As discussed in the November 9, 2012 post, Supreme Court Invalidates Pfizer’s Blockbuster VIAGRA® Patent, the Supreme Court of Canada struck down Pfizer’s blockbuster VIAGRA® patent (the “‘446 Patent”) on the basis of insufficient disclosure: see Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60. In a curious twist, the SCC declared the ‘446… → Read More
Category Archives: Intellectual Property
Subscribe to Intellectual Property RSS FeedPM(NOC) Proceedings: Cobalt Defeats Bayer’s Canadian Patent on Oral Contraceptive YASMIN
Posted in PatentsOn May 29, 2013 Justice O’Reilly of the Federal Court dismissed Bayer PM Notice of Compliance (NOC) proceeding against Cobalt. The issue before the Court was whether Cobalt’s proposed generic product would infringe a single claim (claim 13) in a Canadian Bayer patent to drospirenone, an active ingredient in Bayer’s YASMIN contraceptive. The Court determined… → Read More
Tech Law Summit 2013 Recap – Six Minute Lawyer Sessions: Thinking Beyond
Posted in Consumer Protection, Copyright, E-Commerce, Intellectual Property, Regulatory ComplianceAt McCarthy Tétrault’s Toronto Technology Law Summit, Bram Abramson, Daniel Glover, James Archer, Bob Nakano, Pat McCay, Naseem Malik, and David Tait, were featured in the Six Minute Lawyer panel. Each lawyer provided brief updates on a variety of topical and timely tech law issues, ranging from the regulation of commercial communications to tax issues…. → Read More
Pfizer Liable to Apotex for Section 8 Damages: Amount to be Determined
Posted in Intellectual Property, Patents, Regulatory ComplianceIn a judgment pronounced on May 10, 2013, Justice O’Reilly of the Federal Court of Canada, granted Apotex’s claim against Pfizer for section 8 damages under Canada’s Patented Medicines (Notice of Compliance) Regulations, SOR/93-133. The sole issue before the Court was whether Apotex had a valid claim to damages. The amount is to be determined… → Read More
Is your patent being infringed in Canada? Top 5 things to consider before launching the lawsuit
Posted in Intellectual Property, PatentsWhether this is your first time enforcing your Canadian patent, or you’re a frequent flyer in the Canadian courts, it is important to cover your bases before firing off a claim. Prudent planning will help to ensure that legal and financial resources are deployed efficiently. Although not exhaustive, here are the top 5… → Read More
Responding to Threats of Patent Infringement
Posted in Intellectual Property, PatentsPatent disputes have proliferated in Alberta. As the economy has levelled-off in recent years, patentees have increasingly sought to enforce patents as part of their business strategy. Threats of patent infringement have proliferated and infringement actions have been filed in all Courts, particularly the Federal Court. Companies in the oil and gas sector must be… → Read More
ICANN’s Trademarks Clearinghouse Opens For Business
Posted in Intellectual Property, Trade-marksWith the launch of the Trademarks Clearinghouse, brand owners can now stake their territory In the brave new world of expanded generic top level domain names (“gTLD’s”). The Internet Corporation for Assigned Names and Numbers (“ICANN”), the non-profit organization that manages and coordinates the system of domain names and IP addresses used on the internet,… → Read More
Ontario Court Grants Summary Judgment Dismissing Apotex’s Claim for Unjust Enrichment
Posted in PatentsOn January 15, 2013, the Honourable Justice Michael G. Quigley of the Ontario Superior Court granted summary judgment to Abbott and Takeda, denying Apotex’s claim for disgorgement of profits on the basis of unjust enrichment. The case involved a claim for damages arising from Abbott’s invocation of the Patented Medicines (Notice of Compliance) Regulations. The PM(NOC)… → Read More
Responding to Canadian Patent Office Objections: Inherent Anticipation
Posted in PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed compound is anticipated and cannot be patented because, although unknown at… → Read More
Obviousness: Clarifying the Inventive Concept
Posted in PatentsThe 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… → Read More
Why Innovators Need a Right of Appeal in PM(NOC) Applications
Posted in PatentsOn 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… → Read More
Copyright Modernization Act (Mostly) In Force
Posted in CopyrightKeith 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… → Read More
Tanner, How Do I… Download a Canadian Patent?
