Canada, Smart & Biggar updates

Healthcare & Life Sciences

Contributed by Smart & Biggar
Court upholds validity of one pneumococcal vaccine patent but holds two others invalid
  • Canada
  • 26 May 2021

The Federal Court recently issued a decision on the validity of three patents relating to Pfizer's PREVNAR 13, a 13-valent pneumococcal polysaccharide protein conjugate vaccine. Merck had sought to impeach Wyeth's patents on the basis that it believed that Wyeth (now Pfizer) would assert the patents against its 15-valent pneumococcal polysaccharide protein conjugate vaccine, V114. The court upheld the validity of one of Wyeth's patents but declared the other two invalid.

Federal Court of Appeal upholds Federal Court decision finding Shire's VYVANSE patent valid
  • Canada
  • 21 April 2021

The Federal Court of Appeal has dismissed Apotex's appeal of the Federal Court decision which held that the claims of Canadian Patent 2,527,646 were valid and prohibited the minister of health from issuing a notice of compliance to Apotex for its lisdexamfetamine product (Shire's VYVANSE) until the patent's expiry. The prohibition application was consolidated with Apotex's action seeking a declaration of invalidity and non-infringement.

Patentability of diagnostic methods – has the Patent Office drawn the line?
  • Canada
  • 07 April 2021

IP offices have long grappled with whether a medical diagnostic constitutes a traditionally patentable concrete or physical method or instead is merely an unpatentable and intangible abstract idea. Although a new diagnostic tool is typically embodied in a physical device or method, the principal advance often lies in the recognition of a previously unknown correlation. New guidance from the Patent Office is a welcome step forward in this difficult area.

Federal Court finds silodosin formulation patent valid but not infringed
  • Canada
  • 24 February 2021

The Federal Court recently issued a decision in a patent infringement action pursuant to Section 6(1) of the Patented Medicines (Notice of Compliance) Regulations relating to silodosin. Although the court found that the patent was not invalid on the basis of obviousness, it also found that the patent had not been infringed.

Innovators challenge final PMPRB Guidelines in new Federal Court application
  • Canada
  • 09 December 2020

Innovative Medicines Canada and numerous research-based pharmaceutical companies recently commenced an application for judicial review of the final Patented Medicine Prices Review Board Guidelines. The guidelines aim to operationalise amendments to the Patented Medicines Regulations scheduled to come into force on 1 January 2021.


Intellectual Property

Contributed by Smart & Biggar
You sunk my pirate ship: Federal Court of Appeal upholds first anti-piracy site-blocking order
  • Canada
  • 14 June 2021

The Federal Court of Appeal recently upheld a Federal Court order which enjoined Canada's main internet service providers to block their subscribers' access to certain piracy websites. The dismissal of this appeal, which recognises the irreparable harm that piracy causes to the creative sector, is another important decision for copyright holders. The decision once again confirms that the federal courts are prepared to issue appropriate remedies to protect Canadian creators.

Locust Lane: can a road name be an enforceable trademark?
  • Canada
  • 24 May 2021

Clearly descriptive trademarks are typically not registrable in Canada. However, brand owners frequently adopt trademarks which push the boundaries of descriptiveness. A recent Federal Court decision is a cautionary tale on the limits of enforcing descriptive geographic names. This case reminds brand owners of the perils of selecting descriptive trademarks and underscores the benefits of securing registered trademark protection for secondary brands.

Trademarks Office publishes new practice notices to reduce examination delays
  • Canada
  • 17 May 2021

The Trademarks Office recently published two new practice notices which aim to improve delays in the processing of trademark applications. With the time between filing and examination currently surpassing 30 months, applicants will largely welcome the news of the initiatives, particularly the new ability to request expedited examination. This article summarises the new initiatives and provides guidance on how these changes could affect applicants' filing and prosecution strategies.

Do you actually own the intellectual property generated by your employees?
  • Canada
  • 26 April 2021

Employees are the source of some of their employer's most valuable intangible assets – namely, IP assets. For this reason, it is usually in a business's best interest to ensure its ownership of IP assets generated by employees. The rules that apply to employer-employee relationships vary greatly between copyright, patents and industrial designs. Thus, any business with employees should be aware of these unique rules.

Federal Court of Appeal upholds Federal Court decision finding Shire's VYVANSE patent valid
  • Canada
  • 19 April 2021

The Federal Court of Appeal has dismissed Apotex's appeal of the Federal Court decision which held that the claims of Canadian Patent 2,527,646 were valid and prohibited the minister of health from issuing a notice of compliance to Apotex for its lisdexamfetamine product (Shire's VYVANSE) until the patent's expiry. The prohibition application was consolidated with Apotex's action seeking a declaration of invalidity and non-infringement.


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