American Home Products v. I.C.N. Canada, (1985) 61 N.R. 141 (FCA)

• Judge: Heald, Urie and Stone, JJ.
• Court: Federal Court of Appeal (Canada)
• Case Date: July 03, 1985
• Jurisdiction: Canada (Federal)
• Citations: (1985), 61 N.R. 141 (FCA)

Am. Home Products v. ICN Can. (1985), 61 N.R. 141 (FCA)

MLB headnote and full text

In The Matter Of An Application Under Sub-section (4) of Section 41 of the Patent Act for the Grant of a Licence

American Home Products Corporation (appellant) v. ICN Canada Limited (respondent)

(No. A-888-83)

Indexed As: American Home Products v. I.C.N. Canada

Federal Court of Appeal

Heald, Urie and Stone, JJ.

July 3, 1985.

Summary:

The Commissioner of Patents granted ICN Canada a licence pursuant to s. 41 (4) of the Patent Act of three patents owned by American Home Products. American Home Products appealed. The Federal Court of Appeal dismissed the appeal with respect to the granting of the licence but referred the matter of fixing of the royalty back to the Commissioner.

Patents of Invention - Topic 5706

Compulsory licences - Setting aside, grounds - A patent holder alleged that a defect in an application for a compulsory licence was grounds for setting aside the compulsory licence - The Federal Court of Appeal stated that the consequences of the failure to comply with a Patent Rule is a matter solely within the discretion of the Commissioner and is not subject to review on appeal (see paragraph 10).

Patents of Invention - Topic 5626

Compulsory licences - Granting of, conditions precedent - The Federal Court of Appeal stated that a commitment from a licensee to market the medicine at the lowest possible price is not a condition precedent to the granting of a licence (see paragraph 11).

Patents of Invention - Topic 5627

Compulsory licences - Granting of, conditions - The Federal Court of Appeal affirmed that the granting of a compulsory licence is not conditional upon a commitment from the licensee to actually market the medicine (see paragraph 12) - The court stated that there is no statutory requirement "that any applicant prove anything to entitle him prima facie to the licence ..." (see paragraph 13).

Patents of Invention - Topic 5745

Compulsory licences - Royalties, fixing of - The Federal Court of Appeal referred to matters on which the Commissioner should receive evidence before fixing a royalty payable to the patentee (see paragraphs 16 to 18).

Cases Noticed:

American Home Products Corporation v. Commissioner of Patents (1970), 62 C.P.R. 155, folld. [para. 4].

Lilly v. STV Chemicals Limited (1973), 9 C.P.R.(2d) 17, folld. [para. 4].

American Home Products Corporation v. Commissioner of Patents (1973), 71 C.P.R.(2d) 9, folld. [para. 4].

Smith, Kline & French Laboratories Ltd. v. Frank W. Horner Ltd., 79 C.P.R.(2d) 1, refd to. [para. 10].

Hoffmann-La Roche Ltd. v. Frank W. Horner Ltd., 64 C.P.R. 93, refd to. [para. 11].

Hoffmann-La Roche Ltd. v. Delmar Chemicals Ltd., 27 Fox Pat. Cases 178, affirmed S.C.C., 30 Fox Pat. Cases 152, refd to. [para. 13].

Parke, Davis and Co. v. Fine Chemicals of Canada, Ltd., [1959] S.C.R. 219, refd to. [para. 14].

Parke, Davis and Co. v. Fine Chemicals of Canada, Ltd, 18 Fox Pat. Cases 125, refd to. [para. 16].

Beecham Group Ltd. v. Frank W. Horner Ltd. (1974), 13 C.P.R.(2d) 5; 1 N.R. 366, dist. [para. 17].

Merck & Co. Inc. v. S. & U. Chemicals Ltd. et al., 4 C.P.R.(2d) 193, dist. [para. 17].

Statutes Noticed:

Patent Act, R.S.O. 1970, c. P-4, sect. 41(4) [para. 11].

Counsel:

I. Goldsmith, Q.C., and B. Edmonds, for the appellant, American Home Products;

I.M. Hughes, for the respondent.

This appeal was heard by Heald, Urie and Stone, JJ., of the Federal Court of Appeal at Toronto, Ontario on June 18, 1985.

The judgment of the Federal Court of Appeal was delivered by Heald, J., at Ottawa, Ontario on July 3, 1985.