Smart & Biggar (JD Supra Canada)

On May 26, 2021, the Federal Court of Appeal issued its decision in Teksavvy Solutions Inc v Bell Media Inc et al, 2021 FCA 100, upholding the Federal Court’s order in Bell Media Inc. et al v Goldtv.biz et al., 2019 FC 1432 (the “Order”), which enjoined Canada’s main Internet Service Providers to block their subscribers’ access to certain piracy websites. This decision is another major victory in

On May 13, 2021, the government of Québec introduced Bill 96 with an intent to “strengthen” the provisions in the Charter of the French language (the French Charter). We do not know whether Bill 96 will be adopted and, if so, whether it will be passed in its current form. An amendment to the Regulation respecting the language of commerce and business (the Regulation) is also expected. In the...

Important Notice: On May 13, 2021, the Québec government tabled Bill 96 which aims to better protect the French language in the Province of Québec. While the contents of our firm’s French Language Requirements in Québec series reflect the current state of the law, the proposed legislation modifies certain provisions of the Charter of the French language pertaining to the language of commerce and...

Important Notice: On May 13, 2021, the Québec government tabled Bill 96 which aims to better protect the French language in the Province of Québec. While the contents of our firm’s French Language Requirements in Québec series reflect the current state of the law, the proposed legislation modifies certain provisions of the Charter of the French language pertaining to the language of commerce and...

On April 30, 2021, the Federal Court issued its decision relating to the validity of three patents relating to Pfizer’s PREVNAR 13, a 13-valent pneumococcal polysaccharide protein conjugate vaccine: Merck v Wyeth, 2021 FC 317. Merck sought to impeach Wyeth’s Canadian Patent Nos. 2,604,363 (363 Patent), 2,650,056 (056 Patent) and 2,803,111 (111 Patent) on the basis that Merck believed that Wyeth (n

It is a fundamental principle of trademark law that no business should be able to prevent others from using apt language to accurately describe their goods and services. For this reason, clearly descriptive trademarks are typically not registrable in Canada (nor in many other countries) and it can be very difficult to protect such marks. In spite of this principle, brand owners frequently adopt...

Until just a few years ago, most Canadian brand owners doing business abroad had limited options for protecting their trademarks outside of Canada. They were obliged to file separate applications in each country of interest, except in the few areas where a regional application is available (such as for the European Union).

On Monday, May 3, 2021, the Canadian Trademarks Office published two new Practice Notices with respect to Requests for expedited examination and Measures to improve timeliness in examination intended to improve delays in the processing of trademark applications. With the time between filing and examination currently surpassing 30 months, applicants will largely welcome the news of the initiatives,

The following provides an overview of the many developments regarding biosimilars in Canada (approvals, pending submissions, regulatory, litigation and market access) that have taken place since our last update in August 2020. Biosimilars approved in Canada - Since our last update in August 2020, Health Canada approved 11 biosimilars of 5 innovator products. This includes approval of 2...

Revised compliance timelines for Grandfathered and Gap medicines - On April 16, 2021, in view of COVID-19, the Patented Medicine Prices Review Board (PMPRB) reversed its position on compliance timelines for Grandfathered and Gap medicines: compliance with the Maximum List Price for these medicines will now be assessed after two filing periods... In the result, the operative date for assessing

Canada has established itself as an attractive jurisdiction in which to do business. It has a stable economy, a high-income population, a business-friendly environment and has long led the G7 in growth. It also has especially strong economic ties and an extensive trading relationship with its larger neighbor, the United States, as a result of which many view the two countries as sharing similar...

In the first appellate decision relating to Certificates of Supplementary Protection (CSPs), the Federal Court of Appeal has allowed the appeal of the Minister of Health (the Minister), setting aside the lower court judgment. In a unanimous decision released on April 14, 2021, the Federal Court of Appeal in Canada (Health) v Glaxosmithkline Biologicals S.A., 2021 FCA 71 found that the Federal...

The Federal Court recently dismissed Merck’s application for judicial review of Health Canada’s refusal to add Canadian Patent No. 2,830,806 (806 Patent) to the Patent Register, holding that Health Canada’s decision was justified, intelligible and transparent, and therefore reasonable: Merck Canada Inc v Canada (Health), 2021 FC 345. The 806 Patent issued on May 12, 2020, and contains claims...

On April 24, 2021, proposed Regulations Amending the Patented Medicines (Notice of Compliance) Regulations were published (proposed PMNOC amendments). The proposed PMNOC amendments relate to the 2019 proposed Regulations Amending the Food and Drug Regulations (Improving Access to Generics) (proposed FDR amendments)... which would allow a generic manufacturer to file an abbreviated new drug...

