AstraZeneca Canada Inc. v. Canada (Minister of Health), 2006 SCC 49, [2006] 2 SCR 560

                                                 SUPREME COURT OF CANADA

Between:

Apotex Inc.

Appellant

and

AstraZeneca Canada Inc., Minister of Health and

Attorney General of Canada

Respondents

And between:

Apotex Inc.

Appellant

and

AstraZeneca Canada Inc., Minister of Health and

Attorney General of Canada

Respondents

‑ and ‑

Canadian Generic Pharmaceutical Association and

Canada’s Research‑Based Pharmaceutical Companies

Interveners

Coram: McLachlin C.J. and Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ.

______________________________

AstraZeneca Canada Inc. v. Canada (Minister of Health), [2006] 2 S.C.R. 560, 2006 SCC 49

Apotex Inc.                                                                                                       Appellant

v.

AstraZeneca Canada Inc., Minister of Health and

Attorney General of Canada                                                                       Respondents

‑ and -

Apotex Inc.                                                                                                       Appellant

v.

AstraZeneca Canada Inc., Minister of Health and

Attorney General of Canada                                                                       Respondents

and

Canadian Generic Pharmaceutical Association and

Canada’s Research‑Based Pharmaceutical Companies                             Interveners

Indexed as:  AstraZeneca Canada Inc. v. Canada (Minister of Health)

Neutral citation:  2006 SCC 49.

File No.:  30985.

2006:  May 11; 2006:  November 3.

Present:  McLachlin C.J. and Bastarache, Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ.

on appeal from the federal court of appeal

Intellectual property — Patents — Patented medicines — Notice of compliance — Generic manufacturer applying in 1993 for notice of compliance to manufacture and sell copy‑cat version of drug containing omeprazole — Original drug sold in Canada from 1989 to 1996 — Innovator drug company continuing to list new patents associated with drug even though it had withdrawn drug from market and had marketed no related products — Generic manufacturer’s notice of compliance establishing bioequivalence with 1989 version of drug — Whether generic manufacturer was required to address new listed patents — Whether s. 5(1) of Patented Medicines (Notice of Compliance) Regulations refers to actual comparator drug copied by generic manufacturer or to drug in any of its formulations — Patent Act, R.S.C. 1985, c. P‑4, s. 55.2(4)  — Patented Medicines (Notice of Compliance) Regulations, SOR/93‑133, ss. 4(1), (5), 5(1).

In 1989, the respondent AstraZeneca, an innovator manufacturer, obtained from the Minister of Health a notice of compliance (“NOC”) enabling it to market its drug omeprazole for use in the treatment of acidic stomach conditions. It was sold in Canada as Losec 20 from 1989 until 1996, when AstraZeneca decided to remove it from the market and replace it with another formulation.  AstraZeneca’s patent for omeprazole then expired in 1999.  In 2002, despite the absence of Losec 20 from the market, AstraZeneca obtained and registered with the Minister of Health two more patents associated with Losec 20, but did not incorporate this new technology into any of its products.  In 1993, Apotex filed an abbreviated new drug submission for a NOC for its generic version of omeprazole, comparing its product to AstraZeneca’s 1989 version of Losec 20.  The Minister determined that Apotex was not required to address the after‑issued patents and granted Apotex the NOC in 2004.  AstraZeneca applied for judicial review of this decision, and the motions judge upheld the Minister’s decision.  The Federal Court of Appeal overturned this judgment and quashed Apotex’s NOC.

Held:  The appeal should be allowed. 

Under the Patented Medicines (Notice of Compliance) Regulations (“NOC Regulations”), a generic manufacturer that is not prepared to await the expiry of what are alleged to be the relevant patents, must challenge their validity or applicability to its proposed product (s. 5).  The challenge is to be embodied in a notice of allegation.  The innovator drug company may then apply for an order prohibiting the issuance of the NOC based on the relevance, validity and applicability of the listed patents (s. 7).  The application for prohibition triggers a 24‑month statutory freeze on the issuance of a NOC.  In this case, the Minister was entitled to issue the NOC to Apotex on the basis of Apotex’s abbreviated new drug submission without subjecting it to the 24‑month statutory freeze in respect of the after‑issued patents.  The NOC Regulations are concerned only with patents relevant to the innovator product actually copied and not with subsequently issued and listed patents from which a generic manufacturer could not receive a benefit. [3] [17]

AstraZeneca’s interpretation of the NOC Regulations, which is rejected, would permit “evergreening” a product  indefinitely by the addition of new patents of marginal significance, which would trigger an indefinite series of 24‑month statutory freezes, even though such subsequently listed patents are not the subject of “early working” by the generic manufacturer, and from which (as in the circumstances here) the generic manufacturer derives no advantage.  Such an interpretation not only flies in the face of the limited regulatory purpose authorized by s. 55.2(4)  of the Patent Act , but attaches no significance to s. 4(5) of the NOC Regulations which requires that particular patents be linked to particular submissions.  It is not to be presumed that the regulations insist on this identification for no purpose.  [23]

