Federal Court of Appeal Affirms Different Claims Can Have Different Utility for the Same Compound

In its brief September 15, 2016 decision in Teva Canada Limited v Novartis Pharmaceuticals Canada Inc, 2016 FCA 230, the Federal Court of Appeal (FCA) affirmed the Federal Court’s construction of the promise made in Novartis’ deferasirox EXJADE® patent (2015 FC 770, previously reported in E-TIPS® newsletter).

The FCA determined a single issue: “did the Federal Court err in its construction of the promise of the relevant patent?”  While the FCA agreed with Teva that the Federal Court erred in considering the abstract when construing the promise of the patent, it affirmed that “at law” different claims can have different utility for the same compound.  For example, the promise of the compound claims may be different from that of the use claims.  The FCA noted that “the promise of the patent doctrine will hold an invention to an elevated standard of utility ‘only where a clear and unambiguous promise has been made’”, and that where a patent’s validity is challenged on the ground of an alleged unfulfilled promise, the patent will be construed in favour of the patentee “where it can reasonably be read by the skilled person as excluding this promise”.

Summary By: Junyi Chen