Canada: Formulation Patent Held Not Obvious (Intellectual Property Weekly Abstracts Bulletin: Week Of April 1, 2013)

Last Updated: April 15 2013

Edited by Chantal Saunders and Beverley Moore and Adrian Howard

NOC Proceedings

Formulation Patent Held not Obvious
Astrazeneca Canada v. Ranbaxy Pharmaceuticals Canada
Drug: omeprazole

The Court granted a Prohibition Order to Astrazeneca, preventing Ranbaxy from entering the market with a generic version of ompeprazole until the expiry of the patent at issue in the proceeding. The allegations as to obviousness of the patent were found not to be justified.

The main issue between the parties was whether the claimed formulation was obvious to a person of skill in the art. The Court considered the evidence and the legal test and held that while the need for a solution was evident from the prior art, the solution was not provided. In considering whether the invention was obvious to try, the Court held that the experimentation necessary to achieve the result was prolonged, complex and far from routine. Furthermore, if there was motive to find a solution in a competitive marketplace, yet other parties were unable to do so, this factor would point towards a solution that was not "obvious to try".

Trade-Mark Decision

Opposition to Trade-mark Application Granted on Appeal
International Clothiers Inc. v. Dorna Sports

International Clothier opposed a trade-mark application for MOTOGP and design (the "Mark"). The Trade-marks Opposition Board (TMOB) denied the opposition. The application was filed based on proposed use. International Clothier owns the trade-marks MOTO, MOTO JEANS, MOTO SPORT, MOTO GEAR, and MOTO TECHGEAR in association with clothing.

The Court held that the standard of review was correctness given that the new evidence would have materially affected the TMOB's decision. The Court found that Dorna had not established that it was entitled to register the Mark, nor that a consumer would not be confused. Further, the Court held that the Mark is not registrable on the basis of confusion with International Clothier's registered marks. The Court held that the mark is not distinctive of Dorna because the online sales relied on by Dorna were shown by International Clothier to originate in the United States and there was therefore no evidence showing third party use in Canada.

The Court denied International Clothier's request for solicitor and client costs.

Patent Appeal Board Decisions

Application for Reissue Held to Be Compliant, Sent Back for Examination
#1330: CA 2,413,004 Self-Aligning Hitch

In this case, the patent was submitted for re-issue, as the Patentee contended that the issued patent lacked claims to protect the invention claimed in its US Patent. Re-issue Board rejected the application for reissue, holding that that the proposed claims did not claim the same invention as the issued patent. This was the only question before the Patent Appeal Board (PAB).

The PAB held that it is not necessary that the invention sought in an application for reissue relate to the same inventive concept as in the issued claims. Furthermore, this is not required under s. 47 of the Patent Act, or the relevant jurisprudence. The PAB then held that any issues regarding compliance with unity of invention under s. 36 of the Patent Act are for the examiner to assess. Finally, the PAB held that the potential for a third party to be prejudiced by a reissue is a factor to consider. However, simply invoking possible third party rights without something more would impair the power granted by Parliament. In this case, there was no evidence that demonstrated a third party would be adversely affected, and the patentee had sufficiently proven that an accident or mistake occurred.

Business methods patent application refused for obviousness
#1332: CA 2,195,252 System and Method for Distributing Information for Storage Media

The Commissioner of Patents has determined this application should not be granted because every claim would be obvious to a person of skill in the art. Generally speaking, the patent claimed a product, methods and systems to update the data and software provided with the GPS systems installed in vehicles. The Patent Appeal Board ascertained the inventive concepts on a claim-by-claim basis and found each would be obvious to a skilled person in light of the prior art.

Although the examiner had also refused the application for comprising non-statutory subject matter, the PAB was unwilling to do so. Citing the Federal Court of Appeal in Amazon, the patent was found to comprise "a number of essential elements in a novel combination" and was directed to statutory subject matter. Additional concerns from the examiner relating to insufficiency and indefiniteness were also reversed.

Other Industry News

Health Canada has published a Notice Re: Content changes to Notices of Compliance issued for administrative submissions.

Health Canada has published a Notice Re: New requirements for submitting administrative regulatory activities (submissions) to Health Canada

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