Patents Year In Review 2013

This article summarizes noteworthy Canadian patent law decisions and developments from 2013.

1. Plavix: Court of Appeal Addresses "Promise of the Patent" Doctrine

   For several years, Canada's Federal Court and Federal Court of Appeal have wrestled with the "promise of the patent" doctrine. In some cases, the Courts have ventured beyond explicit promises to dissect the specification and elevate statements of benefit or advantage to become promises of utility. Where those benefits or advantages were neither demonstrated nor soundly predicted, patents have been invalidated.

   In sanofi-aventis v. Apotex Inc., 2013 FCA 186, the Court of Appeal addressed the validity of the Plavix® patent. Previously, the trial judge in an impeachment action brought by Apotex had found the patent invalid on the bases of inutility and obviousness. The trial judge invalided the patent notwithstanding an earlier decision of the Supreme Court of Canada in 2008 (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61), made in the context of a Patented Medicines (Notice of Compliance) Regulations proceeding, which endorsed the patent's validity.

   At trial, the judge found that the patent promised that the claimed compound could be used in humans; however, he also found that such use was not soundly predicted on the basis that there was insufficient disclosure in the patent's description in to support the prediction.

   On appeal, the Federal Court of Appeal disagreed with the trial judge's finding of lack of utility. In particular, the Court of Appeal clarified that the "promise of the patent" doctrine does not necessarily apply in all cases. In this regard, where there is no explicit promise in a patent description, no promise should be "read in" to a patent. In the case of Plavix, there was no explicit promise of use in humans, but rather only identification of certain advantages over the prior art. As such, because those advantages were demonstrated by the patentee, the patent was declared valid. In addition, the Court of Appeal overturned the trial judge's finding of obviousness.

   The Court of Appeal's decision is not the end of the road for the Plavix patent. Recently, Apotex was granted leave to appeal the Court of Appeal's decision to the Supreme Court of Canada. A hearing is scheduled for November 3, 2014.

2. Eurocopter: Court of Appeal Addresses the Disclosure Requirement for Sound Prediction and Confirms an Award of Punitive Damages for Patent Infringement

   In...