snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: insufficient disclosure

Canada’s Federal Court of Appeal Affirms Invalidity of Idenix Patent for Insufficient Disclosure

Posted in Intellectual Property, Litigation, Patents

In their decision reported as 2017 FCA 161, the Federal Court of Appeal says s. 27(3) of the Patent Act requires the patent to disclose both the invention, and how to make the invention. Further, that a patent will not lack sufficient disclosure where routine experimentation is required of a skilled person. However, disclosure is insufficient if the specification “necessitates the working out of a problem”.

In this case, the patent did not teach a step necessary to synthesize the claimed compound. The issue was whether this gap could be filled by the common general knowledge of the skilled … 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