We previously reported in E-TIPS® Newsletter that the Federal Court of Appeal (FCA), in Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 (Mylan FCA), declined to determine an appropriate date for assessing obviousness-type double patenting, although it rejected the publication date of the later patent as being a relevant date for the analysis.  Mylan FCA concerned Eli Lilly’s CIALIS® (tadalafil) and Canadian Patent No. 2,226,784 (the 784 Patent). 

Recently, Apotex asked the FCA to revisit the issue of obviousness-type patenting and the 784 Patent in Apotex Inc v Eli Lilly Canada Inc, 2016 FCA 267, affirming 2015 FC 875.  The FCA reviewed the Supreme Court of Canada decision in Whirlpool Corp v Camco Inc, 2000 SCC 67 (Whirlpool) on double patenting.  The FCA noted that Whirlpool did not decide the relevant date for assessing obviousness-type double patenting and this “remains an open question”.  The FCA held that there was no reason to depart from Mylan FCA and dismissed Apotex’s appeal.

In obiter, the FCA commented that there “may be new ways to approach” the relevant date for an obviousness-type double patenting analysis:

“…Perhaps, the Court, having construed the claims of each of the patents with the assistance of the persons skilled in the art, simply compares the claims and decides whether the later claims are patentably distinct from the earlier claims on the basis of the insights which it has gained in the course of the construction of the patents. […] This is not to argue that this approach is any more correct than the comparison date approach but rather that, going forward, parties should not feel that they are locked into the framework chosen by the parties in these cases.”

Summary By: Junyi Chen

E-TIPS® ISSUE

16 11 30

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