T-1103-01
2002 FCT 706
Pfizer Canada Inc. (Applicant)
v.
Attorney General of Canada (Respondent)
and
The Canadian Drug Manufacturers' Association (Intervener)
T-1104-01
Schering Canada Inc. (Applicant)
v.
The Attorney General of Canada (Respondent)
T-1120-01
Pfizer Canada Inc. (Applicant)
v.
Attorney General of Canada (Respondent)
and
The Canadian Drug Manufacturers' Association (Intervener)
Indexed as: Pfizer Canada Inc. v. Canada (Attorney General) (T.D.)
Trial Division, Blanchard J.--Ottawa, April 15 and June 25, 2002.
Patents -- Registration -- Pursuant to Patented Medicines (Notice of Compliance) Regulations, s. 4(4), patents herein ineligible for inclusion in patent register as filing date of patent applications in Canada not preceding filing date of supplemental new drug submissions -- "Filing date" referring solely to Canadian filing date, not priority date or date of filing in Unites States.
Construction of Statutes -- Interpretation of "filing date" in Patented Medicines (Notice of Compliance) Regulations, s. 4(4) -- In case of ambiguity or contradiction in two official versions of enactment, plain, unequivocal version (French version herein) favoured -- Courts have also adopted approach favouring more narrow meaning over broader one in practice of attempting to find shared or common meaning in two versions -- Patents herein ineligible for inclusion in patent register as filing date of patent applications in Canada not preceding filing date of supplemental new drug submissions.
The Minister of Health's delegate refused to list the applicants' patents on the patent register because they did not meet the timing requirements of subsection 4(4) of the Patented Medicines (Notice of Compliance) Regulations: the filing date of the patent applications did not precede the filing date of the supplemental new drug submissions. U.S. patent applications had been filed with respect to all of the patents at issue herein.
In all three cases, the applicants argue that the "filing date" set out in subsection 4(4) of the Regulations should be interpreted to be the priority filing date, which would be the date of filing in the United States, not the Canadian filing date.
The issue was whether the words "filing date" in subsection 4(4) of the Regulations refer solely to the filing date of an application in Canada or whether they can also refer to a priority filing date.
These were applications for judicial review of the Minister of Health's decisions refusing to list the patents on the patent register.
Held, the applications should be dismissed.
The standard of review herein was that of correctness.
Any ambiguity that may have been created by the use of the indefinite article in the English version of Regulation, subsection 4(4) ("a" instead of "the") was dispelled by the French version, which uses a definite article and reads "dont la date de dépôt est antérieure". Where one version is itself ambiguous, while the other is plain and unequivocal, the courts have favoured the latter. The courts have also adopted an approach that would favour a more narrow meaning over a broader one in the practice of attempting to find a shared or common meaning in the two versions. The French version herein lends support to the respondent's position that the term "filing date" refers solely to one date, namely the Canadian filing date. The narrower meaning as reflected in the French version of the enactment was favoured. Adopting a narrower meaning, and interpreting "filing date" to mean the "Canadian filing date" is also consistent with the intention of Parliament since the term "filing date" is expressly defined in the Patent Act as the Canadian filing date.
"Filing date" is not defined in the Regulations but is defined in section 2 and subsection 28(1) of the Patent Act. The definition of "filing date" in section 2 of the Patent Act is exhaustive and unambiguous: the date on which a patent application is filed in Canada and not the priority date. In addition, the French version leaves no doubt that "filing date" refers to the Canadian filing date as defined in section 28. Furthermore, the term "filing date" is consistently used in the Patent Act to refer to the date on which the application is filed in Canada. The Act uses the term "claim date", not the term "filing date", to refer to a previously filed application or the priority date. And the definition of "claim date" in section 2 of the Act would be meaningless if the term "filing date" and "priority date" could be used interchangeably. Had the Governor in Council intended to refer to the priority date in subsection 4(4) of the Regulations, the term "claim date" would have been used. The words "a filing date", read in their entire context and in their grammatical and ordinary sense, harmoniously with the scheme of the Act and the intention of Parliament, should be interpreted to be exhaustive and refer to the filing date for an application for patent in Canada. The case of Bayer AG v. Apotex Inc. (1998), 84 C.P.R. (3d) 23 (F.C.T.D.), wherein, in considering former section 28 of the Act, it was held that a Canadian patent is entitled to the benefit of a priority filing date, was distinguished.
