A-442-02
A-443-02
2003 FCA 138
Pfizer Canada Inc. (Appellant)
v.
Attorney General of Canada (Respondent)
and
The Canadian Drug Manufacturers' Association (Intervener)
A-443-02
Schering Canada Inc. (Appellant)
v.
Attorney General of Canada (Respondent)
and
The Canadian Drug Manufacturers' Association (Intervener)
Indexed as: Pfizer Canada Inc. v. Canada (Attorney General) (C.A.)
Court of Appeal, Strayer, Nadon and Pelletier JJ.A.-- Toronto, January 29; Ottawa, March 14, 2003.
Patents -- Patented medicines -- Health Minister refusing to list patents under NOC Regulations, s. 4 as Canadian patent applications not preceding date of NOC submissions -- American equivalent patents already applied for -- Meaning of "filing date" in s. 4(4) -- F.C.T.D. Judge holding meaning Canadian patent application filing date -- Whether ambiguity due to minor discrepancy in English, French versions -- Appeals dismissed by F.C.A. -- International instruments not prohibiting interpretation of s. 4(4) in Patent Act context -- Patent Act not legislation implementing international agreements -- No necessity for reference to international law where legislation clear -- Requirement to file patent application prior to NOC submission not discriminating on nationality basis -- NOC Regulations extra administrative process for public health protection -- Special remedies not detracting from priority regarding Canadian patent applications -- Requirement to apply for Canadian patent before recourse to remedies under Regulations not inconsistent with Paris Convention.
Construction of Statutes -- Patented Medicines (Notice of Compliance) Regulations -- Meaning of term "filing date" in s. 4(4) -- F.C.A. affirming F.C.T.D. decision term meaning Canadian patent application filing date -- Minor discrepancy in wording of English, French versions but case not turning on use of definite, indefinite article -- Appellants citing international instruments, arguing prohibit interpretation of s. 4(4) in Patent Act context -- Presumption Parliament not intending to legislate contrary to international treaties but inapplicable where legislation clear -- NOC Regulations not adopted to implement treaty -- Not discriminating on nationality basis.
These were three appeals from an order of Blanchard J. denying applications for judicial review of the Minister's refusal to list certain patents pursuant to Patented Medicines (Notice of Compliance) Regulations, section 4. Subsection 4(4) permits submission of a patent list after a patent is issued on the basis of an application that has a filing date that precedes the date of filing of a submission of a notice of compliance. In each case, listing was refused because the filing date of the applications for Canadian patents did not precede the filing date of NOC submissions. In each case, an American equivalent patent had previously been applied for. Appellants' argument, before both Blanchard J. and this Court, was that the term "filing date" in Regulations, subsection 4(4) is not confined to the date an application is filed for a Canadian patent but instead means the "priority date" of a Canadian patent based on, in these cases, the date of filing patent applications in the U.S.A. which, in each case, preceded the date of filing submissions for notices of compliance.
Having reviewed the Minister's decision according to the standard of correctness, the issue being one of law, the Trial Division Judge concluded that the words "a filing date", read in context and in their grammatical and ordinary sense, harmoniously with the scheme of the Act and Parliamentary intent, was exhaustive, referring only to the Canadian patent application filing date. The Judge did consider the argument of ambiguity in the Regulation, since the English version speaks of "a filing date" while the French refers to "la date de dépôt" but indicated that the case did not turn on use of a definite or indefinite article.
Held, the appeals should be dismissed.
There were two essential issues upon this appeal: (1) does the reference to "a filing date" in subsection 4(4) include a priority date based on an earlier foreign filing, or is the provision at least ambiguous; (2) should international conventions be resorted to and, if so, are they determinative?
Read as a whole, it is clear that section 4 deals with a patent list confined to Canadian patents. It is obvious that all the references to a "patent" are to the same patent and, given that only a Canadian patent can appear on the list, the references must be to an application for, and issuance of, a Canadian patent. While it is true that there are provisions in the Patent Act in which the term "filing date" includes a foreign filing, it is clear from the context that a previous foreign filing was referred to. It was unnecessary to consider the difference in the two official language versions since, in the legislative context, the meaning is the same.
