Federal Appeal

Intellectual Property


Validity of patent

Specific property of increased bioavailability differentiated patent

Appellant pharmaceutical company N filed patent application in 1997, for molecule and its byproduct salts. N obtained patent in 2006. Co-appellant company B filed patent application in 1998 for form of molecule, which was more easily available. B obtained patent in 2004. Respondent company T alleged to Federal Court that B’s patent was invalid on grounds of obviousness. B’s application for writ of prohibition was dismissed. B claimed that obviousness test was not properly applied by Federal Court. B pointed to finding that some of properties of its molecule were not predictable, before making and testing. B appealed from Federal Court judgment. Appeal dismissed. Categorical approach to obviousness issue was not appropriate. Federal Court found that two of three identified elements in case were not inventive. Federal Court erred in its identification of inventive concept. There was no difference between prior art and inventive concept or solution taught by patent. Skilled person would have expected that salt screen process would identify one salt that would improved pharmaceutical properties. Specific property of increased bioavailability differentiated B’s patent from that of N. Although Federal Court’s reasoning was flawed, conclusion that skilled person would have found patent to be obvious was correct in result.

Bristol-Myers Squibb Canada Co. v. Teva Canada Ltd. (2017), 2017 CarswellNat 1330, 2017 FCA 76, J.D. Denis Pelletier J.A., D.G. Near J.A., and Donald J. Rennie J.A. (F.C.A.); affirmed (2016), 2016 CarswellNat 2448, 2016 FC 580, Anne L. Mactavish J. (F.C.).


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