Since it was determined that subsection 4(4) of the Regulations and section 2 and subsection 28(1) of the Act are clear and unambiguous, there was no need to have recourse to the international conventions as intrinsic aids to interpretation. Even so, the Minister's interpretation of those provisions was not inconsistent with the Paris Convention, the North American Free Trade Agreement or with the Agreement on Trade-Related Aspects of Intellectual Properly Rights.
statutes and regulations judicially
considered
Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco, 15 April 1994, 1867 U.N.T.S. 3, Art. 2.
| North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America, December 17, 1992, [1994] Can. T.S. No. 2. |
| Paris Convention for the Protection of Industrial Property, March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, 828 U.N.T.S. 305, Arts. 2, 4B. |
| Patent Act, R.S.C. 1970, c. P-4, s. 28. |
| Patent Act, R.S.C., 1985, c. P-4, s. 2 "claim date" (as enacted by S.C. 1993, c. 15, s. 26), "filing date" (as enacted idem), 27(1) (as am. idem, s. 31), 28 (as am. idem, s. 33), 28.1 (as enacted idem), 28.2 (as enacted idem), 28.3 (as enacted idem), 28.4 (as enacted idem). |
| Patent Cooperation Treaty, June 19, 1970, [1990] Can. T.S. No. 22. |
| Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 4(4) (as am. by SOR/98-166, s. 3). |
cases judicially considered
distinguished:
Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27; (1998), 36 O.R. (3d) 418; 154 D.L.R. (4th) 193; 50 C.B.R. (3d) 163; 33 C.C.E.L. (2d) 173; 221 N.R. 241; 106 O.A.C. 1; Bayer AG v. Apotex Inc. (1998), 84 C.P.R. (3d) 23; 156 F.T.R. 303 (F.C.T.D.).
considered:
R. v. Cook, [1998] 2 S.C.R. 597; (1998), 164 D.L.R. (4th) 1; [1999] 5 W.W.R. 582; 112 B.C.A.C. 1; 57 B.C.L.R. (3d) 215; 128 C.C.C. (3d) 1; 230 N.R. 83; Daniels v. White and The Queen, [1968] S.C.R. 517; (1968), 2 D.L.R. (3d) 1; 64 W.W.R. 385; [1969] 1 C.C.C. 299; 6 C.N.L.C. 199; 4 C.R.N.S. 176.
referred to:
Tupper v. The Queen, [1967] S.C.R. 589; (1967), 63 D.L.R. (2d) 289; [1968] 1 C.C.C. 253; 2 C.R.N.S. 35; Merck & Co. v. Canada (Attorney General) (1999), 176 F.T.R. 21 (F.C.T.D.); affd sub nom. Merck & Co. v. Nu-Pharm Inc. (2000), 5 C.P.R. (4th) 138; 254 N.R. 68 (F.C.A.).
authors cited
Côté, Pierre-André. Interpretation of Legislation in Canada, 3rd ed. Toronto: Carswell, 2000.
Driedger, E. A. Construction of Statutes, 2nd ed. Toronto: Butterworths, 1983.
APPLICATIONS for judicial review of the Minister's decisions that the applicants' patents were ineligible for inclusion on the patent register as they did not meet the regulatory requirements of subsection 4(4) of the Patented Medicines (Notice of Compliance) Regulations. Applications dismissed.
appearances:
Anthony G. Creber and Jennifer L. Wilkie for applicants.
Marie Crowley for respondent.
Edward J. B. Hore for intervener.
solicitors of record:
Gowling Lafleur Henderson LLP, Ottawa, for applicants.
Deputy Attorney General of Canada for respondent.
Hazzard & Hore, Toronto, for intervener.
The following are the reasons for order and order rendered in English by
[1]Blanchard J.: The Court has before it three applications for judicial review of decisions of the Minister of Health wherein the Minister's delegate refused to list certain Canadian patents on the patent register maintained pursuant to the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, as amended , (the Regulations). The Minister decided that the patents were ineligible for inclusion on the patent register as they did not meet the regulatory requirements of subsection 4(4) [as am. by SOR/98-166, s. 3] of the Regulations.
[2]In accordance with subsection 4(4) of the Regulations, first persons such as the applicants, may, after the date of filing of a submission for a notice of compliance (NOC), and within 30 days after the issuance of a patent that was issued on the basis of an application that has a filing date that precedes the date of filing of the submission, submit a patent list or an amendment to an existing patent list.
