Invalidating patent

On the other hand, substantive non-compliance that strikes at the heart of the bargain between the patentee and the public can properly invalidate an issued patent.There is no compelling policy reason why failure to pay the full final fee on a patent application should invalidate a subsequently issued patent.Apotex argued that the Court could not grant summary judgment in Pfizer’s favour absent a cross-motion for summary judgment.

invalidating patent-28invalidating patent-80invalidating patent-12

As such, the Court held that summary judgment could be granted in favour of either party, including in the absence of a cross-motion.

29 October 2003 -- The World Wide Web Consortium (W3C), the global standard-setting body for the Web, has presented the United States Patent and Trademark Office with prior art establishing that US Patent No.

5,838,906 (the '906 patent) is invalid and should therefore be re-examined in order to eliminate this unjustified impediment to the operation of the Web.

T-1064-13 and T-393-14)Drug: XALATAN® (latanoprost)Nature of case: Motion for summary judgment to impeach a patent Successful party: Pfizer Canada Inc.

Date of decision: February 4, 2016The Federal Court found that failure to pay the correct “final fee” owing prior to patent grant was not a basis to invalidate a subsequently issued patent.

Applying the Federal Court of Appeal’s decision in ), the Court distinguished between a patent application and an issued patent such that administrative defects during the patent application stage are not a basis to invalidate a patent post-issuance. (Pfizer) was represented by Norton Rose Fulbright Canada LLP. Apotex brought an action pursuant to section 8 of the of the , SOR/93-133, seeking to recover damages following a successful appeal of a prohibition order.Pfizer markets latanoprost ophthalmic solution under the name XALATAN® for treatment of glaucoma and ocular hypertension. Pfizer counterclaimed alleging that Apotex’s Apo-latanoprost product infringed Canadian Patent No. Apotex brought a separate action for impeachment of the 132 Patent.Apotex then moved for summary judgment seeking to invalidate the patent on the grounds that the "final fee", a payment owing during the application phase prior to patent issuance, was not paid in full.Apotex argued that failure to pay the correct final fee resulted in the underlying patent application being “forfeited” pursuant to section 73(1) of the applied equally to all subparagraphs of subsection 73(1), including 73(1)(f) which provides for deemed abandonment for failure to pay the final fee and that its comments are not limited to paragraph 73(1)(a); and (3) subsection 73(1) relates to administrative and procedural issues in respect of patent applications and is not a basis to invalidate an issued patent.The Court distinguished between administrative non-compliance with subsection 73(1), and substantive non-compliance with other sections of the which go to the heart of the patent bargain.Administrative non-compliance ought not to invalidate issued patents absent express statutory wording.

Tags: , ,