On October 20, the Federal Court of Appeal put an end to the
disparity in the jurisprudence surrounding whether a patentee could
obtain a patent to a medicine subsequent to obtaining a patent to a
process for producing the medicine by dismissing Bayer's appeal
in the case of Bayer Schering Pharma
Aktiengesellschaft v. The Attorney General of
Canada. The case stems from May 2008, when
the Commissioner of Patents refused to grant Bayer a patent to a
pharmaceutical compound per se because a previous patent had
already been issued to it for the same compound when made by a
particular process (product-by-process patent). After Bayer's
appeal to the Federal Court was dismissed, it appealed to the
Federal Court of Appeal.
Bayer argued that "obviousness-type" double-patenting
didn't apply to the situation at hand. However, the Federal
Court of Appeal disagreed and dismissed the appeal, stating
[T]here is nothing inventive or "patentably distinct"
in a claim for a product that is the subject of a previous
process-dependent patent. On the other hand, a process-dependent
patent may be granted, even though a patent has already been issued
for the product itself, if the process claimed and described for
making the product exhibits inventive ingenuity.
... Consequently, the Commissioner correctly denied the
Application on the ground of "obviousness" double
patenting because the patent would have disclosed no new invention.
For her to have granted a patent for the compound would have
improperly "evergreened" the parent patent, now expired,
by creating a second monopoly in the use of the compound running
from the date when the Application was approved.
This decision puts an end to any disparity in the jurisprudence,
as the Federal Court of Appeal effectively overruled the decision
in Aventis Pharma Inc. v. Mayne
Pharma (Canada) Inc., 2005 FC 1183, 42 C.P.R.
(4th) 481, rev'd. on other grounds, 2008 FCA 21, 380 N.R.
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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.
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