Double patenting arose to deal with ‘evergreening’ of patent rights. I discuss the application of double patenting with ‘New Act’ patents in my latest column for Slaw.
Continue reading Double Patenting
Tag Archives: Patents
TPP
A copy of the intellectual property chapter of the Trans-Pacific Partnership Agreement has been posted by Wikileaks. The chapter includes the details on the issues of trademarks, patents, pharmaceutical products, biologics, copyright, IP enforcement, border measures and ISPs. See my earlier post on the TPP.
Australian Myriad
Australia’s highest court has issued its decision in D’Arcy v Myriad Genetics Inc, allowing the appeal and holding that claims directed to the BRCA1 gene be revoked on the basis that the substance of the claim “is information embodied in arrangements of nucleotides” and not a “manner of manufacture.” Continue reading Australian Myriad
NAFTA Arbitration
Eli Lilly has filed its reply submissions and evidence in its NAFTA Chapter 11 arbitration against the Canadian government relating to the utility of Lilly’s Zyprexa and Strattera patents. Continue reading NAFTA Arbitration
Standard Essential Patents and Biosimilars
Here are two recent foreign decisions that may be of interest:
- Huawei v. ZTE – The European Court of Justice issued a decision on standard essential patents (SEPs) relating to LTE technology and whether seeking an injunction on patents with FRAND terms was an abuse of dominance, stating among other things, “in order to prevent an action for a prohibitory injunction or for the recall of products from being regarded as abusive, the proprietor of an SEP must comply with conditions which seek to ensure a fair balance between the interests concerned.”
- Amgen v. Sandoz – The US Court of Appeals for the Federal Circuit issued a divided decision on the ‘patent dance’ scheme for biosimilars in the United States holding that Sandoz was not required to disclose its application to the innovator but that notice could not be given until after receiving FDA approval, extending the period of exclusivity.
Patent Amendments
Two IP related amendments are included in the July 1st Canada Gazette:
- As noted last week, changes to the PM(NOC) Regulations relating to patent listing of combination products have been made and the Canada Gazette publication includes the amendment, regulatory impact analysis, and responses to submissions made during the consultation period.
- Also published are changes to Schedule 1 to the Patent Act to add three patented HIV/AIDS treatments pursuant to Canada’s Access to Medicines Regime.
Agent Privilege
Bill C-59 received royal assent yesterday which includes changes to the Patent Act, Trade-marks Act, Copyright Act and the Industrial Design Act. The changes include agent privilege, provisions for force majeure and term extension. The provisions on privilege will come into force next year at this time while other sections will require implementing regulations and further orders in council.
IP Items
A few items that may be of interest:
- The United States Supreme Court issued its decision today in Kimble v. Marvel Entertainment, LLC, upholding the rule that a patentee cannot continue to receive patent royalties for sales made after the patent expires.
- The House of Commons has adjourned for the summer so pending bills, including Bill C-65, amending the Copyright Act to implement the Marrakesh Treaty for the blind, will need to be re-introduced. Bill C-59, the budget implementation bill which includes amendments to the Patent Act, Copyright Act, Industrial Design Act and Trade-marks Act, is still pending before the Senate.
- The Federal Court has issued a practice notice on the publication of decisions having ‘precedential’ and ‘non-precedential’ value.
Online Patent Documents
The Canadian Patent Office has updated its online patent database to include online access to many of the prosecution documents for applications and patents, including office actions, responses, filing certificates and other documents. CIPO has a list of documents included and not included in the new system. Try it out. Continue reading Online Patent Documents
Competition
The Competition Bureau has published draft “Intellectual Property Enforcement Guidelines” for public comment. The guidelines will describe the Bureau’s position on issues such as patent settlements, including under the PM(NOC) Regulations, standard essential patents, and patent assertion entities.