Canada: Improper Priority Claim Is Not A Material Allegation Which Renders Patent Void Under s.53 (Intellectual Property Weekly Abstracts Bulletin — Week Of April 4)

Last Updated: April 7 2016
Article by Chantal Saunders, Beverley Moore and Adrian J. Howard

Most Read Contributor in Canada, September 2016


Improper priority claim is not a material allegation which renders patent void under s.53

Uponor AB v. Heatlink Group, 2016 FC 320

This was a patent infringement action, relating to an invention that pertains to a fast, uniform and contactless method of crosslinking polymers using infrared radiation. Uponor sued for patent infringement and the Defendants counterclaimed with allegations of invalidity, including anticipation and obviousness, insufficiency of description and indistinct claims, lack of utility, overbreadth, unpatentable subject matter, and non-entitlement to priority claims. The Defendants also claimed that the patent was void under section 53(1) of the Patent Act and that the Plaintiff was guilty of laches and acquiescence in bringing the action.

The Federal Court (FC) held that some of the claims were valid and infringed. The case had been bifurcated and the quantum of damages is to be determined by reference at a later date.

In dismissing the section 53 allegation, the FC noted that the inventors were neither involved in patent drafting nor were they ever "applicants" as explicitly contemplated by the Patent Act. Further, the only effect of an improper priority claim would be that the applicant is not entitled to the benefit of the earlier claim date. The FC stated that for an allegation to be material, it must somehow affect how the public makes use of the invention. Therefore, an improper claim to priority is not a material allegation which renders the patent void. The FC also dismissed the Defendants' claim that the Plaintiff was guilty of laches and acquiescence.

With respect to the allegations of invalidity, the FC held that most of the patent's claims were invalid for lack of utility, insufficient disclosure and for anticipation and/or obviousness. The FC found that the claims providing for the elimination of wavelengths by use of filters were invalid not only for inutility, but also for insufficient disclosure, as they do not enable the person of skill in the art to understand what type of filter to use in order to achieve the benefits promised by use of filters.

On the issue of infringement, the FC found direct infringement by two of the Defendants. The FC concluded that the Plaintiff was not entitled to an accounting of profits, as it failed to demonstrate some basis for the excise of equity.

Appeal of a decision to not strike out Statement of Claim in its entirety dismissed

Gilead Sciences, Inc. v. Teva Canada Limited, 2016 FC 336

The Court dismissed Teva Canada Limited's appeal from the Prothonotary's Order declining to strike out Gilead's Statement of Claim in its entirety. The Prothonotary struck some of the pleadings, but allowed the action to continue on the basis of amended allegations of a likely future (quia timet) infringement.

Teva did not dispute that the Prothonotary identified the correct legal test for maintaining a quia timet proceeding. Rather, Teva alleged that the Prothonotary erred in the application of the test to the facts, namely that the Prothonotary wrongly ignored the temporal aspect of the test for imminent harm and misapplied the requirement that there be a "virtual inevitability" of future harm. Applying the standard of review of palpable and overriding error, the Court dismissed Teva's appeal under Rule 51.

The Court accepted Teva's point that the issuance of a NOC is not inevitable, but, at the same time, the likelihood of that event was not a matter of speculation. Rather, the question is whether the issuance of a NOC to Teva in these circumstances was sufficiently likely that Teva would then be positioned to act on its stated intention to immediately enter the market. In the decision below, the Prothonotary concluded that there was a strong possibility of infringement present, as Teva's product had been contingently approved by the Minister and Teva had equivocally stated that it would enter the market upon receipt of a NOC. The Court found that this conclusion could not be characterized as an error.

The Court held that the Prothonotary had not wrongly conflated the temporal aspect of imminence with the likelihood of a NOC issuing followed by an infringement. The Court also recognized that the temporal aspect of imminence may be a relevant consideration in the determination of the likelihood of a future event in some cases, and a subordinate consideration in others.


Motion to Strike Pleadings Relating to Additional Acts of Infringement within the Defendant's Knowledge Dismissed

Emerson Electric Co. v. Canadian Tire Corporation Limited, 2016 FC 308

Canadian Tire brought a motion to strike two sentences from each of five paragraphs in the Statement of Claim. In the alternative, particulars were sought. Each of the impugned paragraphs alleged and claimed in respect of additional acts of infringement that were within the Defendant's knowledge. The Court dismissed the motion, holding that the broad pleadings were tied to particular characteristics defining the infringement, and the Defendant knew better than the Plaintiffs what infringements, if any, it has committed. Furthermore, the task of identifying the impugned products was held not to be onerous.

Appeal of Board Rejecting Opposition Upheld

Tiger Calcium Services Inc v. Compass Minerals Canada Corp, 2015 FC 1257

This is an appeal pursuant to section 56 of the Trademarks Act. The Trademarks Opposition Board ("Board") rejected the opposition of Tiger Calcium Services Inc. ("Tiger"). Tiger opposed the registration of the proposed trademark ENVIRO-GUARD in association with wares for "de-icing and ice prevention preparations for roadways and sidewalks and other paved surfaces." Tiger made a number of submissions before the Board, including confusion with its registered trademarks. The Board focused on confusion and rejected the opposition after reviewing the five factors for confusion in section 6(5) of the Trademarks Act.

New evidence was submitted by Tiger, but the Court found that it would not have materially changed the findings of the Board and the standard of review was therefore reasonableness. The Court further refused to consider a new issue that it determined was not raised in the Statement of Opposition. The Court concluded that the "conclusions reached by the Board for each ground are well reasoned and supported by the evidence, and as such, owed deference by this court." The appeal was dismissed and costs awarded to the Respondent.

Supreme Court Leave Applications

Pfizer Canada Inc. v. Teva Canada Limited, 36772
Drug: sildenafil

The Supreme Court has indicated that on Thursday, April 7, 2016 it will issue its decision on whether Pfizer should be granted leave to appeal in a case brought by Teva pursuant to section 8 of the NOC Regulations. In the case before the Federal Court, and Federal Court of Appeal, Pfizer sought summary judgment in respect of Teva's s. 8 claim. Pfizer had settled a NOC proceeding against ratiopharm. Although the agreement is confidential, it appears that Pfizer consented to the issuance of a NOC, and ratiopharm waived its s. 8 damages. Ratiopharm was purchased by Teva. The ratiopharm sildenafil product was discontinued, and Teva continued to sell its sildenafil product. Pfizer argued that its settlement agreement with ratiopharm precluded its successor, Teva, from claiming s. 8 damages in relation to sildenafil. The Federal Court and Federal Court of Appeal disagreed, and refused to grant summary judgement.


The Competition Bureau has published updated Intellectual Property Enforcement Guidelines. Please see BLG's summary of those Guidelines.


Health Canada has published an Updated Guidance Document For Clinical Trial Sponsors: Clinical Trial Applications.

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Health Canada has published a Summary Report on the Consultation on a Framework for Consumer Health Products.

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