Eli Lilly, the plaintiff in a patent infringement action, was
successful in appealing a decision of the Federal Court which had
found Eli Lilly's Canadian Letters Patent No. 2,041,113 (the
'113 Patent) relating to the medicine olanzapine (Zyprexa)
invalid on the basis that it was not a proper selection patent. The
core issue on appeal raised a single question: do the conditions
for a valid selection patent constitute an independent basis upon
which to attack the validity of a patent?
Eli Lilly had previously received a patent (the '687 Patent)
in 1980 covering approximately 15 trillion thienobenzodiazapine
compounds, the properties of which were said to be useful for
treating mild anxiety and certain psychotic conditions. Although
olanzapine was encompassed within the scope of the '687 Patent,
it was not specifically disclosed. Following the issuance of the
'687 Patent, Eli Lilly eventually ceased its studies on the
compounds specifically identified in that patent, but began to
synthesize seven new compounds, of which olanzapine was the most
Eli Lilly filed the application for the '113 Patent in April
1991, and it was subsequently issued in July 1998. The '113
Patent disclosed that Lilly "discovered a compound
[olanzapine] which possesses surprising and unexpected properties
by comparison with flumezapine and other related compounds."
It also referred to other perceived advantages of olanzapine over
prior-known antipsychotic agents not included in the genus '687
The Court of Appeal noted that a valid selection patent may be
issued where "a property, quality or use in relation to one or
more members of the genus is subsequently discovered ... Selection
patents exist to encourage researchers to further use their
inventive skills so as to discover new advantages for compounds
within the known class." The Court of Appeal, however,
asserted that selection patents must be assessed in the same way as
any other patent:
[A] challenge directed to a determination that the conditions
for a selection patent have not been met does not constitute an
independent basis upon which to attack the validity of a
patent. Rather, the conditions for a valid selection patent
serve to characterize the patent and accordingly inform the
analysis for the grounds of validity set out in the Act –
novelty, obviousness,sufficiency and utility. In short, a selection
patent is vulnerable to attack on any of the grounds set out in the
In this respect, according to the Court of Appeal, the trial
judge committed an overriding error when he essentially merged the
doctrines of utility, obviousness and sufficiency, and concluded
right from the outset that the '113 Patent was not a valid
selection patent. The trial judge's initial conclusions
coloured his analysis throughout the remainder of his judgment, and
led the Court of Appeal to overturn numerous findings as to
anticipation and obviousness.
In addition, the Court of Appeal remitted the issues of utility
and sufficiency back to the Federal Court as there was insufficient
evidence on record relating to the patent's promise: "The
failure to provide any foundation for the construction of the
patent's promise leaves this Court without any basis upon which
to conduct a meaningful review. In the absence of an accurate
articulation or ascertainment of the promise, review of the
analysis of the alleged advantages is not possible because they
cannot be viewed in relation to the overarching promise of the
Given this remittance, the patent bar eagerly awaits the trial
judge's findings, as clarification of disclosure requirements
in the area of selection patents is undoubtedly needed
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.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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).