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 Dr.Shruti Bhat, Star formulator and Ace leader within pharmaceutical R&D. Shruti is a specialist with hiTech formulations, pharmaceutical patents and quality-by-design. Shruti brings to you some highlights from current pharmaceutical and clinical research news, views and data. Frédéric Picard brought an application in the Federal Court under subsection 77(1) of the Official Languages Act (Act) against the Canadian Intellectual Property Office and the Commissioner of Patents claiming that patents and patent applications must be bilingual to meet the requirements of the legislation. He sought an order requiring the Patent Office to make certain parts of patents and patent applications available in both official languages and a declaration of invalidity of all patents ... More at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/08/patent-abstracts-for-canadian-patent.html Disclaimer- 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. Http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. YouTube Channel : Http://www.youtube.com/user/ShrutiBhat10 Do you have questions for the author?  Dr.Shruti Bhat, Star formulator and Ace leader within pharmaceutical R&D. Shruti is a specialist with hiTech formulations, pharmaceutical patents and quality-by-design. Shruti brings to you some highlights from current pharmaceutical and clinical research updates, patent news, views and data. Lilly sued Novopharm for infringement under Canadian Patent No. 2,041,113, a selection patent for the compound olanzapine (sold under the brand name Zyprexa), owned by Lilly. Olanzapine is used to treat schizophrenia. Novopharm argued that the ’113 Patent is invalid. A Federal Court judge (the trial judge) agreed with Novopharm and dismissed Lilly’s action. The Federal Court of Appeal reversed. On appeal, the question raised by the parties was: Do the conditions for a valid selection patent constitute an independent basis upon which to attack the validity of a patent? More at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/07/eli-lilly-canada-v-novopharm-ltd.html Disclaimer- 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. Http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. YouTube Channel : Http://www.youtube.com/user/ShrutiBhat10 Do you have questions for the author?  In this case, Pfizer listed six patents in the Orange Book for Lipitor. Apotex filed a Paragraph III certification on U.S. Patent No.4,681,893 (expiring March 2010) and Paragraph IV certifications on the other five. Pfizer sued Apotex on only two of the five challenged patents. In its Answer, Apotex filed declaratory judgment counterclaims of non-infringement and invalidity of all five challenged patents, as it must have in order to trigger Ranbaxy's exclusivity. Pfizer then filed a motion to dismiss Apotex's counterclaims with respect to the three patents that Pfizer did not assert against Apotex (the "Unasserted Patents"), on the grounds that they did not present a "case" or "controversy" as required by Article III of the Constitution. In an Opinion ... More at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/07/apotex-vs-pfizer-in-lipitor-patent.html Disclaimer- 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. Http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. YouTube Channel : Http://www.youtube.com/user/ShrutiBhat10 Do you have questions for the author?  The US Supreme Court recently issued its long-awaited decision in the case of Bilski v Kappos which is considered to be one of the most anticipated patent decisions of recent time. What this means to you? Holders of existing business method patents can breathe a sigh of relief. By not foreclosing the patent-eligibility of all business methods and rejecting the exclusivity of the machine-or-transformation test, the Supreme Court has given existing business method patents new life. Going forward, the Patent Office must now consider how to adapt. The machine-or-transformation test remains important, and processes that meet this test are likely to be deemed patentable, provided other statutory criteria (e.g., for novelty and non-obviousness) are satisfied. However, the machine-or-transformation test is not the exclusive test for patent-eligibility, and some business methods that do not meet this test could be patent-eligible, if not too abstract. While abstract ideas, laws of nature, and mathematical formulae are not patent-eligible, as noted by the Supreme Court, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Indeed, the inventors in Bilski have themselves promised to go back to the Patent Office seeking the allowance of revised claims. The Federal Circuit will likely revisit the scope of patent eligibility very soon, as the Supreme Court vacated and remanded two cases (Classen Immunotherapies Inc. v. Biogen Idec and Mayo Collaborative Services v. Prometheus Laboratories) in light of Bilski. More at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/07/us-supreme-court-hedges-its-bets-on.htm A free white paper is available on request. Contact@Innoworksltd.com Disclaimer- 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. Http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. YouTube Channel : Http://www.youtube.com/user/ShrutiBhat10 Do you have questions for the author?  Dr.Shruti Bhat, Leader Pharmaceutical R&D and Expert in hiTech formulation development for over 35 different therapeutic class of drugs moieties, brings to you some highlights from current pharmaceutical and clinical research news, views and data. The UAE government has announced proposals to introduce major amendments to the IP regime in the UAE. These proposed changes will have an impact across three areas:
