Utility

June 30, 2017

Canada’s Supreme Court Abolishes Controversial “Promise Doctrine”

2017 SCC 36 - The Supreme Court of Canada struck down the “promise doctrine” of Canadian patent law in favour of merely requiring a single use related to the nature of the subject-matter of the invention having a scintilla of utility.
June 27, 2017

ICSID Tribunal dismisses Eli Lilly’s NAFTA claim against Canada

Case No. UNCT/14/2 - An ICSID Tribunal dismissed Eli Lilly’s claim against Canada, which was brought in relation to two Canadian patents owned by Eli Lilly that had been invalidated for failing to provide the utility they promised.
June 6, 2017

Allergan fails to demonstrate to FC that Apotex’s allegations of invalidity are not justified

2016 FC 344 - Apotex alleged in its Notice of Allegation and submissions that the ‘632 Patent was invalid because it was obvious and lacked utility. The FC found that the allegation was justified.
March 14, 2017

Federal Court Grants Prohibition Order on Generic Psoriasis-treating Ointment

2015 FC 1237 - The FC heard and granted an application by Leo Pharma to prohibit Teva Canada from being issued a Notice of Compliance under the PM(NOC) Regulations.
December 20, 2016

Bargain Theory Requires Adequate Disclosure in Patents

2015 FC 108 - Patent drafters are required to provide adequate disclosure of an invention in patent applications to reduce the likelihood that the granted patent will be litigated and invalidated years down the road. This Federal Court (“FC”) decision dismissed an application for a prohibition order on the grounds of non-infringement and found the patent to be obvious and lacking in utility.
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 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 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.
October 27, 2014

Expert witnesses proven to be pivotal in Dow Chemical patent infringement suit

Dow Chemical Co v NOVA Chemicals Corp, 2014 FC 844 - The Federal Court found that NOVA Chemicals infringed Canadian Patent No. 2,160,705, owned by The Dow Chemical Company, by NOVA’s use of its “SURPASS” polyethylene product. Allegations of invalidity for lack of utility, claims broader than any invention made or disclosed, anticipation, obviousness, double patenting, and insufficiency of the specification were unsuccessful.