Appellants, however, pointed to three international instruments: Paris Convention for the Protection of Industrial Property, North American Free Trade Agreement (NAFTA) and Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) which, it was argued, prohibit the respondent's interpretation of subsection 4(4) in the context of the Patent Act. NAFTA does provide that any "federal law that implements a provision of the Agreement or fulfils an obligation of the Government of Canada under the Agreement shall be interpreted in a manner consistent with the Agreement" but that leaves open the question as to what laws implement a NAFTA obligation. While section 19.3 of the Patent Act does authorize the Governor in Council to make regulations to implement NAFTA, Article 1720, that Article, not here invoked, appears to involve only transitional provisions. This also suggests that the Governor in Council was not given a general mandate to implement NAFTA by regulations and further casts doubt on appellants' submission that subsection 4(4) must be interpreted as legislation implementing NAFTA. Parliament is presumed not to intend to legislate contrary to international treaties. But this is a mere presumption and, where the legislation is clear, there is no necessity for reference to international law.
Appellants cited National Corn Growers Assn. v. Canada (Import Tribunal) as authority for the proposition that international treaties are always a proper aid in the interpretation of domestic legislation. But that Supreme Court of Canada decision could be distinguished as one involving the interpretation of the Special Import Measures Act which was intended to implement the General Agreement on Tariffs and Trade. The Regulations at issue herein were not adopted to implement an international agreement. Even if any of the international instruments relied upon by appellants were to be taken into account, none would dictate the result suggested by appellants. The requirement to file a patent application in Canada prior to making an NOC submission does not discriminate on the basis of nationality as it applies equally to Canadian originators and those from foreign countries. Indeed, all of the appellants are Canadian companies. While Article 4B of the Paris Convention provides that one filing a patent application in a member country enjoys a right of priority based upon the date of original filing, subsection 4(4) of the Regulations in no way invalidates a patent first filed in another Union member where that patent is invoked for purposes of priority in filing for a Canadian patent. The Regulations provide an extra administrative process connected with public health protection. On the one hand, they assist the development and preparation for marketing of generic drugs while, on the other hand, protecting patentees who can prevent, for 24 months, the issuance to a generic manufacturer of an NOC just by applying for prohibition. These special remedies in no way detract from the priority to which Convention member patents are entitled in Canada with respect to Canadian patent applications. Appellants were at liberty to file patent applications in Canada prior to filing their NOC submissions but failed to do so. There is nothing inconsistent with the Paris Convention in requiring the holder of a Convention patent to apply for the same patent in Canada prior to taking advantage of the additional enforcement rights under the Regulations just as has to be done to be able to exercise enforcement rights under the Patent Act generally.
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, Arts. 2, 3, 4.
| General Agreement on Tariffs and Trade, October 30, 1947, [1948] Can. T.S. No. 31. |
| 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, Arts. 1701, 1702. |
| North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44, s. 3. |
| 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., 1985, c. P-4, ss. 2 "claim date" (as enacted by S.C. 1993, c. 15, s. 26), 10(1) (as am. idem, s. 28), 19.3 (as enacted by S.C. 1993, c. 44, s. 191), 28.1 (as enacted by S.C. 1993, c. 15, s. 33), 28.4 (as enacted idem). |
| Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, s. 4 (as am. by SOR/98-166, s. 3). |
| Special Import Measures Act, S.C. 1984, c. 25. |
cases judicially considered
distinguished:
National Corn Growers Assn. v. Canada (Import Tribunal), [1990] 2 S.C.R. 1324; (1990), 74 D.L.R. (4th) 449; 45 Admin. L.R. 161; 114 N.R. 81.
referred to:
Daniels v. White and The Queen, [1968] S.C.R. 517; Schreiber v. Canada (Attorney General) (2002), 216 D.L.R. (4th) 513; 167 C.C.C. (3d) 51; 22 C.P.C. (5th) 207; 292 N.R. 250; 164 O.A.C. 354 (S.C.C.); Pushpanathan v. Canada (Minister of Citizenship and Immigration), [1998] 1 S.C.R. 982; (1998), 160 D.L.R. (4th) 193; 11 Admin. L.R. (3d) 1; 43 Imm. L.R. (2d) 117; 226 N.R. 201.
authors cited
Brownlie, Ian. Principles of Public International Law, 3rd ed. Oxford: Clarendon Press, 1979.