Confidential Information The biggest impact of the amendments is likely to be in relation to the protection of confidential information. The proposed amendments will for the first time... Patents The proposed amendments... Designs The proposed amendments... Integrated Circuits The proposed amendments will for the first time introduce protection in the UAE for the layout designs for integrated circuits. The amendments envisage... More at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/05/united-arab-emirates-major-changes-to.html Disclaimer- 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. Http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. YouTube Channel : Http://www.youtube.com/user/ShrutiBhat10 Do you have questions for the author?  Dr. Shruti Bhat, Generics & Specialty Pharmaceuticals Expert. In their quest for new and more potent drugs, pharmaceutical companies look to their scientists for inspiration. Once a discovery is made, there is often a rush to patent as much of the discovery as it allows and then some. Patent practitioners seek to protect new compounds by filing patent applications in which, once granted, broad genus claims protect not only the compounds actually made by the scientists, but also other compounds of similar chemical structure, which, if they are made, would be predicted to have similar properties. This type of broad claiming generally rewards the discovery of a hitherto unknown class of compounds identified by a common chemical structure and can protect many hundreds of thousands of compounds. However, available human and financial resources often limit the number of compounds claimed that can actually be made and tested. Given that the Patent Act confers on an inventor the right to a monopoly for 20 years, where should the line be drawn in terms of extending claim protection beyond the initial discovery? Check out full article at http://www.pharmaceuticalpatentsandintellectualproperty.com/2010/03/selection-patents-new-business.html Disclaimer- 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. http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS.  The facts The Australian patent system has a unique beast called the "innovation patent". Under the Australian patent system it is possible to obtain both standard patents and innovation patents. Under the innovation patent system, while the term is only eight years, there is no test for obviousness, but rather a test for "innovative step". Further, in certain circumstances, it is possible to file innovation patents from standard patents and vice versa. The lack of an obviousness test provides a great opportunity for patentees to take advantage of our innovation patent as a powerful strategic property in its own right and/or to maximise their advantage during litigation. Such was the case in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81, where the Full Federal Court recently decided to uphold a trial judge's decision that an innovation patent was not subject to an obviousness test, but rather to the substantially weaker "innovative step" test being something peculiar to Australian jurisprudence. In the Dura-Post case, relating to the simple subject matter of elastically-deformable road-side posts, the patentee had filed multiple divisional innovation patents from a standard patent and successfully sued on the innovation patents. The successful innovation patent claims each defined a new, but arguably non-inventive, combination of known features. However, the Court concluded, based on evidence, that in each case the claimed difference over the prior art, while small, did provide a substantial or "real" contribution to the working of the invention and as such passed the threshold test. The implications and recommendations The absence of an obviousness test allows applicants to potentially obtain protection for more marginal developments and/or obtain broader rights for an invention in Australia than would be possible in nearly all other jurisdictions. As such, we would encourage potential applicants to consider innovation patents as an adjunct to a standard patent application in order to obtain a fast-to-grant right with potentially broader claims. They should also be considered as an adjunct or alternative for developments that would normally at best be protected via the useful, but limited, registered designs regime. Importantly, many applicants are already doing this. It is undoubtedly preferable to be the holder of innovation patents in your particular IP space, than trying to operate around competitors' rights which may prove to be unexpectedly broad and difficult to successfully challenge. Innovation patents proceed to "grant" with only basic formalities review. They need not be examined substantively unless and until the patentee wishes to establish enforceable rights. In this way, they can be both powerful and flexible, as it is clear from this latest case that minor points of distinction disclosed within the specification may be sufficient to establish patentable rights. For the same reasons, it is difficult to accurately predict the potential scope of granted but unexamined innovation patents of third parties. This arguably provides an added incentive for applicants to attempt to dominate particular market sectors through innovation