Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
By Suzanne Hof - November 16 2012
Pfizer Canada Inc. (Pfizer) has asked the Supreme Court of Canada to reconsider its decision to invalidate their Canadian Patent No. 2,163,446, the patent that provided Pfizer with a monopoly for its multi-million dollar erectile dysfunction drug, Viagra.
Pfizer has taken the position that the Court “accidentally granted a remedy in this appeal that exceeds its jurisdiction.” The proceedings in question were initiated as an application under the Patented Medicines (Notice of Compliance) Regulations, the outcome of which is typically not to determine invalidity or infringement, but rather to determine whether a notice of compliance should or should not be granted.
In the present case, the present proceedings were initiated as an application for an order prohibiting Teva Canada Limited from obtaining a notice of compliance for its generic version of Viagra. Pfizer has therefore taken the position that the Supreme Court was acting outside its jurisdiction in its finding of invalidity.
In particular, Pfizer has applied for an order to amend the Supreme Court’s recent judgment “by replacing the words ‘and Patent 2,153,446 is declared void’ with the words ‘the application below is dismissed and the Order of the Federal Court dated June 18, 2009, prohibiting the Minister from issuing notice of compliance to the appellant is hereby set aside’.” In the alternative, Pfizer has applied for a re-hearing on the issue of remedy.
We will, of course, be following these proceedings and posting updates.
The read the previous article on this please visit: If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
If you have any questions please contact Suzanne Hof
If There is No Quid Then There Can Be No Quo - Pfizer's Viagra patent invalidated by Supreme Court of Canada
By Suzanne Hof - November 2012
Today, in a unanimous decision, the Supreme Court of Canada sided with Teva Canada Limited in its bid to invalidate Pfizer Canada Inc.’s Canadian Patent No. 2,163,446 (the ‘446 patent), thereby clearing the way for generic companies to manufacture and sell a generic version of the multi-million dollar erectile dysfunction (ED) drug, Viagra.
This decision hinged on the finding that the ‘446 patent did not satisfy the disclosure requirements under Section 27(3) of the Patent Act. In this regard, the Supreme Court overturned the findings of both the Federal Court and the Federal Court of Appeal that the ‘446 patent did, in fact, provide sufficient disclosure.
The question of sufficiency was raised around whether the specification would have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application” because it does not indicate that sildenafil (the active compound in Viagra) is the effective compound. Although the ‘446 patent does state that “one of the especially preferred compounds induces penile erection in impotent males,” there is no indication which of the several specific compounds identified throughout the description of the patent is this “especially preferred” compound, i.e., sildenafil. Nor does the specification state that the remaining compounds identified in the ‘446 patent were found not to be effective in treating ED.
Furthermore, although claims 6 and 7 are each directed to specific single compounds, there is no indication in the specification that claim 7 relates to sildenafil. By omitting any clear statement that the sildenafil is the active compound, the Supreme Court found that:
There was no basis for a skilled person to determine which of Claim 6 and Claim 7 contained the useful compound, further testing would have been required to determine which of those two compounds was actually effective in treating ED.
According to fundamental principles underlying the patent system, adequate disclosure of the invention in the specification is a precondition for the granting of a monopoly to an invention. It is this “bargain”, or quid pro quo, that the Court references (“[i]f there is no quid – proper disclosure – then there can be no quo – exclusive monopoly rights”) in its finding that the patent be deemed invalid.
http://scc.lexum.org/decisia-scc-csc/scc-csc/scc-csc/en/item/12679/index.do
If you have any questions please contact Suzanne Hof
Please read the UPDATE on this in our on Nov 16, 2012 NEWSFLASH - Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
Adam Tracey Joins MBM
Firm Announcement - Adam Tracey Joins MBM
July 23, 2012
We are delighted to announce that Adam Tracey has joined MBM’s Ottawa office. Adam was called to the Ontario bar in 2008 and is a registered Patent and Trade-mark Agent. Adam’s practice includes drafting and prosecuting patent applications in a variety of technical fields, with particular focus in the areas of manufacturing, construction, industrial, agricultural, medical and oil field technologies, as well as providing patentability, freedom-to-operate, infringement and validity opinions.
Adam has considerable experience advising domestic clients on cost-effective IP filing strategies and international clients with respect to strategic IP portfolio management within Canada and practices in the areas of patent and trade-mark law and related IP litigation.
Adam also practices trade-mark law and has experience negotiating and drafting licensing agreements and other commercial contracts. In addition, Adam’s experience brings a strong compliment to our engineering practice team.
To learn more about Adam Tracey please visit his online profile.
Newsflash (Homepage)
SCOTT MILLER AND THE MBM LITIGATION TEAM SUCCESSFULLY SET ASIDE A DECISION...
Newsletters/Newsflash
Here you will find the full text versions of the MBM & MBM.LAW news and articles contained in each of our e-newsletters as well as archived articles from past newsletters.
Join our mailing listand stay informed on recent developments in Canadian intellectual property law by receiving our informative newsletter direct to your inbox in March, June, September and December.
March 2013 newsletter
In This Issue:
- IP Considerations for Entrepreneurs when dealing with Potential Investors
- Connecting with MBM the Social Media Way
- Update on MBM's New Trademark Team
- Upcoming Events
december 2012 newsletter
In This Issue:
- Language Politics and French Sign Wars in Quebec - Big Box Stores v. The French Language Watchdog
- Viagra® Will No Longer Erect Alone
- Data Requirements and Sound Prediction
November 16, 2012 newsflash
Supreme Court Asked to Reconsider Decision to Invalidate Viagra Patent
November 8, 2012 newsflash
November 7, 2012 Media press release
September 10, 2012 newsflash
September 2012 newsletter
In This Issue:
In the United States according to 35 U.S.C. 112 “the specification...
July 30, 2012 newsflash
July 23, 2012 Firm announcement
July 12, 2012 newsflash
Supreme Court releases rulings for string of Copyright Law Cases
JUNE 2012 Newsletter
In This Issue:
There are currently three options available in Canada by which an Applicant can expedite issuance of a patent.
Claims directed to methods of medical treatment are considered to be directed to non-statutory subject matter and therefore are non-patentable in Canada
April 2, 2012 newsflash
March 29, 2012 newsflash
March 23, 2012 newsflash
March 2012 Newsletter
In This Issue:
Much has been made regarding the recent flurry of media coverage over the Stop Online Privacy Act (SOPA). This article briefly summarizes the key aspects of the U.S. bill itself, implications for Canadians, and what lies ahead.
Check our our latest article "Why Protect Your IP Assets in Canada" that was published in the 2012 edition of the World IP Review.
Just in case you missed it the first time, MBM Intellectual Property Law LLP has a new look. Starting the New Year off with a new look and a new website are just some of the exciting improvements we are making this year.
