Federal Appeal

Industrial and Intellectual Property

Undue weight not given to dictionary definition of “object”

Appeal by respondent from decision granting application under s. 6 of Patented Medicines (Notice of Compliance) Regulations (Can.), for prohibition order. Order prohibited issuance of Notice of Compliance to respondent to sell its version of anastrozole in Canada until after expiry of patent. Parties disputed interpretation of sentence in patent specification “It is a particular object of the present invention to provide aromatase inhibitory compounds with fewer undesirable side effects than [AG]”. Judge agreed with applicant that “object of the invention” refers to forward-looking or aspirational aim of invention and was not promise that anastrozole had achieved goal by date of filing. Judge concluded that respondent’s allegation that patent was invalid for lack of utility was not justified. Appeal dismissed. Application judge did not err in construction of patent’s promise. Undue weight not given to dictionary definition of “object”. Judge relied on dictionary definitions and synonyms to confirm that in its ordinary usage, “object” capable of bearing meaning he assigned to it based on other considerations. Examination of patent as whole supported conclusion that, unlike express claims of patent, object clause contained no more than forward-looking aim of invention. Fact that side-effects not mentioned elsewhere in patent was telling. Fact that pharmaceutical industry was seeking solution to particular problem would not lead POSITA to necessarily think “particular object” was that anastrozole solved one of most pressing research problems of the day. Judge did not err in preferring evidence of expert who testified that object clause set out long-term aim of producing fewer side effects. Meaning of expert’s alleged concession far from clear. Judge’s reasons, read in entirety, not internally incoherent.

Astrazeneca Canada, Inc. v. Mylan Pharmaceuticals ULC

(Apr. 11, 2012, F.C.A., Evans, Sharlow and Dawson JJ.A., File No. A-344-11) Decision at 205 A.C.W.S. (3d) 1065 was affirmed. 214 A.C.W.S. (3d) 588 (17 pp.).

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