snIP/ITs Insights on Canadian Technology and Intellectual Property Law

Tag Archives: promise of the patent

‘Promise Doctrine’ Abolished by the Supreme Court of Canada

Posted in Intellectual Property, Litigation, Patents

On June 30, 2017, the Supreme Court of Canada, released a landmark patent decision (2017 SCC 36) abolishing Canada’s so-called ‘Promise Doctrine’ by finding it “unsound”, “not good law” and “incongruent with the both the words and scheme of the Patent Act.”Continue Reading

Canada’s Federal Court of Appeal Confirms Different Patent Claims Can Have Different Promised Utilities

Posted in Intellectual Property, Patents

In Teva Canada v. Novartis Canada 2016 FCA 230, the Federal Court of Appeal confirms that in assessing the utility of a patented invention, different patent claims can have different promised utilities.

This decision was made in Teva’s appeal from the Federal Court’s judgment (2015 FC 770) in which the Minister of Health was prohibited from granting an NOC to Teva in respect of its generic version of Novartis’ EXJADE® (deferasirox).

The only issue on appeal was whether the lower court erred in law in its construction of the so-called “promise of the patent”.… Continue Reading

Canadian Patent Judge Takes a Hard Stand Against Generic CIALIS® (tadalafil)

Posted in Intellectual Property, Patents

On January 7, 2015, Justice de Montigny of the Federal Court released his judgment and reasons in Eli Lilly Canada Inc. v. Mylan Pharmaceuticals ULC, 2015 FC 17, allowing Lilly’s application for an order prohibiting the Minister of Health from issuing a Notice of Compliance to Mylan until the expiry of Canadian Patent No. 2,226,784 (the “‘784 Patent”). The patent relates to Lilly’s successful erectile dysfunction (“ED”) drug CIALIS® (tadalafil).

The Court found that Mylan’s allegations of invalidity on the basis of lack of utility and obviousness-type double patenting were unjustified. Justice de Montigny’s reasons signal the Court’s … Continue Reading