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11 CANADIANLAWYERMAG.COM/INHOUSE JULY 2017 zapine) or Pfizer's Xalatan (latanoprost) were invalidated in Canada for failing to uphold their end of the patent bargain de- spite their subsequent commercial success. Both patents were construed by the courts to claim medicines to treat chronic condi- tions, schizophrenia and glaucoma, respec- tively, having improved therapeutic success and fewer side effects than the state of the art. As is common in the pharmaceutical industry, both patents relied upon the doc - trine of sound prediction to establish utility. Both patents disclosed data demonstrating efficacy in the short term; yet neither dis- closed experimental evidence to support the construed promises of improved efficacy and reduced side effects in the long-term treatment of these chronic conditions. Con- sequently, the courts found that Lilly and Pfizer had not soundly predicted the con- strued utility when they filed their patent applications. Following invalidation of Eli Lilly's patents for the Zyprexa and Strattera drugs, Lilly launched a chapter 11 North American Free Trade Agreement challenge against the gov - ernment of Canada. Lilly claimed that the promise doctrine fundamentally changed Canada's utility requirement, exceeds pat- entability requirements of trading partners, contravenes Canada's international trade ob- ligations and discriminates against pharma- ceutical patents. On March 16, the tribunal unanimously dismissed Lilly's claims, finding instead that Canada's utility requirements are not dis- criminatory. The tribunal found that enforcing volun- tary statements of utility assures that the pub- lic receives its end of the patent bargain while also preventing overclaiming. Moreover, the specific disclosure requirements for patents where utility is based on sound prediction is the consideration an inventor pays for obtain - ing a patent without having proved actual utility as at the filing date of the patent ap- plication. Canada's patent utility requirements and the workability of the promise doctrine are currently before the Supreme Court of Canada in AstraZeneca Canada Inc v Apotex Inc, in litigation over the validity of Astra - zeneca's patent for the acid reflux medicine Nexium (esomeprazole). The court's deci- sion is pending and is hoped to give further authority to the scope of the utility require- ment in Canada. IH Discover a team that is committed to your success. With experts in trademark and patent law, Bereskin & Parr LLP provides practical and strategic solutions to help build and protect the intellectual property assets that are an integral part of your business. As Canada's top-tier IP firm, we consistently raise the benchmark for IP law. In the business of brilliance. Untitled-9 1 2017-06-06 3:20 PM

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