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
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 patents have utility requirements. A claimed invention must have some level of utility. A ‘mere scintilla’ of utility is all that the Patent Act requires. However, where a patent contains an explicit promise of a specific result, the case-law has developed a requirement that this so-called ‘promised utility’ be demonstrated or soundly predicted as of the Canadian filing date of the patent application.
There has been much controversy over this ‘promise doctrine’ as well as the ‘heightened disclosure requirement’ that has been applied in the case of a sound prediction. The controversy includes a NAFTA challenge by Eli Lilly … Continue Reading
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
This 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.
In a typical objection, the patent examiner asserts that the claimed composition of matter, while novel and non-obvious, cannot be patented because the application’s description fails to prove the utility of all claimed embodiments. The examiner usually will rely on:
- the definition of “invention” in section 2 of the Patent Act as the statutory basis for the objection.
- recent case law, mainly from abbreviated proceedings under the