Canada: Intellectual Property Weekly Abstracts Bulletin - Week of April 18, 2011

Last Updated: April 26 2011
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore


Leave to Amend Statement of Defence Denied
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. 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.
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.

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 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.

Commissioner Cannot Undo Acceptance of Maintenance Fees
Excelsior Medical Corporation v. Canada (AGC)

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.

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