Canada: Court Grants Order Adding Inventor (Intellectual Property Weekly Abstracts Bulletin - Week Of 1 December 2014)

Last Updated: December 5 2014

Edited by Chantal Saunders and Beverley Moore , Adrian Howard and Ryan Steeves

Patent Cases

Court Grants Order Adding Inventor

Dr. Falk Pharma GMBH v. Canada (Commissioner of Patents), 2014 FC 1117

The Applicant, Dr. Falk Pharma GMBH sought an order pursuant to s. 52 of the Patent Act to vary inventorship on a patent. The Application was uncontested and the Respondent did not appear. Affidavit evidence was filed indicating that the omission was inadvertent and due to an absence of knowledge of the different requirements for inventorship under Canadian and German laws. The Court was satisfied with the evidence and granted the order.

Patent Infringement Cases

Pleadings Amendment re s. 53 Allowed – Trial Judge to Determine Materiality of Inventors Names

Gilead Sciences Inc. v. Idenix Pharmaceuticals Inc., 2014 FCA 247

Idenix brought a motion to amend its pleadings. The Prothonotary granted leave to make certain amendments, however denied leave to make certain others relating to s. 53 of the Patent Act. Idenix appealed that decision to a Federal Court Judge, who granted the appeal. Gilead appealed the Judge's decision to the Federal Court of Appeal (FCA).

The FCA denied the appeal. The FCA was not persuaded that the Judge's decision was plainly wrong. The Judge held that the question of whether the disclosure of the names of the inventors of the patent in the petition is a material allegation pursuant to s. 53(1) of the Patent Act is a matter that should be considered by the trial judge.

S. 8 Case not Struck, Despite Prohibition Order Having Issued in Underlying S. 6 Proceeding

Pfizer Canada Inc. v. Teva Canada Limited, 2014 FCA 244

Drug: amlodipine

In this case, the Prothonotary refused to strike a Statement of Claim brought pursuant to s. 8 of the NOC Regulations, and this decision was upheld by the Federal Court Judge (decision here). The FCA upheld the decision.

The underlying facts alleged by Teva are complicated and relate to a number of different patents and proceedings. They are set out in the addendum to the Federal Court decision cited above. However, a prohibition order was granted to Pfizer, against Teva, on appeal of one NOC Proceeding and that patent was later found invalid in an impeachment action brought by Teva.

The FCA held that this was not an appropriate case to resolve any uncertainty in the test with respect to de novo appeals of Prothonotary's decisions. Furthermore, the FCA held that the law relating to s. 8 of the NOC Regulations is still evolving, thus it is not plain and obvious that the claim is doomed to fail.

Trademarks Decisions

Motion for Summary Judgment Granted: Court Awards $15,000 in Damages, $13,000 in Costs

Source Media Group Corp. v. Black Press Group Ltd., 2014 FC 1014

This was a motion for summary judgment claiming relief under the Trademarks Act for the infringement of the Plaintiff's registered trademark NEW HOME LIVING arising from the Defendant's unauthorized use of the trademark NEW HOME LIVING.

The Defendants admitted using the same registered trademark of the Plaintiff, NEW HOME LIVING, up until 2012. In 2012, the Defendants admitted that they stopped using "New Home Living" on its publication, but continued to use a reference to the website newhomelivingbc.com until 2014. The Court therefore found that the Defendants have infringed, as admitted, the Plaintiff's trademark during this period, and have passed off their publication, both in print and online form, as being associated or connected to the Plaintiff's trademark. The Court held, however, that there was insufficient evidence before it to support a finding of depreciation of goodwill.

The Plaintiff also argued that the Defendants should not have included settlement discussions in their submissions, as these were subject to a settlement privilege. The Defendants provided a letter from the Plaintiff's counsel which discusses an offer made by the Defendants. The Court held that the Defendants could have limited their comments to the fact that they participated in settlement discussions, and that such disclosure, as made by the Defendants, breached the settlement privilege and should not be encouraged.

The Court held that the Defendants demonstrated a "reproachable attitude" in using the Plaintiff's trademark, which added to the damages of infringement sought. While no evidence of loss and goodwill was submitted, the Plaintiff submitted that an award in the $15,000 to $25,000 range would be adequate. The Court considered applicable case law, and noting the Defendants' "attitude of persistently using the registered trademark", found that damages in the amount of $15,000 were reasonable. In respect of the Defendants' inclusion of documents pertaining to settlement discussions, the Court held that while the actions were inappropriate, the Defendants' conduct did not rise to a level where cost sanctions were necessary. In view of the Defendants' lack of meaningful participation in the proceedings, failure to stop using the trademark reference online, and the fact that "the proceedings should not have gone that far", the Court granted costs in a lump sum amount of $13,000 (plus post-judgment interest at 5%) in favour of the Plaintiff.

Industry News

Industry Canada has announced that the PM(NOC) Regulations will be amended to address the exclusion of certain pharmaceutical patents from Health Canada's Patent Register following recent Federal Court and Federal Court of Appeal decisions relating to patents claiming single medicinal ingredients found in combination drugs. There will be a public consultation once the proposed amendments are pre-published in the Canada Gazette.

The BLG Life Sciences Group has published LIFESIGNS: Life Sciences Legal Trends in Canada, a Report on Intellectual Property, Litigation, Corporate Commercial legal trends and industry developments in Canada.

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