ipatents.ca: Patent Stories

Patent Office releases Unity of Invention practice notice

Just got this in my email:

Please be advised that the Commissioner of Patents has authorized a practice notice regarding Unity of Invention.

The practice notice is a follow-up to the practice notice released on March 24, 2009, and further clarifies Office practice with regard to section 36 of the Patent Act.

The practice notice is available on the CIPO web site at the following link:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00292.html

Supreme Court dismisses COVERSYL leave application

As previously discussed here, the Court today declined to hear Apotex’s appeal and made an order dismissing the application for leave to appeal with costs. Congratulations to GSK and its litigation team at Ogilvy Renault!

CBA Quarterly case summaries

The Canadian Bar Association, IP Section, has released a new set of case summaries (for October - December 2009).

Link to previous quarter’s cases.

Generics get Court to expunge Advair Diskus design mark

In a decision released yesterday, Justice Barnes sided with a number of generic drug makers and ordered Glaxo Group’s OBLATE SPHEROID Design mark, pictured to the left, expunged.

The Court considered evidence from physicians, pharmacists and patients. The Court said,

I am satisfied from this evidence that colour and shape are not the primary characteristics by which GSK distinguishes the Advair Diskus inhaler from the wares of its competitors or, more significantly, by which its purchasers make their choices.

and

In conclusion… the question which arises here is “what does an unlabelled two-tone purple circular inhaler mean to a physician, pharmacist or patient” to which the same answer applies – not enough for a finding of distinctiveness.

Top Canadian Court to hear COVERSYL patent case?

The Supreme Court of Court will decide this week whether to hear an appeal of the Servier case. This is a pharmaceutical patent case involving an ACE inhibitor marketed under the brand name Coversyl.

Both trial and appellate courts concluded that Apotex, the generic drug maker, was infringing the ADIR/Servier patent. Apotex has now appealed to the Supreme Court of Canada.

A summary of the case is on the Court’s docket site:

Intellectual property - Patents - Medicines - Infringement action - Validity of patent - Whether the invention of a patent may be distinct from the invention applied for by a patentee - Whether the invention or inventive concept of a patent may be discerned from the claims and specification as a whole or whether the claims of a patent may each disclose and define a separate invention or inventive concept

The Respondents ADIR and Servier Canada Inc. (collectively, “Servier”) brought an action against the Applicants (collectively, “Apotex”) alleging Apotex was infringing its ‘196 patent by manufacturing and selling its generic version of the drug, perindopril, in Canada and abroad, for the treatment of hypertension and cardiac insufficiency. Servier’s work to develop its drug, an angiotensin-converting enzyme (“ACE”) inhibitor, commenced in 1977. Along with other innovator companies, Servier was conducting research to improve upon the original ACE inhibitor drug, captopril, in order to reduce its side effects. In 1980, Merck & Co. disclosed at a conference that it had developed a new ACE inhibitor, enalapril, that improved upon captopril. Following this, researchers turned their attention to building improvements to the enalapril molecule. Schering Corporation obtained patent ‘206 for its ACE inhibitor, ramipril. Servier’s work focussed on the use of bicyclic rings in place of proline on the Merck enalapril “backbone,” using non-ACE inhibitor prior art, and the results were excellent. Servier was granted the ‘196 patent for the entiomerically-pure salt of this compound for perindopril in 1996, one of several companies awarded patents for similar drugs. Apotex obtained a notice of compliance for its generic version of perindopril tablets in 2007. Servier brought an action against Apotex for patent infringement. Apotex raised several defences based on allegations of patent invalidity and counterclaimed for damages for alleged violations of the Competition Act.

The case is: Apotex Inc. et al. v. ADIR et al. (F.C.) (Civil) (By Leave) (33357)

The decision regarding leave to appeal is to be delivered at 9:45  A.M. EDT on Thursday, March 25, 2010.

Links:

Case docket

Federal Court and Federal Court of Appeal decisions.

