Canada: Intellectual Property Weekly Abstracts Alert (Week of July 25, 2011)

Last Updated: July 29 2011

Edited by Chantal Saunders and Beverley Moore


Failure to Reply in Good Faith not Basis to Challenge Issued Patent

Corlac Inc. et al. v. Weatherford Canada Ltd. et al.

The Appellants appealed the findings of the Judge that the patent was valid and infringed. Seven issues were raised on appeal: the Court of Appeal returned the issue of infringement of one claim to the Judge for redetermination and dismissed the remaining issues.

The Court of Appeal refused to interfere with the Judge's finding with respect to the issue of co-inventorship pursuant to section 53(1) of the Patent Act. In particular, the Court of Appeal agreed with the Judge that materiality is fact-specific, and the misstatement in this case was immaterial. The Court of Appeal agreed with the Judge that section 73(1)(a) of the Patent Act, abandonment by lack of good faith reply, applies only during the prosecution of patent applications, and is no longer is relevant once a patent issues. Section 53(1) governs misrepresentation in issued patents

Court Refuses to Allow Majority of Pleadings to Foreign Jurisdictions

Astrazeneca Canada Inc. v. Apotex Inc.

Drug: omeprazole

The Court heard the dispute between the parties as to whether certain amendments to the amended Statement of Defence and Counterclaim should be allowed. The Court allowed pleadings relating to a Korean action recited in U.S. decisions that the Plaintiffs put in play. However, pleadings requesting discovery relating to litigation in other foreign countries, pleadings alleging that as the plaintiffs did not assert claimsin the United States, they could not assert them in Canada, and pleadings alleging estoppel based on alleged contrary statements made by the Plaintiffs in the United States and Korean proceedings against other parties were not allowed.


Order of Prohibition Granted with Respect To Prodrug of Known Compound

Hoffmann-La Roche Limited v. Apotex Inc.

Drug: CELLCEPT mycophenolate mofetil

The two issues raised in this prohibition proceeding related to whether the claimed compound's utility was demonstrated or soundly predicted, and whether the claimed compound was obvious. The Court described the patent as relating to a prodrug of a known compound that could be used as an immunosuppressive drug but had limitations. The Court found that the utility of the invention was demonstrated as of the filing date. The Court further found that the utility was soundly predicted. Finally, the Court found that the claimed compound was not obvious.


Court Upholds Previous Rulings that a Final Action Must Contain All Issues

Bartley v. Commissioner of Patents

The Applicants brought judicial review of a decision of the Commissioner of Patents (Commissioner) and the Court allowed that judicial review. During the prosecution of the patent application, after numerous Office Actions, the Examiner issued a Final Action. The Applicant's Agent responded to this Final Action. Then, a Patent Appeal Board (Board) was constituted and had undisclosed discussions with the Examiner. Furthermore, the Examiner provided at least one memorandum to the Board with the Examiner's view as to the status of the application. The Board did not hold a hearing, but recommended that the Examiner's rejection be reversed and that the matter be returned to the Examiner to deal with the other "outstanding defects".

The Commissioner accepted these recommendations. These discussions and recommendations were made without input from the Applicant's Agent.

The Court reviewed the evidence put forward by the Commissioner and found that it did not support the argument that there were outstanding matters after the Final Action. Furthermore, the Court found that the Board's inquiries and recommendations as to the outstanding matters were unsatisfactory and lacking in due process. The Court also held that the Board acted contrary to Patent Rule 30(6) by failing to explicitly present the Applicant's Agents with the Board's view that there were outstanding matters and without clearly offering the Applicants an opportunity to be heard.

The Court then held that as in Belzberg, a Final Action is meant to be final and there is an obligation upon the Examiner to put everything on the table at that point. There is no provision to keep certain matters outstanding when a Final Action is issued. Furthermore, even if there were such a provision, this case fails to show that there were such outstanding matters. Since the application was returned to the Examiner having been reversed by the Commissioner, there are no grounds left for a further substantive requisition and allowance must follow as a consequence.

The Court held that the most appropriate action would be to allow the application and let the rest of the world challenge the validity of the patent if they wish.

Patent Appeal Board Finds No Double Patenting and that Monoclonal Antibody Claims are Sufficient When Target Polypeptide is Described

Commissioner's Decision 1307

The application related to human receptors for the platelet factor 4 superfamily antibodies. It was also the subject of a voluntary divisional. The final action raised issues of obviousness double patenting and lack of support for monoclonal antibodies.

The relevant claims at issue for the obviousness double patenting argument were a claim to an antibody capable of binding an isolated platelet factor 4 superfamily receptor and a claim to an isolated platelet factor 4 superfamily receptor polypeptide. The Board held that the subject matter in the claims does not reflect the same intended utility. Furthermore, the Court held that the claims were not obvious variations, modifications or combinations. Thus, the Board found no double patenting would exist.

The claims at issue in the rejection for lack of support related to antibodies and pharmaceutical compositions of antibodies as well as the use of antibodies as an anti-inflammatory agent. The Board considered the submissions of the parties and held that as of the laid open date of this application, the core steps for producing a monoclonal antibody were well known and reliable. Furthermore, the Board held that a person skilled in the art would not need to undertake considerable or protracted experimentation to make monoclonal antibodies capable of binding the particular polypeptides described in the figures. However, the Board did require limitation of the scope of the claims to an antibody capable of binding the particular polypeptides described.

Finally, the Board refused to allow the use claims. After conducting a sound prediction analysis,

the Board held that the factual basis in the specification would not lead a skilled person to conclude that blinding and/or blocking any one of the PF4AR polypeptides with a specific antibody would, on its own, necessary result in inhibition of inflammation.


Health Canada released a draft Guidance Document Part III: Consumer Information, Guidance Document: Product Monograph. The consultation period runs from July 21 to September 19, 2011.

Health Canada posted a Notice to Manufacturers/Sponsors of Nonprescription Drug Products: Emerging Regulatory Requirement for Non-Medicinal Ingredient Labelling

About BLG

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

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
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).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions