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Category Archives: Patents

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Canada and the EU Successfully Conclude CETA: What It Means to the Pharmaceutical Industry

Posted in Intellectual Property, Patents

On September 26, 2014, Prime Minister Harper announced that Canada and the European Union have successfully concluded negotiations on a new trade agreement, the Comprehensive Economic and Trade Agreement (CETA) that was five years in the making, and publicly released the consolidated text of the agreement. CETA is deeper in substance and broader in scope… → Read More

SAGD Patents and Applications in Canada

Posted in Intellectual Property, Patents

INTRODUCTION In 1979, Dr. Robert Butler and his research team filed a Canadian patent application for the oil recovery technology known as Steam Assisted Gravity Drainage (“SAGD”).  Over thirty years later, SAGD technology has become a formative oil-recovery process, with over two hundred patent applications filed in Canada relating to SAGD technology. SAGD operations have… → Read More

B.C. Supreme Court Breathes Life Into New Breed of Potential Pharma-Related Class Action Whereby Innovator Profits Are At Risk

Posted in Intellectual Property, Patents

In Canada, innovator drug companies can protect their market exclusivity from generic copycats by asserting patents against the generic manufacturer in litigation under the PM(NOC) Regulations. Until now, the consequences of losing PM(NOC) litigation was the potential payment of damages to the generic whose market access was delayed by the litigation. These so-called “section 8… → Read More

Canada Patent Litigation: Federal Court Rules “Enhanced Disclosure” Requirement for Sound Prediction Applies Only To “New Use” Patents

Posted in Intellectual Property, Patents

On July 2, 2014, Mr. Justice Rennie of the Federal Court released his judgment and reasons in Astrazeneca Canada Inc v. Apotex Inc., 2014 FC 638 dismissing AstraZeneca’s action for infringement and granting Apotex’s counterclaim for a declaration that Canadian Patent 2,139,653 (the “‘653 Patent”) is invalid. This patent relates to AstraZeneca’s successful drug NEXIUM®… → Read More

Federal Court Dismisses Notion that Patents Should be Given Only One Interpretation for All Purposes

Posted in Intellectual Property, Patents

Summary In a pair of simultaneously released decisions on June 13, 2014, Justice O’Reilly allowed Allergan’s applications (the “Applications”) prohibiting the Minister of Health from issuing NOCs to Cobalt (now “Actavis”) (2014 FC 566) and Apotex (2014 FC 567) to market their generic versions of LUMIGAN RC® until the expiry of Canadian Patent 2,585,691 (the… → Read More

PM(NOC) Proceedings: Apotex defeats Bayer’s Canadian patent on oral contraceptive YAZ

Posted in Intellectual Property, Patents

On June 4, 2014 Justice Roger Hughes of the Federal Court released his public reasons for dismissing Bayer’s prohibition application against Apotex in respect of its generic YAZ tablets on the basis that Apotex’s non-infringement allegation was justified. His confidential judgment was issued on May 7, 2014 and Apotex received its NOC the very next… → Read More

Your Patent Has Been Infringed: Enforcement of Oil and Gas Patents in Canada

Posted in Intellectual Property, Patents

Introduction Patent disputes are on the rise.  101 patent infringement actions were filed in in the Federal Court in 2013 as compared with 48 patent infringement cases in 2012.  As we explained previously, part of that increase is due to an increase in oil and gas patent litigation.  This raises the question; what do you… → Read More

Patent Law Historical Observations: Oil and Gas

Posted in Intellectual Property, Patents

We recently posted an article reviewing the year past in oil and gas patent litigation.  We analyzed new Federal Court cases and issued decisions and provided commentary on future implications.  You can read that article here. This article continues that analysis by looking backwards in time; specifically to oil and gas patent litigation for the… → Read More

McCarthy Tétrault receives four Benchmark Canada awards

Posted in Awards and Recognitions, Intellectual Property, Patents

McCarthy Tétrault is delighted to announce that Euromoney Legal Media Group’s Benchmark Canada named partners Andrew Reddon and Steven Mason as Canada’s Intellectual Property Litigators of the Year – Patents. The award is in recognition of Mr. Reddon and Mr. Mason’s exceptional knowledge of patents and superior trial skills. The pair’s recent successes include their… → Read More

A Massive House-Cleaning: Canadian Government Tables Five New IP Treaties

Posted in Intellectual Property, Patents, Trade-marks

On January 28, 2014, the Government of Canada signalled its intent to transform  its intellectual property regimes by tabling five intellectual property law treaties in Parliament. If implemented into domestic law, these treaties would harmonize Canada’s trade-mark, patent and industrial design legislation with its major trading partners. Following a 21-sitting-day waiting period, the Government will… → Read More

New Jersey District Court dismisses proposed antitrust class action over LAMICTAL patent settlement

Posted in Intellectual Property, Patents

On January 24, 2014, the District Court released its reconsideration opinion again dismissing a previously-dismissed proposed antitrust class action against GSK and Teva under the “rule of reason” test set down in the 2012 U.S. Supreme Court’s Actavis decision. In doing so, the Court made some important statements about Actavis: It does not allow scrutiny… → Read More

Do you need to examine inventors located in Canada as a part of your patent lawsuit?

Posted in Intellectual Property, Patents

Almost invariably, defendants in a patent lawsuit seek to examine the inventors of the patent or patents in issue.  But, what do you do if an inventor resides in Canada?  Generally, non-Canadian courts are not able to assert personal jurisdiction over Canadians and, therefore, cannot compel them to give evidence under oath for the purposes… → Read More

Patent Litigation in Canada: A U.S. Attorney’s guide to the Canadian Litigation Process

Posted in Intellectual Property, Patents

Canada and the United States are close neighbors. About 300,000 people cross the border each day, and bilateral trade amounts to about $1.6 billion in goods daily.  It is not surprising that patent, and other intellectual property disputes, often involve some element of cross-border litigation.  The Canadian litigation experience is relatively similar to the American… → Read More

Eli Lilly seeks arbitration with Canada over IP-related NAFTA Obligations

Posted in Intellectual Property, Patents

This is the latest chapter in the story involving Canada’s judge-made “promise of the patent” doctrine, which is sometimes referred to as the “promise doctrine” or “promise of the patent”. The promise doctrine essentially states that in order to constitute a useful (and therefore patentable) invention, an invention must not only be useful for some… → Read More

Ontario Court of Appeal upholds summary judgment dismissing Apotex’s claim for unjust enrichment and disgorgement of profits

Posted in Intellectual Property, Patents

On September 12, 2013, a panel of three judges of the Ontario Court of Appeal unanimously upheld the decision of the Ontario Superior Court earlier this year to grant partial 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… → Read More

Sanofi’s Canadian Patent on Plavix Valid and Infringed by Apotex

Posted in Intellectual Property, Patents

On July 24, 2013 the Federal Court of Appeal released its decision reversing the trial court’s ruling that Sanofi’s patent covering Plavix is invalid.  For the full written decision see: Apotex Inc. v. Sanofi-Aventis, 2013 FCA 187. In its decision, the Court of Appeal provides clarification on invalidity in light of the so-called promise of… → Read More

5 Things Every Retailer Should Consider When Threatened with Patent Infringement: 5-Item Checklist

Posted in Intellectual Property, Patents

Introduction In recent years major Canadian retailers have been named as defendants in patent infringement lawsuits, including Wal-Mart (T-1841-11), Costco (T-1841-11), Canadian Tire (T-1002-12) and Home Depot (T-1112-13).  The common thread linking these and other cases is that the plaintiff is asserting patent rights against a retailer that sells, but does not manufacture, allegedly infringing… → Read More

U.K. Court Sufficiently Satisfied that Janssen’s Alzheimer’s Patent is Insufficient

Posted in Intellectual Property, Patents

On June 25, 2013, the England and Wales High Court rendered its decision in Eli Lilly & Company v. Janssen Alzheimer Immunotherapy, [2013] EWHC 1737.  This ruling demonstrates the danger in drafting patents to include only broad claims without subordinate, narrow claims, which are more likely to survive a validity challenge like the one Eli… → Read More

Update: Supreme Court of Canada Amends Controversial Aspect of VIAGRA® Judgment

Posted in Intellectual Property, Patents, Regulatory Compliance

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

PM(NOC) Proceedings: Cobalt Defeats Bayer’s Canadian Patent on Oral Contraceptive YASMIN

Posted in Patents

On 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

Pfizer Liable to Apotex for Section 8 Damages: Amount to be Determined

Posted in Intellectual Property, Patents, Regulatory Compliance

In 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, Patents

    Whether 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