Utility Archives - Page 2 of 3

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 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.

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.

July 31, 2014

Federal Court Prohibited Issuance of a NOC for Generic Version of Lumigan

Allergan Inc v Apotex Inc, 2014 FC 567 - In terms of claim construction, this case shows the tension between construing claims based solely on the wording of the claims versus peering beyond the wording of the claims to distill an underlying invention.

October 18, 2013

FC refuses to use s. 52 of the Patent Act to Amend a Patent

F Hoffmann-La Roche AG v Commissioner of Patents, 2013 FC 1001. Background This is an application for an order pursuant to s. 20 of the […]

October 1, 2013

PAB Applies AZT finds that inventor could not soundly predict utility throughout entire claimed range

Re: Patent Application No. 2,248,228 [CD 1340] Background The Commissioner of Patents reviewed the decision of the PAB relating to patent application 2,248,228 entitled ‘METHOD OF […]