PMPRB’S INTERPRETATION OF “PATENTEE” OVERLY BROAD

Two recent Federal Court decisions considered the definition of a “patentee” in the context of the mandate of the Patented Medicines Prices Review Board (PMPRB).

Section 2 of the Patent Act states that a “patentee” means the person for the time being entitled to the benefit of a patent.

With respect to Patented Medicines, the English version of Section 79(1) of the Patent Act states that a “patentee”, in respect of an invention pertaining to a medicine, means the person for the time being entitled to the benefit of the patent for that invention and includes, where any other person is entitled to exercise any rights in relation to that patent other than under a licence continued by subsection 11(1) of the Patent Act Amendment Act, 1992, that other person in respect of those rights.

In both decisions, Mr. Justice O’Reilly determined that the PMPRB’s conclusion that two manufacturers of generic pharmaceuticals fell within the definition of “patentee” was unreasonable and thus the applications for judicial review of the PMPRB’s decisions were allowed.

Sandoz Canada Inc v. Canada (Attorney General), 2014 FC 501

The generic manufacture Sandoz Canada Inc is a wholly-owned subsidiary of Novartis Canada Inc, which in turn is a subsidiary of Novartis AG.  Novartis AG is the owner of a number of relevant patents.  Novartis AG provides authorization for Sandoz to enter the market for specific drugs when Novartis AG loses it’s the market exclusivity – i.e. once other generics have entered the market. 

The PMBRB found that Sandoz, by virtue of its position as a subsidiary of Novartis, was a “patentee” and therefore its prices within the jurisdiction of the PMPRB.  Mr. Justice O’Reilly noted that “Sandoz generally operates in a market where no one holds a monopoly, and no one can take undue advantage of a monopoly position by charging excessive prices.”  Mr. Justice O’Reilly further stated that “Sandoz simply does not enjoy the special patent rights that inure to the benefit of the patent holder.  Accordingly, Mr. Justice O’Reilly found that the PMPRB’s conclusion that Sandoz is a “patentee” was unreasonable and therefore the PMPRB “does not have jurisdiction to review prices at which Sandoz, a company holding no patents and no monopolies, sells medicines. “

http://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/71655/index.do

Ratiopharm Inc. v. Canada (Attorney General), 2014 FC 502

The definition of “patentee” was also examined in the Federal Court (FC) decision Ratiopharm Inc. (now Teva Canada Limited) and Attorney General of Canada (2014FC502). Ratiopharm which sells generic drugs in Canada sold a generic equivalent of Ventolin HFA to pharmacies after having purchased it under contract from the patent holder, GlaxoSmithKline Inc. (GSK).  Under the contract with Ratiopharm, GSK retained all patent rights to its products.  The PMBRB found that Ratiopharm, by virtue of its contract with GSK was a “patentee” and therefore its prices within the jurisdiction of the Board.  Mr. Justice O’Reilly disagreed with the PMBRB and found that the PMPRB’s conclusion that Ratiopharm is a “patentee” was unreasonable. Mr. Justice O’Reilly further noted that the PMPRB “does not have jurisdiction to review prices at which Ratiopharm, a company holding no patents and no monopolies, sells medicines” and thus, allowed the application for judicial review of the PMPRB’s decisions.

http://ippractice.ca/files/2014FC502.pdf

Interesting aside…

Mr. Justice O’Reilly noted in both decisions that the French version of Section 79(1) “ties the definition of “patentee” more closely to the rights of the patent holder. It is a narrower definition than in the English version, which includes any person entitled to exercise any rights relating to a patent.”

This highlights the critical importance of reviewing both the English and French versions of the legislation when interpreting the statues.
 
By Claire Palmer and Kay Palmer

LANGUAGE POLITICS AND FRENCH SIGN WARS IN QUEBEC – ROUND 2

QUEBEC APPEALS ENGLISH TRADE-MARK DECISION, LANGUAGE WATCHDOG SEEKING TO BE UNLEASHED

As my colleague, Scott Miller, posted here on April 9, 2014 the Superior Court in Quebec ruled that the Quebec language watchdog, the Office Québécois de la Langue Française (OQFL), attempts to force retailer to change their signage to include French was contrary to the existing language laws of Quebec.

All of us here at MBM were confident that, with a newly elected federalist party in Québec City, the issue would end with this decision.

However, today it is being reported that the Government of Quebec is appealing the April 9^th decision. 
As we noted earlier, s.58 of the Charter of the French Language (French Charter), reads, “public signs and poster and commercial advertising must be in French” (translation). However, the French Charter Regulation (specifically sections 7(4) and 25(4)) permit English only packaging and signage for a “recognized trade-mark within the meaning of the Trade-marks Act, unless a French version has been registered”. Jurisprudence on these sections, however, has differentiated between trade-marks and trade-names, where non-french trade-names do not benefit from the exemption.

It has been accepted that the Federal Trade-Marks Act 'recognizes' both common law (unregistered) and registered trade-marks. Therefore, even unregistered trade-marks will benefit from the exemption in the French Charter Regulations.

The filing of this Appeal creates more uncertainty, for the short term, whether the OQFL will recognize unregistered trademarks or argue such marks are actually trade names not subject to the English use exception. 

As a precautionary measure, it may still be advisable to file for English trademarks to avoid the OQFL. If threatened about the legitimacy of whether an English word is a recognized trademark, it is answerable by noting that the English word is the subject of a pending trademark application. 

I would prognosticate that this matter may head all the way to the Supreme Court, but that would be just tempting fate.

By Jahangir Valiani