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Digest of the Week – Shortfall in Patent Application Fee

Digest of the Week – Shortfall in Patent Application Fee

Patent not invalidated for administrative or procedural reasons



Apotex Inc. v. Pfizer Inc.
2016 CarswellNat 322
Federal Court


Intellectual property --- Patents — Validity of patent — Effect of prior grant or claim — General principles

Related pharmaceutical companies had interest in patent covering prostaglandin derivatives for treatment of glaucoma or ocular hypertension — Patent covered particular drug latanoprost marketed as Xalatan — Pharmaceutical company PA failed to pay full amount of required fee at end of prosecution of patent — Section 73(1) of Patent Act provided patent application was thereby forfeited, but patent was nonetheless issued — Act was amended to provide one-year grace period for payment of remainder of fee in such situations — PA failed to pay remainder of fee — Competitor applied for notice of compliance (NOC) for generic version of latanoprost — In support of NOC application, competitor served notice of allegation alleging patent was invalid and that competitor's generic version would not infringe patent — Pharmaceutical companies brought unsuccessful application for order prohibiting Minister from issuing NOC to competitor until expiration of patent — Competitor commenced action for damages arising from unsuccessful application — Pharmaceutical companies counterclaimed for infringement — Competitor brought motion for partial summary judgment declaring patent invalid for failure to pay full fee — Motion was granted in favour of defendant pharmaceutical companies — Pharmaceutical companies were entitled to partial summary judgment in their favour on this issue even though they had not brought their own cross-motion — While evidence confirmed PA had not paid full fee, error in payment did not invalidate patent — Defects in patent application were unassailable once patent was issued — Fee shortfall related only to patent application and not to issued patent — Section 73 did not serve to invalidate issued patents — Competitor advanced no convincing argument that forfeiture should apply beyond prosecution phase — To read in issued patents to s. 73(1) would ignore clear dichotomy between patent applications and issued patents established through Act — Patents were not invalidated for administrative or procedural reasons.
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