[3]The Minister interpreted the words "filing date" in subsection 4(4) of the Regulations to refer solely to the filing date of an application for patent in Canada and found the patents ineligible for inclusion on the patent register as the filing date of the patent application did not precede the filing date of the supplemental new drug submission.
Facts
[4]The following is a chronology of the factual situation of each application.
T-1103-01, Applicant: Pfizer Canada Inc. (hereinafter Pfizer), Product: Zithromax azithromycin dihydrate (hereinafter Zithromax)
[5]Pfizer is a company that carries on business as a manufacturer and distributor of pharmaceutical products.
[6]On April 29, 1994, U.S. patent application 80/235,069 was filed in the United States relating to new oral dosage form of Zithromax. This new oral dosage form does not exhibit an adverse food effect, which means that it can be taken without regard to meals.
[7]On September 15, 1994, Pfizer filed, in Canada, a supplemental new drug submission for a new oral dosage form of Zithromax, 250 mg tablets. This submission was approved and an NOC was issued on February 21, 1996.
[8]On April 27, 1995, Pfizer filed a Canadian patent application 2148071 in respect of the new Zithromax tablets dosage form (the Canadian filing date). The patent was issued on October 17, 2000 (the 071 patent).
[9]On March 6, 1996, Pfizer filed another supplemental new drug submission for a new dosage strength of Zithromax, namely 600 mg tablets. This submission was approved and an NOC was issued on April 17, 1997.
[10]On November 13, 2000, Pfizer sought to have the 071 patent added to the patent register in respect of the Zithromax 250 mg and 600 mg tablets.
[11]By letter dated November 23, 2000, the Minister advised Pfizer that the 071 patent was eligible for listing in respect of Zithromax 600 mg tablets but could not add the 250 mg tablets as the Canadian filing date of the patent application (April, 27, 1995) does not precede the date of filing of the submission for the 250 mg tablets (September 15, 1994).
T-1120-01, Applicant: Pfizer, Product: Lipitor atorvastatin calcium (hereinafter Lipitor)
[12]Pfizer, through Parke-Davis Canada, the previous manufacturer and co-marketer, sought approval for a new drug, known as Lipitor, a lipid metabolism regulator.
[13]On July 17, 1995, U.S. patent application 60/001,452 was filed in the United States relating to this invention.
[14]On June 21, 1996, Pfizer filed a new drug submission for its Lipitor 10, 20 and 40 mg tablets. On February 19, 1997, the submission was approved and an NOC was issued. Further submissions were filed on September 25, 1997, December 31, 1998 and December 16, 2000. NOCs for these submissions were issued respectively on January 12, 1999, June 16, 2000 and December 8, 2000.
[15]On July 8, 1996, a Canadian patent application was filed and on April 17, 2001, the 2220018 patent (the 018 patent) was issued.
[16]On May 2, 2001, Pfizer sought to have the 018 patent added on the patent register.
[17]By letter dated May 23, 2001, the Minister stated that the 018 patent could not be added to the patent register as the Canadian filing date of the patent application (July 8, 1996) for the 018 patent did not precede the date of filing of the submission (June 21, 1996).
T-1104, Applicant: Schering Canada Inc. (hereinafter Schering), product: Rebetron ribavirin/interferon alfa 2-b (hereinafter Rebetron)
[18]Schering is a company that carries on business as a manufacturer and distributor of pharmaceutical products. Rebetron is a product used in the treatment of the hepatitis C virus.
[19]This new product was under development in 1997. As part of this development, inventions were made by Schering's scientists relating to a new formulation for the Rebetron capsules. On December 22, 1997, U.S. patent applications 08/997,172 and 08/997,169 were filed relating to these inventions.
[20]On April 27, 1998, Schering filed a new drug submission even though the clinical work had not yet been completed. On October 28, 1998, Schering filed another submission for the naive indicator for this product. NOCs for theses submissions were issued respectively on February 26, 1999 and April 22, 1999.
[21]On December 21, 1998, Canadian patent applications were filed, which resulted in the issuance of the 2287056 patent (the 056 patent) and the 2,300,452 patent (the 452 patent).
[22]On August 15, 2000 and on November 28, 2000, Schering sought to have the 056 patent and 452 patent respectively added to the patent register. By letters dated September 7, 2000 and December 11, 2000, the Minister rejected the listing of both patents on the basis that the Canadian filing date of the patent applications (December 21, 1998) did not precede the filing date of the submissions (April 27, 1998).
