AIPPI files intervention in Supreme Court of Canada case
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

AIPPI files intervention in Supreme Court of Canada case

AIPPI yesterday filed an intervention before the Supreme Court of Canada in the dispute between Apotex and Sanofi-Aventis concerning the drug Plavix. The case concerns the utility requirement in Canadian patent law

The amicus-style brief notes that following the Supreme Court’s decisions in AZT (2002) and VIAGRA (2012), “there has been uncertainty with respect to the precise scope of the utility requirement under Canadian law and in particular the extent to which the utility of a patented invention should be disclosed or supported in the patent specification.”

In AZT, the Court stated that utility must either be demonstrated or be a sound prediction based on information and expertise available at the filing date. In VIAGRA, the Court declined to decide the scope of any disclosure requirement associated with “sound prediction”. The brief states that this “remains an open question in the jurisprudence of this Court, and an area of significant uncertainty in Canadian law”.

Noting that the Court has in previous cases said it is desirable not to apply Canada’s IP laws in a judicial vacuum, AIPPI submits that (1) many jurisdictions have a utility or industrial applicability requirement, (2) for many jurisdictions, the utility or industrial applicability must be indicated in the specification if it is not otherwise obvious, (3) for many jurisdictions, there is no requirement that proof or support be provided in the patent specification, and (4) in a number of jurisdictions “it is relatively rare that utility or industrial applicability is a basis to deny the grant of a patent or for invalidating a granted patent”.

The brief draws on research done by AIPPI over the years and reviews the utility/industrial applicability requirement in the United States, Australia, the EPC and European countries, and Japan. It concludes: “[A] determination on the disclosure requirements in Canada that is, to the extent permissible or practical, consistent with the disclosure requirements of other major jurisdictions can only lead to greater certainty and lower costs for patentees who seek patent protection in Canada.”

Other organisations that have filed briefs in this case include BIOTECanada, Canada’s Research-Based Pharmaceutical Companies, the Centre for Intellectual Property Policy, the Canadian Generic Pharmaceutical Association and FICPI. The case is due to be heard by the Court later this year.

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article