Formulation Patent Held not Obvious Opposition to Trade-mark Application Granted on
Appeal Application for Reissue Held to Be Compliant, Sent Back
for Examination Health Canada has published a Notice Re: Content changes to Notices of
Compliance issued for administrative submissions. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
and
Beverley Moore and
Adrian Howard
NOC Proceedings
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
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
#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: New requirements for submitting
administrative regulatory activities (submissions) to Health
Canada
Canada: Formulation Patent Held Not Obvious (Intellectual Property Weekly Abstracts Bulletin: Week Of April 1, 2013)
Last Updated: April 15 2013
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Contributor
More Popular Related Articles on Intellectual Property from Canada
Torys LLP
The Commissioner of Patents of the Canadian Intellectual Property Office (CIPO) has released its decision in CD 1457 (Decision).
Bereskin & Parr LLP
After three years, any registration can be cancelled for non-use, thus deterring plaintiffs from relying on registrations for marks that are not in use.
Oyen Wiggs Green & Mutala
Resolving legal disputes through litigation can be costly and time consuming.
Clark Wilson LLP
Hi, I'm David. I'm a trademark lawyer, avid kite-surfer and generally regarded as a great guy (Ed.: unverified opinion, but we're letting it go). That's my personal brand.
Bereskin & Parr LLP
The Federal Court's recent decision in Quality Program Services Inc. v. Her Majesty the Queen in Right of Ontario as Represented by the Minister of Energy (2018 FC 971) adds further clarification...
In association with
Mondaq Advice Centre (MACs)
Related Topics
Related Articles
Goodmans LLP
Smart & Biggar/Fetherstonhaugh
Fasken (French)
Norton Rose Fulbright Canada LLP
Related Video
Motion - Discussing What Matters Superclusters – Episode 2, Part 2 of 2 (Video)
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
