The Court clarified when recourse to the specification is
appropriate to construe the inventive concept of a claim; and
The Court held that the determination of the inventive concept
is a question of law.
Recourse to Specification
In Allergan the Federal Court of Appeal held
conclusively that, where the inventive concept of a claim is not
readily discernible from the claim itself, recourse is to be made
to the specification.
In the years following the release of Sanofi, certain
generics (e.g. Sandoz) had argued that recourse is only to be
made to the specification where (i) the patent was a selection
patent; or (ii) the claim was to a bare chemical compound.
Indeed, the trial judge in Allergan may be read to have
suggested that the U.K. position (taken from Pozzoli) does
not support recourse to the specification (see paras. 136-141) except in the case of a
selection patent or the case of a bare chemical compound.
In Allergan neither of those proposed exceptions
applied. No party asserted that the patent at issue was a selection
patent, and the claim at issue was to an ophthalmic topical
pharmaceutical composition (which is not to a bare chemical
compound), yet the Court of Appeal clearly construed the inventive
concept (absent from the claims) by reading the patent as a
Accordingly, in Allergan the Court of Appeal has
clearly affirmed Justice Crampton's conclusion that the
inventive concept need not be derived solely from the claims or
even referred to in them. This is consistent with prior appellate
jurisprudence on this point (see, for example, Laboratoires
Servier v. Apotex Inc. (2009), 75 C.P.R. (4th) 443
("Servier") at para. 58 (F.C.A.)).
To the extent that parties have sought to take a narrow reading
of Sanofi, that reading is now no longer tenable.
Question of Law
The Federal Court of Appeal also held that construing the
inventive concept of the claims is a question of law. This decision
may be significant to parties seeking to appeal a negative finding
on the question of obviousness where the Court rejected its
proposed construction of the inventive concept.
In PM(NOC) applications this finding may most often be
beneficial to generics seeking to overturn a finding that their
allegation that a claimed invention was obvious was not justified.
legislative change, generics will be more likely to find
themselves in the role of appellant than innovators.
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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