This is an appeal of a decision of a Prothonotary, refusing to
order Mylan to produce requested information about its
manufacturing process and the crystal structure of efavirenz in its
product. On appeal, the Applicants alleged that the Prothonotary
imposed an unduly high and improper burden to justify production;
that the Prothonotary erred in failing to follow a previous
decision; and that the Prothonotary erred in considering the amount
of documentary production already undertaken by Mylan. The Court
dismissed the appeal.
The Court determined that that the standard of review was
whether the Order was based upon a wrong principle or a
misapprehension of the facts, given that the questions raised in
the motion are not vital to the final issues. The Court found that
the Prothonotary correctly identified the burden of proof as being
on a balance of probabilities that the information requested was
important, required and relevant. The Court further found that the
Prothonotary did not misapprehend the expert evidence and that the
Prothonotary properly distinguished the within case from that of
the previous decision relied upon by the Applicants. Finally, the
Court held that the reference by the Prothonotary to the amount of
documentary production by Mylan was an observation made by the
Prothonotary and not the basis for the decision.
BBM brought an application for infringement, damages for
infringement, depreciation of goodwill and passing off, punitive
damages, injunctive relief and delivery up. Research in Motion
(RIM) initially brought a motion to strike the application on the
basis that there was no jurisdiction in the Federal Court to
determine these issues by way of application. The Court held that
the matters should not proceed by way of application and ordered
the matter to proceed by way of action, but this decision was
overruled by the Court of Appeal. Consequently, RIM brought the
within motion to convert the application to an action.
The Court first considered whether it was possible to bring a
motion to convert an application to an action. It concluded that it
is possible, jurisdiction being found either in the Court's
inherent jurisdiction to control its own process, or in Rule 3
which states that "these Rules shall be interpreted and
applied so as to ensure the just, most expeditious and least
expensive determination of every proceeding on its merits".
The Court then outlined factors to consider when determining
whether such a conversion is appropriate and concluded based on a
review of the facts of the within case that the conversion was not
appropriate. The Court dismissed RIM's motion.
Commissioner of Patents Allows Claims to Skin Equivalents
The Commissioner of Patents issued a decision allowing claims to
aged skin equivalents; specifically an epidermis equivalent and an
aged dermis equivalent. The Commissioner held that the components
are made in vitro, and that everything claimed is the result of in
vitro manipulations in a laboratory, performed by scientists or
technicians. Furthermore, all the components of the claimed
products are themselves patentable per se, and have been combined
by a person. Thus, they do not equate to organs or tissues as
described by the Harvard Mouse case or CIPO's 2006 Practice
The Commissioner also held that the artificial skin is
"equivalent" to natural skin only insofar as it meets the
Applicant's limited requirements. It is not structurally or
functionally equivalent and does not approach the complexity of
natural skin. Furthermore, it is anatomically and functionally
different than true tissues or organs. Thus the patent was to
proceed to allowance.
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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