2019 Life Sciences Year In Review

The big news for Canadian Patent law in 2019 was the coming into force of numerous changes to the Patent Act and Patent Rules on October 30, 2019. Among these are changes relating to various filing requirements and deadlines. We have summarized many of these changes in A Practical Guide to the transition to Canada's new Patent Act and Rules. The most notable changes relate to the introduction of third party rights in relation to applications and patents for which maintenance fees are not paid within the prescribed time. One important change of interest to many life sciences innovators is that there are no longer excess page fees for sequence listings submitted in electronic format.

The courts have been busy too, releasing a number of decisions that highlight issues of claim construction and obviousness, overbreadth and obviousness, citability of art with respect to obviousness, and did we mention obviousness? The Federal Court also considered issues of timing with respect to listing a patent on the Patent Register. In July, the Federal Court indicated that it is willing to consider the possibility that so-called "use claims" could be directly infringed by drug manufacturers. The year ended with a final agreement on CUSMA/USMCA.

We summarize these developments below.

Claim Construction - What's in a name?

Two cases highlight the importance of the language of the claims, underscoring the notion that the specific terms used in the claims can be a self-inflicted wound that can impact the scope of the claims, and potentially lead to invalidity.

The patent at issue in Tearlab Corporation v I-MED Pharma, 2019 FCA 179 ("Tearlab"), related to an invention used to measure the osmolarity of bodily fluids. The Federal Court found that the patent was invalid as being anticipated and obvious. The main issue on appeal was construction of the term "sample receiving chip". The Federal Court construed the term broadly to comprise a substrate and a sample region of the substrate whereupon the properties of the sample are detected. On appeal, Tearlab argued that a purposive construction required that the sample receiving chip have certain properties such as rigidity, planarity, integrated electrodes, and volume independence (i.e. a microchip). The specification had some references to microchip but the claims only referred to "chip", there was no mention of rigidity in the claims or specification and only a minor mention of planarity. The Federal Court of Appeal found that there was no error by the Federal Court...