Leave to Amend Statement of Defence Denied Shire brought a motion seeking leave to amend its Statement of
Defence to add a new defence of infringement as well as a defence
of failure to mitigate. The Court noted that a schedule had been
set for the next steps in the proceeding and dates had been fixed
for a four-week trial to begin in April 2012. The Court noted that allowing the appeal would lead to the
adjournment of the trial and no explanation had been provided as to
why this defence was not proposed earlier in the litigation. The
Court found that it would not be in the interests of justice to
allow Shire to amend its Statement of Defence to plead infringement
as a Defence and Counterclaim. However, Shire's motion seeking
to include a defence of failure to mitigate, arising from
information obtained on discovery, was allowed. Leave to Intervene Granted in Appeal relating to
Patentable Subject Matter Commissioner Cannot Undo Acceptance of Maintenance
Fees In this case, the Court made several findings of fact relating
to the timing of events. A first firm of patent agents were the
agents of record. The Canadian patent application was assigned to
Excelsior and at this point, the deadline for payment of
maintenance fees was missed. A second firm of patent agents was to
prosecute the Canadian application on behalf of Excelsior and
before the deadline for reinstatement, the second firm filed a
letter with the Canadian Patent Office requesting reinstatement of
the patent application and paying the relevant fees. This letter
was accepted by the Patent Office. The deadline for reinstatement
passed. The Patent Office sent a letter confirming reinstatement to
the first firm. Subsequently, the Patent Office sent a letter to
the first firm, advising them to disregard the acknowledgement of
reinstatement as well as to the second firm, stating that
maintenance fees can only be paid by the authorized correspondent
and offering a refund of the fees. The second firm requested a
refund of the fees paid. The fees were refunded and over a year
later, the second firm requested that they be made associate patent
agents of record. The Patent Office responded by stating that the
patent application was dead beyond the point of
reinstatement. The Court noted that, while there have been several cases
dealing with the payment of maintenance fees, it was important to
note that in this case, the fees were paid within the relevant
period of time before the application was "dead", and the
Patent Office accepted the fees, even if they were not submitted by
the authorized correspondent. Only after the relevant time period
passed did the Patent Office notify the patent agent of record that
it should not have reinstated the application. The Court noted that
neither Rule 6 of the Patent Rules nor the Patent
Act address what happens when the Commissioner,
notwithstanding Rule 6(1), receives and acts upon a communication.
The Court found that, once the letter and fees had been received
and accepted by the Commissioner during the relevant period, the
Commissioner had no authority to undo the situation. However, the
Court found that, once the maintenance fees had been refunded, the
application was dead. The Court also found that there was no
evidence to base granting relief as a matter of equity. The
application was dismissed. Amendments to the Food and Drug Regulations were
published in the Canada Gazette Part II, April 13, 2011. These amendments apply to provisions relating to an
establishment licence as well as new drugs for extraordinary use.
Amendments were also made to the Patent Act and
specifically the Patented Medicines (Notice of Compliance)
Regulations to include extraordinary use new drugs where
applicable in those Regulations. 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.
and
Beverley Moore
ACTIONS
Apotex v. Shire
Drug: modafinil
This action relates to a claim by Apotex pursuant to Section 8 of
the Patented Medicines (Notice of Compliance) Regulations.
The Court noted that Shire has amended its Statement of Defence
several times. In particular, Shire previously had brought a motion
seeking to amend its Statement of Defence to include a defence
based on the outcome of a patent infringement trial brought by
Cephalon, the patentee of the patent in issue in the within case.
The Court denied that motion.
OTHER CASES OF INTEREST
Commissioner of Patents v.
Amazon
The Court granted a motion by the Canadian Life and Health
Insurance Association Inc. and the Canadian Bankers Association,
seeking leave to intervene in the appeal with respect to the
decision relating to the "one-click patent application".
In the underlying trial decision, the Court sent the patent
application back to be re-examined, quashing the decision of the
Commissioner of Patents finding that the claims claimed
non-patentable subject matter. The Court, on the motion, found that
the proposed interveners met the six factors to be considered in
determining whether to grant leave.
Excelsior Medical Corporation v. Canada
(AGC)
OTHER INDUSTRY NEWS OF NOTE
ARTICLE
26 April 2011
Intellectual Property Weekly Abstracts Bulletin - Week of April 18, 2011
Borden Ladner Gervais LLP
Contributor
BLG is a leading, national, full-service Canadian law firm focusing on business law, commercial litigation, and intellectual property solutions for our clients. BLG is one of the country’s largest law firms with more than 750 lawyers, intellectual property agents and other professionals in five cities across Canada.
Apotex v. Shire (Drug: modafinil). Shire brought a motion seeking leave to amend its Statement of Defence to add a new defence of infringement as well as a defence of failure to mitigate.