Validity

May 6, 2016

Law Remains Unsettled Regarding Appropriate Date for Assessing Obviousness-type Double Patenting

2015 FC 875 - The FC noted that the law is unsettled when it comes to determining the appropriate date for assessing obvious-type double patenting.
April 22, 2016

Federal Court Finds “Rigidification” Patent to be Sufficient but Obvious

2015 FC 997 - The FC found that the invention was merely to add a polymer to the slurry, which was known in the prior art, and to continue to do so until the slurry rigidified. The Court found this solution to be obvious to try, and sufficiently disclosed, even though the meaning of “rigidify” was never made clear.
April 22, 2016

Gilead Successfully Invalidates Patent Jeopardizing Its Sovaldi Product

2015 FC 1156 - The FC found that Idenix’s patent was invalid for a lack of utility, demonstrated or soundly predicted, and for insufficient disclosure.
April 11, 2016

FC Dismisses Prohibition Application – Favours Respondent’s “Blinded Expert” Evidence

2015 FC 570 - The FC favoured the respondent’s "blinded expert" evidence in which the experts provided their opinions before knowing what was claimed in the disputed patents.
March 28, 2016

Utility For A Pharmaceutical Patent Must Relate To How It Is Used, Not Simply to Its Properties

PAB 1384 - If a pharmaceutical patent is construed to make a promise, then that promise must relate to how the invention will ultimately be used – not simply to the properties of the pharmaceutical itself.
February 26, 2016

Provisional Patent Application Contradicts Formal Patent, Invalidates Claims for Indefiniteness

The CAFC took issue with inconsistent statements between a provisional patent application and the subsequent formal patent and invalidated a number of the patent’s claims for being indefinite.
November 23, 2015

CAFC to Rehear On-Sale Bar Novelty Case

The CAFC has now granted a petition for a rehearing the case on this issue of whether or not the sale of bivalirudin from the supplier gave rise to an on-sale bar.
October 7, 2015

Relitigating Conceded Claims is an Abuse of PM(NOC) Proceedings

Gilead Sciences, Inc v Canada (Health), 2015 FC 610 - Gilead's assertion that its patent is valid would be relitigating old issues and an abuse of PM(NOC) proceedings.
September 16, 2015

FC Finds Novartis Patent Promises a Mechanism of Action, not a Treatment

Novartis Pharmaceuticals Canada Inc v Teva Canada Limited, 2015 FC 770 - Novartis was able to uphold its patent against allegations of invalidity from Teva, but not without the Federal Court making a number of razor thin distinctions between what the patent promised and what it did not.
September 9, 2015

The Word “will” can Indicate a Patent Promise, not an Expectation

AstraZeneca Canada Inc v Apotex Inc, 2015 FCA 158 - The FCA acknowledged that the word “will” often refers to an expectation or goal rather than a promise, but still held that the FC did not err in finding that a promise was made when reading the patent as a whole from the eyes of a skilled reader.
June 27, 2015

Patent on Airport Security Trays Proven to have a Surprising Impact on Airport Efficiency

CD 1377 - Security Point Media's patent on “Advertising Trays for Security Screening” was found to be nonobvious considering a number of factors, such as the impact of the invention on the industry.
May 18, 2015

Hydrogen Economy Patent Rejected for Ambiguity

Commissioner’s Decision #1376 - The Application, which sought to patent what is essentially one manifestation of the hydrogen economy, was rejected for ambiguity since the Application’s use of the term “water… inputs” as claimed was not supported by the description. Water is only ever described as taking part in intermediary steps in the claimed method, not as an energy input, as in hydroelectric power.
April 22, 2015

Determining the Common General Knowledge from the Background of a Patent Upheld as a Reasonable Factual Finding

Newco Tank Corp v Canada (Attorney General) 2015 FCA 47 - The Board made a reasonable factual finding when it found that the background knowledge of the person skilled in the art was described in the background information of a patent. This determination was instrumental in the Board’s determination that the patent was obvious.
March 24, 2015

Mylan-Tadalafil does not Infringe Eli Lilly’s Formulation Patent in NOC Proceeding

Eli Lilly Inc v Mylan Pharmaceuticals ULC, 2015 FC 178 - Mylan did not infringe the ‘948 Patent because the Mylan’s tadalafil compound did not have the claimed particle size distribution and the formulation did not contain the claimed concentration of hydrophilic binder. The Court rejected two purposive arguments by Eli Lilly in favour of a more literal reading of the patent.
March 3, 2015

Physical Stability Experiments did not Adequately Demonstrate or Soundly Predict Utility for Overbroad Eye Drop Patent

Alcon Canada Inc v Cobalt Pharmaceuticals Company, 2014 FC 149 - The Court examined in detail a number of experiments disclosed in the patent that were said to establish the claimed utility, but the experiments did not demonstrate or soundly predict utility for the broad ranges of molecular weight and chemical concentration claimed.
January 23, 2015

Patent for using a Short Needle for Intradermal Delivery for Vaccinations Rejected for Obviousness

Commissioner’s Decision # 1371 - The Commissioner refused to grant GlaxoSmithKline’s patent application for an “influenza vaccine formulation for intradermal delivery” due to obviousness since there was always a motivation to use the ID route, but it had always been impractical until the advent of a short needle device.
January 13, 2015

Commissioner Finds Non-Invasive Virtual Reality Training System to be Inventive

Commissioner’s Decision # 1372 - The Patent Appeal Board reversed an examiner’s finding of obviousness for Canadian Patent Application No. 2,554,498, which discloses a virtual reality simulator for training users in the skill of welding.
January 8, 2015

Commissioner Approves eBay’s Automated Email Notification Patent

Commissioner’s Decision # 1369 - Two elements of the invention were found to be inventive: (1) the “push” process for keeping status information up-to-date, and (2) the automatic notification system that automatically sends an email message only when a delivery status has changed.
November 21, 2014

FCA Dismisses Apotex Appeal to have the Promise Doctrine Extended

Apotex Inc v Pfizer Canada Inc, 2014 FCA 250 - The Court rejected Apotex’s sweeping argument that any given promise in the patent must be construed as overarching to all of the patent’s claims.
November 7, 2014

Federal Court to Hear Challenge to the Patentability of Isolated Nucleic Acids

Children’s Hospital of Eastern Ontario v University of Utah Research Foundation, T-2249-14 - The CHEO will argue that the Long QT Patents that are inhibiting its ability to conduct medical testing claim unpatentable subject matter since the claimed nucleic acids are naturally occurring, encode for naturally occurring human genes, and were discovered by extracting genetic material from human beings. Validity of the method testing claims are also disputed.