APPEALS from the order of a Trial Division Judge ([2003 1 F.C. 423; (2002), 20 C.P.R. (4th) 193; 221 F.T.R. 130) denying applications for judicial review of the refusal by the Minister of Health to list certain Canadian patents on patent lists under Patented Medicines (Notice of Compliance) Regulations section 4. Appeals dismissed.
appearances:
Anthony G. Creber and François Grenier for appellants.
F. B. Woyiwada for respondent.
Edward J. B. Hore for intervener.
solicitors of record:
Gowling Lafleur Henderson LLP, Ottawa, for appellants.
Deputy Attorney General of Canada for respondent.
Hazzard & Hore, Toronto, for intervener.
The following are the reasons for judgment rendered in English by
[1]Strayer J.A.: These three appeals were heard at the same time. They are from the same order of Blanchard J. [[2003] 1 F.C. 423 (T.D.)] dismissing applications for judicial review of the decision of the Minister of Health refusing to list certain Canadian patents on the patent lists pursuant to section 4 of the Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (as amended by SOR/98-166, s. 3) (the Regulations).
[2]In each of these cases the sequence of relevant events was as follows.
1. Filing of a U.S. patent application for a drug.
2. Filing in Canada, of a submission for that drug in order to obtain a notice of compliance (NOC).
3. Filing in Canada of a patent application in respect of the same drug.
4. Issue in Canada of an NOC in respect of the drug.
5. Issue of the Canadian patent.
6. Submission to the Minister of National Health and Welfare of the Canadian patent within 30 days of its issue for addition to a patent list under subsection 4(1) of the Regulations.
[3]In each case the Minister refused to list the Canadian patents because the filing date of the applications for those Canadian patents did not precede the filing date for submissions for NOCs.
[4](It is not explained in the material who applied for the U.S. patents nor the relationship of those applicants to the Canadian appellants in these appeals. Nothing appears to turn on this detail.)
[5]Section 4 of the Regulations provides in part as follows:
4. (1) A person who files or has filed a submission for, or has been issued, a notice of compliance in respect of a drug that contains a medicine may submit to the Minister a patent list certified in accordance with subsection (7) in respect of the drug.
(2) A patent list submitted in respect of a drug must
. . .
(b) set out any Canadian patent that is owned by the person . . . that contains a claim for the medicine itself or a claim for the use of the medicine and that the person wishes to have included on the register;
. . .
(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). [Emphasis added.]
[6]The Minister takes the position that, pursuant to subsection 4(4), he can only list a Canadian patent where an application was made for such patent prior to the filing of a submission for an NOC. In all of these cases there had been an application for a U.S. equivalent patent prior to the filing of a submission, but in each case the application for the Canadian patent was not made until after the filing of NOC submissions.
[7]The appellants all sought judicial review of the Minister's refusals. In one set of reasons and identical orders the applications judge, Blanchard J., dismissed these applications.
[8]The argument which the appellants made before the Applications Judge and made in this Court is that the term "filing date" in subsection 4(4) of the Regulations is not confined to the date an application is filed for a Canadian patent but instead means the "priority date" of a Canadian patent based on as, in these cases, the date of filing applications in the U.S. for patents which in each case preceded the date of filing submissions under the Regulations for notices of compliance.
[9]The Applications Judge, correctly in my view, held that the standard of review of the Minister's decision was correctness, the issue being a question of law.
[10]His main conclusion was as follows, at paragraph 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.
