Smart & Biggar/Fetherstonhaugh updates

Anti-dilution remedy not limited to registered trademarks
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 03 December 2018

Section 22 of the Trademarks Act, depreciation of a registered trademark's goodwill, is a potentially powerful yet generally underused weapon for dealing with damaging comparative advertising campaigns. Dilution-type claims to prevent comparative ads displaying a registered trademark are particularly complex as they require that the advertising actually 'use' the registered mark within the meaning of the Trademarks Act.

The date is set – new trademark law will be in force June 2019
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 03 December 2018

After years of uncertainty, a date has been set for the implementation of Canada's new trademark law, which will come into force on 17 June 2019. The law will bring about significant changes, including the simplification of trademark applications, the elimination of the government registration fee for new applications and the introduction of fees per class.

We have lift off: Canada's new industrial design regime launched
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 26 November 2018

Numerous and substantial amendments were recently made to the Industrial Design Act and the Industrial Design Rules. The amendments will modernise Canada's industrial design law and harmonise it with other jurisdictions. Among other changes, applicants may now file a divisional application for any design that is originally disclosed – not merely claimed – in a parent application as filed and choose whether to provide a description of the design or statement of limitation.

Apotex not permitted to plead promise-based invalidity grounds in Section 8 lansoprazole action
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 21 November 2018

The Ontario Superior Court of Justice recently dismissed Apotex's motion to plead promise-based invalidity grounds in a Section 8 lansoprazole action. The motion had arisen in the context of a Section 8 action in which Apotex claimed damages for delay in the issuance of its notice of compliance for its generic lansoprazole product (Takeda's Prevacid) due to prohibition applications commenced by Abbott and Takeda.

Amgen not precluded from asserting patent under current PMNOC Regulations
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 21 November 2018

The Federal Court of Canada has refused Pfizer's motion to dismiss an action under the Patented Medicines (Notice of Compliance) (PMNOC) Regulations between Amgen and Pfizer. Pfizer sought to dismiss the action, asserting that it was redundant, scandalous, frivolous, vexatious or otherwise an abuse of process. Pfizer based its argument on a decision under the old PMNOC Regulations in which the court had found that Apotex's allegation of invalidity was justified.

New Bill C-86 introduces many more changes to IP laws
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 19 November 2018

The government recently introduced Bill C-86. The changes introduced by the bill are in addition to the many amendments to the Trademarks Act and Patent Act yet to be brought into force. These changes represent continuing efforts by the government to update and modernise Canada's IP legislation and ensure that it is compliant with Canada's international obligations.

Apotex not permitted to plead promise-based invalidity grounds in Section 8 lansoprazole action
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 19 November 2018

The Ontario Superior Court of Justice recently dismissed Apotex's motion to plead promise-based invalidity grounds in a Section 8 lansoprazole action. Apotex claimed damages for delay in the issuance of its notice of compliance for its generic lansoprazole product due to prohibition applications commenced by Abbott and Takeda. Abbott and Takeda had pleaded patent infringement as a defence and brought a counterclaim for patent infringement. Apotex in turn challenged the validity of Takeda's patents.

Interim order permits import of FDA-approved drug to address Canadian shortage of EpiPens
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 14 November 2018

The minister of health recently made an order permitting the immediate import and sale of epinephrine auto-injectors for use in emergency treatment of life-threatening allergic reactions to address the shortage of EpiPen products. This is the first time that an interim order under Section 30.1(2)(a) of the Food and Drugs Act has been used to address the shortage of an approved product.

Prohibition denied for Ranbaxy's bupropion extended-release tablets
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 14 November 2018

The Federal Court recently dismissed Valeant's application under the Patented Medicines (Notice of Compliance) Regulations regarding Ranbaxy's bupropion extended-release tablets. The court found that the amount of permeation enhancer in the Ranbaxy formulation was outside the scope of the range claimed. As such, Ranbaxy's allegation of non-infringement was found to be justified.

Amgen not precluded from asserting patent under current PMNOC Regulations
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 12 November 2018

The Federal Court of Canada has refused Pfizer's motion to dismiss an action under the Patented Medicines (Notice of Compliance) (PMNOC) Regulations between Amgen and Pfizer. Pfizer sought to dismiss the action, asserting that it was redundant, scandalous, frivolous, vexatious or otherwise an abuse of process. Pfizer based its argument on a decision under the old PMNOC Regulations in which the court had found that Apotex's allegation of invalidity was justified.