Patent Application Filing Dates
[23]In all three cases, the applicants argue that the "filing date" set out in subsection 4(4) of the Regulations should be interpreted to be the priority filing date, which would be the date of filing in the United States, and not the Canadian filing date.
[24]In a letter dated January 23, 2001, counsel for the Minister of Health advised the applicant Pfizer that the current policy relating to filing dates may be subject to change since the matter was being referred for policy consultation.
[25]The Therapeutic Products Program (TPP) of the Ministry of Health then proposed an amendment to the Patent Medicines (Notice of Compliance) Guidance Document by letter dated February 12, 2001. The letter sought input from "Main Trade Associations", including the intervener to the within applications. The proposed amendment would henceforth consider "filing date" to include priority date.
[26]Following the consultation exercise, the Minister declined to implement the proposed changes which had the effect of maintaining the practice that the priority date could not be used to meet the timing requirements under subsection 4(4) of the Regulations. An issue analysis on the subject entitled "Patent Application Filing Dates, Patented Medicines (Notice of Compliance) Regulations" was circulated to all stakeholders.
[27]The Canadian Drug Manufacturers Association (CDMA), an association representing generic drug manufacturers with respect to business, political and legal issues, was added as an intervener by order of this Court dated October 26, 2001. The order provided that the intervener's right to appeal should be decided by the judge hearing the applications for judicial review.
Legislative Framework
[28]It is useful to reproduce the pertinent statutory and regulatory provisions.
[29]The Minister of Health is the authority responsible for creating and maintaining the patent register, pursuant to section 3 [as am. by SOR/98-166, s. 2] of the Regulations:
3. (1) The Minister shall maintain a register of any information submitted under section 4. To maintain it, the Minister may refuse to add or may delete any information that does not meet the requirements of that section.
Subsection 4(4) of the Regulations reads as follows:
4. (1) . . .
(4) A first person may, after the date of filing of a submission for a notice of compliance and within 30 days after the issuance of a patent that was issued on the basis of an application that has a filing date that precedes the date of filing of the submission, submit a patent list, or an amendment to an existing patent list, that includes the information referred to in subsection (2).
Although the term "filing date" is not defined in the Regulations, it is defined in section 2 [as enacted by S.C. 1993, c. 15, s. 26] of the Patent Act, R.S.C.,1985, c. P-4, as amended:
2. . . .
"filing date" means, in relation to an application for a patent in Canada, the date on which the application is filed, as determined in accordance with section 28.
Section 28 [as am. idem, s. 33] of the Patent Act reads as follows:
28. (1) The filing date of an application for a patent in Canada is the date on which the Commissioner receives the documents, information and fees prescribed for the purposes of this section or, if they are received on different dates, the last date.
(2) The Commissioner may, for the purposes of this section, deem prescribed fees to have been received on a date earlier than the date of their receipt if the Commissioner considers it just to do so.
[30]Sections 28.1 to 28.4 of the Patent Act [as enacted idem] deal essentially with previously regularly filed claims in Canada and in other countries.
28.1 (1) The date of a claim in an application for a patent in Canada (the "pending application") is the filing date of the application, unless
(a) the pending application is filed by
(i) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or
(ii) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim;
(b) the filing date of the pending application is within twelve months after the filing date of the previously regularly filed application; and
(c) the applicant has made a request for priority on the basis of the previously regularly filed application.
(2) In the circumstances described in paragraphs (1)(a) to (c), the claim date is the filing date of the previously regularly filed application.
28.2 (1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed
(a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;
(c) in an application for a patent that is filed in Canada by a person other than the applicant, and has a filing date that is before the claim date; or
(d) in an application (the "co-pending application") for a patent that is filed in Canada by a person other than the applicant and has a filing date that is on or after the claim date if
(i) the co-pending application is filed by
(A) a person who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for Canada an application for a patent disclosing the subject-matter defined by the claim, or
(B) a person who is entitled to protection under the terms of any treaty or convention relating to patents to which Canada is a party and who has, or whose agent, legal representative or predecessor in title has, previously regularly filed in or for any other country that by treaty, convention or law affords similar protection to citizens of Canada an application for a patent disclosing the subject-matter defined by the claim,
(ii) the filing date of the previously regularly filed application is before the claim date of the pending application,
(iii) the filing date of the co-pending application is within twelve months after the filing date of the previously regularly filed application, and
(iv) the applicant has, in respect of the co-pending application, made a request for priority on the basis of the previously regularly filed application.
