Attacking the validity of selection patents


Katie Wang

The Canadian Federal Court of Appeal recently considered whether ‘invalid selection’ can be an independent ground for invalidating selection patents. Katie Wang looks at the implications.

The conclusion is not surprising: a selection patent will not receive special treatment. Its validity is vulnerable to attack on any of the grounds provided in the Patent Act. Accordingly, a determination that the conditions for a select patent have not been met does not constitute an independent basis upon which to attack the validity of the patent (Eli Lilly Canada Inc. v Novopharm Limited).

In this case, Eli Lilly commenced an action for patent infringement against Novopharm with respect to Lilly’s ‘113 patent. The ‘113 patent is a selection patent for the compound olanzapine (sold under the brand name Zyprexa), used to treat schizophrenia.

Novopharm defended the infringement allegation made against it and counterclaimed on the ground that the ‘113 patent was not a valid selection patent. Novopharm’s other grounds included, inter alia, anticipation, double patenting and obviousness.

invalid selection, Canada Patent Act, Novopharm, pharmaceuticals