Date: 19981124
Docket: T-1628-98
MONTREAL, QUEBEC, THIS 24th DAY OF NOVEMBER 1998
PRESENT: THE HONOURABLE MR. JUSTICE ROULEAU
BETWEEN:
PHARMASCIENCE INC.
Applicant
AND:
THE COMMISSIONER OF PATENTS
Respondent
-and-
G.D. SEARLE & CO.
Respondent
Motion on behalf of Applicant for:
| (a) An Order granting a stay of the Respondent, the Commissioner of Patents, from issuing Canadian Patent Application No. 2, 082, 944 (the "Patent Application") |
| (i) pending the decision being rendered in this Application (the "Decision"); and |
| (ii) if necessary, until after the appeal of the Decision in the Application (the "Appeal") is heard and determined; |
| (b) In the alternative to (a), an Order granting an interim stay of the Commissioner of Patents from issuing the Patent Application pending the final disposition of the motion for the relief sought in subparagraph (a) above; |
| (c) An Order granting the costs of this motion; and |
| (d) An Order granting such further and other relief as to this Honourable Court may deem just. |
[Sections 18.2, 50(1) of the Federal Court Act, Rule 398 of the Federal Court Rules, 1998, Sections 27.1, 38.2, 34.1, 43, 48.1, 53, 55, 60 Patent Act, Rules 30, Patent Rules]
REASONS FOR ORDER
ROULEAU, J.
[1] This application came before me at Montreal, on November 23, 1998.
[2] On November 19, 1998 Pinard J. of this Court entertained an application for Judicial Review in which the Applicant had sought to attack and set aside certain procedural steps undertaken by the Commissioner of Patents in respect of the prosecution and approval of a Patent application submitted by the Respondent G.D. Searle & Co.
[3] The Applicant alleges that a series of actions taken by the Commissioner were contrary to the proper prosecution of the Patent application and that the commissioner should be prohibited from completing the process and be restrained from issuing a Patent which, it is suggested, is imminent.
[4] Pinard J. has not yet rendered his decision on the merits and the Applicant now asks the Court for an Order granting a stay of the Respondent Commissioner of Patents from issuing the patent pending the decision in the application for Judicial Review heard by Pinard J.; further to allow an additional stay from the Order of Pinard J. should an appeal arise therefrom.
[5] It is submitted by the Applicant that they have met the tripartite test in order for the Court to grant a stay.
[6] As I see it the remedy sought in this application amounts to prohibition; the Commissioner would be refrained from issuing the Patent.
[7] Denault J. in September of this year entertained an application from the same party in which an application to stay was sought vis à vis the Commissioner of Patents pending the resolution of the application for Judicial Review.
[8] Denault J. was not convinced that this Court had the authority to bring the Commissioner's process to a halt. He was also satisfied that the Applicant Pharmascience Inc. had not met the test for irreparable harm.
[9] It is submitted in this application that should I not grant the stay and the Patent issue before Pinard J. renders his decision, the entire exercise would be rendered moot or nugatory; also, that once the patent issued the clients pursuit on the alleged defective procedure adopted by the Commissioner allowing the Patent to issue could not be set aside or reversed; that the only remaining recourse would be to attack the claims and scope of the patent and this could not achieve the desired result.
[10] No additional evidence on irreparable harm was adduced during this application and I would be remiss to make a finding of irreparable harm in light of the determination already made by my brother Denault J.
[11] Also I am not convinced that this application, though not exactly as that entertained by Denault J., is not a circumspect attempt to achieve the same remedy or result which was already rejected in the previous application to stay. In fact, once again, the Court is asked to interfere in the Commissioner of Patents process and procedure.
[12] Finally, should Pinard J. determine in his Judicial Review that the Commissioner acted beyond the scope of his authority or outside the bounds permitted by the Regulations, I am not persuaded that this Court could not set aside the issuance of the Patent. I feel comforted in making this determination after reading Mahoney JA in Apotex Inc. v. The Attorney General of Canada et al 50 C.P.R. at 179 where he wrote that the Court had the power to set aside a Notice of Compliance, a fortiori why not a Patent should it be determined that the Commissioner was not in compliance.
[13] Application denied; costs to the Respondents in any event of the cause.
Paul U.C. Rouleau
Judge
FEDERAL COURT OF CANADA
TRIAL DIVISION
Date: 19981123
Docket: T-1628-98
BETWEEN:
PHARMASCIENCE INC.
Applicant
AND:
THE COMMISSIONER OF PATENTS
Respondent
-and-
G.D. SEARLE & CO.
Respondent
REASONS FOR ORDER
FEDERAL COURT OF CANADA
TRIAL DIVISION
NAMES OF COUNSEL AND SOLICITORS ON THE RECORD
COURT FILE NO.: T-1628-98
STYLE OF CAUSE: PHARMASCIENCE INC.
Applicant
| AND: |
| THE COMMISSIONER OF PATENTS |
Respondent
-and-
G.D. SEARLE & CO.
Respondent
PLACE OF HEARING: Montreal (Quebec)
DATE OF HEARING: November 23, 1998
REASONS FOR ORDER OF ROULEAU, J.
DATED: November 24, 1998
APPEARANCES:
Ms. C. Hitchman &
Ms. P. Bremner for the Applicant
Mr. J. Spencer for the Respondent
THE COMMISSIONER OF PATENTS
Mr. D. Aitken for the Respondent
G.D. SEARLE & CO.
SOLICITORS OF RECORD:
HITCHMAN & SPRIGINGS
Toronto (Ontario) for the Applicant
Morris Rosenberg for the Respondent
Deputy Attorney General of Canada THE COMMISSIONER OF PATENTS
OSLER, HOSKIN & HARCOURT for the Respondent
Ottawa (Ontario) G.D. SEARLE & CO.