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Appeal Dismissed: Soundness of Prediction of Utility is Question of Fact
Sanofi-Aventis Canada Inc. v. Apotex Inc.
The Trial Judge made a finding that the utility of all the compounds claimed in one claim in the impugned patent could not be soundly predicted at the filing date of the patent application. The patent was therefore found to be invalid.
The Court of Appeal dismissed the appeal, finding that the soundness of a prediction is factual. The Court of Appeal declined to reweigh the evidence and found that the Trial Judge applied the correct legal principles.
Other Cases of Interest
Only Authorized Correspondent Can Pay Maintenance Fees for Application
Excelsior Medical Corporation v. Canada (Attorney General)
The Judge found that the acceptance of maintenance fees paid within the grace period by someone other than the authorized correspondent reinstated a lapsed patent application, but the subsequent reimbursement of those fees nullified the reinstatement. Our summary is found here.
The Court of Appeal dismissed the appeal, but for different reasons than the Judge. In particular, the Court of Appeal held that the payment of maintenance fees by someone other than the authorized correspondent does not reinstate a patent, even if those fees are accepted. The Court of Appeal found that the appointment of an authorized correspondent applies to the payment of maintenance fees as well as to the prosecution of a patent application. The Court of Appeal further declined to invoke the Court's equitable jurisdiction.
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