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IP Decisions

Parliamentary Committee Issues Report on PMPRB Reform. Calls for “Comprehensive Response” by the Government

Parliamentary Committee Issues Report on PMPRB Reform. Calls for “Comprehensive Response” by the Government On May 6, 2024, Canada’s Standing Committee on Health (“HESA”) issued a report containing “ten recommendations on how the Government of Canada can enable the Patented Medicine Prices Review Board (“PMPRB”) to more effectively carry out its mandate and implement its […]

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Federal Court of Appeal Interprets “Use” in Section 42 of the Patent Act

The Federal Court of Appeal (per Heckman J.A.) dismissed an appeal by Steelhead LNG (ASLNG) Ltd. and Steelhead LNG Limited Partnership (collectively, “Steelhead”) from a summary trial judgment dismissing Steelhead’s patent infringement action. This appeal turned on the meaning of “use” under section 42 of the Patent Act. Steelhead LNG (ASLNG) Ltd v Arc Resources

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Federal Court of Appeal Confirms That Cialis Patent is Invalid

The Federal Court of Appeal (per Locke JA.) affirmed a trial decision in which claims in Lilly’s patent covering physiologically acceptable salts of tadalafil were found to be invalid for overbreadth and insufficiency. The principal issue on appeal was the proper construction of the claim term “physiologically acceptable”, though the Court’s obiter statements regarding the

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Federal Court Finds Flaws in Online Survey Evidence and Reminds About Descriptive Certification Marks

The Federal Court (Tsimberis J.) dismissed an appeal by Promotion in Motion, Inc. (“PIM”) from a Trademark Opposition Board (“Board”) decision refusing PIM’s applications to register its SWISSKISS mark and SWISSKISS & Design mark in association with “chocolate of Swiss origin”. Hershey Chocolate & Confectionary LLC (“Hershey”) successfully opposed PIM’s applications based on Hershey’s registered

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Federal Court Determines Admissibility of Testimony from Fact Witnesses who Authored Prior Art

In Medexus Pharmaceuticals v Accord Healthcare (2024 FC 424), Justice Pallotta dismissed the plaintiffs’ (“Medexus”) patent infringement action after finding that the patent at issue (“662 Patent”) was invalid for obviousness. The 662 Patent related to concentrations of subcutaneously injected methotrexate solutions used to treat rheumatoid arthritis and psoriasis/psoriatic arthritis. The decision addresses an interesting

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The “Due Care” Standard for Patent Reinstatement in Canada: A Very High Bar

The Federal Court (per Furlanetto J.) has held that the Commissioner of Patents (“Commissioner”) acted reasonably in denying a request for reinstatement of a patent that lapsed due to non-payment of an annual maintenance fee. This decision underscores the importance of having multiple lines of communication between a patent agent and a client – and

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Claims to Dosing Regimens May Not Be Prohibited Methods of Medical Treatment: A Question of “Whether” and “How”

In Pharmascience v Janssen, the Federal Court of Appeal (Locke JA writing for the Court) held that the claims in Janssen’s patent to a dosing regimen are not prohibited as a method of medical treatment. Pharmascience v Janssen, 2024 FCA 23   The Prohibition Against Patenting Methods of Medical Treatment The patentability of methods of

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Snowplow Patents are Snowed Under due to Federal Court Findings of Obviousness

The Federal Court (per St-Louis J.) held that the asserted claims of three patents owned by Nordik Blades (collectively, the “Nordik Patents”) are invalid on the basis of obviousness. However, the Court found that the asserted claims are not overbroad and the Nordik Patents are not void under section 53 of the Patent Act. The

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Federal Court Finds Takeda’s Patent Not infringed and Invalid for Inutility and Insufficiency

The Federal Court (per Furlanetto J.) held that Takeda’s 916 Patent covering aspects of its DEXILANT® capsules is not infringed by Apotex’s proposed generic dexlansoprazole capsules and, in any event, is invalid for inutility (lack of sound prediction) and insufficiency. Takeda Canada Inc. v. Apotex Inc. – Federal Court (fct-cf.gc.ca) The Court’s infringement and validity

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Samsung and Biogen Enjoined From Using BYOOVIZ Trademark for their Biosimilar in Canada

The Federal Court (per Pallotta J.) held that Biogen’s and Samsung’s use of the mark BYOOVIZ in association with an ophthalmologic drug infringes Novartis’s trademark registration for BEOVU, and granted a permanent injunction preventing further use of the mark. Novartis v Biogen 2024 FC 52 Novartis is the owner in Canada of a trademark registration

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