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ARTICLE · 27 NOVEMBER 2018

Two Generics, One Hearing: Federal Court Orders Common Trial On Patent Validity Issues In Section 6 Actions

The Federal Court has ordered that the trial of two actions brought under the post-CETA Patented Medicines (Notice of Compliance) Regulations (the Regulations), against two separate generics,

CanadaIntellectual Property

The Federal Court has ordered that the trial of two actions brought under the post-CETA Patented Medicines (Notice of Compliance) Regulations (the Regulations), against two separate generics, be heard concurrently, on issues of invalidity. This decision highlights the Federal Court's push to streamline section 6 actions. The court rejected the defendant Taro's arguments that the common hearing of issues reduces the likelihood that Taro will benefit from any "first to market" advantage.

Background

Taro and Apotex are both seeking to market a generic version of Biogen's FAMPYRA (fampidrine) product in Canada. Both generics served Notices of Allegations (NOAs) alleging that each of their products will not infringe Canadian Patent 2,562,277 (the 277 Patent) and that the 277 Patent is invalid. In response, Biogen commenced section 6 actions against both generics; first, the Taro action on June 15, 2018 (T-1163-18), and subsequently, the Apotex action on July 24,

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