patents. However, it is worth noting that the innovation patent regime appears to be at odds with one of IP Australia's stated goals, of aligning Australian patentability standards with those of other major jurisdictions such as Europe and the US. Such policy considerations may give rise to a substantive review or revision of the regime in due course, although any resultant changes would almost certainly not have retrospective effect. Meanwhile, based on the law as it presently stands, a good option is to take full advantage of the significant strategic and commercial benefits that innovation patents currently provide. Your competitors may already be doing just that! Also at http://pharmaceutical-patents.blogspot.com/2010/02/australian-innovation-patent-advantage.html Disclaimer- 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. Http://www.drshrutibhat.com  United States patent law probably ranks as one of the most sophisticated and complex bodies of law in the world. Under the U.S. patent law, a patent not only serves as a technical disclosure for an invention to be protected, but also defines the boundaries of exclusive rights granted by the U.S. government to protect the invention. As a legal document, a U.S. patent is subjected to legal interpretation and strict scrutiny of the U.S. court system. As more Chinese companies start pursuing patent protection in the United States, they should be aware of general strategies and considerations when preparing U.S. patent applications or, more particularly, specifications and claims of the U.S. patent applications. Importance of Carefully Drafted Specifications and Claims- Many people, including patent attorneys, often pay more attention to drafting claims than drafting specifications. In reality, however, the specification is as important as, if not more important than, the claims. To take just one example, the claims can be amended during the prosecution to redefine the scope of patent protection. But the specification can rarely be changed during prosecution, which means the applicant only gets one opportunity to explain how the invention works. In the world of patent litigation, specifications and claims always go hand-in-hand. A carefully drafted specification is particularly important when the federal district judge interprets the patent claims, for the claims must be read in light of the specification. In Phillips v. AWH Corp.,the Federal Circuit, recently clarified the role of the specification when a federal district judge seeks to ascertain the proper scope of patent claims. In Phillips, the Federal Circuit held that "the specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term. That is, a carefully drafted specification can resolve a dispute over claim terms without resort to any extrinsic evidence. A good strategy for a patent applicant is thus to take advantage of Phillips and assume more control over claim construction in any future litigation by carefully drafting the specification. Of course, carefully drafted claims are also essential for any patent protection because the claims directly set the scope and boundaries of the patent rights. A careless mistake, no matter how small or innocent, may have the biggest impact on the outcome of a patent litigation. For example, in Chef America, Inc. v. Lamb-Weston, Inc.,Chef America tried to protect a cooking step for heating a dough at a certain temperature inside an oven. But Chef America drafted the claim to read "heating the . . . dough to a temperature in the range of about 400 degrees F. to 850 degrees F." The Federal Circuit reasoned that "to" is not "at" and, thus, the claim required the dough (not the oven) to be heated to the specified temperature. The Court then ruled that the claim was not infringed. In fact, under the Court's claim construction, this claim could not possibly be infringed unless one wanted to make burned dough. Another example shows the importance of carefully choosing alternative language when drafting claims. In Kustom Signals, Inc. v. Applied Concepts, Inc.,Kustom Signals added the limitation "selecting either a greatest magnitude or highest frequency search" to the claim during prosecution and later sued Applied Concepts for patent infringement. But Applied Concept's device searched both magnitude and frequency. The Federal Circuit reasoned that "or" is not "and/or" and the claim only covered a choice between either one of two alternatives, not both. The Court then affirmed a ruling of non-infringement by Applied Concept's device. The outcome was indeed unfortunate for Kustom Signal, but it could have avoided the problem by carefully drafting the claim to read, for example, "selecting at least one of a greatest magnitude search and a highest frequency search." Drafting the Specification- Astute drafters of U.S. patent applications always follow a list of "do's and don'ts." Details of the complexities, ways of drafting US patents and case studies of successes with USPTO are available as a technical white paper. Its FREE for our registered readers. To register, contact us. http://www.drshrutibhat.com Expert at leading Pharmaceutical R&D. Translates innovative concepts to PROFITS. Reference- http://pharmaceutical-patents.blogspot.com/2010/02/practical-considerations-and-strategies.html Disclaimer- 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. Canada: The Patent Pendulum 01/18/2010
