Promise

October 3, 2016

Careful Patent Drafting Saves Novartis’s EXJADE Patent Despite Two Distinct Promises

2016 FCA 230 - The FCA found that the EXJADE patent was drafted so as to make an important distinction between the utilities of the Formula I and Formula II compounds, and thereby held the Formula II claims to a lesser promise, and dismissed Teva’s allegations of inutility.
April 5, 2016

Strike Two: Second Prohibition Application Regarding Mylan’s Proposed Tadalafil Tablets Denied

2015 FC 125 - The existing patent was invalid on the grounds of lack of utility for having made a promise of utility that could not be demonstrated nor soundly predicted, was anticipated by a previous patent of the applicant that claimed an overlapping dosage range, and was also therefore made obvious by the same previous patent.
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.
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.
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.
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.