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and claims that would be expected to block competitors from replicating its drug. The same judge ruled in four other patent cases that patent eligibility should be broader than a "machine or transformation test," all of which were appealed and overturned, which could benefit Myriad in the long run. Christopher Robinson, a partner at Smart & Biggar/Fetherstonhaugh in Vancouver, says the Myriad case is troubling for lawyers who practise in the area. "That was certainly one of the cases that caught the attention of lawyers who deal with these types of clients," he says. Yet there have been several other cases in the U.S. courts that have been attention-grabbing, such as Pfizer Inc. v. Apotex Inc., wherein the court rendered one of Pfizer's patents invalid based on the fact that the components of the molecule were "obvious." A similar case was heard by the Supreme Court of Canada in Apotex Inc. v. Sanofi- Synthelabo Canada Inc., where the court addressed a section patent, which is one involving a drug for which the descrip- tion is generally described and claimed in a prior patent. At the Federal Court, the judge in the matter concluded that, based on the evidence, the respondents' discovery was truly inventive and that none of the appellant's attacks on the patent should succeed. The SCC deter- mined in 2008 that selection patents are not, per se, invalid, and refined the tests for obviousness and anticipation. It also clarified and articulated the applicabil- ity of the "obvious to try" test as part of the obviousness analysis in Canada, and introduced the determination of the "inventive concept" of a claim as part of the obviousness analysis. Robinson says since those cases, the Canadian Patent Office has changed its rules and now requires test data to accompany a patent application for bio- technology drugs. "They're demanding to see test data in the patent applica- tion itself to demonstrate the invention works in the way the application says it should work," he says. The initiative sets Canada apart from ntitled-3 1 other jurisdictions because the infor- mation is highly proprietary, so it is one step backwards for the country in the context of encouraging research and investment, says Robinson. "This is an issue that greatly affects biotechnol- ogy and pharmaceuticals especially and there have already been applications that have been rejected as a result of this requirement," he says. Ultimately, he says he is hopeful companies that have had their patents rejected will sue, so the courts can address the issue and hopefully provide a decision that strikes a good balance so Canada can continue to be a leader in the field of biotechnology research and development. You only get one shot No best-of-three when it comes to patent and trademark prosecution. Just one shot that is going to have lasting repercussions. At Dimock Stratton, we've found over the years that fine-grained focus on detail, technical mastery and rigorously accurate language – backed up by broad experience – are key to ensuring that shot's on target. When you're looking for never-miss patent and trademark protection, look to the team at Dimock Stratton. Dimock Stratton llp experience. results. 20 Queen W. 32nd fl, Toronto | 416.971.7202 | dimock.com www.CANADIAN Lawyermag.com M AY 2011 49 4/8/11 9:47:27 AM