Category: Patents


Teva v Pfizer: How Viagra Allowed the SCC to Stiffen Patent Disclosure Requirements

Canadian patent law has undergone a number of significant developments throughout the past year, with numerous issues capturing the attention of the Supreme Court of Canada (“SCC”). In particular, the issue of disclosure has undergone a great deal of juridical scrutiny. Disclosure constitutes a fundamental tenet of patent law aimed at striking a balance between the monopoly rights granted to inventors and society as a whole, effectively positing that an inventor can only be granted patent protection by making available to the public the method through which his/her product was created. The case of Teva Canada Ltd v Pfizer Canada...


Appeal Watch: Hart, Three s. 8 PM(NOC) Cases and Thamby Denied Leave to Appeal

The Court Won’t Hear Court versus Church Earlier this week, the Supreme Court of Canada (“SCC”) refused to hear the case of Hart v. Roman Catholic Episcopal Corporation of the Diocese of Kingston, in Canada  2011 ONCA 728 [Hart]. While the church and the issue may be different, this case can be placed alongside Bentley v. Anglican Synod of the Diocese of New Westminster 2010 BCCA 506 [Bentley], which was also denied by the same Court last year. (You can read a summary of the case and the appellate court decision by our colleague, Laura Achoneftos, here.) It can be argued that...


Hidden Agendas? Teva v Pfizer

In May of 2011, the Supreme Court of Canada granted Teva Canada leave to appeal the Federal Court of Appeal’s decision, Teva v Pfizer, 2010 FCA 242. At issue is Patent ‘446 (July 2008; expires in 2014), which covers Pfizer’s sildenafil-based drug for treating erectile dysfunction (ED). Pfizer originally patented sildenafil in 1998 to treat hypertension, and only after a number of test patients reported spontaneous ‘reactions’ did they begin testing the compound for treating ED. The patent prevents pharmaceutical companies from marketing generic, low-cost alternatives. Both parties are asking the Court to revise its position on sufficiency in patent...


Amazon’s “One-Click” Patent Granted in Canada: A Case Comment on the Federal Court of Appeal Decision

The patentability of business methods has been a major source of controversy in Canadian patent law. While the Federal Court of Appeal (“FCA”) had the opportunity to clarify the patentability of business methods in Canada (Attorney General) v, Inc, 2011 FCA 328, it left many questions unanswered, only affirming that business methods were not automatically excluded from patentability. After directing the Commissioner of Patents to re-examine the patent, the Canadian Intellectual Property Office (CIPO) has finally granted the business method patent to Amazon. This decision is interesting, not only because it raises a significant question of law, but also...


A “One-Click” Patent: Canada (Finally) Opens-Up Possibility for Business Method Patents in, Inc v Attorney General

In a previous post on the US Supreme Court decision, Bilski et al v Kappos, No.08-964 545 F. 3d 943 [Bilski], I discussed how SCOTUS alluded to the possibility that “business methods” could be patented in the United States – a case that did not outline precisely what kinds of business methods entailed protection. Canadian courts, by contrast, had shut the door on these types of patents – that is, until October 14, 2010, when the Federal Court (“FC”) released its decision for, Inc v Canada (Attorney General), 2010 FC 1011.


U.S. Supreme Court in Bilski et al. v. Kappos tap floodgates for “business methods patents”

On June 28, 2010, the US Supreme Court released its reasons in Bilski et al. v. Kappos, No.08-964 545 F. 3d 943 (PDF link) (“Bilski”). The case was widely followed, in particular, by intellectual property firms, as a decision widely favouring business method patents could have had serious ramifications on the patenting practices of future clients. At issue in this case, were “business method patents” which confer a monopoly on the exclusive use of new techniques of conducting business transactions, processing financial data, or operating an enterprise upon approval by a national patent office. Allowing these types of patents is...


Modern-Day David and Goliath Battle Could Head to U.S. Supreme Court: i4i v. Microsoft

Technology giant Microsoft Corp. has made one last-ditch effort to defend a decade-long patent infringement lawsuit against a small Canadian software company, i4i Inc.  Last week, Microsoft filed a petition (PDF link) with the US Supreme Court asking for a final resolution to the dispute.  In the suit, i4i alleges that Microsoft used the small company’s patented custom XML editing technology in the widely-used Microsoft Word processing software.  This Time, David Challenges Goliath i4i is a small Canadian company that holds a patent (issued in 1998) covering the use of custom XML, a computer programming language which allows for the...


Apotex v Sanofi: SCC Softens Canadian Obviousness Test

Yesterday, Jeremy Barretto canvassed the Supreme Court of Canada’s (“SCC”) most recent decision in Apotex Inc v Sanofi-Synthelabo Canada Inc, [2008] 3 SCR 265 [Apotex] concerning selection patents.  Since Jeremy already surveyed the facts, procedural history, and analyses of the case, I will focus today on the issue of obviousness, noting some distinctions between the obviousness standard set out in the Apotex decision with the latest American decision on obviousness in KSR International Co v Teleflex Inc, 127 S Ct 1727 (2007) [KSR].


Apotex cannot stop sticky platelets without a patent

On Thursday November 6, 2008 the Supreme Court of Canada (“SCC”) released its decision in Apotex Inc v Sanofi-Synthelabo Canada Inc, [2008] 3 SCR 265. This intellectual property case involves a dispute over selection patents between Apotex Inc. (“Apotex”), a generic drug manufacturer, and Sanofi-Synthelabo Canada Inc (“Sanofi”) who held the original patent. TheCourt published a summary of the Federal Court of Appeal case when leave to the SCC was granted more than one year ago.


Patent Rights and “Public Order”

In Harvard College v Canada (Commissioner of Patents), [2002] 4 SCR 45 [Harvard College], the Supreme Court of Canada (“SCC”), in a 5-4 decision, ruled that a genetically modified mouse was not a patentable invention under the Patent Act, RSC 1985, c P-4. Harvard College had created a genetically modified mouse, known as the “oncomouse,” that was particularly susceptible to developing cancer, and thus ideal for oncology research. The technique of creating the oncomouse involves inserting a special cancer-promoting gene into fertilized mouse eggs, which are then implanted into female mice; subsequently, cancer-susceptible mice offspring are born and used for scientific...