The Best Of The Decade – Canadian Patent Law In The 2010s

The 2010s saw many developments in Canadian patent law. Establishment of a trade agreement with the European Union, ratification of an international IP treaty, implementation of a national IP strategy, and other domestic initiatives resulted in numerous amendments to the Patent Act and associated regulations. Landmark court decisions affected central tenets of patent law, including subject-matter eligibility, novelty, obviousness, and utility. In this article, we provide a round-up of top patent law stories, including some of the most interesting Canadian patent cases, of the past decade.

Although we have identified what we feel to be the most interesting decisions from each year, many important cases are necessarily excluded. Indeed, there were numerous patent cases of significant commercial importance in the 2010s that are not discussed here. These cases have been selected as either deciding a central point of Canadian patent law or raising a unique or unusual issue.

Jump ahead to a round-up of:

2010 2015

2011

2016

2012

2017

2013

2018

2014

2019

Looking forward

2010

Legislation

Declaration of legal representative

Amendments to the Patent Rules came into force on October 1, 2010 to replace the complex requirement for a declaration of entitlement in a patent application with a simpler declaration of legal representative.

For more detail, please read our previous article here.

Interesting patent cases

Eli Lilly Canada Inc v Novopharm Ltd, 2010 FCA 197, rev'g 2009 FC 1018. A challenge directed to a determination that the conditions for a selection patent have not been met does not constitute an independent basis upon which to attack the validity of a patent. Rather, the conditions for a valid selection patent serve to characterize the patent and accordingly inform the analysis for the grounds of validity set out in the Patent Act—novelty, obviousness, sufficiency and utility.

Eli Lilly & Co v Apotex Inc, 2010 FCA 240, aff'g 2009 FC 991. It has been settled law in Canada for over a hundred years that, under the "Saccharin doctrine," a process patent can be infringed by the importation, and use and sale in Canada, of a product manufactured abroad by another person using the patented process. The Saccharin doctrine may apply even apply if "material changes" are made to the article produced by the patented process prior to the importation of the ultimate product. It is necessary only that the patented process played an "important part" in the manufacture of the imported product.

Canadian Generic Pharmaceutical Association v Canada (Health), 2010 FCA 334. The constitutionality of the data protection provisions in the Food and Drug Regulations was upheld. The Food and Drugs Act was amended in 1996 to grant the Governor in Council authority to enact regulations for implementing data protection provisions of NAFTA and TRIPS. The Data Protection Regulation was properly delegated by Parliament to the Governor in Council and is intra vires the authority of the Governor in Council.

2011

Legislation

Accelerated examination

Amendments were made to the Patent Rules in 2011 to provide for accelerated examination of a patent application with no government fee if the application relates to a green technology.

For more detail, please read our previous article here.

Interesting patent cases

Celgene Corp v Canada (Attorney General), 2011 SCC 1, aff'g 2009 FCA 378. The Patented Medicines Prices Review Board (PMPRB) has jurisdiction to grant orders concerning excessive prices of patented medicines sold in Canada. The Supreme Court held that the PMPRB has jurisdiction over Celgene's U.S.-based sales of THALOMID to Canadians pursuant to Health Canada's Special Access Program. The PMPRB was correct and reasonable in interpreting the enabling provisions of the Patent Act as providing jurisdiction over sales made to consumers in Canada, notwithstanding that the locus of sale was outside Canada.

Corlac Inc v Weatherford Canada Inc, 2011 FCA 228, var'g 2010 FC 602. Paragraph 73(1)(a) of the Patent Act provides that a Canadian patent application shall be "deemed to be abandoned" if the applicant does not reply "in good faith" to an office action within the prescribed time. Patents have been attacked as allegedly invalid on the basis that the application was deemed to be abandoned for lack of a good faith response during prosecution and not reinstated. The Federal Court of Appeal rejected this argument, holding that the concept of abandonment in paragraph 73(1)(a) operates during the prosecution of the application for a patent. Its operation is extinguished once the patent issues.

