CA: jurisprudence récente: brevet invalidé pour manque de prédiction valable

Novopharm Limited v. Eli Lilly and Company, 2010 FC 915, (September 14, 2010)


[116]      It seems to me that it is beyond debate in Canada that where a patentee asserts that the utility of its invention has been demonstrated, it need not assert its supporting evidence in the patent.  In such a case ss. 27(3) of the Patent Act, R.S.C. 1985, c. P-4 requires only a full description of the invention and the means to work it:  see Consolboard v. MacMillam Bloedel, [1981] 1 S.C.R. 504 at 526, 56 C.P.R. (2d) 145, Pfizer Canada Inc. v. Canada (Minister of Health), 2008 FCA 108 at paras. 57 to 62, 67 C.P.R. (4th) 23 and Apotex Inc. v. Wellcome Foundation Ltd., 2002 SCC 77 at para. 70, 21 C.P.R. (4th) 499. 


[117]      In a case involving a claimed sound prediction of utility, it is equally beyond debate that an additional disclosure obligation arises.  According to Justice Binnie in AZT, above, this obligation is met by disclosing in the patent both the factual data on which the prediction is based and the line of reasoning followed to enable the prediction to be made.  This requirement to disclose the basis of the prediction in the patent specification was said to be “to some extent the quid pro quo” the patentee offers in exchange for the patent monopoly: see para. 70.  


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