Standard Essential Patents and Biosimilars

Here are two recent foreign decisions that may be of interest:

  • Huawei v. ZTE – The European Court of Justice issued a decision on standard essential patents (SEPs) relating to LTE technology and whether seeking an injunction on patents with FRAND terms was an abuse of dominance, stating among other things, “in order to prevent an action for a prohibitory injunction or for the recall of products from being regarded as abusive, the proprietor of an SEP must comply with conditions which seek to ensure a fair balance between the interests concerned.”
  • Amgen v. Sandoz – The US Court of Appeals for the Federal Circuit issued a divided decision on the ‘patent dance’ scheme for biosimilars in the United States holding that Sandoz was not required to disclose its application to the innovator but that notice could not be given until after receiving FDA approval, extending the period of exclusivity.

Patent Amendments

Two IP related amendments are included in the July 1st Canada Gazette:


Several items regarding the Canadian Intellectual Property Office:

Agent Privilege

Bill C-59 received royal assent yesterday which includes changes to the Patent Act, Trade-marks Act, Copyright Act and the Industrial Design Act. The changes include agent privilege, provisions for force majeure and term extension. The provisions on privilege will come into force next year at this time while other sections will require implementing regulations and further orders in council.

IP Items

A few items that may be of interest:

  • The United States Supreme Court issued its decision today in Kimble v. Marvel Entertainment, LLC, upholding the rule that a patentee cannot continue to receive patent royalties for sales made after the patent expires.
  • The House of Commons has adjourned for the summer so pending bills, including Bill C-65, amending the Copyright Act to implement the Marrakesh Treaty for the blind, will need to be re-introduced. Bill C-59, the budget implementation bill which includes amendments to the Patent Act, Copyright Act, Industrial Design Act and Trade-marks Act, is still pending before the Senate.
  • The Federal Court has issued a practice notice on the publication of decisions having ‘precedential’ and ‘non-precedential’ value.

Canadian Intellectual Property