(2) An application mentioned in paragraph (1)(c) or a co-pending application mentioned in paragraph (1)(d) that is withdrawn before it is open to public inspection shall, for the purposes of this section, be considered never to have been filed.
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
(a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.
28.4 (1) For the purposes of sections 28.1, 28.2 and 78.3, an applicant for a patent in Canada may request priority in respect of the application on the basis of one or more previously regularly filed applications.
(2) The request for priority must be made in accordance with the regulations and the applicant must inform the Commissioner of the filing date, country of filing and number of each previously regularly filed application on which the request is based.
(3) An applicant may, in accordance with the regulations, withdraw a request for priority, either entirely or with respect to one or more previously regularly filed applications.
(4) Where two or more applications have been previously regularly filed as described in paragraph 28.1(1)(a), subparagraph 28.2(1)(d)(i) or paragraph 78.3(1)(a) or (2)(a), either in the same country or in different countries,
(a) paragraph 28.1(1)(b), subparagraph 28.2(1)(d)(iii) or paragraph 78.3(1)(b) or (2)(b), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications; and
(b) subsection 28.1(2), subparagraph 28.2(1)(d)(ii) or paragraph 78.3(1)(d) or (2)(d), as the case may be, shall be applied using the earliest filing date of the previously regularly filed applications on the basis of which a request for priority is made.
(5) A previously regularly filed application mentioned in section 28.1 or 28.2 or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if
(a) it was filed more than twelve months before the filing date of
(i) the pending application, in the case of section 28.1,
(ii) the co-pending application, in the case of section 28.2,
(iii) the later application, in the case of subsection 78.3(1), or
(iv) the earlier application, in the case of subsection 78.3(2);
(b) before the filing date referred to in paragraph (a), another application
(i) is filed by the person who filed the previously regularly filed application or by the agent, legal representative or predecessor in title of that person,
(ii) is filed in or for the country where the previously regularly filed application was filed, and
(iii) discloses the subject-matter defined by the claim in the application mentioned in paragraph (a); and
(c) on the filing date of the other application mentioned in paragraph (b) or, if there is more than one such application, on the earliest of their filing dates, the previously regularly filed application
(i) has been withdrawn, abandoned or refused without having been opened to public inspection and without leaving any rights outstanding, and
(ii) has not served as a basis for a request for priority in any country, including Canada.
The Minister's decision
[31]The Minister's decision in each of the three applications is that the patent in question was not eligible for listing on the patent register as it did not meet the timing requirements of subsection 4(4) of the Regulations. While the patent list was submitted within 30 days of the issuance of the patent, the filing date of the patent application in Canada did not precede the date of filing of the new drug submission.
[32]By order of this Court dated December 28, 2001, the three within applications for judicial review and contained in Court files T-1103-01, T-1104-01 and T-1120-01 were ordered to be heard together on an expedited basis.
Issues
[33]The only issue to be determined is whether the words "filing date" in subsection 4(4) of the Regulations refer solely to the filing date of an application for patent in Canada or whether they can also refer to a priority filing date.
Standard of Review
[34]There is no dispute as to the applicable standard of review. The issue before me deals with the interpretation of a regulatory provision and involves a question of law. The jurisprudence has established that in such instances the Minister should be entitled to little, if any, deference and that correctness is the proper standard of review. This is the standard I will apply in these judicial review applications. (See Merck & Co. v. Canada (Attorney General) (1999), 176 F.T.R. 21 (F.C.T.D.), affirmed [sub nom. Merck & Co. v. Nu-Pharm] (2000), 5 C.P.R. (4th) 138 (F.C.A.).)
Analysis
[35]The applicants contend that the Minister's interpretation of subsection 4(4) of the Regulations is incorrect and that his decision refusing to list the patents was therefore wrong. The applicants submit that the correct interpretation of subsection 4(4) is that the words "a filing date" includes a priority filing date and that the phrase "a filing date" should be interpreted with the help of the approach set out by the Supreme Court in Rizzo & Rizzo Shoes Ltd. (Re), [1998] 1 S.C.R. 27, at page 41, where the Court endorsed Elmer Driedger's approach in Construction of Statutes (2nd ed. 1983):
. . .the words of an Act are to be read in their entire context and in their grammatical and ordinary sense harmoniously with the scheme of the Act, the object of the Act, and the intention of Parliament.
