CANADA
CANADA
did. As a result, the court concluded that the patent was invalid for failing to meet the disclosure requirements.
THE SUPREME COURT HELD THAT ‘AS A MATTER OF POLICY AND SOUND INTERPRETATION’, PFIZER SHOULD NOT BE ALLOWED TO ‘GAME’ THE SYSTEM AS IT DID.
Te Supreme Court’s decision to declare the patent invalid surprised Canadian patent practitioners given that the proceedings were commenced under Canada’s Patented Medicines (Notice of Compliance) Regulations. In these abbreviated proceedings, the court’s mandate is limited to an assessment of whether allegations of invalidity are justified in order to decide whether the Minister of Health should be permitted to issue a Notice of Compliance, which would allow Teva, in this case, to produce a generic version of Viagra. Typically, a party seeking to invalidate a patent would commence a separate action or assert the invalidity of the patent in an infringement action.
the importance of prior art searches before filing an industrial design registration or before initiating an industrial design action, to ensure that a proposed design is indeed original.
Patents: Viagra goes limp
Te Canadian patent for Viagra was struck down by the Supreme Court of Canada for failing to meet the statutory disclosure requirements. Te patent at issue was for the use of a class of compounds, which includes sildenafil (the active ingredient in Viagra), to treat erectile dysfunction (ED). Te main issue before the Supreme Court was whether the patent met the Patent Act’s disclosure requirements, which state that the specification must “correctly and fully describe the invention”.
In overturning the findings of both the Federal Court and the Federal Court of Appeal, the Supreme Court held that, although sildenafil was one of nine especially preferred compounds listed in the patent and that there was testing establishing that one of these compounds was found to work to treat ED, the specification failed to meet the statutory disclosure requirements as it did not specifically identify sildenafil as the tested compound that was found to be effective. Given that the skilled reader would be required to conduct “a minor research project” to determine which of two preferred compounds was the compound that was found effective, the Supreme Court held that the patent failed to state in clear terms what the invention was and that “as a matter of policy and sound interpretation”, Pfizer should “not be allowed to ‘game’ the system” as it
48 World Intellectual Property Review e-Digest 2013
Pfizer petitioned the Supreme Court to reconsider its decision to invalidate the patent, asserting that the court lacked the jurisdiction. Although Pfizer’s comments with respect to the Supreme Court’s lack of jurisdiction under Canada’s current system have merit, one must not forget that, as the highest court in the land, the Supreme Court’s findings with respect to the insufficiency of the Viagra patent disclosure are binding on all lower courts in Canada. Tis was confirmed by the Federal Court in Apotex Inc v Pfizer Ireland Pharmaceuticals, released 12 days aſter the Supreme Court’s decision, when it held that the only possible result for the Viagra patent is a finding of invalidity.
We are waiting to see whether the Supreme Court will, in the coming months, seize the opportunity to shed some light on its decision in the context of the current legislative framework and/or recommend revisions to the current framework.
Trademarks/licensing
A superior court in the province of Québec ruled that Dunkin’ Donuts failed to protect and enhance its brand in the province of Québec and ordered the franchisor to pay CA$16.4 million in damages to 21 former franchisees that held 32 stores in Québec (Bertico Inc v Dunkin’ Brands Canada Ltd).
In the mid-1990s the Dunkin’ Donuts brand dominated Québec’s coffee and doughnut market (210 stores in 1998). Around that time, another coffee chain by the name of Tim Hortons, which was already popular in the rest of Canada, made an aggressive push for the Québec market. Te franchisees alerted the franchisor about their concerns over the ‘Tim Hortons phenomenon’ and Dunkin Donuts’ crumbling image in Québec.
Little was done by Dunkin’ Donuts to improve its brand in Québec or to combat Tim Hortons. Te only significant initiative was a store remodelling plan which turned out to be a complete failure. Te Dunkin’ Donuts brand
www.worldipreview.com
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