Patents – Year In Review

Posted on February 1, 2016 by Warren Woessner

This is republished with the permission of the authors Stephen Beney, Partner, and Nicholas Aitken, Associate, Bereskin & Parr LLP, It was originally published by Bereskin & Parr LLP at www.bereskinparr.com on January 28, 2016.

iStock_000081139525_SmallIn 2015, Canadian courts and the Patent Appeal Board issued decisions which deemed non-infringing alternatives to affect damages for patent infringement, assessed a license agreement by reference to U.S. patent law, and addressed invalidity for obviousness.

These are our selections for the most influential Canadian patent cases of 2015, outside of life sciences:

Damages

In Apotex Inc. v. Merck & Co., Inc., [2015 FCA 171], the Federal Court of Appeal made a landmark decision which declared that damages for patent infringement may be assessed with a view to the availability of a non-infringing alternative. The FCA held that “[perfect compensation] requires consideration of: (i) what, if any, non-infringing product the defendant or any other competitors could and would have sold ‘but for’ the infringement; and (ii) the extent lawful competition would have reduced the patentee’s sales.” Although the decision was made in the context of pharmaceuticals, it is expected to be widely applicable to patents in other technical fields such as mechanical, electrical and computer technology.

Continue reading →

Posted in Canadian Practice | Tagged , , , , , , , , | Leave a comment

Labeling GMO’s — Too Late and Too Much

Posted on January 29, 2016 by Warren Woessner

iStock_000066549553_SmallCommentators arguing that genetically-modified plants (and animals) or “GMO’s” have been prepared by conventional plant breeding, fail to address the central issue driving the debate about the safety of genetically-engineered crops intended for human consumption.  The issue is not whether or not it is safe to continue to crossbreed different varieties of wheat or corn, or any other plant, to yield improved traits.  This is indeed botanical intervention that has been going on for centuries.

In recent years, companies like Pioneer and Monsanto developed the ability to introduce genes that were isolated from non-plant sources, such as bacteria, into corn, soybeans, cotton and other crops.  Such genes impart properties to the “transgenic” plants such as the ability to resist attack by the European corn borer or to be resistant to glyphosphate (“Roundup”), a relatively non-toxic herbicide, so that it can be used to control weeds while not harming the cash crop.  However, such genes are foreign to the host plant.  This has led “green” organizations to oppose their use to produce “Frankenfoods” that raise human health issues, or at least have demanded the such food or food products be labeled as produced from “GMOs,” so that consumers can choose whether or not to consume them. Continue reading →

Posted in Miscellaneous, Uncategorized | Tagged , , , , , , , , | Leave a comment

Patent Law Developments 2015: A Quick Recapitulation

Posted on January 5, 2016 by Warren Woessner

iStock_000075593843_SmallThis is a guest post from Chisum Patent Academy.

Patent Law Developments 2015: A Quick Recapitulation
Donald S. Chisum
Co-Founder, Chisum Patent Academy

In terms of case law, legislation and other developments in patent law, calendar year 2015 had no first order block buster comparable to the Supreme Court’s 2014 Alice decision on patentable subject matter pertaining to computer implemented inventions or Congress’ 2011 enactment of the America Invents Act. Nevertheless, there were important decisions by both the Supreme Court and the Court of Appeals for the Federal Circuit that commanded the attention of every patent professional.

In terms of volume of case precedents by the Supreme Court and the Federal Circuit, 2015 equaled 2014 as the busiest years ever, each year having about 140 precedential decisions. Below [attached] is a quick review of the most significant of those precedents.

PatentLawYearinReview2015_DSChisum_rev4Jan2016 (1)

Posted in Miscellaneous | Tagged , , , , , , , , , , | Leave a comment

Top Patent Law Stories In 2015

Posted on December 30, 2015 by Warren Woessner

iStock_000077488719_SmallI will try to keep this post as brief as possible, since I posted at length on all of the stories. There was a lot of IP action in 2015 – much involving the Fed. Cir. and Supreme Court’s resolution of cases in progress in 2014. In no particular order, I pick:

1.  Ariosa v Sequenom. This Fed. Cir. decision that a method for isolating “cffDNA” from maternal blood is no more than a natural phenomenon was a big step backwards for the development of patent law in the area of “precision medicine” and clouds the future patent-eligibility of both natural products and methods of diagnosis and treatment. It is a pick to click with the Supreme Court. (There was also a PTO “July 2015 Update” of the December 2014 s. 101 Guidelines that really did not clarify anything.)

2.  Biosimilars Hit the Shelves. In April, the FDA finalized its biosimilars guidance and Sandoz soon launched the first biosimilar, a generic version of Neuprogen.

3.  Nautilus v Biosig. The Supreme Court redefined the “indefiniteness standard” of s. 112(2) so that a claim term must be reasonably certain to the POSA, not simply amenable to construction. In Dow v. Nova, this new standard compelled invalidation of the claims-in-suit. Continue reading →

Posted in Miscellaneous | Tagged , , , , , , , , , , | Leave a comment