Canadian men of a certain age have been emailing this Kat all afternoon with the exciting news, littered with obvious puns, hackneyed jokes and not a few unconscious revelations, that Pfizer's Viagra patent
[that's funny, says Merpel, I could have sworn Viagra was a registered trade mark, not a patent ...] has just been invalidated by the Supreme Court of Canada for insufficiency of disclosure. Not being a Canadian, and having received a
lovely guest post from one of his most valued Canadian patent friends so recently that he was embarrassed to ask a favour of him so soon thereafter, the Kat has been assisted in reporting this decision by the kindness of
fellow blogger Howard Knopf (katpat!), who tells him as follows:
 |
Hector the Mandarin Fish
couldn't help feeling he was
illustrating the wrong blog post |
[Important Katnote: it appears that all legal articles, case notes and blogposts about Viagra and erectile dysfunction are supposed to be humorous, full of allegedly witty double-entendres and cunning little comments that generally amuse the writer more than the reader. The following text has been prepared without any such additions, in order that the reader can decide whether news items on Viagra are better with them or without them. An earlier draft of this post was laced with fish puns, just to see if it could be done. It was dreadful].
"The Viagra patent has been ruled invalid by the Supreme Court of Canada for insufficiency of disclosure; it seems the there was concealment of the fact that it was sildenafil that was the effective compound - among many others in the patent - for treating ED. Further research beyond what was disclosed was required to identify the true invention. Pfizer did not disclose the useful compound.
Giving judgment for the Court, LeBel J said:
[80] I would not make too much of the fact that Claim 1 included over 260 quintillion compounds. The practice of cascading claims — although it may, as in this case, result in claims that are overly broad — is a common one that does not necessarily interfere in every case with the public’s right to disclosure. The skilled reader knows that, when a patent contains cascading claims, the useful claim will usually be the one at the end concerning an individual compound. The compounds that do not work are simply deemed invalid. In accordance with s. 58, any valid claim — in this case, Claim 7 — survives despite the existence of invalid claims. However, the public’s right to proper disclosure was denied in this case, since the claims ended with two individually claimed compounds, thereby obscuring the true invention. The disclosure failed to state in clear terms what the invention was. Pfizer gained a benefit from the Act — exclusive monopoly rights — while withholding disclosure in spite of its disclosure obligations under the Act. As a matter of policy and sound statutory interpretation, patentees cannot be allowed to “game” the system in this way. This, in my view, is the key issue in this appeal. It must be resolved against Pfizer.
Here's the decision, Teva Canada Limited v Pfizer Canada Inc., Pfizer Inc., Pfizer Ireland Pharmaceuticals, Pfizer Research and Development Company N.V./S.A. and Minister of Health, Canadian Generic Pharmaceutical Association and Canada’s Research-Based Pharmaceutical Companies Interveners, in full.
There is lots of language in the judgment about the quid pro quo of the patent system.
According to Reuters, Pfizer has previously successfully defended patent lawsuits from Teva in the United States, Spain, Norway and New Zealand".
This note is short enough to alert readers to the decision while not pre-empting subsequent blog posts which review the decision in greater detail.
