Canada: Court Grants Order Correcting Inventorship, But Declines To Order Recording Of Documents At Patent Office (Intellectual Property Weekly Abstracts Bulletin — Week Of October 10)

Patent Decisions

Court Grants Order Correcting Inventorship, but Declines to Order Recording of Documents at Patent Office
Qualcomm Incorporated v. Canada (Commissioner of Patents), 2016 FC 1092

Qualcomm sought an order pursuant to s. 52 of the Patent Act to add Mr. Rychlik as the sole inventor and to remove two of the named inventors. The Application was uncontested and the Respondent, the Commissioner of Patents, did not appear.

Qualcomm submitted that Mr. Rychlik was correctly named as inventor in the US Application, but, as a result of an administrative error, two other employees were incorrectly named as inventors on the Request form for the PCT Application. While Qualcomm had filed replacement sheets to name Mr. Rychlik as sole inventor and a Notification of the Recording of a Change in Inventorship for the PCT Application was issued, the PCT Application entrance into Canada was based on the originally published PCT Application.

Qualcomm also sought to have a copy of these replacement sheets and the assignment from Mr. Rychlik to Qualcomm (together the "Replacement Documents") recorded at the Patent Office against the patent.

Affidavit evidence was filed indicating that Mr. Rychlik was the sole inventor, that both named inventors consented to their removal, and that the incorrect naming of inventors was by inadvertence or mistake and was not for the purpose of delay. The Court was satisfied with the evidence and granted the order.

The Court declined to order that the Replacement Documents be recorded at the Patent Office. Section 52 provides that the Court may vary or expunge a record. However, Qualcomm was unable to establish that the recording of a replacement document represented variation or expungement of a record of the Patent Office. The Court also noted that Qualcomm could achieve its objectives without the Court ordering the recording of the Replacement Documents.

Expert "Blinding" is a Question of Relevance, Reliability and Weight, but not Admissibility
Gilead Sciences, Inc. v. Canada (Health), 2016 FC 857

On August 23, 2016, the Federal Court released its public judgment granting the Order of prohibition for Gilead's '619 Patent. The '619 Patent covered a prodrug useful in the treatment and prophylaxis of HIV. Apotex had alleged that the '619 Patent was invalid on the basis of anticipation, obviousness, invalid selection patent and inutility.

The Court first addressed the issue of "blinding" of experts. Gilead had provided the legal framework to its experts early concerning anticipation, obviousness and utility. In contrast, Apotex stated that it had waited to provide this information until the experts had drawn their own conclusion on various issues, including the promise of the patent, claim construction and prior art. The Court preferred the approaches taken in the recent decisions in Eli Lilly Canada Inc v Apotex Inc, 2015 FC 875, and Shire Canada Inc v Apotex Inc, 2016 FC 382. The Court stated that "the blinding of a witness is a factor, one of perhaps several, that goes to weight, but it is not a matter that goes to admissibility". The Court also noted that "the blinding issue is a question of relevance, reliability and weight, and is not a doctrinal matter".

The Court held that the '619 Patent was not anticipated since the EP 214 application did not disclose tenofovir disoproxil (TD). The Court also held that the '619 Patent was not an invalid selection patent from the genus disclosed in the EP 214 Application. The evidence and law did not establish that the EP 214 Application encompassed TD. The Court noted that even if the Application did include TD, it would still find that TD presented particular and special advantages over other members of the claimed genus that were not disclosed.

The '619 Patent was also not found to be obvious. The Court noted that there was strong motivation to invent a drug, including financial and medical motivation, as well as motivation to find a nontoxic, stable drug with effective oral delivery. However, the Court concluded that these motivations to invent a drug with TD's properties did not render the invention obvious or obvious to try.

Finally, in respect of utility, the Court found that the goal of the '619 Patent was to improve treatment of HIV, whereas the promise was to offer efficient oral delivery of the compound. After defining the promise of the '619 Patent, the Court held that utility was demonstrated.

Patent Related Decisions

IP Licence Provided Contractual Right, Not a Property Right in the Asset
Golden Opportunities Fund Inc v Phenomenome Discoveries Inc, 2016 SKQB 306

The Applicant, the court appointed receiver, sought an order approving the sale of the Debtor's assets, and vesting the Debtor's assets free and clear of encumbrances, except for those permitted by the Purchase and Sale Agreement. Yol Bolsum Canada Inc. ("YCBI") objected to the relief sought by the Receiver pertaining to the draft Vesting Order. YCBI asserted that it had an interest in the property of the Respondent, provided by a Licence Agreement, which the Receiver sought to sell. Counsel for YCBI suggested that s. 65.11(7) of the Bankruptcy and Insolvency Act and s. 32(6) of the Companies' Creditors Arrangement Act now prohibits a receiver from disclaiming an agreement pertaining to intellectual property.

The Court noted that these sections did not apply to court-appointed receivers. Rather, the Court found that the decision in Royal Bank of Canada v Body Blue Inc. (2008), 2008 CanLII 19227 (ON SC) continued to apply to licences within the context of court-appointed receiverships. In that case, the Court stated that a licence is a contractual right, and does not confer any interest or property in the thing being licenced.

YBCI's right in the present case is a contractual right. Therefore, the Court concluded that YBCI is entitled to pursue a claim against the net sale proceeds, but has no property right in the assets of the Respondent that are the subject of the Receiver's sale.

Industry Update

Health Canada has published a Consultation on the Health Canada Draft Guidance Document: Quality (Chemistry and Manufacturing) Guidance: New Drug Submissions (NDSs) and Abbreviated New Drug Submissions (ANDSs). This consultation period is stated to be open until December 4, 2016.

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