As previously reported... on September 16, 2020, Canada’s Minister of Health approved an Interim Order Respecting the Importation, Sale and Advertising of Drugs for Use in Relation to COVID-19 (the ISAD Interim Order), which introduced a new pathway to expedite the authorization for importing, selling and advertising of COVID-19 drugs. As of April 15, 2021, Health Canada had granted seven (includi

Employees are the source of some of their employer’s most valuable intangible assets, that is, intellectual property assets. For this reason, it is usually in a business’s best interest to ensure their ownership of intellectual property assets generated by their employees. The rules that apply to employer-employee relationships vary greatly between copyright, patents and industrial designs. Any...

On March 12, 2021, Health Canada released for consultation its new Draft Guidance Document on Electronic media in prescription drug labelling. The draft Guidance sets out Health Canada’s expectations for drug manufacturers distributing information about a prescription drug through an electronic platform linked to the drug’s label. Comments may be submitted until May 7, 2021.

As previously reported, in the final decision released under the pre-amended Patented Medicines (Notice of Compliance) Regulations (Regulations), the Federal Court granted a prohibition order relating to Canadian Patent No. 2,661,422 (422 patent), Apotex, and its abiraterone acetate product (Janssen’s ZYTIGA). Apotex appealed.

Consultation results - On March 17, 2021 the Patented Medicine Prices Review Board (PMPRB) announced the result of the Consultation opened in January... regarding the definition of “Gap Medicine” and compliance timelines for Grandfathered and Gap Medicines. As proposed, the Guidelines will be amended such that a Gap Medicine will be defined as a medicine for which a Drug Identification...

The Federal Court of Appeal (FCA) recently dismissed an appeal by Apotex from a decision of the Federal Court... holding that the claims of Canadian Patent No. 2,527,646 (646 patent) were valid, and prohibiting the Minister of Health from issuing a Notice of Compliance (NOC) to Apotex for its lisdexamfetamine (LDX) product (Shire’s VYVANSE) until the expiry of the 646 patent: Apotex Inc v Shire...

On March 8, 2021, the Ontario Superior Court of Justice granted Eli Lilly’s (Lilly) motion for summary judgment and dismissed Apotex’s claims under the Statutes of Monopolies, Trademarks Act, and common law conspiracy relating to Apo-Olanzapine: Apotex Inc. v Eli Lilly Canada Inc., 2021 ONSC 1588. The action was one of several novel claims by Apotex seeking damages pursuant to the Ontario and...

On September 30, 2020, the Federal Court dismissed an application by Catalyst Pharmaceuticals Inc (Catalyst) and KYE Pharmaceuticals Inc (KYE) (collectively, the applicants) for an interlocutory injunction to stay the decision of the Minister of Health granting Médunik Canada (Médunik) a notice of compliance (NOC) for its amifampridine product, RUZURGI: Catalyst and KYE v Canada (Attorney General)

Some foreign brand owners may be surprised to learn that in Canada, when seeking to protect design (or figurative) marks, it is sometimes better to register marks in black and white in cases where the marks would normally be displayed in colour. Broader protection can typically be secured in Canada by registering design (or figurative) marks in black and white as opposed to including a colour...

The Canadian Agency for Drugs and Technologies in Health (CADTH) published an interesting new report on January 29, 2021 about Health Technology Trends to Watch. The report identifies the following list of emerging trends with medical devices and other health technologies: 3-D printing and bioprinting - 3-D printing is a process of making three dimensional objects from a digital design file....

The importance of medical diagnostic technologies has been brought to the fore with the COVID-19 pandemic. Rarely does a day pass when the media does not report on matters of approval and availability of tests, testing protocols and capacity. As of March 6, 2021, Health Canada had approved 60 COVID-19 testing devices, and 111 applications for authorization were under evaluation. At the same time,

As previously reported, the Canadian Intellectual Property Office (CIPO) began an initiative to accept telephone amendments for simple prosecution issues in May 2020.  Considering the initiative’s success in helping CIPO improve efficiency and reduce its backlog, CIPO has decided to expand the list of issues for which telephone amendments are acceptable. As of February 19, 2021, Examiners...

Important Notice: The Québec government has announced its intention to modify the French Charter in order to better protect the French language in Québec. We do not know precisely when these changes will come into force, nor what they will entail. That said, we know that the Québec government wishes to announce these changes sometime in 2021. As soon as we know more, our firm will issue a...

Important Notice: The Québec government has announced its intention to modify the French Charter in order to better protect the French language in Québec. We do not know precisely when these changes will come into force, nor what they will entail. That said, we know that the Québec government wishes to announce these changes sometime in 2021. As soon as we know more, our firm will issue a...

As reported previously... the Federal Court had found that Kennedy’s patent for infliximab (Janssen’s REMICADE) was valid and infringed by Hospira’s biosimilar INFLECTRA (“Trial Decision”). As reported... the Federal Court of Appeal remitted issues of anticipation and obviousness for reconsideration to the trial judge.

On December 22, 2020, the Federal Court issued its decision holding that section 8.2 of the Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) does not impose a limitation period either the same as or comparable to the 45-day limitation period for commencing an action under subsection 6(1): Merck v Sandoz and Pharmascience, 2020 FC 1180. Background - Merck commenced...