The Federal Court upholds validity of formulation patent by assessing its inventive concept

When asked for her thoughts on Merck Sharp & Dohme Corp. v. Pharmascience Inc., partner Yael Bienenstock told The Lawyer’s Daily that “of interest in the case was that the patent at issue was a formulation patent.”

Merck Canada Inc. recently took to the Federal Court to defend its compound patent for a diabetes drug, alleging Pharmascience’s infringement of its 400 Patent.

Yael noted that part of the Supreme Court’s framework in Apotex v. Sanofi was the inventive concept for claims. This inventive concept—currently debated in patent law—is one of the key aspects of the obviousness analysis.

“What went into the inventive concept was choosing the compound sitagliptin in its particular salt form or its particular crystal form, with the properties,” she said.

“I think that’s what went into a finding that these claims are not obvious.”

Read: Inventive concept is alive and well

Yael mentioned that the going forward courts are really going to take a fact-specific approach in cases like this, focusing on the invention story.

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