[36]The applicants' position is that a plain reading of the section and the use of the words "a filing date", rather than "the filing date" or "a filing date of the application in Canada", could only lead to the conclusion that so long as there is a filing date for the patent application that precedes the submission filing date, and so long as the patent list is provided within 30 days of issuance of the patent, the first person is entitled to list the patent. They argue that such an interpretation is consistent with the plain meaning of these words and the purpose of the Regulations, namely to prevent patent infringement and Canada's international treaty obligations.
[37]The applicants raise four arguments in support of their position, each of which is contested by the respondent and the intervener:
(a) The use of the indefinite article "a" before the words "filing date" in subsection 4(4) of the Regulations supports the proposition that the words "filing date" can refer to any filing date, including the priority date;
(b) The words "filing date" are sometimes used in certain provisions of the Patent Act to refer to a priority date (i.e., paragraph 28.1(1)(b));
(c) In Bayer AG v. Apotex Inc. (1998), 84 C.P.R. (3d) 23 (F.C.T.D.) the words "filing of the application in Canada" in former section 28 of the Patent Act [R.S.C. 1970, c. P-4] were interpreted by this Court as including the priority filing date of a patent application; and
(d) The Minister's interpretation of subsection 4(4) of the Regulations is inconsistent with Canada's international treaty obligations, more specifically those of the Paris Convention [Paris Convention for the Protection of Industrial Property, March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, 828 U.N.T.S. 305].
I will deal with each of these arguments in turn.
[38]The applicants argue that the use of the indefinite article "a", as apposed to the definite article "the", in subsection 4(4) of the Regulations, supports an interpretation that a filing date is not meant to be restricted to just one filing date (i.e. the Canadian filing date) but to any filing date (i.e. either the priority filing date or the Canadian filing date).
[39]Any ambiguity that may have been created by the use of the indefinite article in the English version of the Regulation is dispelled by the French version which uses a definite article and reads: "dont la date de dépôt est antérieure". The French version would lend support to the respondent's position that the term "filing date" refers solely to one date, namely the Canadian filing date.
[40]Where there is ambiguity or contradiction in two official versions of an enactment reconciliation must be attempted. In cases where one version is itself ambiguous, while the other is plain and unequivocal, the jurisprudence has favoured the latter. (See Tupper v. The Queen, [1967] S.C.R. 589.) The courts have also adopted an approach that would favour a more narrow meaning over a broader one in the practice of attempting to find a shared or common meaning in the two enactments. (See P. A. Côté, The Interpretation of Legislation in Canada, 3rd. ed. (Toronto: Carswell, 2000), at page 326.)
[41]I am guided by the above-cited authorities in my attempt to find a shared or common meaning in the two enactments. The French version in the case at bar, is unambiguous and is narrower than the interpretation of the English version submitted by the applicants in that it refers to "la date de dépôt" as opposed to "a filing date". I therefore have no difficulty in favouring the narrower meaning as reflected in the French version of the enactment.
[42]I am also of the view that by adopting a narrower meaning, and interpreting "filing date" to mean the "Canadian filing date" is consistent with the intention of Parliament since the term "filing date" is expressly defined in the Patent Act as the Canadian filing date.
[43]Determination of the main issue in these applications, that is the interpretation of the words "a filing date" in the Regulations, will not turn on the use of an indefinite or definite article in the Regulations although it is a factor to be considered.
[44]The term "filing date" is not defined in the Regulations but is defined in section 2 and subsection 28(1) of the Patent Act.
[45]The definition of "filing date" in section 2 of the Patent Act is exhaustive and, in my view, unambiguous. "Filing date" in the Patent Act, is expressly defined as the date on which a patent application is filed in Canada and not the priority date. In addition, as discussed above, the French version leaves no doubt that "filing date" refers to the Canadian filing date as defined in section 28. Authority under the Regulations must be exercised within the scope of the Patent Act. Having regard to the definition of "filing date" in section 2 of the Patent Act, it would be unreasonable, in my view, to attribute a meaning to "filing date" other than that provided for and defined in the Act, that is to say the Canadian filing date.
[46]The applicants further contend that the phrase "filing date" is used in at least three contexts under the Patent Act:
1. the Canadian filing date;
2. the priority filing date; and,
3. the international filing date where an application is filed based on the Patent Cooperation Treaty [June 19, 1970, [1990] Can T.S. No. 22].
