4 November 2014Americas

Canadian Supreme Court case breaks down

A case that was expected to act as a benchmark for future patent cases in Canada has been settled a day before the country’s Supreme Court was due to hear arguments.

The Supreme Court of Canada was today (November 4) expected to hear the dispute between generics company Apotex and drug companies Sanofi and Bristol-Myers Squibb (BMS).

But, in a statement published yesterday, the court confirmed it would not be hearing the case.

According to lawyers in Canada, Apotex discontinued its appeal.  Apotex did not immediately respond to a request for comment.

The dispute, which has been running since 2011, was expected to decide whether Apotex infringed a patent covering Plavix (clopidogrel bisulfate), a drug used to prevent blood clots after a heart attack, which is developed and marketed by Sanofi and BMS.

The outcome was expected to provide guidance on the “utility” requirement in Canadian patent law.

Apotex was initially victorious in the case when the Federal Court of Canada ruled that Sanofi and BMS’s patent was invalid, paving the way for it to market a generic version. But that decision was overturned by the Federal Court of Appeal.

The Federal Court’s initial decision found the BMS and Sanofi patent invalid for a lack of utility, as it “promised” the drug would be useful in humans.

But, according to the same court, that claim had neither been demonstrated nor soundly predicted as of the filing date.

Gunars Gaikis, partner at Smart & Biggar/Fetherstonhaugh in Toronto, previously told LSIPR that the case had been closely watched by both generic and pharmaceutical companies.

Gaikis said: “The problem for patentees in Canada is that the current law requires any utility found to be promised by a patentee to be demonstrated or soundly predicted by the Canadian filing date.

“The court is expected to consider whether this current high threshold for the utility requirement should be lowered or otherwise varied,” he added.

IP professionals also took to Twitter this morning to discuss the breakdown of the case.

Jeremy de Beer, a law professor at the University of Ottawa, tweeted: “Appeal discontinued. Hearing cancelled. Case settled. Still waiting for clarity on Canadian patent law.”

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