SCC Revises its Sildenafil Decision, Withdraws Holding that Pfizer’s Patent Is Void

SCC Revises its Sildenafil Decision, Withdraws Holding that Pfizer’s Patent Is Void

Teva Canada Limited v. Pfizer Canada Inc. (33951)

The Supreme Court has revised its Sildenafil (Viagra) decision (2012 SC 60). The Court granted, in part, Pfizer’s motion for a modification of the judgement and reasons of the Court by deleting from paragraphs 83, 87, and 91 of the reasons statements that Pfizer’s patent at issue was “invalid”, and inserting in those same paragraphs words to the effect that Teva had established its allegation that the same patent was “not valid”.

This revision reflects the Court’s tacit recognition that validity per se was not an issue before it to decide, but rather the question was whether the patent was valid as between the parties. The issue originally appealed to the SCC was whether an application should be granted for an order prohibiting the Minister of Health from issuing Teva a Notice of Compliance (“NOC”) for its generic version of Viagra. Teva had argued it should get the NOC on the basis that Pfizer’s patent is not valid.

The Court also granted Teva’s motion to amend the formal order of the Court to award Teva costs for the original proceedings before the SCC and the courts below.

Since the release of the original SCC decision, Zinn J. of the Federal Court formally declared Pfizer’s patent invalid, relying on the SCC’s reasoning  in an impeachment action brought by Apotex (2012 FC 1339). This decision paves the way to formally remove the Viagra patent from the register; however, the decision has been appealed. 

The authors’ speculate that Pfizer clearly sees commercial value in trying to extend the life of the patent using legalistic palliative care, as long as possible, given its apparent enormous commercial value.