A Canadian patent has been revoked in Canada after it was invalidated by the Supreme Court of Canada. The Viagra patent belonged to Pfizer Canada Inc. The court ruled that at the time of filing the applicant knew that Sildenafil was the main compound which helped patients with erectile dysfunction but Pfizer chose not to tell about that in the description. Thus, Court said that if there was no quid (no written disclosure) than there can be no quo (no protection). Invalidation of this patent will lead to availability of generic version of blue pills in the market very soon. Teva Canada Ltd after winning this case has even posted on the website which states that they are introducing “a generic alternative to Viagra.”
CASE FACTS
· Pfizer filed for a patent for Viagra in 1994, which was set to expire in 2014.
· Teva Canada Ltd (division of Teva Pharmaceuticals) filed a case against Pfizer Canada Inc saying that Pfizer’s patent for Viagra was invalid.
· The ground on which the patent was said to be invalid was that Teva accused Pfizer of hiding information while filing the patent.
· Teva said that Pfizer knew that Sildenafil had much more activity than other compounds listed (list of 260 quintillion chemical compounds named) in the patent for erectile dysfunction but they didn’t disclose it in the patent.
· Lower courts had favored Pfizer in this case but Supreme Court of Canada said that Section 27 (3) of the Patents Act says that:
(3) The specification of an invention must
(a) Correctly and fully describe the invention and its operation or use as contemplated by the inventor.
(b) Set out clearly the various steps in a process, or the method of constructing, making, compounding or using a machine, manufacture or composition of matter, in such full, clear, concise and exact terms as to enable any person skilled in the art or science to which it pertains, or with which it is mostly closely connected, to make, construct, compound or use it.
(c) In the case of a machine, explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle.
(d) In the case of a process, explain the necessary sequence, if any, of the various steps, so as to distinguish the invention from other inventions.
COURT FINDINGS/DECISIONS
“Pfizer had the information needed to disclose the useful compound and chose not to release it. Even though Pfizer knew that the effective compound was Sildenafil at the time it filed the application, it limited its description,” Justice Louis LeBel wrote in the decision.
· And on the basis of evidences provided by Teva Canada Ltd, court found out that Pfizer did knew about Sildenafil to be an active constituent for treating erectile dysfunction.
· Court also found out that Pfizer deliberately hided this fact while filing for the patent. Thus court ruled in the favor of Teva saying that Pfizer didn’t complied with Section-27 of Patents Act.
· In the end court invalidated Viagra patent of Pfizer with a 7 to 0 decision (all judges having same judgment).
· Court also asked Pfizer to give Teva’s court costs.
CONCLUSION
Another good decision given by a Supreme Court of Canada showing off that the courts are very serious about intellectual property protection and the cases related to it. Court took their time and analyzed each and every evidence and in the end gave a decision in which all judges were of the same opinion that Pfizer did hide the information while filing the patent. Now lower cost generic versions will be available in the market for the drug which will give competition to Pfizer’s Viagra drug.
This decision made one thing clear that it is not necessary for a patent to sufficiently disclose information even if it has been approved by the patent office. Thus from next time if any lawyer or prosecutor wants to invalid a patent then they can even check if the patent discloses all the information or not.
