Law Times

PAGE 10 FOCUS September 22, 2008 • Law times from Canada's top courts. In one matter, generic drug Decisions provide clarity in patents, trademarks A BY DARYL-LYNN CARLSON For Law Times number of intellectual property cases of interest have emerged recently maker Apotex Inc. has launched a challenge to enable it to produce a drug thinner, Clopidogrel, for which a similar patent is held by Sanofi-Synthelabo Canada Inc. and its parent company Sanofi- Sythelabo. Apotex had initially attempted to obtain a notice of allegation to produce the generic version of Clopidogrel, known commercially as Plavix, on the basis that some of the sections of Sanofi's patent were invalid and, alternatively, challenged the patent based on the grounds of obviousness or "double- patenting," court records show. Apotex brought the matter to the Federal Court but was un- successful. Subsequently, the Court of Appeal dismissed the generic company's appeal from the decision of the Federal Court prohibiting issuance of NOC until expiry of the patent. The Court of Appeal applied laws relating to selection patents and upheld the hearing judge's decision that the patent at issue was not anticipated, not obvious, or invalid for double patenting. Apotex then appealed to the Supreme Court of Canada and the matter was heard in April. "The importance of this case is the analysis of the law of the selec- tion of patents where you might have a class of drugs or chemicals thought to be very useful, but then someone comes along and finds a subclass of use that has remarkable characteristics that weren't obvious when one was dealing with larger class," says Ron Dimock, a partner at Di- mock Stratton LLP, intellectual property law specialists. "So one of the questions before the Supreme Court now is how does one determine patentability or validity of a selection patent?" A similar argument was put forward in the matter of Pfizer v. The Federal Court of Appeal reversed that decision earlier this year. No appeal was taken to the Supreme Court. In Johnson & Johnson Inc. v. Boston Scientific Ltd., two pat- ents on coronary stents had been challenged some years ago on the basis that the proper patent office dues had not been paid. The federal government, however, decided to grant an extended window of opportuni- ty for patent owners who hadn't paid up their fees to catch up and retain their patent. In a trial held earlier this Ron Dimock says one of the questions before the Supreme Court, 'is how does one deter- mine patentability or validity of a selection patent?' Ranbaxy. In that case, Pfizer chal- lenged India-based generic drug- maker Ranbax for infringing on two of its patented components in its anti-cholesterol drug, Lipitor. Ranbaxy argued successfully in the Federal Court that Pfiz- er's selection patent was invalid. year, the plaintiffs claimed that the defendant manufactured and sold a coronary artery stent, which infringed these two pat- ents. The defendant contended, among other things, that the patents in suit are invalid. Federal Court Justice Caro- lyn Layden-Stevenson con- cluded, after a lengthy trial, that one of the patents was val- id while the other was not, and that the defendant's device did not infringe either patent. "Litigation on these patents has a long history here and elsewhere in the U.K. and U.S.A.," says Dimock, whose firm represented Boston Scientific in the matter. He says that in writing her decision released last May, Layden-Stevenson covered is- sues of claims construction, ob- viousness, anticipation by prior publication, and the reliability of expert evidence. The matter is now under ap- peal and Dimock says he doesn't expect it to be heard until some- time in 2009. Another noteworthy case involved a challenge to a trade- mark that hadn't been used for upwards of 13 years. In Scott Paper Ltd. v. Canada (Attorney General), the Federal Court of Appeal clarified the law in summary cancellation proceedings under s. 45 of the Trademarks Act. The appeal court also over- turned a decision of another appeal court panel, which Stike- man Elliott LLP, in its June intel- lectual property update, points out was an "unusual step." Smart & Biggar/Fetherston- haugh intellectual property law firm initiated summary cancel- lation proceedings to require Scott Paper to provide evidence it had used the trademark VAN- ITY in Canada within the past three years. Summary cancellation pro- caseAlert – Intellectual Property An easy to use electronic service that keeps you up to date with the latest decisions in intellectual property law. Each week subscribers receive an e-mail bulletin summarizing recent court decisions in the intellectual property law area which are linked to the case digest and the full text decision in pdf format. Visit www.canadalawbook.ca and click "Access online products" to sign up for our no-obligation free trial. Second Edition Robert H. Barrigar, Q.C. This important resource brings together commentary and case law interpreting patent legislation, plus all the relevant statutes, regulations and rules you need to provide your client with the best patent advice available. Edited by Marcus Gallie, Ridout & Maybee LLP Fourth Series (Volumes 1 to 65): Edited by Glen Bloom, Osler, Hoskin & Harcourt LLP First, Second and Third Series: Edited by Gowling, Strathy & Henderson Founding Editor: Gordon F. Henderson, C.C., Q.C., LL.D. Now in its fourth series, reports all significant Canadian cases on patents, industrial design, copyright and trade-mark law. e-report - e-mails weekly "paper parts" directly to your desktop, including a topical index with links to the full text of the judgment. REPORT REPORT S REPORT S S Tony Duarte From the rights acquisition stage, through engagement of key personnel, to financing, licensing, delivery and distribution, this valuable book provides indispensable practical guidance you can use immediately. Intellectual Property Statutes: The Honourable Julie Thorburn and Keith Fairbairn This book examines a broad range of issues including civil actions, types of fiduciary relationships and specific steps to protect confidentiality. This one-of-a-kind work provides the legislative history of the four main intellectual property statutes — copyright, trade-mark, patent and industrial design — going back to 1952, providing quick assistance in determining relevant wording and applicability of jurisprudence. ceedings empower the registrar of trademarks to issue a notice re- quiring that the registered owner of a trademark provide evidence either by way of affidavit or statu- tory declaration that the trade- mark has been in use in the three years preceding the date of notice. Scott Paper was unable to prove it had used the VANITY trademark and actually estab- lished that it had not used the trademark in the last 13 years. But the paper company didn't provide any reason for the lack of use of the trademark, although it maintained that it had plans to begin using the mark in the future. A senior hearing officer initial- ly sided with Scott and ordered the trademark upheld based on what he deemed to be special circumstances and that the com- pany had expressed its intention to resume use of the mark. Smart & Biggar appealed to the Federal Court, which reversed the hearing officer's decision and ordered the trademark expunged. Scott Paper then initiated the Federal Court of Appeal action, which upheld the decision of the Federal Court. Ultimately, the case means Editor: Louis H. Milrad Now available online, this four-volume set delivers all of the appropriate and up-to-date forms of agreements to manage daily IT issues and also provides checklists and optional clauses that assist in quickly customizing the agreements to your needs and your client's interests. www.canadalawbook.ca CA008 www.lawtimesnews.com CA008 (LT 1-2x4) 1 LT0922 the deliberate non-use of a trade- mark can leave it vulnerable to being expunged regardless of a show of intent to use the mark sometime in the future. As well, the appeal court's verification of the meaning of s. 45 affirms that parties in the fu- ture will not have to go to court to have a trademark expunged, says Dimock, while clarifying that special circumstances for non-use of a trademark must be substantial. "You just can't say, 'I've decided because of the marketplace I'm not going to sell it,'" he says. LT 9/17/08 9:40:41 AM

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