Apotex Inc. v. Wellcome Foundation Ltd.
T-3197-90 / T-2983-93 / T-2624-91
Tremblay-Lamer J.
13/5/96
26 pp.
Motion to strike from pleadings names of two scientists listed as inventors on basis of: (1) R. 419; and (2) issue estoppel-Pleadings submitted by Apotex and Novopharm alleging Wellcome Inc. scientists not making invention; however, subsequent admissions by Apotex and Novopharm recognizing two Wellcome scientists also inventors-Positive finding of admission-Appropriate naming of inventors constituting material allegation capable of rendering patent invalid and must be determined at trial-Possibility of wilful or misleading misnaming of inventor relevant issues not to be decided during pre-trial motion-Pleadings not clearly meeting R. 419 criteria; motion to strike based on R. 419 denied-Wellcome also submitting allegation of inventorship to be estopped on basis issue clearly decided in U.S.A.-Inventorship issue not to be estopped as American courts not hearing evidence from scientists-at-issue named by Apotex and Novopharm facing strong case of solicitor- client cost if, as in U.S.A., Court finding no legally sufficient evidentiary basis of any inventive contribution from Apotex and Novopharm scientists-Wording of American claims and Canadian claim different-Issues under American patent law and Canadian patent law different: reasonable basis for sound prediction not legally relevant in U.S.A. but relevant in Canada (Monsanto Company v. Commissioner of Patents, [1979] 2 S.C.R. 1108)-Motion to strike on basis of issue estoppel denied-Wellcome also submitting new use for purposes of medical treatment of known substance cannot be claimed as invention (Tennessee Eastman v. Commission of Patents, [1974] S.C.R. 111)-Whether patent "invention" important element of attack to validity of patent to be decided at trial; whether patent method of treatment claim factual question to be decided at trial-Case at bar distinguished from Merck & Co. v. Apotex Inc. (1994), 59 C.P.R. (3d) 133 (F.C.T.D.), holding fact ingredients of formulation of patent well-known having no bearing on validity of invention, on grounds compound claims not embodied in same patent; thus issue whether formulation can be claimed in absence of corresponding compound claim remaining open for trial judge-Lone fact scientists collecting experimental data insufficient to suggest inventorship-Twofold test applied with regards to allowing pleadings: (1) should assist in determination of real questions in controversy; and (2) will create no prejudice to opposing party with respect to discovery or amendment of preparation for trial-Amendments allowed in part-Federal Court Rules, C.R.C., c. 663, R. 419.