PATENTS |
Practice |
Pfizer Canada Inc. v. Apotex Inc.
A-69-98, A-681-98
Isaac J.A.
10/1/01
14 pp.
Appeals from Trial Division orders dismissing applications by Pfizer Canada Inc., Pfizer Corporation for orders of prohibition under Patented Medicines (Notice of Compliance) Regulations, s. 6(1)--Appellants seeking to prohibit Minister of National Health and Welfare from issuing Notices of Compliance (NOCs) to respondents Nu-Pharm, Apotex Inc., for medicine fluconazole, before expiration of Canadian Letters Patent 1,181,076 (Pfizer patent)--In June 1995, each of respondents, Apotex and Nu-Pharm, issued Notices of Allegation under Regulations, alleging no pertinent claim of Pfizer patent would be infringed by specific processes intended to be used in manufacture of fluconazole--In response to Notices of Allegation, appellants commenced applications for prohibition in Trial Division on August 10, 1995--Whether appeals moot because Minister issued NOCs--FCA decision in Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare) (1999), 240 N.R. 195, governing present appeals--Disposition of appeals depending upon proper interpretation of Regulations--Prohibition proceedings under Regulations not similar to patent infringement proceedings--S. 6 proceedings giving patentee special method of protecting patents from possible infringement--Phrase "dismissed by the court" in Regulations, s. 7(4) to be interpreted as meaning "dismissed by the Federal Court Trial Division"--Once prohibition proceedings brought by appellants dismissed by Trial Division, Minister entitled to issue NOCs to Apotex, Nu Pharm with respect to fluconazole--Issue of NOCs foreclosing attempts to continue prohibition proceedings under Regulations--No injustice flowing from such interpretation of Regulations--Appellants' contention Court should exercise discretion to hear appeals otherwise moot to clarify potential liability for damages under Regulations, s. 8 unacceptable--Court's decision appeals moot not meaning appellants without remedies--Latter may commence actions for infringement if so advised, facts warrant--S. 6 proceedings not adjudicative of patentee's rights--Lawful administrative action by Minister under Regulations rendering appeals moot--Appeals dismissed--Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, ss. 6, 7, 8.