Canadian Lawyer InHouse

SEPTEMBER 2017 10 INHOUSE News Roundup A roundup of legal department news and trends AstraZeneca failed in its attempt to stop the minister from giving a notice of compli- ance to Apotex to sell the generic version of the drug, which then led to AstraZeneca go- ing after Apotex for patent infringement. Apotex responded by trying to have the patent impeached. The Federal Court agreed with Apotex, saying the patent was invalid because "ap - plying the promise of the patent doctrine ('Promise Doctrine'), it promised more than it could provide." This finding was upheld by the Federal Court of Appeal. However, the SCC said the promise doc - trine was not the right way of determining "whether the utility requirement of s. 2 of the Patent Act is met." The SCC ultimately ruled that AstraZen- eca's appeal is allowed and the patent is valid. "The effect of the Promise Doctrine to deprive such an invention of patent protection if even one 'promised' use is not soundly predicted or demonstrated is punitive and has no basis in the Act. Furthermore, such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly. . .," said the ruling. "To invalidate a patent solely on the basis of an unintentional overstatement of even a single use will discourage a patentee from disclosing fully, whereas such disclosure is to the advantage of the public." John Norman, head of the life sciences group and a patent litigator at Gowling WLG (Canada) LLP in Ottawa, says the SCC ruling is important because "many pat - ent challenges allege that the patent [in] ques- tion is invalid for failing to meet the promise of the patent." "Now that the Supreme Court of Canada has rejected this doctrine, these challenges are not legally valid," says Norman. "Moreover, many patents in the past have failed for failing to meet the promise of the patent. Moving forward it will be interest - ing to see how companies will seek to ad- dress previous rulings that were based on an invalid doctrine." Norman says the ruling is a favourable development for innovation in the country. "Right now, a lot of innovators are nervous about Canada and especially when it comes to patents, there's a certain degree of uncer - tainty about whether some patents that have been upheld around the entire world have been invalidated in Canada. Everywhere else they've been just fine," he says. "So, the innovators are looking at Cana - da, saying, well, you know, this is a country that we invest research money in, we invest time and energy in, and they're invalidating our patents, so do we want to be part of that bio-tech ecosystem?" Norman says the ruling will help address uncertainty. "If the patent system is like the rest of the world, it gives you certainty. With certainty comes inventions, and with inventions comes . . . investments in research and development, and that then causes pharmaceutical compa - nies to look at small Canadian companies, and say, 'Oh look, this is a new company that's doing some neat things, we're going to invest in Canada.'" He says there are other patents that have failed based upon the promise doctrine. "The court looked at it, and said, 'You know what? This just doesn't make sense. There's no basis in Canadian law for this promise doctrine, it's inconsistent with the Patent Act, we're getting rid of it,'" says Norman. "If Canada is being viewed as being a fair country . . . then big pharmaceutical compa - nies will invest time, money and research into this country. If Canada is viewed as an unfair patent country, then they're going to bring their research dollars elsewhere to a jurisdic- tion that is more comfortable," he says. IH Sukanya Pillay resigns as executive director, GC of CCLA T he Canadian Civil Liberties Associa- tion has announced the departure of executive director and general counsel, Sukanya Pillay. In its Summer Highlights newsletter, the CCLA announced that Pillay resigned effective June 30 to move to Windsor, Ont. with her family. "We thank Sukanya for her many valuable con - tributions to the CCLA over many years and wish her well," read the top item in the newsletter. Despite the official date of her departure being late June, Aug. 8 was the first day it was publicly announced that Pillay had left the organization. Noa Mendelsohn Aviv, who has directed the CCLA's expression and equality programs since 2005, is acting executive director. "I loved working with CCLA, and everything it represents," Pillay said. "But Windsor presented a better context for me and my family and career opportunities I wished to pur - sue." Pillay joined the CCLA as director of the organization's national security program in 2009 and became executive director and GC in 2014. Prior to her work with the CCLA, she was a full-time faculty member of the University of Windsor Faculty of Law for five years. Since its creation in 1964, the CCLA has had three leaders: Alan Borovoy who served as GC until 2009; Nathalie Des Rosiers; and Pillay, who took on the leadership role in 2014. Pillay had been serving as interim GC since August 2013, when Des Rosiers left. During Pillay's tenure, the CCLA challenged the Personal Information Protection and Electronic Documents Act, fought to end segregation in prisons by challenging the Cor - rections and Conditional Release Act and demanded more state accountability. The CCLA declined to provide comment on Pillay's departure as Aviv was out of the office the week of the announcement. IH

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