Canada's Supreme Court Tosses Viagra Patent For Vagueness

Freshly Exhumed writes "In a 7-to-0 decision, the Supreme Court Of Canada has ruled that Pfizer Canada Inc.'s patent on well-known erectile dysfunction remedy Viagra is now invalid due to insufficient information in Pfizer's patent application. The upshot is that competitors can now manufacture cheaper, generic versions of Viagra for sale in Canada."

Comments

Whammy

[Anonymous Coward]

Sounds like there will be some new stiff competition!

A surprising post.

[brindafella]

I was so surprised to come across this story!

Re:A surprising post.

[Greyfox]

If you stay surprised for more than 4 hours, you should contact a doctor.

Insufficient information

[mattack2]

So the Supreme Court Of Canada found the patent hard to understand.

Re:Insufficient information

[Goodyob]

Guess they didn't have enough evidence to be firm about the issue

Re:Insufficient information

[Maow]

So the Supreme Court Of Canada found the patent hard to understand.

You can believe that if it makes you feel good, but reality says otherwise, that the patent was purposefully obfuscated:

"Pfizer gained a benefit from the act -- exclusive monopoly rights -- while withholding disclosure in spite of its disclosure obligations under the act," Justice Louis LeBel wrote on behalf of the court.

"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."

So, no one could "understand" it because they didn't disclose proper information - enough for someone skilled in the profession to create a copy of the drug.

It's a remarkably sensible decision and one that should be applied in US courts - particularly in the current mobile patent war (the part about not being allowed to "game the system").

Re:Insufficient information

[Anonymous Coward]

The patent didn't fill in the missing part here:
3. ???
4. profit!

Re:Insufficient information

[Formalin]

If the patent isn't understandable by someone proficient in the field, it is invalid. I'd imagine the Supreme court had called up experts.

The radio said - patent described several chemical structures, but neglected part of the process or which one was the final patented product, something along these lines. Which would be unrelated to the hard to understand part.

Re:Insufficient information

[reverseengineer]

Yes, Teva's central argument in the challenge was that in the patent in question, Pfizer never specifically establishes the relationship between sildenafil and the treatment of ED. From the judgement:

As required by s. 2 of the Act, an invention must be novel. In the instant case, the invention is not sildenafil, per se, because this compound was already known. In fact, Pfizer had been investigating sildenafil as a cardiovascular drug when it first suspected that the compound would be useful in treating ED (R.F., at para. 13). The invention is therefore not sildenafil, but the use of sildenafil to treat ED.(italics theirs)

The court ruled that the patent never concretely established this relationship:

Although Patent ’446 includes the statement that “one of the especially preferred compounds induces penile erection in impotent males” (A.R., vol. X, at p. 173), the specification does not indicate that sildenafil is the effective compound, that Claim 7 contains the compound that works, or that the remaining compounds in the patent had been found not to be effective in treating ED. The claims were structured as “cascading claims”, with Claim 1 involving over 260 quintillion compounds, Claims 2 to 5 concerning progressively smaller groups of compounds, and Claims 6 and 7 each relating to an individual compound.

The disclosure in the specification would not have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application”, because even if a skilled reader could have narrowed the effective compound down to the ones in Claim 6 and Claim 7, further testing would have been required to determine which of those two compounds was actually effective in treating ED. As the trial judge stated, at para. 146, “[a] skilled reader would then conduct tests on those two compounds and determine which of those compounds worked.” And as he also stated, at para. 135, “the skilled reader must undertake a minor research project to determine which claim is the true invention”.

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 to the following statement: In man, certain especially preferred compounds have been tested orally in both single dose and multiple dose volunteer studies. Moreover, patient studies conducted thus far have confirmed that one of the especially preferred compounds induces penile erection in impotent males. [Emphasis added; A.R., vol. X, at p. 173.] It chose a method of drafting that failed to clearly set out what the invention was. Even now, in its factum to this Court, Pfizer offers no explanation as to why — knowing that Claim 7 contained the tested and thus, the useful, compound — it elected to withhold that information.

Re:Insufficient information

[mattack2]

I was just making a stupid joke.. I guess I should have said "So the Supreme Court Of Canada found the patent hard. . . to understand."

Re:Insufficient information

[Maow]

I was just making a stupid joke.. I guess I should have said "So the Supreme Court Of Canada found the patent hard. . . to understand."

