Patents

Case summaries and articles about  patents.

May 20, 2015

PM(NOC) Amendments to Reverse Gilead and Viiv Decisions Regarding Product Specificity Requirement for Combination Drugs

The proposed amendments would dispose of the product specificity requirement that was interpreted by the Federal Court of Appeal in paragraphs 4(2)(a) and 4(2)(b) of the PM(NOC) Regulations.
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.
May 12, 2015

The Oft Missed Synergy: Patents and SRED

Flat-out ignoring patents and SRED can result in leaving a lot of value on the table. Whatever one may think of patents, it is a fact that they can provide enormous value to a technology company if they are done correctly. By the same token, a successful SRED claim can lead to a significant short term financial boost for cash conscious companies.
April 30, 2015

Google Offers to Purchase your Patents

From May 8, 2015 through May 22, 2015, Google will be accepting applications from patent-holders wishing to sell any patent to Google through its experimental Patent Purchase Program. Google hopes that its program will improve the marketplace for patents for everyone, but especially for smaller participants, who too often end up selling their patents to patent trolls.
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 6, 2015

Three Simple Steps Towards Building a Patent Strategy

Canadians demonstrate excellence at many things. There are the obvious clichés like maple syrup, hockey, politeness and modesty. However, our excellence at politeness hides some of our other impressive strengths, like innovation and technology. In turn, our modesty seems to keep Canadians from protecting their intellectual property (IP) at rates disproportionate to our OECD counterparts. I have been working in the intellectual property field for nearly twenty years and can share many anecdotes of Canadian companies that are world innovation leaders who, because of that charming modesty, essentially give away their intellectual property.
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.