He did consider the argument that there was ambiguity in subsection 4(4) of the Regulations because the English version refers to "a filing date"[emphasis added] preceding the drug submission while the French version speaks of "la date de dépôt" [emphasis added] of the application. He concluded that the French version was narrower and must be taken to refer to "the" filing date which in context must be confined to one possible date, the date of filing of an application for a Canadian patent. He chose this meaning as the one common to both versions, being the narrower meaning. However, he also said (at paragraph 43) that determination of the main issue would not turn simply on the use of a definite or indefinite article: "it is a factor to be considered". He then went on to find that looking at the Patent Act [R.S.C., 1985, c. P-4] and Regulations as a whole, the meaning of "an application date" was clear and unambiguous, referring only to the application filed in Canada for a Canadian patent. In the light of this conclusion he found that he did not have to resort to international conventions as aids to interpretation, as urged to do by the appellants. He observed, however, that he could find no conflict between his interpretation of subsection 4(4) and the international instruments relied on by them.
[11]The appellants argued before us that the Applications Judge was in error on all of these conclusions.
Issues
[12]I believe the essential issues are:
| (1) Does the reference to "a filing date" in subsection 4(4) of the Regulations include a priority date based on an earlier foreign filing, or is the provision at least ambiguous? |
| (2) Should international conventions be resorted to in order to determine the meaning of "a filing date", and if so are they determinative? |
Analysis
(1) Intrinsic meaning of "a filing date" in subsection 4(4)
[13]I am satisfied, like the Applications Judge, that the meaning of "a filing date" in subsection 4(4) is amply clear and that it refers to the filing date of an application for a Canadian patent.
[14]If one reads section 4 (supra) as a whole it is clear that it deals with a patent list confined to Canadian patents. Paragraph 4(2)(b) makes it clear that only Canadian patents may be included. Subsection 4(4) provides that the patentee may
4. (1) . . .
(4) . . . 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 . . . [Emphasis added.]
It is obvious that all of these references to a "patent" are to the same patent and, as we know that only a Canadian patent can be on such a list, they must refer to the application for, and issuance of, a Canadian patent.
[15]The appellants argue that there are other uses of "filing date" in the Patent Act where the term includes a foreign filing. They cite subsections 28.4(2) [as enacted by S.C. 1993, c. 15, s. 33] , 28.4(4) [as enacted idem], paragraph 28.1(1)(b) [as enacted idem], and subsection 10(1) [as am. idem, s. 28]. Suffice it to say that in the first three provisions it is clear from the context of these provisions that a previous foreign filing is being referred to. I do not understand the reference in their factums to subsection 10(1) which is said to use the term "filing date" twice. I cannot find the phrase in that subsection.
[16]On the other hand, the term "claim date" [as enacted idem, s.26] is defined as follows:
2. . . .
"claim date" means the date of a claim in an application for a patent in Canada, as determined in accordance with section.
Section 28.1 provides that the date of a claim in a Canadian application is the filing date of that application unless the applicant asserts priority of its claim on the basis of previously filed applications in Canada or abroad in respect of the same subject-matter. This further confirms the view that where the term "filing date" is used alone without qualification it refers to the date of filing an application in Canada.
[17]I find it unnecessary to consider the difference in language between the two official language versions. I believe the meaning is the same in both because of the context of the Regulations and Act.
[18]For these reasons I am satisfied the meaning of "filing date" in subsection 4(4) is clear and unambiguous and is confined to the filing of an application in Canada in conformity with the Patent Act.
(2) Must international conventions nevertheless be consulted and given effect?
[19]The appellants resort to three international instruments which, they say, prohibit this interpretation of subsection 4(4) in the total context of the Patent Act.
Paris Convention for the Protection of Industrial Property [828 U.N.T.S. 305]
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 legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.
. . .
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 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.Article 4
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]
Article 1701: . . .
2. To provide adequate and effective protection and enforcement of intellectual property rights, each Party shall, at a minimum, give effect to this Chapter and to the substantive provisions of:
. . .
(c) the Paris Convention for the Protection of Industrial Property, 1967 (Paris Convention);
. . .
Article 1702: . . .