Oh, fair enough.

Maybe I should have blamed the moderation system -- the mods marked it as +3 Informative as of right now.

Cheers

Re:Insufficient information

[girlinatrainingbra]

edit that might have made the joke more apparent:

...should have said "So the Supreme Court Of Canada found the patent hard. . . to understand... for four hours, after which they called their doctors"

Re:Insufficient information

[Smallpond]

mod parent ... er ... up!

Re:Insufficient information

[AchilleTalon]

The Supreme Court decision intent to relax the suffering conditions of many Canadians due to the NHL lock-out. It should be seen as its contribution to ease these hard times with a little slack in the pockets of the poor Canadians deprived from the national sport show.

Re:Insufficient information

[silentcoder]

> to ease these hard times
Actually, that sounds like the exact opposite of what they were aiming for...

Re:Insufficient information

[Anonymous Coward]

No. If you read the details, the issue was the way that the patent described multiple chemicals without narrowing in on exactly which one was the active ingredient. It turns out it's only one of them. In other words, when they filed the patent they didn't know what made it work, or intentionally chose to obfuscate which one made it work. According to the court, it's the latter. That's grounds for invalidating it, especially if it was an intentional thing. No disclosure, no monopoly for you!

Re:Uh oh

[Anonymous Coward]

True. I believe there will be stiff competition in the effort to erect new boner jokes. I just hope they can stick to the thrust of the story.

Proudly

[p0p0]

Honey, grab the maple syrup and the cheap viagara. We're celebrating.

Now, if only we looked at Apple's patents then we can really stir some shit up.

Re:Proudly

[mrbluze]

Honey, grab the maple syrup and the cheap viagara. We're celebrating. Now, if only we looked at Apple's patents then we can really stir some shit up.

The "upshot" of which would be an Icecream Sandwich: http://www.gizchina.com/wp-content/uploads/images/apple-android-rival-blow-job-sign-china.jpg

O Canada, we cum on thee...

[inode_buddha]

Canada: there's a lot of beaver up there.
.

Generic name

[Anonymous Coward]

Now that there will be generic Viagra, there will be the issue of selecting a generic name. The leading candidate based on Internet searches is "Mycoxaphalin."

Re:Generic name

[ArcadeMan]

My vote goes to Viagrow.

Re:Generic name

[JustOK]

Penisfillin

Re:Generic name

[symbolset]

V!gara. They can sell it by email.

Re:Generic name

[brindafella]

"Willie Wonkie's Shock Factory"

Re:Generic name

[brindafella]

> "Willie Wonkie's Shock Factory" The pseudo-medicininal name would be "Williin".

Re:Generic name

[brindafella]

Alternative: "Mycoxafillin".

Re:Generic name

[Anonymous Coward]

They will be marketed as "AntiFlaccids"

Re:Generic name

[gtvr]

Based on my emails, it could easily be V1agra, Vi4gra, or other similar. There's already brand familiarity & everything.

Fantastic

[Tragek]

My favourite part of the whole thing:

Writing for a unanimous court, Mr. Justice Louis LeBel said that the quid pro quo of patent legislation dictates that inventors can have an exclusive monopoly on a product provided they forthrightly disclose how it operates.

"If there is no quid – proper disclosure - then there can be no quo – exclusive property rights," he said.

Damn straight.

Re:Fantastic

[MrBigInThePants]

Of course for UK readers what she said could be reinterpreted as:

If there is no quid, then there is no Quid.

http://en.wikipedia.org/wiki/Quid

Re:Fantastic

[mrbester]

Now, now, Agent Starling, we understand quid pro quo just fine...

From the article

[JonySuede]

Teva challenged the validity of the Pfizer patent, claiming it did not meet the law's disclosure requirements.

Software next

[EmperorOfCanada]

Now if the US supreme court could apply the same level of common sense and justice to the software patent problem it would be a real turn on (I couldn't help myself).

It looks like this decision is that a greedy company tried bending the rules and were punished. Normally the sense that I get from situations like these that such judgements don't happen because of the whole corporations are the backbone of the country crap so the punishments are usually a tiny portion of the profits from the misbehavior. To lose the viagra patent ought to deflate their profits in Canada (still can't stop).

