Category Archives: News

More PAB decisions released

The Patent Appeal Board at the Canadian Intellectual Property Office has released four more decisions. This is in addition to the 6 decisions that were posted late last month and follows a long period where no decisions had been posted for some time.

The decisions released yesterday are:

  • 1313 (PDF) (2011-04-14) – Patent Application No. 2121906 – E.I. Du Pont de Nemours and Company – In a short decision the PAB considered novelty and the patentability of soybean products and concluded that amended claims submitted by the applicant were allowable.
  • 1314 (PDF) (2011-04-18) – Patent Application No. 2407304 – Genentech, Inc. – The PAB reconvened to further consider the Applicant’s comments after issuing its decision in #1307 in November 2010. The Applicant alleged that it had not been able to fully address two issues. The PAB upheld its earlier decision but allowed amendments to address the rejection. The claims were directed to antibodies defined in terms of the target polypeptides.
  • 1315 (PDF) (2011-07-11) – Patent Application No. 2161785 – Massachusetts Institute of Technology and Children’s Medical Center Corporation – The claims, primarily directed to bio-compatible, biodegradable cross-linkable hydrogel to deliver cells into a patient such that an organ equivalent is eventually created, had been rejected as being broader than the description and the PAB reversed the examiner allowing the claims.
  • 1316 (PDF) (2011-07-14) – Patent Application No. 2383007 – Novartis Vaccines and Diagnostics S.R.L. – After a final rejection, the applicant had voluntarily amended the claims to address most of the objections and at the time the PAB hearing was scheduled, further agreed to cancel the remaining problematic claims. The PAB allowed the amendments under Patent Rules, 31(c).


SCC denies leave on selection patent proceedings

Update: The Supreme Court has denied the leave applications.

On Thursday, the Supreme Court of Canada denied leave will be announcing whether it will grant leave in three related proceedings primarily relating to the validity of a selection patent. Apotex (SCC #34067), Genpharm (#34068) and Cobalt (#34066) are seeking leave to appeal the decision of the Federal Court of Appeal in 2010 FCA 320. That decision held that Lundbeck’s patent CA1,339,452 was a valid patent for the purposes of a PM(NOC) prohibition order. Continue reading SCC denies leave on selection patent proceedings

Patent Appeal Board decisions

After a long period of time with no public decisions being published through its website, the Patent Appeal Board (PAB) at the Canadian Intellectual Property Office has published a flurry of decisions:

#1307 (PDF) – Patent Application No. 2407304 – The PAB reversed the examiner’s finding on ‘obviousness’ type double patenting and allowed claims in a divisional over the claims the parent. The PAB would allow claims to monoclonal antibodies based on a description of polypeptides but in this case the monoclonal antibody claims were too broad.

#1308 (PDF) – Patent Application No. 2294324 – The application related to a coupon dispenser and the PAB applied the Sanofi obviousness analysis to reject the application. The PAB also held that certain claims were indefinite for not meeting the promise of the preamble. Interestingly, examination was requested on this application in 1999, over 11 years ago.

#1309 (PDF) – Patent Application No. 2285672 – The application related to telomerase. The PAB considered the claims definite to a person skilled in the art (reversing the examiner) but overly broad and not enabled (upholding the examiner).

#1310 (PDF) – Patent Application No. 551406 – This is an old act patent application that went through 17 years of prosecution (9 office actions) and related to superconductive crystalline materials. The PAB considered with the application included a sound line of reasoning to support the utility of the claims and allowed most of the claims (reversing the examiner). The PAB also reversed the examiner on the inclusion of the ‘desired result’ in the body of the claim.

#1311 (PDF) – Patent Application No. 2292065 – The PAB rejected the application as being obvious in light of a different piece of prior art from the prior art relied upon by the Examiner.

#1312 (PDF) – Patent Application No. 2306317 – The PAB reversed the examiner allowing the application by holding that the claims were directed to artificial tissue equivalents rather than unpatentable organs and tissues.

Some of these decisions are dated November 2010 so took over 8 months to be published on the CIPO website from the date they were issued by the PAB.

Decision #1302, while not available through the CIPO website [Update 11-08-17: decision now availablePDF] has been published in the Canadian Patent Reporter as Re Immunex Corporation Patent Application 583,988, 89 CPR (4th) 34. Decision #1301 has also never been published online. These two decisions are likely not published on the CIPO website because they relate to old-act patent applications that are not made public. follow up

While we wait for the judgment from the Federal Court of Appeal in the proceeding on the patentability of business methods, I thought I would post a few remaining items from the case.

I had previously posted copies of the Appellant’s Factum and the Respondent’s Factum. Copies of the Intervener’s Factum and the Respondent’s Reply to the Intervener are now also available.

There are a few reports from the hearing including from Nora Sleeth at Osgoode Hall Law School and Chris Heer of Bennett Jones.

Interlocutory injunction denied in Esomeprazole-Apotex

In a decision published yesterday, Justice Crampton of the Federal Court denied Astrazeneca’s request for an interlocutory injunction against Apotex. The decision is Astrazeneca Canada Inc. v. Apotex Inc., 2011 FC 505 (Esomeprazole) in T-1668-10 and follows a PM(NOC) proceeding in which Apotex’s allegations of invalidity against at least some of the patents were found justified (T-371-08). The decision has already been appealed and the appeal dismissed by the Federal Court of Appeal (A-180-11).

Professor Norman Siebrasse of University of New Brunswick and author of the Sufficient Description blog, has an interesting discussion of the test for an interlocutory injunction in the context of this decision.

Particulars needed for pleading patent infringement

In a decision published today, the Federal Court of Appeal upheld a lower court decision striking the plaintiff’s further amended statement of claim on the basis that it did not provide sufficient details of the defendant’s activity that would constitute infringement. The Court upheld the view that the allegations were not on any knowledge or evidence of the plaintiff of the defendant’s activities and the plaintiff hoped to fill in the gaps in its knowledge through discovery. Continue reading Particulars needed for pleading patent infringement