In the past 12 months, two significant decisions (one in Canada, the other in the United States) have the potential to dramatically recalibrate the scope of patent protection for so-called "business methods" (and possibly "software inventions" as well). These cases may herald a backward swing of the patent law pendulum towards less protection for business methods. In Canada, the Canadian Patent Appeal Board rejected a patent application of Amazon.com Inc. for its novel "one-click" online product ordering system. In the US, the Court of Appeals for the Federal Circuit in the Bilski case has narrowed extensively the ambit of patent protection in a decision involving a commodities-hedging system. The Bilski decision is under appeal to the US Supreme Court, and the Amazon decision is also being appealed to the Federal Court of Canada. This is welcome, because each decision is unsatisfactory. But the importance of their ultimate respective determinations cannot be underestimated. Therefore it is worth taking stock, even at this interim stage, of the issues presented by them — and of what exactly is at stake in what will be their final judicial resolutions. Importance of Patents Before going into the two decisions, just a reminder of why patents are so incredibly important: in essence, it is because they afford the strongest form of intellectual property (IP) protection. While copyrights and trade secrets are useful as far as they go, they actually do not go that far because they protect only against copying. For example, independent creation is always a full defence to a copyright or trade secret claim. By contrast, independent creation (subject to some nitty-gritty nuances) is generally not a defence in a patent claim. That is, you can never successfully be sued under copyright/ trade secret law for ripping off someone else's software if you never had access to it; but you certainly can be sued for infringing a third party's patent even if you know nothing about it. Therefore, for the duration of the patent (roughly 20 years), the patent holder can assert an effective monopoly on the invention it covers (and presumably charge monopoly profits on its sale or licensing for such time period). Patents, in a word, are incredibly valuable IP assets. Hurdles to Patenting Not surprisingly, given their significant value, the government agency that issues patents — in Canada, the Canadian Patent Office (CPO) — does not hand them out willy-nilly, but only very carefully and selectively, applying the patentability criteria with rigour and discipline. By contrast, copyright arises automatically, as does trade secret protection so long as you take appropriate steps to keep secret your proprietary information. In general terms, the invention for which you desire to be issued a patent must be new and inventive. In terms of novelty, essentially this means that no one, anywhere in the world, can have disclosed or used something similar to what you want patented. And even if you satisfy this requirement, then your invention must not be obvious — it has to embody some degree of inventive spark that an average technical person in your space would not have come up with (in short, there has to be some creative ingenuity buttressing your invention). In addition, your invention must come within one of the categories of patentable subject matter permitted by the Patent Act; namely, it has to be a "new and useful art, process, machine, manufacture or composition of matter." It was this latter requirement that was found to be missing in the Amazon case. Amazon's One-Click Invention To understand the genius behind Amazon's "One-Click" online ordering invention, you have to cast back your mind to the mid-1990s, and the infancy of business-to-consumer e-commerce. Unlike today (when Amazon is a leading online retailer — or "e-tailer"), back then, Amazon was one of many struggling new online businesses, each trying to set themselves apart from the others in a new, crowded and difficult marketplace. One particular difficulty was that more than 60 per cent of online prospective consumers who started to order products from websites never completed the purchase because they found the "shopping cart/checkout line" process cumbersome, frustrating and time-consuming. Finding something to buy online was easy, particularly given the cookie technology that most e-tailers used (by sending your computer a cookie — a bit of software code — when you first visited their site, the next time you came back to the site, the cookie would allow the e-tailer to "recognize you" so that ads tailored to your own preferences — based on what you looked at last time — would be served up to you). It seems like magic — "My, how fortuitous that all of these ads showcase books that are of interest to me! It's as though they know me!" But it's not magic, of course; it's just simple cookie technology at work. While the new e-consumer was wowed by the personalization features of e-tailers' websites, they were underwhelmed by the check-out buying process. Each time the "shopping cart" was ready to be pushed through the online cash register process, multiple screens confronted the customer with information to complete, instructions to follow, and precious time to waste (usually typing in the same information they had given on their previous visits). As noted above, the statistics showed that well over half the people who started this check-out process never completed it. To address this real, practical problem, the clever folks at Amazon.com invented, developed, perfected and deployed on their own website their so-called "One-Click" product-ordering