Patents

Case summaries and articles about  patents.

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.
February 25, 2015

Federal Court Upholds Gap between Claim Construction and PM(NOC) Product Specificity Requirement for Combination Drugs

Eli Lilly Canada v Canada (Attorney General), 2014 FC 152 - This decision clearly states that a higher level of specificity is required to adhere to the Regulations than is required for an element to be claimed as a matter of claim construction.
February 23, 2015

United States Supreme Court Clarifies that Claim Construction can Involve Subsidiary Factual Disputes that are Reviewed on a Clear Error Standard

Teva Pharmaceuticals USA, Inc, et al v Sandoz, Inc, et al, 574 US __ (2015) - United States Supreme Court clarified that claim construction can involve subsidiary factual disputes that are reviewed on a clear error standard, while the ultimate question of claim construction is reviewed de novo.
February 5, 2015

Federal Court Reverses Commissioner’s Opinion that Janssen Altered the Prohibition against Patenting of Methods of Medical Treatment

AbbVie Biotechnology Ltd v Canada (Attorney General), 2014 FC 1251 - The core of the Commissioner’s argument was that Janssen Inc v Mylan Pharmaceuticals ULC, 2010 FC 1123, broadened the prohibition against patents on methods of medical treatment to include generally claims which restrict the “how and when” a physician could administer a particular drug. The Court found that the Commissioner had misread Janssen.
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.
December 22, 2014

Industry Canada to Amend PM(NOC) Regulations Respecting Patents Listed for Combination Drugs

The proposed amendments are said to clarify the patent listing requirements as they relate to single medicinal ingredients found in combination drugs and confirm Health Canada’s established practices which, in light of recent Federal Court and Federal Court of Appeal decisions, may need to change.
December 19, 2014

Section 52 of Patent Act used to Add Inventors to a Patent after an Omission due to Misunderstanding of Canadian Law

Dr Falk Pharma GMBH v Canada (Commissioner of Patents), 2014 FC 1117 - Pursuant to section 52 of the Patent Act, the Federal Court ordered that the Commissioner of Patents add Peter Gruber to the list of inventors for Canadian Patent No. 2,297,832. Dr. Falk Pharma GMBH, the applicant and owner of the patent, inadvertently omitted Gruber’s name from the list of inventors.
December 18, 2014

NSCA Draws Distinction Between Ordering Patent Assignment and Ordering a Transfer of Interest

Bardsley v Stewart, 2014 NSCA 106 - The Court found that the order was fair as it was merely ordering that Bardsley transfer his interests in the ‘770 Application to the extent possible, thus stopping just short of ordering assignment.
December 12, 2014

UK Court holds email file transfer program is unpatentable subject matter

Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks, [2014] EWCA Civ 1463 - The UK Court rejected a patent on a method of transferring files via email communication for unpatentable subject matter for being no more than a computer program.
November 29, 2014

UK Supreme Court: Patent Infringement Does Not Support a Defence of Illegality

Les Laboratoires Servier v Apotex Inc, [2014] UKSC 55 - The UK Supreme Court rejected the argument that patent infringement could form the basis for the defence of illegality since patent rights do not give rise to the sort of public interest consideration that underpins the defence of illegality.
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 14, 2014

A Verbal Contract Makes Transpharm Liable for Costs of Patents that Name its CEO as Owner

Gowling Lafleur Henderson LLP v Transpharm Canada Inc, 2014 ONSC 5643 - There was no written retainer to explicitly identify the client. However, citing the 10 year period during which Gowlings treated Transpharm as its client and as responsible for the cost of the patent services, the Court concluded that Transpharm verbally retained Gowlings.
November 12, 2014

Ownership of a Patent was Transferred from a Director to the Corporation as if the Director were an Employee

Nature-Control Technologies Inc v Li, 2014 BCSC 1868 - The Court determined that a patent transferred from a director and co-owner of a corporation to the corporation by the implied intention of the parties by importing the analysis that is undertaken when determining if intellectual property impliedly passes from an employee to an employer.
November 8, 2014

Federal Court Denies Co-Inventorship to Marketing Collaborators

Drexan Energy Systems Inc v Canada (Commissioner of Patents), 2014 FC 887 - The Court found that two out of four contributors to the invention could not be added to the list of inventors because their contribution essentially amounted to suggesting desired features of the invention and communicating feedback from potential customers, which did not constitute an inventive contribution.
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.
October 31, 2014

Highlights of Proposed Amendments to the Patent Act in Bill C-43 (Royal Assent Received)

Bill C-43 - New sections of the Patent Act concerning representation by patent agents demand attention. Note: Bill C-43 has received royal assent as of December 16, 2014.
October 29, 2014

Federal Court Rejects Subway Video Advertising Patent for Obviousness

Blair v Canada (Attorney General), 2014 FC 861 - In coming to its finding of obviousness, the Commissioner determined that while the combination of the elements in the invention as a whole was novel, it did not involve ingenuity since there was a “trend in the art” of installing video systems in a wide variety of transportation systems.
October 28, 2014

Commissioner Upholds Rejection of Patent on Computerized Auction System

Commissioner’s Decision # 1355 - Canadian Patent Application No. 2,493,971 on a computerized auction system was rejected for lack of statutory subject matter for being merely an abstract set of rules.