Prohibition denied for Ranbaxy's bupropion extended-release tablets
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 12 November 2018

The Federal Court recently dismissed Valeant's application under the Patented Medicines (Notice of Compliance) Regulations regarding Ranbaxy's bupropion extended-release tablets. The court found that the amount of permeation enhancer in the Ranbaxy formulation was outside the scope of the range claimed. As such, Ranbaxy's allegation of non-infringement was found to be justified.

Supreme Court of Canada denies Sobeys leave to appeal in loyalty rewards programme dispute
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 07 November 2018

The Supreme Court of Canada recently denied Sobeys' application for leave to appeal the Alberta Court of Appeal's decision in a dispute regarding the Alberta College of Pharmacists' policy prohibiting pharmacists and pharmacies from offering loyalty rewards programmes or inducements to patients. This decision follows the court's 2016 refusal to grant Sobeys leave to appeal a decision allowing the College of Pharmacists of British Columbia to prohibit "customer incentive programmes".

Recent PMPRB reports
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 07 November 2018

The Patented Medicine Prices Review Board (PMPRB) recently released its fourth edition CompassRX report, which was prepared as part of the National Prescription Drug Utilisation Information System and examines public drug plan expenditures in Canada. The PMPRB also released the 2017 Supplement to the Market Intelligence Report, Biologic Response Modifier Agents 2015 and its 2017 Annual Report.

Federal Court affirms that trademark use for services does not require bricks-and-mortar business in Canada
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 05 November 2018

A recent Federal Court of Canada decision signals that it is maintaining consistency in its broad interpretation of use of a trademark in connection with services and provides comfort for non-Canadian businesses that have no physical presence in Canada. The decisions reverse a longstanding trend by the Trademarks Opposition Board of ignoring ancillary services as being sufficient to constitute use in Canada.

Certificate of supplementary protection regime: first anniversary update
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 31 October 2018

The certificate of supplementary protection (CSP) regime, which recently celebrated its first anniversary, was a long-awaited complement to the existing forms of protection for pharmaceutical products in Canada. As the regime is still new, companies are reminded to consider applying for a potential CSP for any planned new product in Canada early in the lifecycle planning.

Amended PMNOC Regulations: first anniversary update
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 31 October 2018

The amended Patented Medicines (Notice of Compliance) Regulations came into force on 21 September 2017, heralding significant changes to the regulatory landscape for pharmaceutical companies in Canada. Following the first anniversary of the amendments, it is timely to examine the status of actions under the amended regulations, as well as the new procedural rules and guidelines which were introduced in conjunction therewith.

Certificate of supplementary protection regime: first anniversary update
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 29 October 2018

The first anniversary of the certificate of supplementary protection (CSP) regime was 21 September 2018. CSPs, which provide an additional patent-like protection term, are intended to partly compensate innovators for the time invested in researching and obtaining regulatory approval in Canada. This article looks back on the previous year, recaps how the regime works and provides an update on the CSPs granted and rejected to date.

CADTH Pharmaceutical Reviews Update published
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 24 October 2018

​The Canadian Agency for Drugs and Technologies in Health (CADTH) has published the CADTH Pharmaceutical Reviews Update. This is a new consolidated publication that will communicate updates to the CADTH's drug review process. Among other things, the first issue of the update invites stakeholder comments on a number of proposals and announces changes to the Pan-Canadian Oncology Drug Review.

National pharmacare advisory council seeks feedback
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • 24 October 2018

The Advisory Council on the Implementation of National Pharmacare was launched in July 2018. The council recently invited all Canadians to provide their feedback on national pharmacare in order to "help shape the Council's independent report to the Federal Government, to be presented in spring 2019… which will provide the Government with recommendations and a plan on how to move forward on national pharmacare".

USMCA versus NAFTA: what's changed and what it means for intellectual property in Canada
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • 22 October 2018

After more than one year of negotiations, Canada recently reached a new free trade agreement with Mexico and the United States. Among other things, the US-Mexico-Canada Agreement has updated the North American Free Trade Agreement's IP chapter in order to modify the landscape for pharmaceuticals and for patent, copyright and trademark owners. While Canada is already compliant with many of the new agreement's provisions, a number of the changes may have an impact on its IP laws.

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