Canada: Intellectual Property Weekly Abstracts Alert - Week of April 9, 2012

Last Updated: April 17 2012
Most Read Contributor in Canada, April 2016

Edited by Chantal Saunders and Beverley Moore


Prohibition Order Upheld in Face of

Allegations of Lack of Sound Prediction

Mylan Pharmaceuticals ULC v. Pfizer Canada Inc.

Drug: donepezil

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.


Motion by Corporation for Leave to Represent Itself Dismissed

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 motion.

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.


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 Commissioner upheld the examiner's decision.

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