This is the magical aspect of modern corporations they think that it is somehow good to work every angle, to twist every law, and bend every regulation. It is almost as if they feel bad about themselves if they aren't screwing someone somehow. This is a perfect case in point. Viagra is the wet dream of any big Pharma (on a roll now) a normal patent would have been solid and made them bazillions of dollars; but no they had to squeeze another nickle or dime out of the patent so they risked it all. Viagra also fell into their lap as it was a crappy heart drug that had an interesting side effect. If I were a major shareholder I would demand that the company reevaluate itself to see if a more ethical approach would result in less overall risk.

Re:Software next

[Anonymous Coward]

If I were a major shareholder I would demand that the company reevaluate itself to see if a more ethical approach would result in less overall risk.
 
Well, seeings as how stupid this statement is we can all sleep well knowing you'll never be a major shareholder in any company that can front nearly a billion dollars every time they try to bring a medication to market.

Re:Software next

[Obfuscant]

This is a perfect case in point. Viagra is the wet dream of any big Pharma (on a roll now) a normal patent would have been solid and made them bazillions of dollars; but no they had to squeeze another nickle or dime out of the patent so they risked it all.

I'm sure that Big Pharma has patent lawyers on staff, and that not being explicit enough in this patent saved them nothing. This is more a perfect case in point of "mistake", I think, or "in our opinion", than of some greedy company bending rules. The lawyers almost certainly would have thought they were being explicit enough to meet the rules (because not getting the patent would cost a bundle), and the judges had a differing opinion.

In fact, since there would be a danger of being too vague, and being more explicit costs them nothing, they have no reason not to be explicit. I mean, the patent stops other manufacturers, and it isn't like other Big Pharmas don't know or couldn't figure out how to make Viagra without a more explicit patent.

Re:Software next

[lord_rob the only on]

To lose the viagra patent ought to deflate their profits in Canada (still can't stop).

Yes of course, if there are more generics made to inflate people's penis, but it's a risky market.

Re:Software next

[Theaetetus]

Now if the US supreme court could apply the same level of common sense and justice to the software patent problem it would be a real turn on (I couldn't help myself).

Maybe you should've read the article rather than rushing to pull out your penis joke. The decision here was that a person of ordinary skill in the art reading the patent wouldn't have known which drug caused erections, and therefore, the patent didn't include enough written disclosure to enable a person of ordinary skill to practice the invention.
That doesn't really apply with software patents, because if you're a programmer who can't follow a flow chart, then you probably don't represent the skill of an ordinary person in the art.

Re:Software next

[Theaetetus]

The lawyers almost certainly would have thought they were being explicit enough to meet the rules

And that is why you do not yet lawyers write patent applications.

And careful attention to detail is why you don't let anonymous cowards write them either.

Re:Pfizer's response

[ark1]

Don't be too vag next time.

A hard verdict for Pfizer

[heretic108]

But the Supreme Court had no choice but to stand up for justice. No going soft on patent abuses!

On behalf of all Canadian Men

[rueger]

Yeah, like we even need that stuff....

Re:On behalf of all Canadian Men

[jbeaupre]

Yeah, like we even need that stuff....

If you Canadians have lost your interest in sex, you could consult your doctor. Pfizer probably a drug for that too.

Wow, great decision!

[russotto]

I'm excited just thinking about it!

Generic Canadian Pharmacys

[AG the other]

So now we will be able to order generic Viagra from Canadian pharmacists. Exactly where and what is the change from things as they are?

Re:Generic Canadian Pharmacys

[number11]

No, that's still a violation of the law in the US. I'm pretty sure that the FDA would have something to say about importing medications from abroad without proper approval. And customs can seize any such shipments.

The FDA may have something to say about it, but AFAIK the US government doesn't choose to make it an issue, probably because they'd then have to defend the fact that the pharma industry gouges US customers with prices that are twice what they charge for export. I'm sure most of the Canadian mail-order pharmacies will sell it to you. I bought lovastatin (generic Lipitor) that way for years (when your drugs are 100% out of pocket, it pays to shop around). They also sold grey-market Lipitor for about 2/3 of what it costs in the US (manufactured by Pfizer in Australia, shipped from pharmacies in various countries). The generic was about 1/3 the US Lipitor price and was manufactured in India. And while I'm a little leery of Indian drugs (they're perfectly capable of making quality drugs, but there are a lot of counterfeits too), this stuff worked fine. And in 10 or so years I never had a shipment seized or held up.

