Subject Matter Of A Compound Claim Cannot Be Expanded Beyond What It States – FCA

On September 18, 2017, the Federal Court of Appeal released its decision in BMS' appeal of a decision dismissing its prohibition application in respect of dasatinib and Canadian Patent Nos. 2,366,932 and 2,519,898.

Decision Below

The 932 Patent, in particular claim 27, is a compound patent directed to dasatinib or its salts. Justice Manson had previously held that the specification of the 932 Patent contains an overarching promise that all compounds will inhibit both a Src-family PTK and HER1/HER2, and be therapeutically useful in treating a PTY-associated disorder or useful as anti-angiogenic agents. While the parties agreed that BMS has demonstrated that dasatinib was an Src inhibitor as of the relevant date, the Application Judge held that BMS has not demonstrated nor could it soundly predict HER1/HER2 inhibition or that the claimed compounds could be used to treat disorders or be used as anti-angiogenic compounds. As a result, Justice Manson held that Apotex