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Patents Patent Act Canada

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Avoiding the hindsight trap in the context of a patent obviousness analysis

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While courts have often warned that hindsight bias should be avoided when assessing whether a patented invention would have been obvious to the skilled person, the application of this principle can be challenging in practice....more

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Relief under Canada’s stringent “due care” standard for missed maintenance fees? Federal Court requires CIPO to consider events...

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In Matco Tools Corporation v Canada (Attorney General), 2025 FC 118 (Matco Tools), the Federal Court found that a decision by the Commissioner of Patents to refuse to reinstate a patent application following the failure to...more

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2023 Highlights in Canadian Life Sciences IP and Regulatory Law

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Eli Lilly v Teva, Pharmascience, Riva, Apotex, Mylan (tadalafil, CIALIS) – Following a summary trial, Lilly’s infringement actions were dismissed: composition claims directed to “a physiologically acceptable salt” of...more

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Canadian patents: Establishing “due care” after failure to pay a maintenance fee

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It has been four years since amendments to the Patent Act and Patent Rules were made, bringing the Patent Law Treaty (PLT) into force in Canada. The most consequential changes have proven to be the handling of missed...more

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Canada’s new patent claim fee rules: Alternative embodiments within a single claim

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Historically, claim fees have not been payable at any time during the pendency of a Canadian patent application or term of the patent. This changed on October 3, 2022, and the present article discusses strategies for...more

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Ontario Court of Appeal affirms dismissal of Apotex’s Statutes of Monopolies and Trademarks Act claims regarding olanzapine

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On March 8, 2021, the Ontario Superior Court of Justice dismissed Apotex’s claims against Eli Lilly (Lilly) under the Statute of Monopolies, Trademarks Act, and common law conspiracy relating to Canadian Patent No. 2,041,113...more

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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

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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

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PMPRB update: Revised compliance timelines for grandfathered and gap medicines and proposed regulatory amendments directed to CSPs

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Revised compliance timelines for Grandfathered and Gap medicines - On April 16, 2021, in view of COVID-19, the Patented Medicine Prices Review Board (PMPRB) reversed its position on compliance timelines for Grandfathered...more

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Federal Court of Appeal finds Minister of Health’s refusal to grant a CSP for SHINGRIX is reasonable

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In the first appellate decision relating to Certificates of Supplementary Protection (CSPs), the Federal Court of Appeal has allowed the appeal of the Minister of Health (the Minister), setting aside the lower court judgment....more

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Ontario Superior Court dismisses Apotex’s Statutes of Monopolies and Trademarks Act claims regarding olanzapine

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Update: Apotex has appealed. On March 8, 2021, the Ontario Superior Court of Justice granted Eli Lilly’s (Lilly) motion for summary judgment and dismissed Apotex’s claims under the Statutes of Monopolies, Trademarks Act, and...more

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Office Actions: Options to consider when you need an extension of time to respond to the Patent Office

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The extensive amendments to the Patent Act and Patent Rules that came into force on October 30, 2019 have complicated the practice for responding to an Office Action (i.e. an “Examiner’s Report”) issued by the Canadian Patent...more

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Innovators challenge final PMPRB Guidelines in new Federal Court application

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On November 23, 2020, Innovative Medicines Canada (IMC) and a number of research-based pharmaceutical companies commenced an application for judicial review (T-1419-20) of the final Patented Medicine Prices Review Board...more

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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

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JULUCA CSP application remitted to Minister of Health for reconsideration

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UPDATE: On January 13, 2021, the Minister of Health refused the application on reconsideration. Viiv sought but later discontinued a second application for judicial review (T-258-21). In a decision dated July 10, 2020,...more

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Federal Court strikes price calculation provision of amendments to Patented Medicines Regulations

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UPDATE: On September 10, 2020, the applicants (Innovative Medicines Canada and the company applicants) appealed Justice Manson’s decision (A-215-20). On September 21, 2020, the Attorney General of Canada cross-appealed. As...more

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Federal Court releases decision on validity of the Amending Regulations of the Patented Medicines Regulations

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UPDATE: See July 15, 2020 article here describing the decision in more detail. On September 10, 2020, the applicants (Innovative Medicines Canada and the company applicants) appealed Justice Manson’s decision (A-215-20). On...more

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Action under amended PMNOC Regulations not rendered moot by patent expiry

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On May 22, 2020, the Federal Court held that an action under the amended Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) relating to saxagliptin (ONGLYZA) would not be rendered moot by the relevant...more

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COVID-19 Update: CIPO, Federal Courts, Health Canada

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This article was last updated on June 26, 2020. In view of COVID-19, we have compiled a list of important updates as it relates to the pandemic and its impact on Life Sciences. We will continue to update this page as new...more

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First decision on CSPs: SHINGRIX refusal remanded to Health Canada

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The first decision considering the scope and meaning of the provisions in the Patent Act relating to Certificates of Supplementary Protection (CSPs) has now been released.  Justice Barnes of the Federal Court in...more

International Lawyers Network

Pandemics And Emergency Access To Patented Technology In Canada

Canada’s COVID-19 Emergency Response Act came into force on March 25, 2020. Perhaps overlooked amongst emergency relief, health care and financial effects is Part 12 of the Act which makes changes to the Patent Act. Why...more

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Government introduces Bill C-4 to implement changes required under USMCA

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On January 29, 2020, Bill C-4, which addresses some of the changes required under the Agreement between Canada, the U.S. and Mexico (USMCA), was introduced in the House of Commons. Amendments to the Patent Act were not...more

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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

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Updated Canadian Manual of Patent Office Practice explains the “Due Care” standard and more

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On October 30, 2019, amendments to the CanadianPatent Act and Patent Rules will come into force. The amendments, as reviewed in detail in our previous article, are largely geared to implementing the Patent Law Treaty....more

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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

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