The Examiner rejected the patent application for a system for
preparing a schedule for travel on the basis that the claims are
obvious. The Patent Appeal Board (PAB) considered the question of
obviousness in light of two pieces of prior art. The PAB found that
the invention was not obvious, writing that, "while the
implementation of this solution, from a technical standpoint, could
be trivial for a skilled person once directed to do so, there is no
apparent suggestion or impetus for the skilled person to implement
such a solution". The PAB recommended several amendments to
the claims and the Commissioner of Patents concurred with the
finding by the PAB that the application was not obvious.
Double Patenting Exists Notwithstanding Changes
to NOC Regulations
This decision relates to a refusal by the Examiner to issue a
patent on the basis of obviousness double patenting. The within
application is a divisional application and there are two further
divisional applications issued from the same parent patent. The
application relates to a metered dose inhaler for fluticasone
In conducting the analysis for double patenting, the Examiner
excluded certain elements from the claims on the basis that they
were non-essential and added other elements on the basis that they
are found in the description. The Patent Appeal Board (PAB)
indicated that finding an element to be non-essential only because
it is known in the art is not supported by the jurisprudence, and
to the extent that the Examiner found the elements to be
non-essential for this reason, the PAB did not agree. The PAB
presumed all elements to be essential for the double patenting
The PAB considered several preliminary issues. In particular,
the PAB found that double patenting could exist even though the
claims of the application expire on the same date as the other
divisional patents and the parent patent. The PAB found that,
notwithstanding that the NOC Regulations have been amended so that
a second person does not need to address any patent that has not
yet been added to the Patent Register at the time of filing its
submission for approval, a patent holder should not be able to
receive additional patents. The PAB also found that, while double
patenting is to be based on a comparison of the claims, claims are
to be construed in accordance with the principles of purposive
construction, which includes taking into account the specification
as a whole.
The PAB found that the claims of the divisional application were
not patentably distinct from the claims of the cited patents and
the Commissioner of Patents refused to grant the patent.
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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