the patent, and did not require too high a standard of
proof of utility. The Court of Appeal found that the patent
specifically promised that atomoxetine is a clinically effective
treatment of ADHD and therefore, the utility of the patent is
determined by examining whether the drug will do what the patent
promised it would do. The Court of Appeal found that the question
is whether Lilly had sufficient evidence to establish that the drug
would deliver on the promise of the patent and the Judge concluded
that Teva had established that the answer to the question was no.
The Court of Appeal found no reversible error in this
determination.
With respect to sound prediction, the Court of Appeal found that,
following a previous decision, the factual basis of the prediction
must be disclosed in the patent. The Court of Appeal further found
no error of principle in the Judge's exercise of discretion in
respect of the award of costs.Other Cases of Interest
Sanofi Pasteur Limited v. Attorney General of
Canada
Drug: QUADRACEL and PENTACEL
Sanofi brought a judicial review proceeding in respect of a decision by the Patented Medicine Prices Review
Board (Board), and specifically with respect to the portion of
the decision addressing the remedy. The main argument in the
proceeding related to the offsetting of excess revenues in respect
of section 83(2) of the Patent Act.
With respect to the standard of review, the Court found the
appropriate standard to be one of reasonableness given that the
question to be determined by the Court is one of fact or mixed fact
and law. The Court stated that this same standard should apply to
pure questions of law. The Court concluded that it was not able to
determine if the decision of the Board was reasonable. The Court
declared that the Order of the Board is null and void, and the
payment made by Sanofi was to be returned promptly.
Apotex Inc. v. Minister of Health et
al.
The Supreme Court of Canada denied leave from a decision of the Federal Court of Appeal
finding that the data protection provisions of the Food and
Drugs Regulations are intra vires. Our summary of the
Court of Appeal decision is found
here.
Target Brands, Inc. v. Fairweather
Ltd.
Target commenced an action seeking damages and a permanent
injunction from using the trade name TARGET or the bull's-eye
mark. The Defendants counterclaimed against Target for infringement
of its registered trade-mark TARGET APPAREL. The Plaintiffs brought
this motion for an interlocutory injunction. The Court found that
Target had met the low threshold for identifying a serious issue
but had not proved on the balance of probabilities that it will
incur irreparable harm. The Court also found that the balance of
convenience favours the Defendants.
Spirits International B.V. v. BCF
S.E.N.C.R.L.
The Federal Court upheld a decision by the Registrar of
Trade-marks, expunging a trade-mark registration. The Registrar
expunged the trade-mark on the basis that the evidence was
insufficient to allow it to conclude that the sales of the wares in
association with the trade-mark by a particular company would
benefit the trade-mark owner. In particular, the Registrar found
that the Applicant had failed to establish that it asserted control
over the quality or character of the registered wares. The Federal
Court upheld this decision.Other Industry News
Health Canada's Scientific Advisory Committee on
Bioequivalence Requirements for Gender-Specific Drug Products published its Terms of Reference and
Membership List, as well as an Agenda and Record of Proceedings
from its June 2, 2011 meeting.
CIPO has announced it is streamlining its Patent Prosecution Highway
agreements.
ARTICLE
25 July 2011
Intellectual Property Weekly Abstracts Bulletin - Week Of July 18, 2011
In 2006, the Federal Court of Appeal allowed an appeal from a decision of the Federal Court and issued an Order of prohibition (prohibition Order) preventing the Minister of Health from issuing a Notice of Compliance until expiry of the patent.