Canada: Patent Found To Claim A Method Of Medical Treatment (Intellectual Property Weekly Abstracts Bulletin - 10/7/2013)

Last Updated: October 10 2013

Edited by Chantal Saunders and Beverley Moore and Adrian Howard


Patent found to claim a method of medical treatment
Novartis Pharmaceuticals Canada Inc. v. Cobalt Pharmaceuticals Company, 2013 FC 985

The Federal Court has dismissed an application to prohibit the Minister of Health from issuing a Notice of Compliance to the Respondent Cobalt in respect of a drug containing zoledronic acid to be administered in once-yearly doses for the treatment of osteoporosis in humans.

The Court determined that the discovery of an effective once-a-year dosing for postmenopausal osteoporosis was not obvious. However, the patent was found to be invalid for claiming a method of medical treatment. The Court held that the patent fell within the skill of a medical practitioner for claiming treatment using various dosage ranges and intermittent timing.

Cobalt also asserted that the patent was ineligible for listing as it does not contain a "claim for the use of the medicinal ingredient" as required under the PM(NOC) Regulations. The Court held that there were use claims meeting the criteria for listing. Furthermore, it was considered to be improper to raise this issue at the hearing itself, rather than by way of a separate motion earlier in the proceeding. Cobalt knew the issues and should have addressed them sooner.


The MEDOS trade-mark was expunged for non-use
Medos Services Corporation v. Ridout and Maybee LLP, 2013 FC 1006

The trade-mark MEDOS has been expunged for non-use. Although new evidence was provided on appeal, it was not enough to show that the mark had been used within the three years in question. The telephone bills, correspondence, rental receipts and invoices were all alleged to show use, but the word MEDOS did not appear upon any of them. In some cases the evidence was found to be purely speculative.

Patent Appeal Board (PAB) decisions

Decision 1337

- Patent Application No. 2,285,834
The PAB described this application as a system for selectively interacting with postage meters has been found to be obvious in light of the prior art. An earlier rejection for not being statutory subject matter was not upheld, finding that the "method steps utilize technology, and are sequenced to achieve the practical result of selectively interacting with, and replenishing, postage meters from a central computer."

Decision 1338 - Patent Application No. 2,304,195
The PAB described this application as a method for the analysis and standardization of bills of resources. Bills of resources are described as itemized lists of the requirements to perform a particular task or procedure. The PAB questioned whether the computer implementation element in the claims was essential or non-essential. Although the application disclosed that it is preferred that the method of the invention be practised in the form of computer software, but the PAB saw nothing in the description of the invention that necessitates the use of computer software. Rather, the steps of the method may equally be performed by a human being. Therefore, the patent was found to be invalid for claiming non-statutory subject matter.

Decision 1339 - Patent Application No. 2,144,068
The PAB described this application as relating to automated methods and systems to detect fraudulent financial transactions, particularly in the use of credit cards. The application discusses the use of a neural network, though any type of predictive modeling technique may be used. The role of the computer in the claims was found to not be material to the solution disclosed in the application, and was not an essential element to the claim. On this construction, the claims were found to be abstract and do not define an invention.

Decision 1340 - Patent Application No. 2,248,228
The PAB described the application as relating "to methods of producing hydrocarbon-expanded rigid polyurethane foams used, for example, as an insulating material in the hollow spaces of domestic refrigerators." The PAB did not find that the utility was demonstrated across the whole claimed range. By using the "heightened disclosure" standard for sound prediction, recently questioned by the Courts, the patent was found to be invalid for failing to disclose the line of reasoning.

Decision 1341 – Patent Application No. 2,222,229
The PAB described this application as setting "out a system and method for electronic commerce (e-commerce) that separates detailed merchant content from transaction functionality over separate servers." The invention was considered to contain statutory subject matter, as the involvement of a computer was material to the manner in which the invention works. It was found that all the elements of the inventive concept were a part of the prior art, and therefore the claims were invalid for obviousness.

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