NOC Proceedings

Broad genus patent falls, but single-species patent upheld
Novartis Pharmaceuticals Canada Inc. v. Teva Canada Limited, 2013 FC 283
Drug: zoledronic acid I.V.

The Federal Court found Teva’s allegations of invalidity were not justified for Novartis’ narrow compound patent, while the allegations against Boehringer’s broader genus patent were justified. As a result of the split decision, the application for prohibition was successful. Teva had alleged that both patents at issue were invalid for being obvious, lacking utility and insufficiency, and the species patent was also alleged to be overbroad.

These two patents had previously been the subject of conflict proceedings under the old Patent Act. Although both of the original applications contained many compounds, the conflict proceeding resulted in Boerhringer keeping the broad genus claims and Novartis kept the narrow claim to zoledronate. This factual backdrop became critical for determining whether the species patent was sufficiently disclosed. Although the issued species patent only claimed a single compound, the initial filing contained additional genus and species claims. Those claims had been narrowed to a single compound only as a result of the conflict proceeding. Therefore, the Court would have invalidated the patent if sufficiency were evaluated upon the broad claims as filed. However, the relevant date of sufficiency was found to be the date of publication, or the day the patent is issued Patent Act patent, and therefore the patent was sufficiently disclosed

The genus patent was found to be insufficient for the same reason that it lacked utility. Only one of the possible compounds in the genus claim asserted by the patentee had been tested. That one tested compound was found not capable of establishing all the compounds claimed had utility. Indeed, “the state of the art was at the empirical stage where compounds would have to be assessed individually.” The species patent did not suffer from this problem. It was directed to a single compound that had been made and tested before the Canadian application was filed and it was to be useful for the stated purpose.

The Court did not find that either invention was obvious, as it was not “self-evident” that what is claimed ought to work, and that “research ought to be rewarded, not discouraged”.

Other Cases of Interest

Leave not granted to the Supreme Court

As mentioned last week, two IP leave decisions were released last Thursday. Neither appeal obtained leave. The first, Gilead Science Canada Inc. v. Minister of Health Limited , related to when a patentee may list a patent claiming the medicinal ingredient of a commercial product on the Patent Register. Our summary of the Court of Appeal decision was reported October 15, 2012.

The second leave application, Phillips Morris Products S.A., Rothmans, Benson & Hedges Inc. v. Marlboro Canada Limited , Imperial Tobacco Canada Limited, related to trade-marks used in association with cigarettes. Our summary of the Court of Appeal decision was reported July 9, 2012.

Leave sought from the Supreme Court
Takeda Canada Inc. v. Minister of Health, et al. (SCC 35276)

Takeda has appealed a split decision from the Federal Court of Appeal refusing to designate DEXILANT, an enantiomer of lansoprazole, as an innovative drug that is eligible for data protection. You can read the original Court of Appeal decision or our earlier summaries of the appeal and the judicial review.


Chantal Saunders

Beverley Moore

Adrian J. Howard


Intellectual Property
Life Sciences