Patent Claiming One Medicinal Ingredient Not Found To Have Sufficient Product Specificity To Be Listed Against A Drug Containing Two Medicinal Ingredients (Intellectual Property Weekly Abstracts Bulletin: Week Of April 27, 2015)

Edited by Chantal Saunders , Beverley Moore and Adrian Howard

PATENT CASES

Patent claiming one medicinal ingredient not found to have sufficient product specificity to be listed against a drug containing two medicinal ingredients

Viiv Healthcare ULC et al. v. Teva Canada Limited et al., 2015 FCA 93

The Court of Appeal has dismissed Viiv Healthcare's appeal of a Prothonotary's decision (2014 FC 328; upheld by the Federal Court: 2014 FC 893) finding that Canadian Patent No. 2,289,753 is not eligible for listing against the combination drug KIVEXA.

The drug contains two medicinal ingredients. The '753 Patent relates to a novel salt of a single medicinal ingredient. Although the patent was added to the Patent Register in 2007, both Teva and Apotex brought motions under paragraph 6(5)(a) of the PM(NOC) Regulations arguing that the '753 Patent was not eligible for listing against KIVEXA.

Even though the Minister agreed that the patent should be listed, it was found that a patent to one medicinal ingredient does not have the degree of product specificity required to be listed against a drug containing two medicinal ingredients.

Respondent's evidence in PM(NOC) case not struck - found to be responsive and did not raise new allegations or facts

Shire Canada Inc. v. Cobalt Pharmaceuticals Company, 2015 FC 458

Shire has lost its appeal regarding the dismissal of its motion to strike certain affidavit evidence submitted by the respondent Cobalt in an application pursuant to the PM(NOC) Regulations. The Court found that Cobalt's evidence was responsive to Shire's evidence, and therefore it did not raise new allegations or new facts not found in Cobalt's NOA.

Supreme Court dismisses leave application relating to utility and sound prediction

Apotex Inc. v. Pfizer Canada Inc. et al., Supreme Court Docket 36227

The Supreme Court has dismissed Apotex's leave to appeal a PM(NOC) decision (2014 FCA 250) that related to utility and sound prediction.

The Supreme Court had summarized the issues in the leave application as follows: 1) How is the utility promised by the patent to be determined? 2) How does promise construction relate to general principles of patent construction? 3) In a subsequent proceeding dealing with an earlier-litigated patent, what circumstances justify a departure by a patentee or a court from a concession or judicial determination made in a prior proceeding on the same patent construction issue?

TRADEMARK CASES

Pfizer's blue diamond shaped...