[47]The applicants point to the following sections of the Act in support of the argument that the phrase "filing date" is not restricted to a Canadian filing date but could also include a priority filing date:
(a) In each of subsections 28.4(2) and 28.4(4) the reference to "filing date" clearly is referring only to the priority filing date;
(b) In paragraph 28.1(1)(b) "filing date" is used twice, once to refer to the Canadian filing date and the second time to refer to the priority filing date;
(c) In subsection 28(1) the reference to "filing date" is to the Canadian filing date;
(d) In subsection 10(1) the reference to "filing date" is used twice, once to refer to the Canadian filing date and the second time to refer to the priority filing date; and
(e) In some instances, it may even refer to an international filing date.
[48]I disagree with the applicants argument. Paragraph 28.1(1)(b), subsections 28.4(2) and 28.4(4) of the Act essentially deal with the previously regularly filed applications in other countries. Since the term "filing date" in subsection 4(4) of the Regulations refers to Canadian patents, reference to other provisions in the Act relating to patents filed in other countries is of little help in construing subsection 4(4). The term "filing date" is consistently used in the Patent Act to refer to the date on which the application is filed in Canada.
[49]I agree with the submissions of the intervener that the Act uses the term "claim date", not the term "filing date", to refer to a previously regularly filed application or the priority date. Section 2 of the Act defines "claim date" [as enacted by S.C. 1993, c. 15, s. 26]:
2. . . .
"claim date" means the date of a claim in an application for a patent in Canada, as determined in accordance with section 28.1.
Subsection 28.1(1) provides that a claim date is the priority date if the three conditions in paragraphs 28(1)(a) through (c) are met. I am of the view that the definition of a "claim date" would be meaningless if the term "filing date" and "priority date" could be used interchangeably. It is therefore reasonable to conclude that had the Governor in Council intended to refer to the priority date in subsection 4(4) of the Regulations, the term "claim date" would have been used.
[50]At the risk of stating the obvious, the Patent Act is Canadian legislation and provides for the grant of a patent to an inventor, "if an application for the patent in Canada is filed" (see subsection 27(1) [as am. idem, s. 31] of the Patent Act). Moreover, the Patent Act specifically defines "filing date" to be the Canadian filing date. In my view, any reference to "filing date" in the Act, or in the Regulations thereunder, must be read with regard to this definition. Such an interpretation is consistent with other provisions of the Patent Act and the Regulations which, for the most part, explicitly set out, in the context of the specific section, when "filing date" is meant as a date other than the Canadian filing date.
[51]I therefore conclude that the words "a filing date", read in their entire context and in their grammatical and ordinary sense, harmoniously with the scheme of the Act and the intention of Parliament, should be interpreted to be exhaustive and refer solely to the filing date for an application for patent in Canada.
[52]The applicants rely on a decision of Mr. Justice Gibson in Bayer AG v. Apotex Inc. (1998), 84 C.P.R. (3d) 23 (F.C.T.D.) (Bayer) wherein my colleague, in considering former section 28, held that a Canadian patent is entitled to the benefit of the priority filing date.
[53]In the Bayer case, Mr. Justice Gibson held that the Chilean "patent" had not issued when the Canadian application was filed and concluded that the "foreign patent bar" provided for in the former subsection 28(2) of the Patent Act did not disentitle Bayer from obtaining the Canadian patent. By way of obiter, Justice Gibson added that on the facts of that case, and with respect to the Act as it then read, "references to `filing' of an application in Canada in subsection 28(2) are not simply to the actual filing but to any effective or priority filing date to which the applicant is entitled by virtue of subsection 29(1)" (paragraph 55 of Bayer).
[54]I am of the view that the Bayer case has limited application to the case at bar. Mr. Justice Gibson had to consider the novelty requirements under the Patent Act, as it then read, and no consideration was given to the Regulations. Further, the current provisions of the Patent Act clearly distinguish between a "filing date" and a priority or claim date. This distinction was not part of the Patent Act that was considered by Mr. Justice Gibson in Bayer.
