The Federal Court granted a prohibition order, upon application
by Pfizer pursuant to the NOC Regulations. A copy of the Federal
Court Decision can be found here.
A copy of our summary can be found here. Mylan appealed that decision,
alleging that the Applications Judge made two errors relating to
sound prediction of utility. The Federal Court of Appeal (FCA)
dismissed the appeal.
The FCA held that it is acceptable for a Judge to raise an issue
on his own volition provided he informs the parties and gives them
a fair opportunity to respond. Furthermore, the FCA upheld the
Applications Judge's finding that the issue as to whether the
patent fully and accurately set out the work done was not raised in
the Notice of Allegation, however, if that issue had been
considered, it would not have changed the outcome of the
proceeding. "The minor bona fide data reporting errors do not
materially change the results reported in the patent" which
shows a skilled person that donepezil inhibits AChE and can be
predicted to treat Alzheimer's disease.
The FCA also upheld the Applications Judge's finding that
the promise of the patent related to compounds that were effective
in the treatment of Alzheimer's, and did not include proof of a
lack of toxicity. Although the patent specification made some
references to potential toxicity and efficacy benefits, as well as
advantages over the prior art compounds, the Applications Judge
rightly concluded these were not promises.
Thus, the FCA did not consider whether there was a sound
prediction regarding toxicity and dismissed the appeal.
OTHER CASES OF INTEREST
Motion by Corporation for Leave to Represent Itself
El Mocambo Rocks Inc. v. Society of Composers, Authors
and Music Publishers of Canada (SOCAN)
The Appellant is appealing an order granting default judgment
against it. The within motion seeks leave for the company to be
represented by its president and owner rather than a solicitor. The
Federal Court of Appeal (FCA) held that the company must
demonstrate that it cannot afford a solicitor, that the issues are
not complex and that the appeal can be handled expeditiously by the
proposed representative. No clear financial statements were
provided. Furthermore, taking into account the proceedings before
the Federal Court, the FCA held that the proposed representative
did not have the capabilities to diligently pursue the appeal. The
FCA then held that the test had not been met and dismissed the
New Evidence Not Permitted on Appeal
Gap Adventures Inc. v. Gap, Inc.
A Prothonotary of the Federal Court granted leave for the
Respondents to amend their pleadings. The decision was upheld by a
Motions Judge. The Appellants appealed to the Federal Court of
Appeal (FCA) regarding certain of the statements added and brought
the within motion for leave to file new evidence on appeal. A copy
of the Federal Court decision allowing amendment of the Statement
of Claim can be found here. A copy of our
summary can be found here.
The Appellant sought to have the within motion heard at the same
time as the hearing on the merits of the appeal. The FCA held that
the motion should be disposed of in writing prior to the hearing of
the appeal. The FCA also dismissed the motion.
The new evidence sought to be adduced were excerpts from a
discovery transcript where the company representative admitted that
he had no personal knowledge of the meaning of a phrase in the
amended pleadings. The Appellant alleged that this new evidence
supported its argument that the phrase was ambiguous and should not
have been permitted. The FCA held that the Appellant could have
submitted other evidence regarding the alleged ambiguity of the
phrase before the Federal Court. Furthermore, the fact that the
company representative had no personal knowledge does not
conclusively determine in the appeal whether the phrase is so
ambiguous as to preclude the pleadings amendment.
PATENT APPEAL BOARD DECISIONS
Application Rejected for Anticipation and Obviousness.
Commissioner's Decision No. 1322
The invention relates to enabling a wireless device to determine
whether to remind a user about a pending task whose accomplishment
has a geographic aspect. It was rejected by the examiner for being
anticipated and obvious.
The amendments will increase uncertainty, and will result in costly investigations associated with trademark clearance searches as well as risk analysis relating to opposition proceedings and infringement actions.