News & Analysis as of

Canada Patent-Eligible Subject Matter

Smart & Biggar

Dexlansoprazole formulation patent invalid and not infringed by Apotex

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On February 7, 2024, the Federal Court dismissed Takeda’s action under subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations in relation to dexlansoprazole (Takeda’s DEXILANT). Justice Furlanetto...more

Smart & Biggar

Federal Court of Appeal affirms paliperidone palmitate claims are not unpatentable methods of medical treatment

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In a 2022 decision involving Janssen and Pharmascience, the Federal Court found that the claims of Canadian Patent No. 2,655,335 (335 patent, relating to paliperidone palmitate (Janssen’s INVEGA SUSTENNA)) were not invalid...more

Smart & Biggar

AI-assisted inventions: USPTO’s most recent guidance for determining inventorship

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AI technologies bring several new business opportunities, but they also bring a host of new legal questions, including in intellectual property law. A very important question at the intersection of AI and IP is: how do we...more

Smart & Biggar

Federal Court declines to grant injunction for infringement of HUMIRA formulation patent

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On December 4, 2023, the Federal Court issued its public judgment and reasons in two patent infringement actions pursuant to s. 6(1) of the Patented Medicines (Notice of Compliance) Regulations (“Regulations”) and two patent...more

Smart & Biggar

Canada adopts three-step framework for assessing patentable subject matter in Benjamin Moore

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Recently the Federal Court released a decision establishing a new three-step legal framework for assessing patentable subject matter, particularly as it relates to the patentability of computer-implemented inventions, in...more

Smart & Biggar

Canadian Patent Law 2021: A round-up of interesting developments and court decisions

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2021 saw changes in Canadian patent legislation, and a variety of court decisions addressing rarely interpreted provisions of the Patent Act, early consideration of recently enacted provisions, and new takes on central tenets...more

Smart & Biggar

Federal Court of Appeal affirms prohibition order against Apotex regarding abiraterone

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As previously reported, in the final decision released under the pre-amended Patented Medicines (Notice of Compliance) Regulations (Regulations), the Federal Court granted a prohibition order relating to Canadian Patent No....more

Smart & Biggar

Allowance of Choueifaty patent application provides insight into CIPO's future approach to patentable subject matter

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In an apparent conclusion to the patent at the heart of the Federal Court of Canada’s decision in Yves Choueifaty v Attorney General of Canada, 2020 FC 837 [Choueifaty], Canadian patent application no. 2635393 (CA ‘393) was...more

Smart & Biggar

Federal Court decision regarding glatiramer acetate finds one patent obvious and another valid and infringed

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On January 6, 2021, the Federal Court issued its decision in two patent infringement actions pursuant to subsection 6(1) of the Patented Medicines (Notice of Compliance) Regulations involving Teva’s patents pertaining to the...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

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

The Best of the Decade – Canadian Patent Law in the 2010s

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The 2010s saw many developments in Canadian patent law.  Establishment of a trade agreement with the European Union, ratification of an international IP treaty, implementation of a national IP strategy, and other domestic...more

Smart & Biggar

Federal Court rejects Apotex’s invalidity allegations on claims for use of abiraterone acetate in combination with prednisone

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On October 29, 2019, the Federal Court issued its final decision under the pre-amended Patented Medicines (Notice of Compliance) Regulations: Janssen Inc v Apotex Inc, 2019 FC 1355. Justice Phelan granted Janssen’s...more

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

Global Patent Prosecution Newsletter - October 2018: The State of Patentable Subject Matter Internationally

As evidenced recently in the United States, it may be difficult to tell what categories of inventions are eligible for patent protection in foreign jurisdictions. To further complicate issues, standards of eligible subject...more

Smart & Biggar

Eli Lilly’s EFFIENT combination use patent found obvious

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On July 13, 2018, the Federal Court dismissed Eli Lilly’s application for a prohibition order, finding that Apotex’s allegation of obviousness of Patent No. 2,432,644 (644 Patent) was justified: Eli Lilly Canada Inc v Apotex...more

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

The Goods on IP - July 2018: The Hague System for the Registration of International Design Welcomes Canada

The Hague Agreement, the international registration system for industrial designs, continues to grow as Canada will become its newest member on November 5, 2018. As we reported back in January, Russia also joined the Hague...more

Foley & Lardner LLP

Canada Provides More Guidance On Patent Eligibility Of Diagnostic Method Claims

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While the patent eligibility of diagnostic method claims remains questionable in the United States, the Canadian Intellectual Property Office has issued updated guidance on the types of diagnostic method claims that can–and...more

Smart & Biggar

Federal Court of Appeal Applies Supreme Court’s Utility Test to SPRYCEL Patent

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In its first decision to consider the Supreme Court of Canada’s landmark decision in AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 [Esomeprazole](see our article here) on the utility requirement, the Federal Court of...more

Smart & Biggar

Supreme Court of Canada strikes down "promise doctrine", upholds AstraZeneca’s NEXIUM patent as useful

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The Supreme Court of Canada today delivered an important and highly anticipated decision, AstraZeneca Canada Inc v Apotex Inc (2017 SCC 36), by rejecting the “promise doctrine” and clarifying the requirement for patent...more

Bennett Jones LLP

CIPO Issues Examiner Guideline for Computer-Implemented Inventions (PN 2013-03)

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After some prior iterations and commentary from the patent bar, the Canadian Intellectual Property Office (CIPO) published a practice note dealing with computer-implemented inventions on March 8, 2013. The practice note is...more

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