Federal Court of Appeal - Janssen-Ortho Inc. v. Canada (Minister of Health)

[1] In this appeal, the appellant has argued for the first time that the novelty of Canadian Patent No. 2,222,133 is the use of 17-deacetyl norgestimate as a substance that is proposed to be administered as a medicine, rather than as a substance that is formed in the body after the administration of norgestimate. The argument in the Federal Court and before the Minister was focussed on the method of administration, based on issues that have only recently been finally settled by decisions of this Court. For that reason, we do not find the present record adequate to address the argument now being raised. In these unusual circumstances, it seems to us to be appropriate to allow this appeal, set aside the decision of the Federal Court, allow the appellant's application for judicial review, and refer this matter back to the Minister for reconsideration based on such new submissions that the appellant may present.

[2] We note that the Minister has the discretion under subsection 3(4) of the Patented Medicines (Notice of Compliance) Regulations to consult with officials of the Patent Office. The Minister may wish to consider whether this is an appropriate case to initiate such a consultation.

"K. Sharlow"

J.A.

FEDERAL COURT OF APPEAL

NAMES OF COUNSEL AND SOLICITORS OF RECORD

DOCKET: A-313-05

STYLE OF CAUSE: JANSSEN-ORTHO INC.

Appellant

and

MINISTER OF HEALTH and

ATTORNEY GENERAL OF CANADA

Respondents

PLACE OF HEARING: OTTAWA, ONTARIO

DATE OF HEARING: JANUARY 10, 2006

REASONS FOR JUDGMENT

OF THE COURT: ROTHSTEIN, NOËL & SHARLOW JJ.A.

RENDERED FROM THE

BENCH BY: SHARLOW J.A.

APPEARANCES:

James E. Mills

Chantal J. Saunders

FOR THE APPELLANT

F.B. Woyiwada

FOR THE RESPONDENTS

SOLICITORS OF RECORD:

Gowling Lafleur Henderson

Ottawa, Ontario

FOR THE APPELLANT

John H. Sims, Q.C.

Deputy Attorney General of Canada

Ottawa, Ontario

FOR THE RESPONDENTS