Novopharm One Step Closer to Marketing Generic Version of Blockbuster Drug

The Federal Court ruled on January 24, 2007 that Novopharm's generic version of CELEBREX, a blockbuster drug used to relieve pain and inflammation, did not infringe on Pfizer's basic patent for the drug because it was invalid. G.D. Searle & Co. v. Novopharm Ltd., [2007] F.C.J. No. 120 was the first case to fully consider a patent applicant's obligation to respond in “good faith” to requisitions made by the Patent Office. The “good faith” requirement was introduced in the Patent Act in 1996.

According to the Federal Court, Pfizer's patent was invalid because the applicant for the patent had not acted in good faith when it failed to disclose material information affecting the invention's patentability in response to a requisition from the Patent Office. The patent was also invalid because the medicinal ingredient in CELEBREX, celecoxib, was an obvious variant of a previously known compound.

John Rook, Dino Clarizio, Martin Kratz, Irene Bridger and Dominique Hussey of Bennett Jones LLP represented the respondent Novopharm.

Robert MacFarlane and Christine Pallotta of Bereskin & Parr represented the applicants G.D. Searle and Pfizer.