| Citation: |
Merck & Co. Inc. v. canada (Health), 2010 FC 1043, [2011] 1 F.C.R. D-4 |
T-1545-08 |
Patents
Infringement
Application for order against Minister of Health not to issue notice of compliance (NOC) to Apotex Inc. (respondent) before expiration of Canadian Patent No. 1329211 ('211 patent), pursuant to Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 6—Respondent alleging '211 patent invalid for double-patenting, applicant already possessing Canadian Patent No. 1328262 ('262 patent) for family of compounds including dorzolamide, thus NOC should be issued—Applicant dedicating '262 patent to public in 2007, contending allegation of invalidity unjustified because double-patenting no longer problematic—Principal issues: (1) effect of applicant’s '262 patent dedication, (2) whether applicant demonstrating allegation of invalidity unjustified—'262 patent statutorily expiring 17 years after issuance—'211 patent “divisional patent”, expiring 28 days after expiration of '262 parent—Applicant thus achieving monopoly over its invention beyond statutory 17‑year period—Court should not permit dedication to yield such advantage—Applicant’s dedication not immunizing '211 patent from allegation of double-patenting—Respondent’s allegation of invalidity justified, applicant not discharging burden of proof of establishing contrary—Application dismissed.
Merck & Co. Inc. v. Canada (Health) (T-1545-08, 2010 FC 1043, O’Reilly J., judgment dated October 22, 2010, 19 pp.)