On December 6, 2006, the Federal Court issued its decision in Lilly Icos LLC et al. v. Pfizer Ireland Pharmaceuticals (2006 FC 1465). In this action, the plaintiff, Lilly Icos (Lilly), sought to impeach Pfizer Ireland Pharmaceuticals' (Pfizer) Canadian patent for the drug marketed under the name Cialis.
The decision arose because at the examination for discovery, Pfizer refused to answer questions seeking disclosure and production of communications between the inventors and their U.K. patent agents. Pfizer argued that those communications were privileged in the U.K., and that the privilege should be recognized in Canada.
On a motion brought by Lilly, Prothonotary Lafrenière found that Pfizer had failed to establish that privilege attaches to such communications in the context of Canadian litigation. Furthermore, the prothonotary would not revisit the issue of patent agent privilege in the absence of an adequate evidentiary record to determine whether or not the communications ought