A Party may implement in its domestic law more extensive protection of intellectual property rights than is required under this Agreement, provided that such protection is not inconsistent with this Agreement.
This agreement has been implemented by the North American Free Trade Agreement Implementation Act, S.C. 1993, c. 44 (NAFTA). Section 3 of this Act provides:
3. For greater certainty, this Act, any provision of an Act of Parliament enacted by Part II and any other federal law that implements a provision of the Agreement or fulfils an obligation of the Government of Canada under the Agreement shall be interpreted in a manner consistent with the Agreement.
It will be noted that it is a federal law which "implements" or "fulfils an obligation of the Government of Canada" which shall be interpreted consistently with NAFTA. This falls far short of making NAFTA part of domestic law. It also leaves open the question as to which laws can be said to implement or fulfil a NAFTA obligation. Nowhere in the Regulations nor in the Regulatory Import Analysis Statements issued in 1993 or 1998 is such an intention stated. While section 19.3 [as enacted by S.C. 1993, c. 44, s. 191] of the Patent Act, specifically authorizes the Governor in Council to make regulations to implement Article 1720 of NAFTA, that Article is not invoked by the appellants here and appears to involve only transitional provisions. This also suggests that the Governor in Council was not given a general mandate to implement NAFTA by regulations (expressio unius est exclusio alterius) and it further puts in doubt the appellants' assumption that subsection 4(4) of the Regulations must be interpreted as legislation for implementing NAFTA generally or some other convention.
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, 1967 U.N.T.S. 3] (TRIPS Agreement)
Article 2
Intellectual Property Conventions
1. In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967).
. . .
Article 3
National Treatment
1. Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.
. . .
Article 4
Most-Favoured-Nation Treatment
With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members.
[20]First, I am of the view that there is no need to resort to these instruments in this case. I base this conclusion on the long-established jurisprudence that while Parliament is presumed not to intend to legislate contrary to international treaties or general principles of international law, this is only a presumption: where the legislation is clear one need not and should not look to international law. (See, e.g. Daniels v. White and The Queen, [1968] S.C.R. 517, at page 541; Schreiber v. Canada (Attorney General) (2002), 216 D.L.R. (4th) 513 (S.C.C.), at paragraph 50). The appellants nevertheless say this principle has been modified by the Supreme Court in National Corn Growers Assn. v. Canada (Import Tribunal), [1990] 2 S.C.R. 1324. They take that case to mean that "international treaties are always a proper aid to be used to interpret domestic legislation". But in that case Gonthier J. put it thus, at pages 1371-1372 [citing Principles of International Law, 3rd ed.]:
If the convention may be used on the correct principle that the statute is intended to implement the convention then, it follows, the latter becomes a proper aid to interpretation, and, more especially, may reveal a latent ambiguity in the text of the statute even if this was `clear in itself'.
(See also Pushpanathan v. Canada (Minister of Citizenship and Immigration), [1998] 1 S.C.R. 982, at paragraph 51.) In that case the Court was interpreting the Special Import Measures Act, S.C. 1984, c. 25 which, it was agreed by the parties, was specifically intended to implement the General Agreement on Tariffs and Trade [October 30, 1947, [1948] Can. T.S. No. 31] (GATT). Therefore resort was had to the GATT in interpreting the powers given to the Tribunal under the Act.
[21]That is not the situation in the present case. It has not been demonstrated to me that the Patented Medicines (Notice of Compliance) Regulations were adopted for the purpose of implementing any of the international instruments on which the appellants rely as set out above.
[22]If I should be in error in this respect, however, I am also of the view that none of the instruments relied on, even if applied directly to override the clear language of the Regulations, would dictate the result insisted upon by the appellants.
