Smart & Biggar/Fetherstonhaugh updates

Federal Court grants motion to strike plaintiff's quia timet pleading in oxycodone infringement action
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 23 2018

In a recent case, the Federal Court granted the plaintiff's motion to strike a rival pharmaceutical company's statement of claim for infringement of a patent relating to oxycodone salt. The court overturned the prothonotary's dismissal of the motion, finding that the facts alleged nothing beyond the regulatory use exemption and that the imminence branch of the test for a quia timet action had not been met.

Costco pharmacy directors fined for professional misconduct
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 23 2018

The discipline committee of the Ontario College of Pharmacists recently found that two directors of Costco pharmacies had committed acts of professional misconduct by soliciting C$1,266,000 in payments relating to advertising which would reasonably be regarded as rebates for the purchase of interchangeable drug products.

Federal Court grants motion to strike plaintiff's quia timet pleading in oxycodone infringement action
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 21 2018

In a recent case, the Federal Court granted the plaintiff's motion to strike a rival pharmaceutical company's statement of claim for infringement of a patent relating to oxycodone salt. The court overturned the prothonotary's dismissal of the motion, finding that the facts alleged nothing beyond the regulatory use exemption and that the imminence branch of the test for a quia timet action had not been met.

Colour it mine: protecting colour trademarks
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 21 2018

A number of changes will soon be made to Canadian trademark law, which will make it possible to protect a colour per se as a trademark (as opposed to a colour applied to a product with a particular shape). Rights holders seeking to protect colours as trademarks in Canada may therefore benefit from the new regime. However, overcoming objections based on functionality or establishing distinctiveness may present significant new hurdles to the registration of such marks.

Consultation on proposed regulations under Health Sector Payment Transparency Act 2017
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 16 2018

The Ontario legislature recently passed the Strengthening Quality and Accountability for Patients Act 2017, which enacts or amends 10 statutes, including the Health Sector Payment Transparency Act 2017. When in force, the transparency act will require the disclosure of financial relationships between pharmaceutical or medical device manufacturers (among other payors) and healthcare professionals (among other recipients).

CADTH Common Drug Review accepting submissions up to six months before market approval
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 16 2018

The Canadian Agency for Drugs and Technologies in Health has announced that the Common Drug Review Programme will now accept drug submissions up to six months before a drug manufacturer's anticipated receipt of a notice of compliance (NOC) or NOC with conditions from Health Canada.

Federal Court declares invalid patent for medical device measuring osmolarity of tear film
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 14 2018

The Federal Court recently found certain claims of a patent relating to a chip for measuring the osmolarity of a sample of bodily fluid, including tear film, invalid on the basis of obviousness and anticipation. The court agreed with the claim construction urged by the plaintiffs, finding that the claims encompassed both in vivo and ex vivo applications of the invention. Thus, the defendant's competing medical device – which measured osmolarity in vivo – fell within the scope of the claims.

Patented Medicine Prices Review Board releases March 2018 newsletter
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 14 2018

The Patented Medicine Prices Review Board (PMPRB) recently released its March 2018 newsletter (the first since July 2017). Highlights include an update on the PMPRB guidelines, the release of the PMPRB's 2016 annual report and notice that several publications will be released in 2018.

Alexion files for leave to appeal to Supreme Court in challenge of PMPRB's remedial powers
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 09 2018

Alexion Pharmaceuticals recently filed an application for leave to appeal a Federal Court of Appeal decision to the Supreme Court. In its decision, the Federal Court of Appeal had dismissed Alexion's challenge of the constitutionality of certain Patented Medicine Prices Review Board provisions provided for in the Patent Act.

Patented Medicine Prices Review Board releases March 2018 newsletter
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 09 2018

The Patented Medicine Prices Review Board (PMPRB) recently released its March 2018 newsletter (the first since July 2017). Highlights include an update on the PMPRB guidelines, the release of the PMPRB's 2016 annual report and notice that several publications will be released in 2018.

New use patent valid and infringed by biosimilar
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 07 2018

The Federal Court recently upheld the validity of Kennedy Trust's patent covering a use of infliximab (Janssen's Remicade) and granted Kennedy's counterclaim that Hospira's biosimilar Inflectra had infringed the patent. This is the third patent infringement action decision relating to a biologic and the second on the merits relating to a biosimilar.

