Canada: Amendments To Add Prior Art Not Allowed When Just Months Before Trial (Intellectual Property Weekly Abstracts Bulletin: Week Of November 25, 2013)

Last Updated: November 28 2013

Edited by Chantal Saunders and Beverley Moore and Adrian Howard

PATENT ACTIONS

Amendments to Add Prior Art Not Allowed when Just Months Before Trial

Abbvie Corporation v. Janssen Inc., 2013 FC 1148

This patent infringement action started in 2009. The Parties are due to start the trial at the beginning of December. By this motion, Janssen sought to amend its pleadings to include additional pieces of prior art brought to its attention by its expert witness. The Court refused to allow the amendments.

The Court held that the question is not simply whether an expert can address the new art. The Court held that at this time, a party has shaped its case, selected the issues to address, and picked the experts needed to address those issues. These are not trivial or formalistic amendments, and go to the heart of one of the major invalidity issues. The prior art "is not a simple truth; it is an assertion as to what might have been." The Court held that the trial cannot simply be put off by a few weeks in order to allow time to deal with these new issues. Thus, the amendments were not allowed.

OTHER CASES OF INTEREST

Court Appears to Contemplate More than One Collection of Damages Possible after NOC Proceeding is Dismissed

Apotex v. Schering Corporation et al, 2013 ONSC 1411

Drug: ramipril

In this action, Apotex is suing for additional damages, including treble damages and an accounting of Sanofi's profits, pursuant to inter alia, the UK Statute of Monopolies, the Ontario Statute of Monopolies, and the Trade-Marks Act. Apotex has already been awarded damages in Federal Court pursuant to s. 8 of the NOC Regulations (decision here, summary here). That decision is currently being appealed to the Federal Court of Appeal. All of these claims are alleged to stem from Apotex being delayed in entering the market with its Apo-Ramipril product as a result of proceedings brought pursuant to the NOC Regulations.

Sanofi brought the within motion to strike the Statement of Claim or, in the alternative, stay the within proceeding pending the appeal of the Federal Court action. Prior to the hearing of the motion, Sanofi advised that it wished to argue only the motion to strike, due to the recent decision of the Court in a similar case (decision here, summarized here, appeal upheld, summarized here). The Court refused that request, and ordered the parties to argue the motion to stay the proceedings.

The Court then held that the proceeding should be temporarily stayed, pending the outcome of the appeal of the Federal Court action. In addition, the Court held that the mere fact that s. 8 damages were awarded does not preclude the possibility of recovery of further damages in the present case. Any amount awarded to Apotex in the s. 8 proceeding may be a factor in taking into account how much more, if any, damages should be awarded in the present case.

Ontario's ban on private label drugs withstands challenge

Katz Group Canada Inc. v. Ontario (Health and Long-Term Care), 2013 SCC 64.

A challenge to Ontario's legislation that was enacted with the aim to bring down the price of generic drugs has failed. The ban on the sale of private label drugs will remain in place.

In an attempt to bring down the price of generic drugs, Ontario had enacted two complimentary statutes that regulated generic drugs. Amendments in 2006 prohibited manufacturers from providing rebates to pharmacies, because the rebates were said to account for 40% of the price manufacturers charged for drugs. This was replaced by permitting payment for professional allowances.

However, Ontario's Ministry of Health and Long-Term Care reported in 2007 that some of the leading generic drugs were three times more expensive in Ontario than in France, Germany and the United Kingdom, five times more expensive than in the United States, and twenty-two times more expensive than in New Zealand. Further amendments removed the provisions for the professional allowances which had taken the place of the rebates.

Amendments in 2010 also prevented pharmacies from controlling manufacturers who sell generic drugs under their own name, but do not fabricate them. The restrictions essentially banned the sale of "private label products" in Ontario.

The Supreme Court did not assess whether the 2010 Regulations were necessary, wise or effective. The regulations merely needed to be consistent with the statutory purpose of the overarching legislative scheme. It was found that the original legislative intent was to combat high drug prices caused by manufacturers providing hidden discounts. It was also found that the 2010 private label Regulations served to prevent another possible mechanism for circumventing the ban on rebates. This meant that the regulations were not ultra vires, and thus the appeal was dismissed.

TRADE-MARK CASES

Decision on Opposition Set Aside and Application for Trade-mark Refused

International Stars S.A. v. Simon Chang Design Inc., 2013 FC 1041

This is an appeal of a decision of the Registrar of Trade-marks (the Registrar) denying the opposition by International Stars to the registration of the trade-mark ZENERGY BY/PUR SIMON CHANGE & Design (the Mark) in association with sport clothing. International Stars alleged confusion between the Mark and its trade-mark ENERGIE for sport clothing.

The Court considered the test for distinctiveness and confusion, as well as the Registrar's decision and reasons. The Court concluded that the Registrar made an error in law by conducting a side-by-side comparison of the two marks and finding that confusion is unlikely. The Court considered the evidence de novo, found a strong resemblance between the two marks and concluded that confusion is likely.

The Registrar's decision was set aside and the Court directed the Registrar to refuse the application for the Mark.

OTHER INDUSTRY NEWS

CIPO has published a revised Chapter 14 of the Manual of Patent Office Practice (MOPOP) on Unity of Invention. The chapter came into effect on November 21, 2013.

About BLG

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.

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.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions