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
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders and Beverley Moore and Adrian Howard


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.


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.


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.


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.

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