Alexion files for leave to appeal to Supreme Court in challenge of PMPRB's remedial powers
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • May 07 2018

Alexion Pharmaceuticals recently filed an application for leave to appeal a Federal Court of Appeal decision to the Supreme Court. In its decision, the Federal Court of Appeal had dismissed Alexion's challenge of the constitutionality of certain Patented Medicine Prices Review Board provisions provided for in the Patent Act.

New use patent valid and infringed by biosimilar
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 02 2018

The Federal Court recently upheld the validity of Kennedy Trust's patent covering a use of infliximab (Janssen's Remicade) and granted Kennedy's counterclaim that Hospira's biosimilar Inflectra had infringed the patent. This is the third patent infringement action decision relating to a biologic and the second on the merits relating to a biosimilar.

Federal Budget 2018 announces advisory council for national pharmacare programme
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • May 02 2018

The federal budget was recently tabled in the House of Commons. It announced the creation of the Advisory Council on the Implementation of National Pharmacare, which will be led by former Minister of Health of Ontario Eric Hoskins and make recommendations on potential approaches to national pharmacare.

Court dismisses Section 8 damages appeal and grants cross-appeal
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • April 23 2018

The Federal Court of Appeal recently issued public reasons for its dismissal of Eli Lilly Canada Inc's appeal of a Federal Court decision that had awarded Teva Canada Limited more than C$70 million under Section 8 of the Patented Medicines (Notice of Compliance) Regulations. Further, the court granted Teva's cross-appeal – which sought to add to its recovery of lost pipefill sales – and an adjustment to account for an underreporting of sales in the data relied on by both parties' experts.

No Section 8 liability for valid and infringed patent in Nexium proceeding
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • April 23 2018

If a patentee is unsuccessful in a prohibition application under the Patented Medicines (Notice of Compliance) Regulations against a generic entrant, but subsequently prevails in an infringement action regarding the same patent, can it be liable for Section 8 damages under the regulations? According to a recent Federal Court decision, the answer appears to be no.

No Section 8 liability for valid and infringed patent in Nexium proceeding
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • April 18 2018

If a patentee is unsuccessful in a prohibition application under the Patented Medicines (Notice of Compliance) Regulations against a generic entrant, but subsequently prevails in an infringement action regarding the same patent, can it be liable for Section 8 damages under the regulations? According to a recent Federal Court decision, the answer appears to be no.

Court dismisses Section 8 damages appeal and grants cross-appeal
Smart & Biggar/Fetherstonhaugh
  • Healthcare & Life Sciences
  • Canada
  • April 18 2018

The Federal Court of Appeal recently issued public reasons for its dismissal of Eli Lilly Canada Inc's appeal of a Federal Court decision that had awarded Teva Canada Limited more than C$70 million under Section 8 of the Patented Medicines (Notice of Compliance) Regulations. The court granted Teva's cross-appeal – which sought to add to its recovery of lost pipefill sales – and an adjustment to account for an underreporting of sales in the data relied on by both parties' experts.

How cannabis brand owners can cover their buds with plant breeders' rights
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • April 16 2018

The federal government is moving quickly towards legalising the possession and consumption of cannabis for recreational purposes. Although Canada's cannabis industry is already 'overgrown' with many licensed and unlicensed producers all vying for consumers' attention with different brands and strains of cannabis, only a few have taken advantage of the exclusive rights afforded producers under the Plant Breeders' Rights Act.

Accounting of profits remedy offers significant benefits to patent owners
Smart & Biggar/Fetherstonhaugh
  • Intellectual Property
  • Canada
  • April 16 2018

The availability of an accounting of profits in Canada as a remedy for patent infringement can offer significant benefits to patentees, including in cases involving infringing goods sourced from Canada that are being sold elsewhere. The availability of such a remedy and a number of other factors, including the ability to expedite proceedings and the lower cost of litigation, make Canada an attractive jurisdiction for patentees from the United States and elsewhere to litigate patent infringement matters.

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