News & Analysis as of

Canada Claim Construction

Smart & Biggar

Avoiding a finding of ambiguity and ensuring patent validity: the importance of a comprehensive disclosure and defining coined...

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On June 7, 2024, the Federal Court issued its Judgment and Reasons in Tekna Plasma Systems Inc v AP&C Advanced Powders & Coatings Inc ( 2024 FC 871), finding all claims of the Defendant’s Canadian Patent No 3,003,502 (502...more

Smart & Biggar

Canadian patent law 2024: a year in review

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2024 was an active year in Canadian patent law, with the Federal Court issuing several decisions on the merits regarding invalidity and/or infringement. The courts also considered issues of the regulation of patent agents,...more

Smart & Biggar

Canadian Patent law 2022: A Year in Review

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2022 was an active year in Canadian patent law. Claim fees were introduced for the first time; changes were made to regulations providing remedies for excessive pricing of patented medicines; and a range of court decisions...more

Smart & Biggar

Federal Court of Appeal upholds decision finding Seedlings' LifeCard patent invalid and not infringed by Pfizer’s EpiPen

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On July 28, 2021, the Federal Court of Appeal (FCA) dismissed Seedling’s appeal from the Federal Court decision of Justice Grammond (2020 FC 1, previously reported), which concluded that certain claims of Seedlings' LifeCard...more

Smart & Biggar

Federal Court of Appeal finds summary trial appropriate, upholds dismissal of ViiV’s action for patent infringement re: Gilead’s...

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Update: On September 15, 2021, ViiV applied to the Supreme Court of Canada for leave to appeal (Docket No. 39823). The Federal Court of Appeal dismissed an appeal by ViiV from a decision of the Federal Court granting...more

Smart & Biggar

CIPO's new guidelines on patentable subject matter explained

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The Canadian Intellectual Property Office (CIPO) released new guidelines on patentable subject matter and a set of examples applying the new guidelines to computer-implemented inventions, medical diagnostic methods, and...more

Dickinson Wright

Patent Claim Construction Decision May Boost Patent Eligibility in Canada

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Those applying for Canadian patents will be pleased to learn of a recent decision by the Federal Court of Canada invalidating the patent office’s controversial problem-solution approach to patent claim construction. The...more

Smart & Biggar

Federal Court rejects “problem-solution approach” opening the field for computer-implemented inventions

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In a significant decision released August 21, 2020, Choueifaty v Canada (Attorney General), 2020 FC 837 [Choueifaty], Canada's Federal Court rejected the Canadian Intellectual Property Office’s (CIPO) approach to examining...more

Smart & Biggar

Federal Court dismisses ViiV’s action for patent infringement re: Gilead’s BIKTARVY following summary trial on claim construction

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Update: see our article here regarding the dismissal of ViiV’s appeal. On April 6, 2020, the Federal Court granted Gilead’s motion for summary trial and dismissed ViiV’s action: ViiV Healthcare Company v Gilead Sciences...more

Smart & Biggar

Seedlings’ LifeCard patent found invalid and not infringed by Pfizer’s EpiPen

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Update: On July 28, 2021, the Federal Court of Appeal dismissed Seedling’s appeal from Justice Grammond’s decision: Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, 2021 FCA 154 (see article here). On January 2,...more

Smart & Biggar

Foreign Prosecution History Evidence Permitted under Section 53.1 of the Patent Act

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The Federal Court has now released the first decision in which the scope of Section 53.1 of the Canadian Patent Act—the so-called “file wrapper estoppel” provision—has been considered. We recently published an IP Update...more

Smart & Biggar

File wrapper estoppel in Canada

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The Canadian Patent Act was amended last year to include a new provision which allows prosecution histories into evidence in patent proceedings to rebut representations made by the patentee regarding claims construction. ...more

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Federal Court of Appeal requires PMPRB to re-determine whether patent ‘pertains to’ Galderma’s DIFFERIN

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By: Urszula Wojtyra On June 28, 2019, the Federal Court of Appeal granted the appeal of the Patented Medicine Prices Review Board (PMPRB or Board) and returned to the Board the matter of whether the invention of the 237...more

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Contrasts and Distinctions: Canadian Patent Law Developments in 2018

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2018 served up a smorgasbord of disparate patent law developments in Canada. Most notably, ratification of a new trade agreement negotiated amongst Canada, the United States and Mexico would require introduction of a patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Goods on IP - July 2018

The July 2018 issue of Sterne Kessler's The Goods on IP® discusses developments on copyright infringement lawsuit timing, prosecuting consumer product claims that include conjunctive limitations, and an update on membership...more

Smart & Biggar

New Use Patent for Janssen’s REMICADE valid and infringed by Hospira’s biosimilar INFLECTRA

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On March 7, 2018, the Federal Court upheld the validity of Kennedy’s patent for a use of infliximab (Janssen’s REMICADE) (Patent No. 2,261,630 [the “630 patent”]), and granted Kennedy’s counterclaim that Hospira’s biosimilar...more

Smart & Biggar

Apotex’s Infringement of AstraZeneca’s Omeprazole Formulation Patent Upheld

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The Federal Court of Appeal, in a unanimous decision released on January 12, 2017 (2017 FCA 9), has affirmed the validity of AstraZeneca’s Patent No. 1,292,693. The patent covered AstraZeneca’s successful product, LOSEC, for...more

McDonnell Boehnen Hulbert & Berghoff LLP

News from Abroad: Canada's Federal Court Questions No File Wrapper Estoppel on Claim Construction

The Supreme Court of Canada in Free World Trust v Électro Santé Inc, 2000 SCC 66 rejected the use of extrinsic documents such as file wrappers (patent prosecution histories) for claim construction, on the basis that allowing...more

Blake, Cassels & Graydon LLP

More Than a Pinky Promise: Recent Developments to the Promise Doctrine in Patent Law

Don’t want your patent invalidated? Then you should diligently vet any promissory language in that patent because, as the following cases illustrate, such language raises significant risks of patent invalidation on the basis...more

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