| Citation: |
Merck & Co. Inc. v. Apotex Inc., 2010 FC 1264, [2011] 2 F.C.R. D-5 |
T-1169-01 |
Patents
Practice
Action pursuant to Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (1993 Regulations), s. 8 in which plaintiff claiming entitled to relief for having been kept out of lovastatin market for specified period—Defendant Merck Frosst Canada Ltd. (Merck) holding rights to Canadian Patent No. 1161380 ('380 patent) through patent holder Merck & Co. Inc.—'380 patent relating to process for manufacturing drug lovastatin, issued in 1984, expiring in 2001—Plaintiff attempting to enter market in 1993 with generic version of lovastatin—1993 Regulations amended in 1998 (Patented Medicines (Notice of Compliance) Regulations, SOR/98-166 (1998 Regulations))—Which version of Regulations applying in present case?—1998 Regulations including transitional provisions in s. 9 regarding 1993 Regulations, s. 8—Meaning of word “pending” in 1998 Regulations, s. 9(6) at issue to determine whether Merck’s application for prohibition pending on coming into force of 1998 Regulations—In application for prohibition, application judge’s decision final—Subsequent appeals, motions not altering finality of decision—Word “pending” must take meaning from context in which used—Merck’s application for prohibition without legal foundation no later than date notice of compliance issued to plaintiff—Even if in some circumstances outstanding appeal may result in application “pending” for purposes of 1998 Regulations, s. 9(6), facts herein not supporting such conclusion—Therefore, 1993 Regulations, s. 8 applying in present case—Action dismissed.
Merck & Co. Inc. v. Apotex Inc. (T-1169-01, 2010 FC 1264, Snider J., judgment dated December 22, 2010, 21 pp.)