Generics and Legal Challenges

[reverseengineer]

This particular patent fight is also occurring in other places. In the US, there was a decision last year between Pfizer and Teva that was ruled the opposite way, and if no other challenge is successful, I believe Viagra will continue to exist under patent for Pfizer until 2019. At issue is that Viagra really has two patents- one for sildenafil and its formulation into a drug and one for the use of sildenafil to treat erectile dysfunction. Sildenafil was originally developed for blood pressure and cardiovascular disease, so the application for the ED indication patent trailed the formulation patent by several years. The formulation patent expired this year, but the indication patent lasts until 2019. In the US, a regulatory framework known as a Paragraph IV challenge exists for generic drug manufacturers to either argue that their proposed generic does not violate the existing patents, or that the patents themselves are invalid. This potentially allows them to open up the generic market years before the patent was originally set to expire, so this sort of legal action is not uncommon, particularly for blockbuster drugs.

Re:Generics and Legal Challenges

[reverseengineer]

Just to follow on, the Canadian Supreme Court decision is here and the invalidated patent is here. What caused the patent to be invalidated was that the patent is basically written to cover a wide array of similar molecules, all derivatives of a central molecular skeleton. Often, minor alterations to a molecule can be made that do not change the behavior of the molecule as a drug. What it appears Pfizer was looking to do here was prevent competitors from developing ED drugs that were simple derivatives of sildenafil (Viagra) (like adding a methyl group or a fluorine atom somewhere it would have no significant effect). That's considered acceptable strategy, and as a result, other ED drugs like vardenafil (Levitra) and tadalafil (Cialis) have differences in their core structures that keep them from infringing.

However, the Canadian court found that Pfizer had failed to essentially zero in on sildenafil with their claims. When it came down to actually stating that this molecule is the one that lab studies have found treats ED, Pfizer only ever mentions the core skeleton (known as "formula I") and never uniquely identifies sildenafil. It mentions sildenafil (not even by name, only by its R groups) in one claim, but never connects it and only it to ED. The court judgement notes that "formula I" represents 260 quintillion possible compounds, and therefore rejected the patent for vagueness.

Re:Generics and Legal Challenges

[Alex Belits]

Last time I have checked, patents cover inventions implemented as devices and methods. Re-use of the same device for a different purpose is not in itself patentable (ex: I can't re-patent LZW algorithm as a new method of storing data in barcodes, even though application is new and algorithm is useful for this purpose).

Re:Generics and Legal Challenges

[reverseengineer]

That's not necessarily true of pharmaceuticals, and in fact, quite a few other blockbuster drugs have come about as re-purposed molecules: Merck originally developed Proscar (finasteride) as a prostate enlargement treatment. Then it submitted finasteride to the FDA again as Propecia for male pattern baldness. Wikipedia tells me, "Merck's patent on finasteride for the treatment of BPH expired on June 19, 2006. Merck was awarded a separate patent for the use of finasteride to treat MPB. This patent is set to expire in November 2013." Bupropion was developed as an antidepressant (Wellbutrin), but there's a separate patent covering Zyban, which is the same molecule when prescribed for smoking cessation. Latisse is the glaucoma drug Lumigan, repurposed when they found it makes your eyelashes grow.
For that matter, Viagra itself is also sold in a different dose as Revatio for pulmonary hypertension- I'm pretty sure that Pfizer's "treatment of erectile dysfunction" patent expiring in 2019 does not apply to that product. I will note that these "use patents" are much more likely to be invalidated in court challenges compared to the "composition of matter" patent (it was considered surprising by many observers when Pfizer won their case with Teva in the US last year), but they are out there.

Re:Generics and Legal Challenges

[ColdWetDog]

Good, you write the next summary in this field.

Please.

Wait, you're saying this is new?

[damn_registrars]

The upshot is that competitors can now manufacture cheaper, generic versions of Viagra for sale in Canada.

I get email offers on a daily basis from "Canadian Pharmacy" offering to sell me generic Viagra - or Viagra with other ED medications in a "super pack" - all the time. You don't mean to say that some of the email offers I get aren't genuine, do you?

Re:Wait, you're saying this is new?

[number11]

I get email offers on a daily basis from "Canadian Pharmacy" offering to sell me generic Viagra - or Viagra with other ED medications in a "super pack" - all the time. You don't mean to say that some of the email offers I get aren't genuine, do you?