system. Essentially, when you wanted to purchase something from their site the second and subsequent time, you could do so by merely clicking the "One-Click" button (this would populate your order with the same information you used the last time you ordered something, thereby getting you through the check-out process in a fraction of the time). In essence, if you used Amazon, you only had to endure the check-out hassle once; after that the Amazon computer remembered who you are (courtesy of the cookie they put on your computer that first visit) and, by using your previously provided check-out data, could give you a much more satisfying online purchasing experience. Amazon's US One-Click Patent Amazon obtained a US patent for the One-Click invention. In the fall/Christmas season of 1999, it used this patent to great effect when, on the strength of it, Amazon successfully obtained an injunction against Barnes and Noble, preventing them from using a similar one-click check-out system on the B&N website (at the time B&N was a key rival of Amazon). In this injunction case, B&N argued that the Amazon patent should be found invalid given all the other online ordering systems that B&N brought to the court's attention (that B&N argued proved that Amazon's system was neither novel nor inventive). The court considered each of these examples of prior art, but concluded that none actually implemented a "one-click" type functionally. This was an important patent victory for Amazon, and forced B&N to redesign its check-out system for that critical 1999 Christmas e-commerce season. (It should be noted that subsequent litigation ensued, and the parties ultimately settled their dispute in 2002). Amazon's Canadian Patent Application Amazon filed for a Canadian patent for the One-Click invention, but so far has been unsuccessful in having it issued. The initial review was undertaken by an Examiner at the CPO. In Amazon's case, the Examiner concluded that the One-Click idea was not inventive, and moreover that it did not constitute patentable subject matter. Amazon appealed to the Canadian Patent Appeal Board and the Commissioner of Patents (collectively, the "Board"). Interestingly, on the issue of inventiveness, the appeal was successful. There was one particular book on the subject of online e-commerce that pre-dated the patent application, and the Examiner held that various references in this book anticipated what Amazon had developed in its One-Click invention. The Board carefully reviewed the book, and concluded otherwise. While use of cookies to enhance the e-consumer experience was at that time obvious, the Board found that Amazon's single-action ordering system was not obvious: the Board concluded that a skilled technician would not have directly and without difficulty conceived of the One-Click system. Canadian Subject Matter On the other hand, in what cannot be termed anything but a surprising decision, the Board concluded that a patent should not be issued to Amazon for the One-Click invention because it did not constitute patentable subject matter. In essence, the Board stated unequivocally that in its view, a pure business method that has no "technological effect" is not patentable in Canada. This is startling for several reasons. First, the current CPO Manual of Patent Office Practice expressly states that business methods are not automatically excluded from patentability by jurisprudence or statute. In its decision, the Board considered and rejected that statement in the Manual. Therefore, for the Board to take such a hard and unnuanced view of business methods is disappointing (more recently, a proposed amendment to the Manual would bring it in line with the Amazon decision, also denying patentability to business methods). The second surprising aspect of the Amazon decision is that the Board found that the term "art" and "process" in the Patent Act are confined to acts performed by "some physical agent upon some physical object and producing in such object some change of character or condition." That is, the Board believes that all categories of invention in the Patent Act are physical in nature; they involve tangible object or instruments. The decision also seems to ignore the prevalence of computers and processing systems in today's environment in assessing the "technological effect" issue. Describing this conclusion in another way, the Board stipulates that the common characteristics of the five categories of invention is that they are "technological" in nature. And the Amazon One-Click invention does not qualify because it is only a retailing concept and some rules for ordering items. (As the Board stated, "Single-action ordering without checkout ... involves streamlining the rules for practice for shopping, that is, it relates to a business decision with business implications. There is nothing technical about this aspect of the claimed invention."). The authorities relied upon by the Board for its conclusion on patentable subject matter are strange, particularly in terms of its use of American authorities. For example, it cites the dissent in a Canadian Supreme Court decision that refers to the State Street Bank case, which did not involve a physical system! And the Board cites the Bilski decision, which as we shall see in the next TLQ, actually takes a much more nuanced view of business method patents. (After reviewing Bilski, we will also draw some conclusions about the practical — and strategic — impact of these two cases). Also at