The Commissioner made a decision on November 1, 2010 (the 2010
decision), our summary found
here, in respect of a patent application relating to monoclonal
antibodies. The Applicant asserted that he had not had the
opportunity to address two issues that were considered in reaching
the 2010 decision. The Patent Appeal Board (PAB) reconvened to hear
argument with respect to these two issues, namely the scope of a
broad claim in relation to target polypeptides, and support for the
utility of the claimed antibodies.
With respect to the first issue, the PAB maintained the
recommendation made in the 2010 decision. In particular, the PAB
indicated that the scope of the claim should be limited to
antibodies capable of specifically binding the target polypeptide
set out in the figures in the patent application.
With respect to the second issue, the PAB noted first that the
Applicant was required to rely upon a sound prediction of the
utility. The PAB confirmed its finding in the 2010 decision that
the factual basis in the patent application does not provide a
sound line of reasoning to support the promised utility. In
particular, the PAB found that the factual basis indicates only
that the antibodies have the ability to bind to the target antigen,
and not necessarily to antagonize the activity of the targets and
lead to an anti-inflammatory effect.
The Patent Appeal Board (PAB) was considering a patent application
in which the Final Action indicated that the specification does not
provide a factual basis for a person skilled in the art to soundly
predict that the desired result would be obtained if a polymer
different to the one set out in the specification was used.
Further, the Final Action stated that the specification does not
enable the person skilled in the art to make suitable
The PAB noted that the issues of sound prediction and insufficiency
of disclosure are separate. The PAB first considered the issue of
sound prediction and found that the line of reasoning is reasonable
in light of the factual basis, and have both been sufficiently
disclosed in the specification. The PAB further found that there is
sufficient information in the specification such that a person
skilled in the art would not be required to perform inventive or
undue experiment to find additional polymers that would fall within
A Final Action was issued in respect of a patent application. The
matter was referred to the Patent Appeal Board (PAB). The Applicant
voluntarily proposed amendments but was informed that, pursuant to
section 31 of the Patent Rules, voluntary amendments are
not permitted after the time to respond to the Final Action has
passed, absent a formal directive from the Commissioner. The PAB
found that all the issues raised by the Examiner would have been
addressed by the voluntary amendments. Accordingly, the PAB
recommended that the Commissioner invite the Applicant to make
these amendments, which the Commissioner did.
In an action for trade-mark infringement and passing off, the
Plaintiff brought a motion for default judgment as a result of the
failure by the Defendants to serve and file a Statement of Defence
within the prescribed time. The Court found that, as a result of
the registration of the Plaintiff's trade-mark, the Plaintiff
has the exclusive right to the use throughout Canada of the
trade-mark in respect of its wares and services. The Court then
considered whether the trade-marks and trade-names are confusing as
set out in ss. 6(5) of the Trade-marks Act, concluding
that the trade-mark and trade-name used by the Defendants is
clearly confusing with the registered trade-mark of the Plaintiff.
The Court further concluded that the Defendants were liable for
statutory passing off and that the individual Defendant, Ms.
Kearney, was personally liable. The Court awarded damages in the
amount of $10,000.00 as compensatory damages in relation to lost
sales as well as in respect of the damage to the Plaintiff's
reputation and goodwill.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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