Well, probably not. But seriously, if you verify a pharmacy through someplace like this they'll be for real.

Re:No more declining population

[siddesu]

Not unless the decision also mandates a comprehensive ban on abortions and contraception.

But the US Supreme Court doesn't need....

[kawabago]

The US Supreme Court doesn't need a cheap source of software patents!

Re:Uh oh

[isopropanol]

All the curlers are gonna rush to the pharmacy. They're all in a hurry, hurry hard!

Re:Maybe they require photos?

[Samantha Wright]

No, a chemical patent has to be very specific about the range of structures that are patented. A good chemical patent may contain sentences that are over a hundred words in length, just listing out alternative functional groups that could be at a given spot on the backbone. They're very technical and extremely detailed; you can't just patent a cause-and-effect relationship like that. In software, maybe, but not in pharmacology.

So Now It's Even Cheaper...

[FrankDrebin]

to "stand on guard for thee".

Re:So Now It's Even Cheaper...

[Mashiki]

Canadian men don't need that "extra help" comes from those cold winters, it helps with the training.

Re: Why Bother,,,,,

[Slugster]

Why bother even buying Viagra now? It's going to come in maple syrup anyway.

In unrelated news, Hooter's will now be open for breakfast....

Great....

[cstdenis]

more generic viagra spam in 3...2...

Re:Uh oh

[Chrisq]

Boner jokes in 3...2...1...

The lawyers for Viagra were working pro boner

Re:Uh oh

[JohannesJ]

I'm a German reader. Is this Enhancement stuff for Dich or Dick?

Re:No more declining population

[Anonymous Coward]

Sorry, but straight men would just use other contraception methods instead of going for a fat guy's ass.

Re:Maybe they require photos?

[ColdWetDog]

That section of the patent office must be where dead Organic chemists go when they've been assigned to Hell.

Re:Pfizer's response

[pnutjam]

yeah, don't be a vag, and don't be vague either.

Re:Where's the vague?

[Sique]

It's in the What part of "What makes old farts' dicks harder". Pfizer failed to state precisely which of the millions of possible compounds is actually working.

Re:Fantastic-Proper Disclosure

[northerner]

One problem with software patents is that they are vague and applied too widely for litigation.

The lawyer speak used for patent applications obscures the technology details.

Proper disclosure for all patents should be sufficient technical detail that the invention can be reproduced. For software patents, source code demonstrating the invention should be supplied.

No.

[DarthVain]

The Supreme Court of Canada is made up of old men who arn't dumb.

Ha! Cheap penis drugs for everyone!

Re:No.

[mattack2]

But they already have socialized medicine⦠aren't they already cheap (i.e. "free")? (Yes, I'm avoiding the fact that it really means everyone ELSE is paying for it. Why people should subsidize ANYTHING relating to other people getting their jollies mystifies me.)

Re:No.

[Guspaz]

Medicare in Canada does not provide drugs unless you're in hospital. There is regulated pricing for drugs that keeps the prices reasonable, but that's not subsidization. Canadians have to pay for their drugs.

Health care in Canada is a provincial jurisdiction (the federal government has zero direct influence on health care), and it's not mandatory for a province to offer universal health care. The federal government offers financial incentives to the provinces if their health care system meets certain criteria however, so every province does offer universal healthcare. But tomorrow they could decide to adopt a US style system whatever the Canadian government says. There would be enormous backlash, however. Unlike Americans, Canadians generally think universal healthcare is important.

To get back to drugs, my province (Quebec) has a mandatory policy for prescription drug insurance. You're required to have such insurance, either through the government plan, or a private health insurance plan. My employer has us on a group plan that pays half my prescription drug costs. It used to cover all the cost, but premiums were going to go up so my employer it coverage to keep them the same.

Re:Uh oh

[S.O.B.]

Good to see the Supreme Court of Canada has such a firm grasp of patent law.

Makes sense for allowing cheap generic viagra,,,

[TheSkepticalOptimist]

considering the average age of the men in the Supreme Court of Canada is 62.

As you can see, it wasn't so HARD

[davydagger]

It was a HARD decision to make, but the courts in Canda felt they had to ERECT statues to protect the populace from patent abuse. Pfizer now has to compete in the market, and the competition is sure to be STIFF.