The scope of the protection to which AstraZeneca is entitled is predicated on the patent list established under s. 4(1). With respect to patents added afterwards, s. 4(5) indicates that a patentee must link the submission to the patent list to which it relates, and to the NOC to which the submissions are directed.  This ensures that the Minister is able to identify the precise patents relevant to the “early working” by a generic manufacturer of its copy‑cat product.  [20‑22]

Since, in this case, Apotex did not claim bioequivalence or  take advantage of the early working exception with respect to the technology incorporated in the two after‑issued patents, the scheme of the NOC Regulations and the statutory freeze with respect to those patents should not apply to it.  When the NOC Regulations are considered in their context, including s. 55.2(4)  of the Patent Act , the references in s. 5(1) to “another drug for the purpose of demonstrating bioequivalence” and “the other drug” in respect of which patents are listed can only mean the actual comparator drug and not a drug that never became available on the market for comparison. [18] [23] [28] [36]

Cases Cited

Applied:  Bristol‑Myers Squibb Co. v. Canada (Attorney General), [2005] 1 S.C.R. 533, 2005 SCC 26; Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42; overruled:  Eli Lilly Canada Inc. v. Canada (Minister of Health), [2003] 3 F.C. 140, 2003 FCA 24.

Statutes and Regulations Cited

Food and Drug Regulations, C.R.C. 1978, c. 870, ss. C.08.001.1, C.08.002.1(1)(a).

Food and Drugs Act , R.S.C. 1985, c. F‑27 .

Patent Act , R.S.C. 1985, c. P‑4 , s. 55.2(1) , (2) , (4) .

Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, ss. 3(3), 4, 5, 6, 7, 8.

APPEAL from a judgment of the Federal Court of Appeal (Noël, Sharlow and Malone JJ.A.), [2006] 1 F.C.R. 297, 254 D.L.R. (4th) 690, 336 N.R. 166, 40 C.P.R. (4th) 353, [2005] F.C.J. No. 889 (QL), 2005 FCA 189, reversing a decision of Kelen J. (2004), 263 F.T.R. 161, 36 C.P.R. (4th) 519, [2004] F.C.J. No. 1545 (QL), 2004 FC 1277.  Appeal allowed.

Harry B. Radomski, Andrew R. Brodkin and Miles Hastie, for the appellant.

Gunars A.  Gaikis, Yoon Kang, Nancy P. Pei and Colin B. Ingram, for the respondent AstraZeneca Canada Inc.

Peter M. Southey and Frederick B. Woyiwada, for the respondents the Minister of Health and the Attorney General of Canada.

Edward Hore and Kevin Zive, for the intervener the Canadian Generic Pharmaceutical Association.

Patrick S. Smith and Henry S. Brown, Q.C., for the intervener Canada’s Research‑Based Pharmaceutical Companies.

The judgment of the Court was delivered by

1                                   Binnie J. — On January 27, 2004, the respondent Minister issued to the appellant Apotex Inc. a notice of compliance (“NOC”) permitting Apotex to manufacture and sell a copy-cat version of a drug containing omeprazole.  The drug was originally developed and marketed as Losec 20 by the respondent AstraZeneca Canada Inc. The patent on omeprazole itself, which is used to treat stomach conditions related to hyperacidity, expired in 1999.  AstraZeneca began to market Losec 20 in Canada in 1989 but withdrew it in September 1996 because it had developed what it considered to be a superior drug using omeprazole magnesium.  Apotex wants approval to market the older Losec 20 product.

2                                   Nevertheless, AstraZeneca seeks to quash the NOC issued to Apotex on the basis of two patents which it (or a related company) obtained and registered with the Minister after Losec 20 was withdrawn from the market (hereafter referred to as the 037 and 470 patents).  The basis of AstraZeneca’s objection at this stage is not patent infringement but the alleged failure of Apotex to comply with the much litigated Patented Medicines (Notice of Compliance) Regulations, SOR/93-133 (“NOC Regulations”), which are reproduced in the Appendix.  The NOC Regulations provide an innovator drug company like AstraZeneca with procedures to freeze for the purpose of assuring patent compliance the access of copy-cat patented medicines to market “in addition to” whatever remedies a patent owner has under the ordinary law of patents.

3                                   The response of Apotex is that the later patents have nothing to do with the version of Losec 20 it copied, which did not (and could not) have incorporated the 037 or 470 technology.  The NOC Apotex received on January 27, 2004 does not approve the use by Apotex of that technology.  Apotex copied the 1989 product and contends that in that respect all NOC regulatory requirements have been satisfied.  Apotex argues that even if it had wanted to copy the 037 and 470 technology, it could not have done so “[to] demonstrat[e] bioequivalence” within the meaning of the NOC Regulations because AstraZeneca never produced a product incorporating the technology taught by the two subsequently issued and listed patents.  Apotex could not copy a product that did not exist.  Kelen J. accepted the argument of Apotex that the NOC Regulations were only concerned with patents relevant to the innovator product actually copied, and not with subsequently issued and listed patents from which, under the federal new drug approval process, a generic manufacturer could receive no benefit ((2004), 263 F.T.R. 161, 2004 FC 1277).  He therefore dismissed AstraZeneca’s application to quash the Apotex NOC.  The Federal Court of Appeal reversed, Sharlow J.A. dissenting ([2006] 1 F.C.R. 297, 2005 FCA 189).  In my view, Kelen J. and Sharlow J.A. reached the correct conclusion.  I would allow the appeal.  The procedural delays afforded AstraZeneca by the majority decision of the Federal Court of Appeal overshoot the provisions and purpose of the NOC Regulations.  The NOC 9427-A1114-195 issued by the Minister on January 27, 2004 is valid.

