Patent Not Eligible For Listing On The Patent Register (Intellectual Property Weekly Abstracts Bulletin - Week of July 23, 2012)

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This is a case relating to the refusal by the Minister of Health (the "Minister") to list a patent on the Patent Register. The Court dismissed the application.
Canada Intellectual Property

Listing

Patent not Eligible for Listing on the Patent Register
Novartis Pharmaceuticals Canada Inc. v. Canada (Attorney General)
Drug: TOBI® PODHALER (Tobramycin)

This is a case relating to the refusal by the Minister of Health (the "Minister") to list a patent on the Patent Register. The Court dismissed the application.

The Court described the product in question: "Tobi Podhaler consists of a medicinal and a non medicinal component: the medicinal component consists of a capsule dosage form providing a dry powder formulation which contains the active ingredient tobramycin (an amino-glycoside antibiotic), intended for oral inhalation with the help of the Podhaler inhalation device (the non medicinal component)." The Court described the patent in question: "Of importance to the matter at bar, the '819 patent includes claims for the use of a bioactive agent in the manufacture of a medicament for pulmonary delivery, comprising a plurality of perforated microstructures and administered by an inhalation device (claims 1 to 11) and claims for a perforated microstructure powder comprising a bioactive agent (claims 41 to 50 and 59 to 68), as well as claims of an inhalation system for pulmonary administration of a bioactive agent to the patient (claims 51 to 58)."

The sole issue to be determined by the Court was whether the Minister erred in requiring the patent claims to explicitly mention the medicinal ingredient in order to be eligible for listing. The Court found the Minister's construction of the relevant claims of the patent and the relevant provisions of the NOC Regulations to be correct in law.

The Court construed the claims to dosage forms in the patent to be generally directed to an improved delivery system. The approved dosage form was found to be the inhalation delivery system as a whole, and not the individual parts. Finally, the Court found that a "rather high threshold of specificity in the formulation claims is required for a patent to be eligible for listing". The Court ultimately found that the Minister was correct in finding that none of the claims of the patent contain the approved medicinal ingredient tobramycin.

Copyright

Providing Hyperlink to Applicant's Website is Authorized Communication for Purposes of Copyright
Warman v. Fournier

This application alleged copyright infringement in respect of three works. The Respondents operate a website providing a forum for online political discussions.

With respect to the first work, the Warren Work, the Court found that the Applicant was time-barred as he did not bring the application within the limitation period in section 41(1) of the Copyright Act. With respect to the second work, the Kay Work, the Court found that the Respondents did not reproduce a substantial part of the Work, and in the alternative, the reproduction represented fair dealing for the purposes of news reporting. The Applicant posted a copy of the third work, the Barrera Work, on his own website, and the Respondents provided a hyperlink to this website. The Court found that the Applicant authorized communication of this Work by posting it on his website. Accordingly there was no infringement.

The Court indicated that the defence of abuse of process was not available to the Respondents as the application was not frivolous or vexatious; instead, the Respondents were arguing the tort of abuse of process, which must be brought by separate action. The Court also refused to award costs on the highest scale as there was no evidence of the Applicant's conduct that would justify higher costs.

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