On June 22, 2010, the Federal Court of Appeal released its
decision in Sandoz Canada Inc. v. Abbott
Laboratories, 2010 FCA 168. Justice Dawson for the Federal
Court of Appeal held that the court will give effect to the
dedication of a patent to the public even if the dedication occurs
during the course of litigation. Justice Dawson's decision adds
an important tool for innovators when responding to allegations of
double patenting from generics. It can also assist in dealing with
claims construction difficulties based on claims
At trial, Justice Heneghan dealt with an Application brought by
Abbott Laboratories and Abbott Laboratories Limited (together,
"Abbott") pursuant to the PM(NOC) Regulations
(the "Regulations") in respect of two patents:
Patent No. 2,285,266 ('266 Patent); and Patent No. 2,358,395
('395 Patent), with the '266 Patent being the parent
application and the '395 Patent a subsequent divisional. The
Application had included a second divisional, Patent No. 2,325,541
('541 Patent), however Abbott dedicated the '541 Patent to
the public two months prior to the hearing of the Application.
At trial, Justice Heneghan granted Abbott's Application for
a prohibition order in respect of the '266 Patent. Justice
Heneghan dismissed Abbott's Application in respect of the
'395 Patent solely on the basis of double patenting over the
'541 Patent. Justice Heneghan held that "had the
dedication been executed prior to the service of the NOA, Sandoz
would not have had a ground for alleging double patenting in
respect of the '395 Patent." However, since the '541
Patent had not been dedicated as of the date Sandoz delivered its
NOA, Abbott was precluded from realizing the benefit of its
Sandoz appealed Justice Heneghan's Order in respect of the
'266 Patent, while Abbott cross-appealed Justice Heneghan's
Order in respect of the '395 Patent. Justice Dawson for the
Federal Court of Appeal dismissed Sandoz's appeal and granted
Justice Dawson held that it is correct to assess the
justification of allegations contained in an NOA as of the date of
the hearing, at least where assessment as of the date of the
hearing will promote the purpose of the Regulations.
Accordingly, Justice Heneghan erred by considering the status of
the '541 Patent as of the date of the NOA, and not giving
effect to the dedication. The Court of Appeal granted the
prohibition order that the Federal Court ought to have granted in
respect of the '395 Patent.
Of note is the fact that the '541 Patent was issued prior to
the issuance of the '395 Patent, yet its dedication was
effective to insulate the subsequent '395 Patent from
allegations of double patenting. Also noteworthy is the Court of
Appeal's confirmation of the efficacy of a dedication of part
of the monopoly and not the whole. The Court of Appeal held that
after dedication of claims to the public, non-dedicated claims are
to be construed "without reference to the dedicated
claims" and this provides an opportunity where a generic
asserts an unfavourable construction based on claims
Innovators facing allegations of double patenting (and perhaps
overbreadth or construction issues) should now consider whether
they can defeat such allegations by dedicating claims in a patent
to the public. Unlike a disclaimer, this approach may be successful
even where the dedication occurs after the
litigation has been commenced and even where the statutory
pre-conditions for a disclaimer are not met.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).