Canada: Federal Court Grants Prohibition Order With Respect To A Use Patent (Intellectual Property Weekly Abstracts Bulletin: Week Of July 27, 2015)

Last Updated: July 31 2015
Most Read Contributor in Canada, September 2016

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

NOC Proceedings

Federal Court Grants Prohibition Order with Respect to a Use Patent

Eli Lilly Canada Inc. v. Apotex Inc., 2015 FC 875
Drug: tadalafil

The Federal Court considered and dismissed allegations relating to double patenting, insufficiency and lack of standing. The Court granted the prohibition order sought by Eli Lilly.

Patent Infringement Actions

Appeal Dismissed; Patent Claims Upheld as Invalid due to Obviousness

E. Mishan & Sons Inc. v. Supertek Canada Inc., 2015 FCA 163

The Federal Court of Appeal (FCA) dismissed an appeal from a trialdecision finding the claims at issue in a patent infringement case to be invalid for obviousness (decision here; summary here).

The appellant argued that a particular document should not have been included in the prior art. In particular, the appellant argued that the fact that a document was found by a lawyer, should not lead to a conclusion that it would have been found by the skilled person. The FCA held that this issue was reviewable as a finding of mixed fact and law, and would not be overturned without a palpable and overriding error. The FCA refused to reweigh evidence in this analysis, and the finding stood.

The FCA then considered the appeal in relation to obviousness. It held that it was not convinced that the Federal Court misapplied the fourth step of the Sanofi test. Furthermore, the FCA held that there was evidence to support the factual findings made by the trial judge in coming to his conclusion that the claims were obvious. Thus, the appeal was dismissed.

Other Proceedings of Interest

FCA Finds Patent Should be Listed on the Patent Register for Combination Drug

Eli Lilly Canada Inc. v. Attorney General of Canada, 2015 FCA 166
Drug: spinosad; milbemycin oxime

In this case, the FCA overturned the Federal Court Decision dismissing Eli Lilly's application for judicial review of a decision of the Minister of Health refusing to list a patent on the Patent Register (Decision here; summary here). The FCA returned the decision to the Minister for reconsideration.

The drug product contains two medicinal ingredients. The patent at issue claimed oral formulations specifically relating to one of the medicinal ingredients. The disclosure indicated that the formulation may include compounds with antiparasite activity such as milbemycins. The FCA held that the Federal Court misunderstood the requirements of paragraph 4(2)(b) of the NOC Regulations.

The FCA held that the Federal Court had not made an error when it overturned the Minister's construction of the patent, finding it to claim a formulation which included both spinosad and milbemycin oxime. However, the Court had erred in not then overturning the decision not to list the patent on the Patent Register. Once the finding was made that the patent claimed a formulation containing the approved medicinal ingredients, it was eligible for listing on the Patent Register.

Court Upholds Minister's Decision to Exclude Documents from an Access to Information Request on the Basis of Solicitor-Client Privilege

Information Commissioner of Canada v. The Minister of Health, 2015 FC 789
Drug: pantoprazole

The Office of the Information Commissioner of Canada (OICC) sought judicial review of the Minister of Health's refusal to disclose information responsive to Apotex's request for records related to the processing of an Abbreviated New Drug Submission (ANDS) and the issuance of a Notice of Compliance (NOC). The Judicial Review was largely dismissed.

Apotex had started litigation against the Government, claiming damages due to refusal or delay in approving drug submissions. It made an Access to Information (ATI) request relating to one of the drugs at issue. 47 pages were produced in their entirety, and 8 further pages were produced in redacted versions, based on solicitor-client privilege. Apotex filed a complaint with the OICC. The OICC investigated, reported the results to Apotex, and started this proceeding, with Apotex's consent, after Health Canada maintained its position that the solicitor-client exemption applies.

The Court held that the question of whether the Minister properly applied the exemption of solicitor-client privilege is reviewable on a standard of correctness, and the question of whether the Minister's discretionary decision to refuse disclosure is reasonable is reviewable on a standard of reasonableness. The Court then considered the solicitor-client exemption and found that it applied to all but one part of one of the documents. The Court held that there was no abuse of discretion, and that the severance was properly exercised. One further sentence was ordered disclosed.

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

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.