http://pharmaceutical-patents.blogspot.com/2010/01/canada-patent-pendulum.html Disclaimer : 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. On June 4, 2009, in Merck Frosst Canada Inc. v. Apotex, Inc., the Federal Court of Appeal released an important decision limiting the range of damages available in actions under section 8 of the Patented Medicines (Notice of Compliance) Regulations. In particular, the Court of Appeal confirmed that section 8 damages do not include either an accounting of the innovator's profits or any damages for loss of market share that extends beyond the period for which the generic company's approval was actually delayed. Background The Regulations The Regulations are intended to provide innovators with protection from early generic entry in light of Canada's scheme to allow early working of patented drugs by generic pharmaceutical companies ("second persons") for the purpose of seeking regulatory approval. Under the Regulations, a drug company that files an abbreviated new drug submission (ANDS) with the Minister of Health for approval of a generic version of an innovative drug must serve a notice of allegation for each relevant patent listed by the innovator on the Patent Register. If a generic company makes an allegation of invalidity or non-infringement in respect of any patent, the patentee may apply to the Federal Court for an order prohibiting the Minister of Health from approving the ANDS on the ground that it would result in the infringement of a valid patent. The Regulations provide that the filing of such proceeding automatically stays the Minister's approval of the ANDS for the duration of the proceeding, up to a period of 24 months. Triggering an automatic stay is not risk-free for patentees. Section 8 of the Regulations provides that a generic company may bring an action against the patentee to receive compensation for "any loss suffered" by virtue of a delay in receiving its approval. The period of delay is defined to be the period beginning on the date on which the ANDS would have been approved by the Minister "in the absence of these Regulations," and ending on the date of the withdrawal, discontinuance, dismissal or reversal of the proceeding brought under the Regulations. Subsection 8(4) states that the court may make such order for relief "by way of damages or profits" as the circumstances require. Apotex's Section 8 Claim Against Merck Frosst In Merck Frosst, Apotex brought an action in damages under section 8, following the Federal Court's dismissal of Merck Frosst's application for a prohibition order in respect of Apotex's proposed alendronate drug product. Merck Frosst defended Apotex's damages action on a variety of grounds, including the argument that Apotex could not claim an accounting of profits or damages for any permanent loss of market share (allegedly caused by the delay attributable to Merck's failed proceeding). In October 2008, the Federal Court held that section 8 does not enable second persons to claim an innovator's profits. They could claim damages for any permanent loss of market share caused during the period set out in section 8, as a result of the innovator's unsuccessful proceeding under the Regulations. That decision also dismissed several administrative and constitutional arguments as to why section 8 should not be enforced by the federal courts. The Federal Court of Appeal Limits the Damages Available Under Section 8 The Federal Court of Appeal affirmed the Federal Court's finding that section 8 does not authorize a generic company to claim an accounting of profits from the innovator for any delay allegedly caused by an unsuccessful proceeding under the Regulations. While disgorgement of profits is a remedy available to a patentee under the Patent Act, the Court of Appeal emphasized that a delayed generic company is not in the same position as a patentee. The Court of Appeal held that the use of the terms "damages or profits" in section 8 should be interpreted to mean "damages or lost profits" because the purpose of this provision is to compensate generics for any delay: "a measure which compels a first person to place the second person in the position in which it would have been, if the operation of the stay had not been triggered, fits well within the contemplated balance" (para. 90). The Court of Appeal also affirmed the Federal Court's decision on the administrative and constitutional arguments, permitting the section 8 claim to go forward. The Federal Court of Appeal reversed the Federal Court on the issue whether a second person may claim for any ongoing loss of market share. Relying on the wording of section 8, which defines the specific period of time for which damages are available, the Court of Appeal held that an innovator is not liable for any long-term losses caused by a failed proceeding under the Regulations. Although an innovator may be liable for lost sales during the defined period, Apotex's market share claim was barred to the extent that its alleged disadvantage (i.e., its late market entry) would result in lost sales after the period defined in section 8. Also at http://pharmaceutical-patents.blogspot.com/2010/01/canadas-federal-court-of-appeal-limits.html Disclaimer : This information is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. | AuthorShruti is a visionary leader,a result-oriented professional and a pharmaceutical scientist targeting path- breaking research and technologies of future.  ArchivesDecember 2010 Categories |
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