Canada, Smart & Biggar updates

Healthcare & Life Sciences

Contributed by Smart & Biggar
8 important life sciences IP issues for innovators doing business in Canada
  • Canada
  • 30 September 2020

The US-Canada border is the longest border between any two countries and US goods and services trade with Canada totalled an estimated US$718.5 billion in 2018, possibly the largest bilateral trade volume between two individual countries. Given the extensive integration of the Canadian and US economies, US life sciences companies can expect to have Canadian business interests. This article highlights eight life sciences IP issues of importance for innovators doing business in Canada.

Federal Court strikes price calculation provision of amendments to Patented Medicines Regulations
  • Canada
  • 12 August 2020

The Federal Court recently issued its decision on an application for judicial review of the Regulations Amending the Patented Medicines Regulations (Additional Factors and Information Reporting Requirements). The court ruled that Section 3(4), which would expand price calculation requirements in Section 4(4) of the Patented Medicines Regulations to encompass information beyond the first point of sale, was invalid. This article looks more closely into the court's decision and its implications.

Amended Patented Medicines Regulations will come into force on 1 January 2021
  • Canada
  • 03 June 2020

The Patented Medicine Prices Review Board recently announced that the amended Patented Medicines Regulations will now come into force on 1 January 2021. Further, a revised set of draft guidelines will be published during the week of 15 June 2020, followed by a 30-day consultation period.

First decision under amended PMNOC Regulations: Federal Court finds Amgen's filgrastim patent obvious
  • Canada
  • 20 May 2020

The Federal Court recently issued the first decision under the amended Patented Medicines (Notice of Compliance) Regulations. In the decision, Pfizer was successful in establishing obviousness of the asserted claims of Canadian Patent 1,341,537 relating to filgrastim (Amgen's NEUPOGEN and Pfizer's biosimilar product NIVESTYM).

OCT benefits cap and private label product restrictions abolished
  • Canada
  • 01 April 2020

Most of the final amendments to regulations made under the Ontario Drug Benefit Act and the Drug Interchangeability and Dispensing Fee Act came into effect on or before 1 January 2020, following public consultations. One notable change compared with the proposed amendments is the removal of the financial cap on ordinary commercial term benefits. Further, private label products will no longer be prohibited from being designated as a listed drug product or interchangeable.


Intellectual Property

Contributed by Smart & Biggar
Federal Court of Appeal affirms largest reported Canadian patent infringement award in history
  • Canada
  • 26 October 2020

In previous Federal Court decisions, the court ordered Nova Chemicals Corporation to pay the Dow Chemical Company approximately C$650 million as a result of Nova's infringement of Dow's patent on novel polyethylene blends. This was the largest reported Canadian patent infringement award in history. The Federal Court of Appeal has now issued its judgment and reasons on the appeal.

Late PCT national phase entry in Canada as of right will soon come to an end
  • Canada
  • 26 October 2020

Substantial amendments to the Patent Act and new Patent Rules came into force in October 2019. A significant change concerns the deadline for entering the Canadian national phase of a Patent Cooperation Treaty application. Under the new provisions, if an application enters the national phase more than 30 months from the earliest priority date, a reinstatement fee must be paid and the applicant must submit a request that its rights be reinstated and a statement that the failure to meet the deadline was unintentional.

French language requirements in Quebec: an introduction
  • Canada
  • 19 October 2020

The Charter of the French Language gives the French language the status of an official language in Quebec, thus making its use mandatory in all spheres of public life in the province, including commerce and business. An exception to this rule is the 'recognised trademark' exception, which provides that recognised trademarks need not be translated into French unless a French version of the mark is registered.

Why you should designate Canada – and a Canadian agent – in your next Madrid application
  • Canada
  • 19 October 2020

A little over one year has passed since Canada overhauled its trademark legislation and acceded to the Madrid Protocol, making it easier than ever to protect trademark rights in Canada. This article explores some of the key reasons why international brand owners should consider designating Canada in international trademark applications and outlines the importance of appointing a Canadian agent to monitor and oversee international applications designating Canada.

Federal Court of Appeal does not disturb lower court's finding of use for hotel services
  • Canada
  • 05 October 2020

In a highly anticipated decision, the Federal Court of Appeal recently held that a trademark owner could demonstrate use of a trademark in Canada in association with hotel services in the absence of a brick-and-mortar hotel. While the decision is not the first to analyse the Internet's impact on use of a trademark, this case provides important guidance to brand and trademark owners which offer services to consumers in Canada without a physical brick-and-mortar location.


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