Jurisprudence récente au Canada sur le “double patenting”

Voir la décision Bayer Schering Pharma Aktiengesellschaft v. Canada (Attorney General) 2009 FC 1249

[54]           The prohibition against double patenting involves a comparison of the claims rather than the disclosure, because the claims define the monopoly. There are two approaches as to determining whether there has been a double patenting: one is to consider whether the claims are identical or conterminous, an approach which is sometimes called the “same invention”; a second branch of the test is to consider whether the second patent is “obvious” or not “particularly distinct” from the first, based on the common knowledge of an ordinary workman as of the date of publication of the patent (Camco, paragraphs 63-75; Apotex v. Sanofi at paragraphs 94 to 115; Bayer AG v. Novopharm Ltd. at paragraphs 40-63; Eli Lilly Canada Inc. v. Apotex Inc., 2007 FC 455, [2008] 2 F.C.R. 636 at paragraph 359; Bristol-Myers Squibb Canada Co. v. Apotex Inc., 2009 FC 137, 74 C.P.R. (4th) 85 at paragraph 175).

 [55]           It is trite law that different types of claims exist in the pharmaceutical industry, namely product claims and process claims. Once a patent is obtained for a substance per se, no additional protection may be obtained for the same substance. However, as noted in Aventis v. Mayne at paragraph 76, it is possible to obtain a patent for the process by which the substance is made, independently of the patent on the substance per se. This type of patent is a valid patent and does not extend the statutory monopoly of the patent on the substance per se.

 [56]           The undisputed test for obviousness is whether at the date of the invention, an unimaginative skilled technician, in light of his general knowledge and the literature and information on the subject available to him on that date, would have been led directly and without difficulty to the invention (Proctor & Gamble Co. v. Beecham Canada Ltd. (1982), 40 N.R. 313, 12 A.C.W.S. (3d) 491 (F.C.A.)).

 [57]           In the case at bar, the Court finds that claims [L] to [P] in the Application are not inventive. Although claim [L] claims the same compound as claim [B] of the Parent Patent, it is not process-dependent like claim [B] of the Parent Patent, and although claims [F] and [P] cover the same subject matter as claim [L], […] [there is one difference]. As noted in the Commissioner’s decision at issue:

Claims [L] to [P] of the instant application claim the same compounds as are claimed in the [Parent Patent], with the only difference being that the compounds are claimed in process dependent form in the patent while there is no reference to a process in claims [L] to [P] of the application.

 The compounds recited in claims [L] to [P] are the same compounds that are claimed in the claims of the patent. Further, they are the same compounds produced by the processes recited in the remaining claims of the patent, such as the process recited in claim [L] of the [Parent Patent].

 [58]           The Parent Patent claims a process for a particular compound as well as a compound produced by a particular process, also known as a process-dependent compound, as required by the Patent Act at that time. All claims in the present Application depend on claim [L], which is a claim for a particular compound. There is no material difference between the compound in claim [L] of the Application and the compound in claims [L] and [B] of the Parent Patent. As such, the critical requirement of inventive ingenuity is not found here. The jurisprudence is clear that novelty and ingenuity are required to set aside an allegation of obviousness double patenting.

 [59]           Furthermore, the Parent Patent and the Application possess the same basic molecular structure. Given that the Parent Patent has been granted, claim [L] in the Application is not patentably distinct because the same compound is described in the Parent Patent […].

 [60]           The Court is therefore of the opinion that it was obvious to claim these processes and subject matter and these claims do not exhibit “novelty or ingenuity” as stated in Camco, above. As a result, I find that double patenting exists. For these reasons, the appeal is dismissed.

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