The Court granted an order prohibiting Pharmascience from coming
to market with its product before the expiry of the patent at
issue; finding Pharmascience's allegations of obviousness,
insufficiency, utility, and a lack of sound prediction not
justified. The only claim at issue claimed the compound
Pharmascience alleged that a number of works by one company lead
to the conclusion that GSK's invention was obvious. However,
the Court held that the invention was the result of patient
research that was applauded by the scientific community.
Furthermore, the Court held that the other company apparently never
achieved the results that the inventor of the patent at issue did.
The Court also rejected Pharmascience's allegations of
obviousness that were not raised in the NOA.
Pharmascience argued insufficiency, inutility and lack of sound
prediction together. GSK argued that it was not running a case
based on sound prediction. The Court tried to construe the patent
by "taking an impartial approach being fair to both the
patentee and the public, avoiding technicalities and undue
harshness or benevolence".
The Court held utility is to be determined on the basis of what
had been performed by GSK prior to filing the patent as compared to
the utility promised in the patent. In this case, the compound
passed the primary screen upon which a skilled person could
conclude it should proceed to further testing. The potential to
work in humans had been established, and this was all that was
promised in the patent.
Other Cases of Interest
Canadian Commissioner of Patents Endorses Broad Monoclonal
Re Immunex Corporation Patent Application No.
BLG released an alert regarding the Patent Appeal Board's
decision. Please see here for this alert.
Other Industry News of Note
On March 9, 2011, Bill C-393, An Act to amend the Patent Act
(drugs for international humanitarian purposes) and to make a
consequential amendment to another Act, passed the third reading in the House of Commons.
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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