The Federal Court of Appeal rules that a wilful material untrue allegation in the petition to obtain a patent cannot be used to invalidate a prior Court decision based on “fraud” under Rule 399

Rohit Parekh
Published August 5th, 2011

Pfizer v. Canada – 2011 FCA 215

     Ratiopharm was initially successful at the Federal Court in a proceeding brought by Pfizer pursuant to the Patented Medicines Notice of Compliance Regulations (NOC Regulations) seeking an order prohibiting the Minister from issuing a NOC.  Upon appeal, however, the decision was set aside and a prohibition order was issued (the “2006 Prohibition Order”).

     In a subsequent impeachment proceeding brought by Ratiopharm, Justice Hughes of the Federal Court found for Ratiopharm holding Pfizer’s  ‘393 Patent invalid on all grounds argued at trial including section 53 of the Patent Act, which prohibits an applicant from wilfully making, in his petition in respect of a patent, material allegations that are untrue.

     Following their success, and in order to entitle Ratiopharm to seek compensation pursuant to section 8 of the NOC Regulations for the losses incurred during the time it was held off the market because of the prohibition order, Ratiopharm brought a motion pursuant to the Federal Court Rules (Rule 399) to have the 2006 Prohibition Order set aside as it was obtained by fraud.  The fraud alleged to have been committed being the untrue material allegation in the petition in respect of the ‘393 Patent.

     Following their summary of the law regarding the nature of NOC proceedings and the requirements to establish a fraud on the Court, the Federal Court of Appeal concluded that the chief criteria for establishing fraud and setting aside an order of the Court, is the requirement that the fraud be material, “that is to say that the fraud goes to the foundation of the case.”  Since “no perjured evidence and no forged documents were filed” and no allegations of fraud were made in the NOC proceeding, the Federal Court of Appeal held that there is no basis to conclude that the NOC proceedings were induced or resulted from the misrepresentation later found in the impeachment proceedings.  Ratiopharm’s motion was dismissed with costs.

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