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article imageCanadian Supreme court rules Viagra patent invalid

By Ken Hanly     Nov 8, 2012 in Business
Ottawa - Teva Canada won an appeal before the Supreme Court of Canada which invalidated the Pfizer patent for Viagra. Teva will now be free to market its own generic brand of pill for erectile dysfunction.
Teva Canada is a division of Teva Pharmaceuticals based in Israel. Teva is the largest generic drug manufacturer in the world. It is not surprising that it challenged Pfizer's patent. What is somewhat surprising is that the Supreme Court of Canada ruled 7 to 0 in favor of Teva and against Pfizer. In August last year Pfizer won over Teva in a U.S. court.The U.S. court ensured that Pfizer will not face any cheaper generic version until 2019 in the United States.
The Supreme Court of Canada said that Pfizer was trying to "game" the Canadian system The way is now open for cheaper generic versions of Viagra to be marketed in Canada. Teva Canada's website had a notice that it was introducing Novo-Sildenafil which it describes as a generic alternative to Viagra.
. Richard Gold an expert on intellectual property rights at McGill University said:"Canadian consumers will be saving money on it. There will probably be other generics involved soon enough." Pfizer expressed disappointment with the ruling and noted:"Pfizer expects to face generic competition in Canada shortly. Pfizer will continue to vigorously defend against challenges to its intellectual property."
Justice Lebel of the Supreme Court noted that in return for a 16 year monopoly patent a company must show how the product was created so it can be copied afterwards. Pfizer failed to do this he claimed:"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.Pfizer had the information needed to disclose the useful compound and chose not to release it."
Pfizer had listed numerous compounds in its patent application but failed to disclose the precise compound that was effective in treating erectile dysfunction, sildenafil. Teva had maintained that not disclosing that information was a violation of the Patent Act. Lower courts had ruled with Pfizer. The patent is set to expire in 2014. Justice Lebel wrote: "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.If there is no quid – proper disclosure – then there can be no quo – exclusive property rights.”
Pfizer will also be required to pay Teva's court costs. Eugene Meehan, a lawyer from Ottawa, said that the ruling helps to clarify disclosure requirements associated with patents. He said that companies had become complacent, thinking that if their disclosure satisfied the patent office then it could not be challenged. Meehan noted:“The Supreme Court of Canada is saying that these patents may not be as rock solid as previously thought. The decision is a legal earthquake in the patent world – it’s like hurricane Sandy blew through the Patent Act.”
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