Pharma In Brief - Federal Court Refuses To Invalidate Issued Patent Based On Deficient Fee Payment Made During Prosecution

Case: Apotex Inc. v Pfizer Canada Inc. et al., 2016 FC 136 (Court File Nos. T-1064-13 and T-393-14)

Drug: XALATAN® (latanoprost)

Nature of case: Motion for summary judgment to impeach a patent

Successful party: Pfizer Canada Inc.

Date of decision: February 4, 2016

Summary

The Federal Court found that failure to pay the correct "final fee" owing prior to patent grant was not a basis to invalidate a subsequently issued patent. Applying the Federal Court of Appeal's decision in Corlac Inc. v. Weatherford Canada Inc., 2011 FCA 228 (Weatherford), the Court distinguished between a patent application and an issued patent such that administrative defects during the patent application stage are not a basis to invalidate a patent post-issuance.

Pfizer Canada Inc. (Pfizer) was represented by Norton Rose Fulbright Canada LLP.

Background

Pfizer markets latanoprost ophthalmic solution under the name XALATAN® for treatment of glaucoma and ocular hypertension. Apotex Inc. (Apotex) sells a generic version of latanoprost. Apotex brought an action pursuant to section 8 of the of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, seeking to recover damages following a successful appeal of a prohibition order. Pfizer counterclaimed alleging that Apotex's Apo-latanoprost product infringed Canadian Patent No. 1,339,132 (the 132 Patent). Apotex brought a separate action for impeachment of the 132 Patent. Apotex then moved for summary judgment seeking to invalidate the patent on the grounds that the "final fee", a payment owing during the application phase prior to patent issuance, was not paid in full.

Apotex argued that failure to pay the correct final fee resulted in the underlying patent application being "forfeited" pursuant to section 73(1) of the Patent Act and that no valid patent could issue on a forfeited patent application.

132 Patent remains valid

Apotex relied principally on the Dutch Industries Ltd. v. Canada (Dutch Industries) line of cases which found that the Commissioner of Patents (Commissioner) had no discretion to accept top-up payments for deficient fees. The result in Dutch Industries was that a patent application was deemed to be permanently abandoned.

The Court rejected Apotex's argument. It found that the Patent Act distinguished between patent applications and issued patents and that Dutch Industries, and the cases that followed it, only applied in respect of patent applications. The Court relied on a "long line of...