Canada: Intellectual Property Weekly Abstracts Bulletin - Week Of December 12, 2011

Last Updated: December 15 2011

Edited by Chantal Saunders and Beverley Moore

ACTIONS

Anticipation and Obviousness Found

Wenzel Downhole Tools Ltd. v. National-Oil Well Canada Ltd.

At trial, the Defendants alleged anticipation, obviousness and lack of utility. After construing the claims, the Court considered anticipation. The Defendants alleged anticipation by a drilling motor bearing assembly (assembly) designed and used prior to the filing date of the patent in issue. The Court found that the assembly contains the subject matter of the claims of the patent in issue, that the assembly pre-dated the filing date of the patent and that there no were obligations of confidentiality with respect to at least some of the individuals with access to the designer, the assembly or drawings of the assembly, such that the invention was made available to the public.

The Court then considered obviousness. The Court rejected some of the patents argued to be part of the common general knowledge by the Defendants. The Court, however, found that one of the prior art patents rendered the invention obvious. The Court also noted how little time it took for the inventor to develop the claimed invention as supporting a conclusion that the invention was obvious. With respect to utility, the Court held that the Defendants did not clearly define the promise of the patent but in any event, would probably have found that the Defendants had not met their burden with respect to the issue of utility. The patent was found invalid and the Court addressed some issues relating to costs.

NOC CASES

Appeal of Prothonotary's Decision Refusing Reversal of Evidence Dismissed

AstraZeneca Canada Inc. v. Teva Canada Limited

AstraZeneca brought a motion before the Case Management Prothonotary, seeking a reversal of the order in which the evidence was presented. In particular, AstraZeneca was seeking an order in which Teva served its evidence with respect to its invalidity allegations first. The Prothonotary dismissed the motion, and AstraZeneca appealed the Prothonotary's Order.

On appeal, the Court found that the Prothonotary carefully considered the submissions made by both parties before reaching a decision, and that the decision related to a matter that is not vital to the issues. The Court held that Case Management Prothonotaries should be given reasonable latitude to address these types of issues. The Court dismissed the appeal, with costs to Teva.

OTHER CASES OF INTEREST

New Evidence of Use on Appeal Sufficient to Reverse Expungement of Trade-mark

David M. Locke v. Osler, Hoskin & Harcourt LLP

The Registrar of Trade-marks (Registrar) issued a notice to the applicant to provide evidence of use of the registered trade-mark during the preceding three years. The applicant did not file any response to the notice, and the trade-mark was expunged.

On appeal to the Court, the applicant filed evidence of use. The Court first noted that the standard of review is one of correctness in light of the new evidence. After setting out that the threshold to establish use is low, the Court considered the new evidence and found it to be sufficient. The Court also held that an extension of time to allow the appeal was justified in the circumstances. The appeal was allowed and the trade-mark remained on the Register.

Leave Denied by Supreme Court of Canada in Pharmaceutical Case

Eli Lilly and Company v. Teva Canada Limited

Leave by the Supreme Court of Canada (SCC) was denied in respect of the decision by the Federal Court of Appeal. We summarized the Court of Appeal's decision here. The SCC described the case as relating to a patent found to be invalid for lack of utility, with the issue to be determined whether the Court of Appeal decision is inconsistent with jurisprudence, the Patent Act, and treaty obligations.

OTHER INDUSTRY NEWS

Health Canada issued instructions for completing the application form, and the application form, for custom-made devices and medical devices for special access.

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