Formulation Patent – Allegations Of Non-Infringement, Obviousness And Lack Of Utility Justified (Intellectual Property Weekly Abstracts Bulletin: Week Of March 2, 2015)

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

PATENT CASES

Formulation patent - allegations of non-infringement, obviousness and lack of utility justified

Laboratoires Servier and Servier Canada Inc. v. Canada (Health), 2015 FC 108

Drug: gliclazide

Servier sought a prohibition order against Apotex in relation to its DIAMICRON MR gliclazide product. The application was dismissed. The patent at issue claimed a new formulation for a breakable modified release tablet. The Court considered allegations of non-infringement, obviousness and lack of utility.

The Court held that Apotex' allegations of non-infringement were justified, as its product did not contain a binder, which was an essential element of the patent. Furthermore, the in vitro dissolution profile of Apotex' product was not identical to that in the patent. The Court conducted the obviousness analysis and concluded that the skilled worker would have been able to combine the mosaic of prior art into the claimed invention, as the step was not high and the gap was not broad.

The Court then considered the inutility allegations, holding that as of the filing date, the patent must either disclose demonstrated utility or a basis for a sound prediction of utility. Servier relied on two studies as evidence of demonstrated utility. However, these studies were not referenced in the specification of the patent. Furthermore, the study included in the patent tested a single tablet. The Court held that this was not sufficient for utility to be demonstrated. The Court then held that the patent was not soundly predicted.

TRADEMARK CASES

Business delays in opening a Canadian establishment found not sufficient to support non-useof the markSTK

Gouverneur Inc. v. The One Group LLC, 2015 FC 128

This is an appeal from a decision of the Registrar who refused to expunge the Respondent's mark pursuant to section 45 of the Trademarks Act. The mark STK (the "Mark") was registered in 2008 for a high energy, female-friendly steakhouse.

In the three years after it was registered the Mark was never used, although there were discussions with various hotels and property owners to open a STK establishment in Canada. It was submitted that after the recession all those deals fell through.

The Court found on the evidence that while the discussions with hotels and property owners fell through, there was not enough to support a finding that the non-use of the Mark was attributable to decisions made by...