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SELECTION PATENTS


Te Court of Appeal found that the trial judge had erred in holding that the ‘113 patent was invalid for double-patenting. Te two patents do not claim the same invention merely because the ‘113 selection patent is within the ambit of the prior genus patent; the claims of the ‘113 patent were “patently distinct” from the claims in the ‘687 patent.


Regarding utility, the Court of Appeal stated that selection patents must promise an advantage, the construction of which is fundamental to analysing the patent’s utility. Because the trial judge failed to provide a foundation for the construction of the patent’s ‘promise’, and due to a lack of reference to expert evidence on the issue, the utility issue was returned to the trial division for determination.


Finally, on the subject of sufficiency of disclosure, the Court of Appeal agreed with the trial judge that both the sound prediction disclosure requirement and the disclosure requirement under Section 27(3) of the Patent Act needed to be satisfied. However, the Court of Appeal disagreed with the trial judge’s analysis that the two requirements were equivalent, and because there was an


insufficient basis on which to review the decision, the issue was returned to the trial division for determination.


Novopharm’s application for leave to appeal to the Supreme Court of Canada was denied.


Conclusion


Te Canadian Federal Court of Appeal held that


‘invalid selection’ does not constitute an


independent ground for invalidating a patent. Rather, the conditions for a valid selection patent serve to characterise the patent and accordingly inform the analysis for the grounds of validity set out in the Patent Act—novelty, obviousness, sufficiency and utility. In short, a selection patent is vulnerable to attack on any of the grounds set out in the Patent Act.


While this case does not discuss the extent to which conditions for a selection patent can be relevant to utility or other grounds of invalidity, it nevertheless suggests that invalidity analysis must be conducted pursuant to the Patent Act and established jurisprudence.


Katie Wang is a lawyer and patent and trademark agent at Shapiro Cohen. She can be contacted at: kwang@shapirocohen.com


Katie Wang is a lawyer, patent agent and trademark agent with Shapiro Cohen. She practises exclusively in intellectual property law. She is involved in all aspects of patent portfolio management worldwide and advises her clients with regard to prosecution strategy, validity, freedom to operate, licensing and litigation, in the chemistry and life science areas.


www.worldipreview.com


Life Sciences Intellectual Property Review 2011


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