Americanidol.ca and 3 other recent CDRP decisions

Four complaints; four orders to transfer. Complainants under the CIRA Dispute Resolution Policy are certain to be celebrating the latest batch of decisions. In four decisions released this year, arbitrators ordered the transfers of all disputed domains:

• windows7.ca (decision)
• americanidol.ca (decision)
• sickchildren.ca (decision)
• revenuquebec.ca (decision)

Interestingly, in the sickchildren.ca decision, the panel noted the registrant agreed to the transfer but asked to be compensated. The panel refused to order compensation and said:

“The Registrant has requested an order mirroring that of the Complainant’s, namely that the Domain Name be transferred to the Complainant. In making this request, the Registrant has stipulated that such an order by the Panel include a condition as to the future use of the Domain Name by the Complainant upon its transfer and a requirement that “adequate” compensation be paid by the Complainant to the Registrant concurrently with the transfer. Without attempting to determine whether or not the Panel has the jurisdiction to order compensation be paid or to include conditions as part of an order to transfer the Domain Name, the Panel finds no merit in the stipulations included by the Registrant in its request to transfer the Domain Name.”

Off-topic: Supremes declare that Khadr deprived of human rights

As stated in the Supreme Court of Canada’s headnote (from a unanimous court with reasons for judgment written by Chief Justice McLachlin, released this morning):

The appeal from the judgment of the Federal Court of Appeal, Number A-208-09, 2009 FCA 246, dated August 14, 2009, heard on November 13, 2009, is allowed in part with costs to the respondent. The application for judicial review of the government’s decision and policy not to seek the repatriation of the respondent is allowed in part. This Court declares that through the conduct of Canadian officials in the course of interrogations in 2003 and 2004, as established on the evidence, Canada actively participated in a process contrary to its international human rights obligations and contributed to the respondent’s ongoing detention so as to deprive him of his right to liberty and security of the person guaranteed by s. 7 of the Canadian Charter of Rights and Freedoms, contrary to the principles of fundamental justice.

A myriad of gene patents

Joe Mullin profiles the Myriad patent story. The company’s seven patents have been challenged in the US federal district court by the ACLU on behalf of a number of scientific organizations and breast cancer patients, among others.

The patents protect isolated portions of the human genome, particularly covering tests that diagnose breast and ovarian cancer.

The case was filed in May 2009 and now the Court is dealing with motions for summary judgment:

Multiple amicus briefs have been submitted on both sides, and lawyers for the plaintiffs and defendants have filed summary judgment motions that they are scheduled to argue before Sweet on February 2, 2010.

Interestingly, the plaintiffs argue the Constitution: that the patents violate the First Amendment protecting free speech (DNA being an example of speech). The plaintiffs also argue that the patents protect “parts of nature” (a violation of section 101 of the US patent code). Myriad counters by arguing that the genetic material covered is “isolated and purified” DNA, patentable as a composition of matter.

The plaintiffs raise another Constitutional argument: that the Myriad patents have no rational connection to article 1, section 8 of the Constitution that allows Congress the right to make copyright and patent grants “to promote the progress of science and the useful arts”. As Mullin writes:

The doctors’ groups argue that Myriad’s patents “can be held as a matter of law to impede rather than promote the progress of science” and should be invalidated on summary judgment. Myriad’s lawyers counter that the Supreme Court gave Congress “considerable latitude” in deciding what kind of IP policies promote the progress when it decided Eldred v. Ashcroft in 2003. That was the case in which then-Stanford Law School professor Lawrence Lessig (now at Harvard) challenged the 1998 copyright extension (and lost). The Eldred decision, argue the defendants, gives Congress wide latitude in choosing the best IP policies, and provides the USPTO with “ample bases for concluding that these patents advanced” the cause of science.

Legal privilege extends to US patent attorneys

Gilbert’s lawyer Alex Stack discusses the Datatreasury v. RBC decision (as yet unreported). He writes,

In DataTreasury, Claudio Ballard, the inventor of the patent at issue and a resident of the United States, engaged the American law firm of Pennie & Edmonds LLP to draft, file and prosecute his patent application. The professionals who dealt with the inventor were patent attorneys: lawyers also called to the U.S. Patent Bar as “patent agents”. The defendants, in litigation involving the corresponding Canadian patent, demanded production of communications between the inventor and the Pennie & Edmonds “patent agents” regarding the drafting and filing of the initial U.S. patent application. They argued that under Canadian law the Pennie & Edmonds professionals were clearly acting as patent agents, not lawyers, and under the Lilly Icos case communications with patent agents, domestic or foreign, were not privileged.

Prothonotary Aalto instead ruled that the communications were privileged, under both the common law “Wigmore” test, and as a matter of comity.

As suggested in the extract, the ruling is a departure from the caselaw and pushes Canadian law to line up more closely with US law.