Canada (Attorney General) v Amazon.com, Inc, 2011 FCA 328, rev'g 2010 FC 1011. The determination of patentable subject-matter must be based on a "purposive" construction of the patent claims. A patentable art, which includes either a method or a process: i) must not be a disembodied idea but have a method of practical application; ii) must be a new and inventive method of applying skill and knowledge; and iii) must have a commercially useful result. A business method possibly could meet the requirements for patentable subject-matter. Patentable subject matter must be something with physical existence, or something that manifests a discernible effect or change. On redetermination, the Patent Office concluded that Amazon.com's one-click shopping method was a patent-eligible invention.

2012

Interesting patent cases

Teva Canada Ltd v Pfizer Canada Inc, 2012 SCC 60, rev'g 2010 FCA 242. The Supreme Court held that Pfizer's patent for VIAGRA lacked sufficiency of disclosure for a claim specific to the use of sildenafil for treating erectile dysfunction. The utility of sildenafil in treating erectile dysfunction had been demonstrated before filing. The specification stated that one of the especially preferred compounds of the invention induces penile erection in impotent males but did not state whether this was sildenafil or another claimed compound. Determining which of two claims was directed to the specific compound that had been determined to work would have required "a minor research project," rendering the description insufficient.

Wenzel Downhole Tools Ltd v National-Oilwell Canada Ltd, 2012 FCA 333, aff'g 2011 FC 1323. The subject-matter of a patent claim lacks novelty if it was disclosed by the applicant more than one year before the filing date "in such a manner that the subject-matter became available to the public in Canada or elsewhere." The plaintiff invented a drill apparatus which was rented to customers more than one year prior to the plaintiff filing a patent application. During rental periods, the drill was encased in a box, and was not visible or easily accessible to renters. Additional information on the invention was available to renters upon request, but no request was received. Even with no evidence that the inner workings of the drill apparatus had been seen, or that the additional information relating thereto had been accessed, the trial and appeal judges found that the renters had an "opportunity to access" that was not circumscribed or prohibited by agreement. The trial and appeal judges decided that opportunity was sufficient to constitute disclosure of the invention and held the patent invalid.

2013

Interesting patent cases

Takeda Canada Inc v Canada (Health), 2013 FCA 13, aff'g 2011 FC 1444. The Federal Court of Appeal found dexlansoprazole ineligible for listing on the Register of Innovative Drugs. Dexlansoprazole is one of the enantiomers of the previously approved racemate lansoprazole, and was ineligible for listing on the Register because it was a variation that is specifically excluded from the definition of "innovative drug" in section C.08.004.1 of the Food and Drug Regulations, which reads: "innovative drug" means a drug that contains a medicinal ingredient not previously approved in a drug by the Minister and that is not a variation of a previously approved medicinal ingredient such as a salt, ester, enantiomer, solvate or polymorph.

Sanofi-Aventis v Apotex Inc, 2013 FCA 186, rev'g 2011 FC 1486, var'd 2013 FCA 209. The Federal Court of Appeal overturned the Federal Court's decision invalidating the patent that claims clopidogrel bisulphate (sanofi-aventis's PLAVIX). When analyzing utility in the context of the promise doctrine (overturned by the Supreme Court in 2017 - see AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36, discussed below), the Court stated that the first step is to determine if a skilled person would understand the patent to contain an explicit promise of a specific result. If so, the inventor will be held to that promise; if not, a mere scintilla of utility will do. The Supreme Court granted Apotex leave to appeal this decision, but Apotex discontinued its appeal on November 3, 2014.

Had the proceedings gone forward, the Supreme Court would have considered the validity of the PLAVIX patent a second time, since it had previously been the subject of litigation under the Patented Medicines (Notice of Compliance) Regulations (the "PM(NOC) Regulations"), in which the Supreme Court upheld the Order of prohibition...

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