Canada: Patent Claiming One Medicinal Ingredient Not Found To Have Sufficient Product Specificity To Be Listed Against A Drug Containing Two Medicinal Ingredients (Intellectual Property Weekly Abstracts Bulletin: Week Of April 27, 2015)
The Court of Appeal has dismissed Viiv Healthcare's appeal
of a Prothonotary's decision (2014 FC 328; upheld by the Federal Court: 2014 FC 893) finding that Canadian Patent No.
2,289,753 is not eligible for listing against the combination drug
The drug contains two medicinal ingredients. The '753 Patent
relates to a novel salt of a single medicinal ingredient. Although
the patent was added to the Patent Register in 2007, both Teva and
Apotex brought motions under paragraph 6(5)(a) of the PM(NOC)
Regulations arguing that the '753 Patent was not eligible for
listing against KIVEXA.
Even though the Minister agreed that the patent should be
listed, it was found that a patent to one medicinal ingredient does
not have the degree of product specificity required to be listed
against a drug containing two medicinal ingredients.
Respondent's evidence in PM(NOC) case not struck –
found to be responsive and did not raise new allegations or
Shire has lost its appeal regarding the dismissal of its motion
to strike certain affidavit evidence submitted by the respondent
Cobalt in an application pursuant to the PM(NOC) Regulations. The
Court found that Cobalt's evidence was responsive to
Shire's evidence, and therefore it did not raise new
allegations or new facts not found in Cobalt's NOA.
Supreme Court dismisses leave application relating to utility
and sound prediction
The Supreme Court has dismissed Apotex's leave to appeal a
PM(NOC) decision (2014 FCA 250) that related to utility and
The Supreme Court had summarized the issues in the leave
application as follows: 1) How is the utility promised by the
patent to be determined? 2) How does promise construction relate to
general principles of patent construction? 3) In a subsequent
proceeding dealing with an earlier-litigated patent, what
circumstances justify a departure by a patentee or a court from a
concession or judicial determination made in a prior proceeding on
the same patent construction issue?
Pfizer's blue diamond shaped pill not found to be
Pfizer's application for the Viagra Tablet Design has been
found to not be distinctive under s. 38(2)(d) of the Trade-marks
Act, and therefore not registrable, on appeal to the Federal Court.
The application related to a three dimensional blue diamond shaped
tablet used in association with a pharmaceutical product used for
the treatment of sexual dysfunction.
In order to find distinctiveness in the appearance of a
pharmaceutical tablet, the Court found it must look at whether the
evidence establishes recognition, to "any significant
degree", among any group or groups of "ordinary
consumers" of the proposed Mark. That is, it does not need to
be distinctive to all of the relevant groups: physicians,
pharmacists and patients. However, it was found that due to the
nature of pharmaceutical products, the reality is that physicians
will only have the opportunity to associate the tablet when
prescribing (perhaps in describing the tablet to patients or in
providing samples or educational materials); that pharmacists will
only have the opportunity to associate the tablet when dispensing;
and that patients will only have the opportunity to associate the
tablet when requesting or purchasing.
In the end, the Court was not convinced that any of the groups
would associate the blue, diamond-shaped unmarked Viagra pill with
a single source.
OTHER INDUSTRY NEWS
Canada has tabled its 2015 Federal Budget and it says amendments are
coming to "the Patent Act, Trade-marks Act and Industrial
Design Act to provide intellectual property agents with a statutory
privilege for confidential communications with clients, enhancing
Canada as a place in which to invent and market inventions. This
measure will bring Canada's framework in line with other common
law countries such as Australia, New Zealand and the United
Kingdom. Amendments will also be proposed to modernize
administrative practices and increase clarity and legal certainty
for businesses. For example, proposed amendments would provide the
Canadian Intellectual Property Office with the ability to extend
key deadlines in cases of force majeure events such as floods or
Amendments to the Copyright Act are also forthcoming, including
extending the term of protection of sound recordings and
performances from 50 to 70 years. Also, Canada will implement and
accede to the Marrakesh Treaty to Facilitate Access to Published
Works for Persons Who Are Blind, Visually Impaired or Otherwise
The Federal Court made a sweeping statement in Justice Locke's decision released last Friday that submissions made to the CIPO during patent prosecution can re-emerge to haunt litigants and hit them where it hurts: the wallet.
Materials from a recent "refresher training" for examiners at the Canadian Intellectual Property Office (CIPO) highlight inconsistencies between CIPO's examination practices and Supreme Court precedent.
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