The Supreme Court issued its decision on November 8 in the
much-anticipated patent case involving VIAGRA sildenafil. The Court
allowed the appeal, finding the allegations of invalidity to be
justified. The decisions of the Trial Division and the Federal Court of Appeal prohibited the
Minister of Health from issuing a Notice of Compliance. Our summary
of the decision of the Federal Court of Appeal can be found
The main issue in this case was "whether Pfizer failed to
properly disclose its invention when it obtained the patent for
Viagra" pursuant to s. 27(3) of the Patent Act. The
Court considered the concept of the patent bargain and held that
sufficiency lies at the very heart of the system. The Court
considered the traditional questions for sufficiency: "What is
your invention?" and "How does it work?" and held
that these questions are relevant. However, the description must
also enable a person skilled in the art to produce the invention
using only the instructions in the disclosure. "The nature of
the invention must be disclosed, and the entire specification,
including the claims, must be considered in determining the nature
of the invention and whether disclosure was sufficient."
In this case, the Court held that the invention was: the use of
sildenafil to treat erectile dysfunction (ED). The disclosure was
held not to enable the public to make the invention, as it
indicated that one of the compounds had been tested and is
effective, but never identified which compound. This led to the
public having to complete a research project in order to determine
which compound was actually effective to treat ED. Thus, the patent
disclosure was not sufficient.
The Court held that s. 58 of the Patent Act and the
principle that valid claims survive in the face of invalid claims,
is not engaged until it is determined whether the disclosure
requirements have been complied with.
The Court also considered the line of cases dealing with
multiple inventions in a patent with multiple claims. The Court
held that it is possible for each claim in a patent to disclose a
separate invention. However, each patent must be considered on a
case-by-case basis. The specification should be examined to
determine whether the compounds claimed form a single inventive
In addition to sufficiency, the Court considered and dismissed
Teva's arguments that the patent should be invalid for
inutility. The Court held that "all that is required to meet
the utility requirement in s. 2 is that the invention described in
the patent do what the patent says it will do". As of the
priority date, utility must be demonstrated or soundly predicted.
But, there is no separate requirement for the disclosure of
utility. The Court held that s. 27(3) does not contain any
requirement to disclose the utility of the invention. In this case,
utility was demonstrated. The Court also held that since sound
prediction is not an issue, the question of whether there is an
enhanced disclosure requirement with respect to sound prediction
need not be addressed.
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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