Court Upholds Board's Decision Refusing Trademark
for Lack of Distinctiveness Philip Morris Products SA v. Imperial Tobacco
Canada Limited, 2014 FC 1237 This was an appeal from a decision of the Registrar of
Trademarks' decision to decline Philip Morris' application
to register the proposed trademark "FLIP-TOP". The Court
dismissed the appeal. Court Finds Claims Do Not Cover Method of Medical
Treatment, Orders that they Issue Abbvie Biotechnology Ltd. v. Canada (AG),
2014 FC 1251 In this decision, Abbvie brought a judicial review of a decision
of the Commissioner of Patents refusing to issue its patent. The
issue was whether the claims were directed to a method of medical
treatment. The Court disagreed, held that the claims were
patentable, and directed that they be allowed. Court Refused to Grant Protective Order Covering
NOA Takeda Canada Inc. v. Mylan Pharmaceuticals
ULC, 2014 FC 1076 In the context of a proceeding brought pursuant to the NOC
Regulations, Mylan sought a confidentiality that would allow
it to designate portions of its Notice of Allegation (NOA) as
confidential and shield it from public disclosure. Minister's Decision to Grant NOA to Generic Company
Set Aside, as the Generic did not Comply with the
NOC Regulations Pfizer Canada Inc. v. Teva Canada
Limited, 2014 FC 1243 In this proceeding, Pfizer sought to judicially review the
Minister of Health's decision to grant Teva a NOC for
exemestane. A company called GMP filed an ANDS for exemestane.
However, it sent a NOA to Pfizer for atorvastatin. Health Canada
issued a NOC to GMP for exemestane. Teva then filed an
administrative ANDS seeking approval to market exemestane, and was
granted a NOC. Health Canada has published a Draft Guidance Document - Tamper-Resistant
Formulations of Opioid Drug Product Submissions. The
Consultation is open until March 7, 2015. The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
Trademarks Decisions
The issue on appeal was whether the Board erred in finding that
the proposed mark could not be registered because it was not
distinctive. The Federal Court refused to consider the issue of
whether the proposed mark was clearly descriptive, because the
Board had considered the issue but had expressly refused to make a
finding.
Both parties filed new evidence, however the Court held it would
not have materially affected the Board's decision. Thus, the
Court assessed the decision using the reasonableness standard. The
Court held it was open to the Board to conclude that the term
"FLIP TOP" in association with tobacco products was not
distinctive. Thus, it was reasonable, and the Federal Court
dismissed the appeal.Other Decisions of Interest
The Court considered the standard of review and held that it is
correctness. The issue is a pure question of law relating to the
statutory limits of patentable subject matter. There are no facts
in dispute. The only issue is the Commissioner's interpretation
of statutory subject matter and, more specifically, the scope of
the prohibition on methods of medical treatment.
The Court held that the skill and judgment of the physician is
exercised when a decision is made as to whether or not to use the
claimed invention in the treatment of a patient. Furthermore,
"just because the claims involve a fixed dosage and schedule
does not mean that they are automatically patentable, nor does it
mean that they constitute unpatentable subject matter." (para.
113) The jurisprudence is consistent that when the claim is
directed to the exercise of professional skill or judgment, it is
not patentable. In this case, the claim was to a vendible product.
The skill and judgment relates to whether or not to prescribe that
product. Thus, the claim was patentable.
The Court then held that the Commissioner had already found the
claims to be not anticipated and not obvious. Only the issue of
patentable subject matter was to be resolved. Thus, the Court held
there is nothing more to re-examine and the claims should
issue.
The Court refused to grant a confidentiality order covering
portions of the NOA, as Mylan did not treat the information as
confidential at all material times. It held that Mylan had
voluntarily sent it to Takeda with no reasonable expectation of it
being kept confidential. Furthermore the Court refused to allow
Mylan to mark as confidential a fact affidavit attesting to why the
NOA should be confidential. The Court held that Mylan had no real
expectation that the affidavit would be kept confidential, and
furthermore, it did not contain any confidential information.
The Court also considered and rejected Mylan's argument that
it being the first to enter a generic market is sufficiently
important a commercial interest to justify the confidentiality
order. The Court held that other generic companies are part of the
"public", and they have an interest in this material.
Pfizer started a proceeding seeking to quash the NOC issued to
Teva. GMP sent a letter to Health Canada indicating that it had
sent the wrong NOA to Pfizer. Health Canada informed GMP and Teva
that the NOCs would be rescinded and Pfizer discontinued its
judicial review.
GMP sent a NOA to Pfizer with respect to exemestane. Pfizer did
not start a proceeding, as GMP does not sell products in Canada.
GMP was issued a new NOC. Teva was also issued a new NOC. Health
Canada's records indicate that Teva filed an administrative
ANDS, based on a licensing agreement with GMP and Health Canada
determined that Pfizer's AROMASIN exemestane product was the
reference product for Teva's exemestane product. Pfizer started
the within judicial review.
The Court held that the Minister's decision must be reviewed
on the basis of correctness. The Court held that the NOC
Regulations exist not only to allow generic companies to early
work patented medicines, but also to balance these interests with
those of the patentee in obtaining protection for inventions that
are legitimately patented. The Court held that Teva made exactly
the sort of comparison contemplated by the NOC
Regulations. Once the purpose of the NOC Regulations
was understood, it supports the conclusion that Teva must comply
with them. Thus, the application was granted and the Minister's
decision granting Teva a NOC was set aside.Other Industry News
Health Canada has released drafts of Part I: Health Professional Information and Part
II: Scientific Information - Guidance Document: Product
Monograph. The Consultation is open until March 4, 2015.