[55]Having determined that subsection 4(4) of the Regulations and section 2 and subsection 28(1) of the Act are clear and unambiguous, there is no need, in my view, to have recourse to the international conventions as intrinsic aids to interpretation. Mr. Justice Bastarache in R. v. Cook, [1998] 2 S.C.R. 597, at paragraph 129, wrote that where a statutory provision offends international law principles of jurisdiction, there is a presumption that the provision must be interpreted in conformity with those international law principles unless the offending interpretation is clear and unmistakable. The learned Justice cited Pigeon J. in Daniels v. White and The Queen, [1968] S.C.R. 517, at page 541:
. . . Parliament is not presumed to legislate in breach of a treaty or in any manner inconsistent with the comity of nations and the established rules of international law. . . . if a statute is unambiguous, its provisions must be followed even if they are contrary to international law, as was said recently in Inland Revenue Commissioners v. Collco Dealings Ltd. ([1962] A.C. l), where all relevant authorities are reviewed. In that case, the House of Lords came to the conclusion that the intent of Parliament was clear and unmistakable and, therefore, the plain words of a statute could not be disregarded in order to observe the comity of nations and the established rules of international law. However, the principle of construction was recognized as applicable in a proper case.
[56]Even if I had found ambiguity in the Act and the Regulations, with regards to the interpretation to be afforded "a filing date", I am not convinced that the Minister's interpretation of subsection 4(4) of the Regulations or section 2 and subsection 28(1) of the Patent Act is inconsistent with the Paris Convention, the North American Free Trade Agreement Between the Government of Canada, the Government of the United Mexican States and the Government of the United States of America [December 17, 1992, [1994] Can. T.S. No. 2] (NAFTA) or with the Agreement on Trade-Related Aspects of Intellectual Property Rights [Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco, 15 April 1994, 1867 U.N.T.S. 3] (TRIPS).
[57]Both NAFTA and TRIPS impose an obligation to comply with the Paris Convention. It is therefore useful to reproduce the pertinent articles of the Paris Convention.
Paragraph 1 of Article 2 of the Paris Convention provides:
Article 2
(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this convention. Consequently, they shall have the same protection as the latter, and the same remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with. [Underlining added.]
Article 4B of the Paris Convention provides:
Article 4
B. -- Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of the copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession. Rights acquired by third parties before the date of the first application that serves as the basis for the right of priority are reserved in accordance with the domestic legislation of each country of the Union.
[58]The applicants argue that the Minister's interpretation of "filing date" in subsection 4(4) of the Regulations places patentees who file their patent applications first in a country other than Canada at a disadvantage compared to patentees who choose to file first in Canada. Such an interpretation results in unequal treatment depending upon which country they file first in and is, according to the applicants, contrary to Article 2, paragraph 1 of TRIPS which provides that member states shall comply with the Paris Convention.
[59]Essentially, the applicants argue that an interpretation of "filing date" in subsection 4(4) of the Regulations that refers only to the Canadian filing date would result in a loss of rights during the priority period, contrary to the Paris Convention, in particular, the equality of national treatment provided for in Article 2.
[60]A careful review of the pertinent articles of the Paris Convention leads me to adopt the more compelling position advanced by the intervener on this issue which I incorporate in the following paragraphs of these reasons.
[61]Under subsection 4(4) of the Regulations, "nationals" of Canada and "nationals" of any other country are entitled to the same advantages provided they comply with the same conditions and formalities. This requirement to comply with the same conditions and formalities is specifically provided for in paragraph 1 of Article 2 of the Paris Convention.
[62]Further, Article 4B of the Paris Convention speaks of a subsequent filing "not be invalidated" by reason of an intervening act. I am of the view that Canada complies with article 4B by allowing a party that files a foreign patent application to claim priority in Canada under paragraph 28.1(1)(c) of the Act, in the circumstances set out in paragraphs 28.1(1)(a) and (b). The effect of such priority is set out at paragraphs 28.1 to 28.4 of the Act. Interpreting "filing date" as the Canadian filing date, as did the Minister, does not constitute an "act" that "invalidates" the subsequent Canadian filing. A patent which cannot be listed under the Regulations does not thereby become invalid. The patentee can always enforce its patent rights by action. The scope of the Regulations does not impact upon patent rights.
[63]For the above reasons, I conclude that the Minister was correct in interpreting the phrase "filing date" in subsection 4(4) of the Regulations to refer solely to the filing date of an application for patent in Canada. The Minister's refusal to list the patents was therefore correct.
[64]The applications for judicial review will accordingly be dismissed.
[65]In view of the fact that my disposition favours the position advanced by the intervener, it is not necessary for me to determine whether leave to appeal ought to be granted to the intervener.
ORDER
[66]THIS COURT ORDERS that:
1. The applications for judicial review are dismissed.
2. The respondent shall have its costs on each of the applications.