[23]Some of these instruments require "national treatment", that is treatment as favourable for nationals of other parties to the conventions as is accorded to a member's nationals by that member. This is the essence of paragraph 1 of Article 2 of the Paris Convention and paragraph 1 of Article 3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Subsection 4(4) of the Regulations as the Applications Judge has interpreted it in no way conflicts with this obligation. The requirement which it imposes on an originator, to file a patent application in Canada before making a submission for an NOC, is in no way tied to nationality. It applies equally to Canadian originators as to originators from any of the countries who are members of the Paris Convention or TRIPS. Indeed the appellants who complain herein are all Canadian companies. Similarly the most-favoured- nation treatment required by Canada under Article 4 of TRIPS is in no way denied by subsection 4(4) of the Regulations, for the same reason. Its provisions apply to all "first persons" who want to make submissions for an NOC in Canada, regardless of nationality.
[24]The other important international obligation invoked by the appellants is found in Article 4B of the Paris Convention. This is based on the right of priority established by Article 4A. A person filing an application for a patent in any member country enjoys a right of priority for its patent, based on the date of original filing, in respect of any subsequent filing (within prescribed time limits) in another member state. Article 4B (quoted in full supra) goes on to provide in part:
Article 4
. . .
B. -- Consequently, any subsequent filing in any of the other countries of the Union . . . 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 copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right . . . .
By Article 1701(2) of NAFTA, Canada is obliged to give effect to this Convention and is bound to comply with these articles by paragraph 1 of Article 2 of TRIPS.
[25]Now subsection 4(4) of the Regulations as interpreted by the Applications Judge in no way "invalidates" a patent first filed in another member of the Union where that patent is invoked for purposes of priority in a filing for a Canadian patent. That priority is specifically protected by section 28.1 of the Patent Act. Nor do the Regulations give rise to any third-party patent rights that could detract from the priority based on a foreign filing. The owner of a foreign patent can prosecute his Canadian patent application with his priority recognized, as long as he does it within one year. He has access to our courts to withstand challenges to his application, to object to other conflicting applications, and to seek redress for infringement of his patent once it is issued in Canada.
[26]Instead, the Regulations provide an extra administrative process tied to the protection of public health, designed, on the one hand, to assist the development and preparation for marketing of generic drugs at a time prior to issue of an NOC when their sale would still be an infringement of a current patent. At the same time it gives patentees extra protection: by merely applying for prohibition they can normally prevent the issue of an NOC to a generic for 24 months. This system is, not surprisingly, confined to the protection of patents which have, or will have, force in Canada. The universe of special remedies is confined to existing or potential Canadian patents. But this in no way detracts from the priority to which Convention member patents are entitled in Canada in respect of the prosecution of Canadian patent applications. All that is required to achieve recognition in the Canadian regulatory system under consideration is to file a Canadian patent application prior to filing a submission for a notice of compliance. The appellants were at liberty to file such patent applications in Canada prior to filing their submissions but they did not do so.
[27]In spite of what the appellants seem to imply, the Paris Convention does not, as I understand it, confer immediate enforceability in Canada of a patent applied for or obtained in another member country. While it gives certain priorities to its holder in prosecuting a Canadian patent application, that holder or its affiliate must still apply in Canada for a patent before being able to enforce it here. The Regulations are in no way inconsistent with this principle. Article 1702 of NAFTA provides that a party may provide more extensive protection of patents than already required (by e.g. the Paris Convention), and such protection "must not be inconsistent with this Agreement" (inter alia inconsistent with the Paris Convention incorporated by subparagraph (c) of Article 1701(2)). While arguably the Regulations represent "more extensive protection", there is nothing inconsistent with the Paris Convention in requiring the holder of a Convention patent to apply for the same patent in Canada before being able to enjoy the extra enforcement rights under the Regulations just as he has to do to exercise enforcement rights under the Patent Act generally.
[28]Therefore even if resort should be had to the international conventions to interpret subsection 4(4), that provision is correctly understood to require the filing of a Canadian patent application prior to delivery by a first person of a submission for a notice of compliance.
Conclusion
[29]I am therefore satisfied that the Applications Judge correctly interpreted subsection 4(4) of the Regulations. The appeals should all be dismissed with one set of costs to the respondent. The appeals having been dismissed as sought by the intervener there is no need to deal with its request for grant of status to seek leave to appeal in the Supreme Court.
Nadon J.A.: I agree.
Pelletier J.A. : I agree.