Posted in PatentsTanner, 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… → Read More
Supreme Court Invalidates Pfizer’s Blockbuster VIAGRA® Patent
Posted in PatentsCanada’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… → Read More
FCA Describes Specificity Requirements for Listing Patents on the Patent Register
Posted in PatentsThe Federal Court of Appeal has clarified that there must be a “high threshold of consistency” between the content of a new drug submission and a patent’s claims in order for the patent to be listed on the patent register pursuant to section 4(2)(a) of the PM(NOC) Regulations. This decision, Gilead Sciences Canada Inc. v…. → Read More
Tanner, How Do I… Examine an Inventor Who Lives in Canada?
Posted in PatentsTanner, How Do I… is a blogging series in which Steven Tanner provides helpful answers to IP law questions. You are involved in a foreign case and want to examine an inventor of a patent. Just one problem: the inventor lives in Canada. Can you compel the inventor’s testimony for use in your foreign proceeding? … → Read More
La pentalogie du droit d’auteur de la Cour suprême
Posted in Intellectual PropertyDe toute évidence, 2012 constitue une année marquante pour le droit d’auteur. Peu après la sanction royale du projet de loi C-11 sur la modernisation du droit d’auteur en juin 2012, la Cour suprême rend cinq décisions en droit d’auteur se prononçant sur l’octroi de redevances : Entertainment Software Association c. Société canadienne des auteurs,… → Read More
Responding to Canadian Patent Office Objections: Proof of Utility
Section 2 of the Patent Act
Posted in PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed composition of matter, while novel and non-obvious, cannot be patented because… → Read More
Recent Pair of Rampiril Decisions Clarifies Limits on s. 8 Damages in Patent Law
Posted in Intellectual Property, PatentsWhen a generic drug claims damages against a brand name drug, what limits should be put on calculating compensation? Section 8 of the Patented Medicines (Notice of Compliance) Regulations was designed to answer just that question, but it left some questions unanswered. A pair of twin judgments by Justice Snider, Teva Canada Ltd. v. Sanofi-Aventis… → Read More
Responding to Canadian Patent Office Objections: Dosing Regimens
Posted in Intellectual Property, PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a typical objection, the patent examiner asserts that the claimed medical treatment with dosing elements is unpatentable subject matter falling outside… → Read More
1930 Applications for New Generic Top Level Domains Published
Posted in E-Commerce, Intellectual PropertyAn eagerly awaited list of applications for new generic top-level domains (gTLDs) was recently revealed, disclosing 1930 applications for a wide variety of potential new gTLDs. These ranged from multiple applications for expected gTLDs such as .app and .shop, to more unexpected gTLDs such as .sucks and .webcam. The number of applications is particularly surprising given… → Read More
Originality and Cartoon Characters – Supreme Court to Hear Cinar/Robinson Copyright Cases
Posted in CopyrightThe Supreme Court recently granted leave to appeal in four copyright cases arising from the decision of the Quebec Court of Appeal in the France Animation v. Robinson, 2011 QCCA 1361 case. Robinson alleged that Cinar’s cartoon Robinson Sucroë was a copy of his own work Robinson Curiosité. The trial judge found infringement and the… → Read More
Responding to Canadian Patent Office Objections: Breadth of Claims
Posted in Intellectual Property, PatentsThis is part of a series of posts reviewing common Canadian Patent Office objections to patent applications and claimed inventions and providing some insight into how these objections may be addressed. The Objection In a standard objection, the patent examiner asserts that the claims do not comply with section 84 of the Patent Rules because… → Read More
Hot Off the Press – Doing Business in Canada 2012
Posted in Copyright, Intellectual Property, M&A/Finance, Patents, Privacy, Trade-marksIf your organization is currently thinking about establishing or acquiring a technology business in Canada, the 2012 edition of Doing Business in Canada, written by McCarthy Tétrault, will prove to be a valuable resource. The guide provides a broad overview of the legal considerations that non-residents should take into account to help ensure their success… → Read More
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