snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Monthly Archives: November 2012

Obviousness: Clarifying the Inventive Concept

Posted in Patents

The Federal Court of Appeal’s recent decision in Allergan, Inc. et al v. Apotex Inc. et al is the most significant decision on the question of obviousness to be rendered following the Supreme Court of Canada’s landmark decision in Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.  The Federal Court of Appeal’s decision is particularly significant for two reasons:


  • The Court clarified when recourse to the specification is appropriate to construe the inventive concept of a claim; and
  • The Court held that the determination of the inventive concept is a question of law.

Recourse to Specification

In Allergan the Federal Court … Continue Reading

Why Innovators Need a Right of Appeal in PM(NOC) Applications

Posted in Patents

On Friday, November 23, 2012 the Federal Court of Appeal released its decision in A-312-12 dismissing Apotex’s appeal of Justice Hughes’ order dated June 18, 2012 granting Allergan’s application for a prohibition order in respect of the drug COMBIGAN.  This decision, and related litigation involving COMBIGAN, clearly demonstrates why innovators need a right of appeal when unsuccessful in applications they bring pursuant to section 6 of the PM(NOC) Regulations.

Facts and Issues

COMBIGAN is an ophthalmic drug marketed in Canada by Allergan.  It is useful for lowering pressure in the eye and treating glaucoma.

The first generic  to seek … Continue Reading

Copyright Modernization Act (Mostly) In Force

Posted in Copyright

Keith Rose is an Articling Student at McCarthy Tétrault.

On November 7, 2012, with the publication of Order in Council P.C. 2012-1392 (the Order) in the Canada Gazette, the long-awaited Copyright Modernization Act, S.C. 2012, c. 20 has mostly been proclaimed into force.

This Act was the fourth attempt at a major revision of Canada’s Copyright Act, R.S.C. 1985, c. C-42 since 2005. Three previous Bills died on the Parliamentary order paper; however, in this case, the fourth time was the charm. Bill C-11 received Royal Assent on June 29, 2012.

Many observers had anticipated that the new law would … Continue Reading

Mobile Payments 2012

Posted in E-Commerce

On October 25, 2012, McCarthy Tétrault’s national Consumer Retail group held a lunchtime client conference on mobile payment systems and digital wallets. For those of you unable to attend, the following are a few of the highlights.

But first, a little context for the uninitiated:

  • Near-field communication technology (NFC) allows a user with a mobile phone, equipped with the necessary mobile application, to pass card data stored on the phone to the point-of-sale device to complete payment and other transactions.
  • Mobile payments are often grouped into two levels of transaction: convenience vs. high value/risk transactions. Convenience transactions are characterized by
Continue Reading

Tanner, How Do I… Download a Canadian Patent?

Posted in Patents

Tanner, How Do I…  is a blogging series in which Steven Tanner provides helpful answers to IP law questions.

You want to download a Canadian patent.  Is this possible?  Yes!  And here’s how.

There are three good ways to download a Canadian patent.

1. My Preferred Way to Download a Canadian Patent

My preferred way to download a Canadian patent is by using the patent retriever tool at Be sure to type “CA” before the seven-digit Canadian patent number and you should be fine. The website will send a full length pdf of the patent to your inbox, … Continue Reading

Supreme Court Invalidates Pfizer’s Blockbuster VIAGRA® Patent

Posted in Patents

Canada’s top court has struck down Pfizer Inc.’s lucrative patent on VIAGRA, paving the way for generic entry into the Canadian marketplace shortly.

In Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, the Supreme Court of Canada unanimously (7-0) declared Pfizer’s patent for its blockbuster VIAGRA drug invalid on the basis of insufficient disclosure.

Background – the ‘466 Patent

Pfizer research scientists initially investigated “sildenafil citrate” (VIAGRA’s active compound) for use as a cardiovascular drug.  However, upon discovering sildenafil’s peculiar effect on rats, scientists began to suspect that the compound might be useful in treating erectile dysfunction … Continue Reading

Mr. Ward’s “Unreasonable” Expectation of Privacy towards Data Held by his ISP

Posted in Privacy

Is the anonymity of the Internet user unconditionally protected by the Canadian Charter of Rights and Freedoms’ legal strongbox? In R. v. Ward, 2012 ONCA 660, the Court of Appeal for Ontario determined that it is not always the case and that there are limits to an Internet users’ reasonable expectation of privacy.

In this case, Mr. Ward’s expectation of privacy in his name and address held by his Internet Service Provider (ISP) was considered “unreasonable” in the context of an investigation for crimes of possession and trafficking of child pornography.

The RCMP’s Information Request

The police, in the … Continue Reading

OPC Issues Privacy Guidelines for Developing Mobile Apps

Posted in Privacy

The offices of the Privacy Commissioners of Canada, Alberta, and B.C. have jointly issued guidelines on good privacy practices for developing mobile applications.

The guidelines highlight the need to maintain good privacy practices in the rapidly evolving world of the mobile environment. Today, cell phones enable users to do much more than simply make phone calls. This smart phone era creates many privacy challenges that mobile app developers need to be aware of, and address. For example, many mobile device are able to provide sensitive information about the user’s location; and the small size of mobile screens can make it … Continue Reading