A.  Brief Chronology of Events

4                                   June 19, 1989                                                                                           NOC issued to AstraZeneca for Losec 20 (DIN 00846503)

April 27, 1993               Apotex files an abbreviated new drug submission (“ANDS”) seeking approval for Apo-omeprazole alleging bioequivalence with the then version of Losec 20

(Apotex argues that any patent activity by AstraZeneca that post-dates the 1993 filing of its ANDS comparing its omeprazole product to AstraZeneca’s 1989 Losec 20 product is irrelevant.)

February 9, 1996           AstraZeneca files application for the 037 patent

September 10, 1996      AstraZeneca withdraws Losec 20 from the market, and so advises the Minister

December 16, 1997       Apotex refiles for NOC

November 10, 1998       AstraZeneca files application for the 470 patent

January 22, 1999           AstraZeneca files a Supplementary New Drug Submission (“SNDS”) for approval of use of Losec 20 for treatment of H. Pylori

June 4, 1999                  AstraZeneca obtains NOC permitting it to claim treatment for H. Pylori as a new approved use of Losec 20

July 12, 2000                 AstraZeneca files SNDS for corporate change of name

October 24, 2000          Name change NOC issued

February 26, 2002  470 patent issues

March 8, 2002               470 patent added to Register in relation to both SNDS dated January 22, 1999 and the SNDS dated July 12, 2000

April 16, 2002               037 patent issues

February 27, 2003  037 patent added to Register in relation to both the SNDS dated January 22, 1999 and the SNDS dated July 12, 2000

January 27, 2004           NOC issued to Apotex for Apo-omeprazole

5                                   Although the July 12, 2000 SNDS seems to have been of a purely administrative nature, the Minister permitted the patents to be listed against it.  The position of Apotex is that the listing of the 037 and the 470 patents was and is in any event irrelevant to the Apotex application.

6                                   The Minister concluded, and it is no longer disputed, that throughout the period September 10, 1996 to the present, AstraZeneca’s Losec 20 has been off the Canadian market.  To the extent that there is a demand for an “omeprazole only” product, it is not being met by AstraZeneca.

B.  AstraZeneca’s New Patents

7                                   The trial judge thought it curious that despite the withdrawal of Losec 20 AstraZeneca continued to list new patents in association with omeprazole 20 mg capsules.  He found that “[n]o other brand name company has attempted to list patents in this manner in Canada, making this a novel situation” (para. 5).

8                                   Kelen J. then quoted an undated internal memorandum from a departmental official to the Deputy Minister of Health:

To date, the administrative policy has been to address all patents listed for a drug.  However, this is the first time a patent has been listed for a supplemental new drug submission introducing a change to a drug which was clearly never marketed, and to which the generic could not have made a comparison. 

The Patent Unit is recommending that Apotex should not be required to address the ’470 patent. [Emphasis added; para. 14.]

Kelen J. agreed with Apotex that even if the 037 and the 470 patents were properly added to the register, the listing of such after-acquired patents was irrelevant to the Apotex application.

9                                   The 037 patent, applied for on February 9, 1996 and issued April 16, 2002  describes a new “oral pharmaceutical dosage form” of several compounds, including omeprazole, consisting of a core material “that contains a proton pump inhibitor” and an outer polymer coating, the two layers being separated by a water soluble salt.  The patent also describes “a new efficient process” for the manufacture of such a dosage in one step.

10                               The 470 patent, applied for on November 10, 1998 and issued February 26, 2002 teaches that “surprisingly . . . the substance omeprazole can exist in more than one crystal form” and describes how a new “form A” of omeprazole can be prepared and utilized, offering such advantages as being “more stable” than the previously used crystalline form.  It follows that AstraZeneca must have taken the position before the Commissioner of Patents (and accepted by him) that the new “form A” of omeprazole was patentably distinct and different from the form of omeprazole used in the 1989 version of Losec 20.

11                               As stated, neither of these inventions was incorporated into AstraZeneca’s 1989 Losec 20 product to which Apotex made reference to establish bioequivalence.  Apotex could not have, and did not attempt to, piggy-back on any clinical and testing work done by AstraZeneca in relation to the 037 and 470 patents listed against its subsequent NOCs issued seven years after the original Apotex application for its NOC.  As Kelen J. found, “[a] generic drug cannot be expected to compare itself to a drug which is not available on the Canadian market.  The generic drug manufacturer could not obtain such a drug” (para. 46).

C.  Legislative Overview

12                               The NOC Regulations lie at the intersection of two regulatory systems with sometimes conflicting objectives.  First, is the law governing approval of new drugs, which seeks to ensure the safety and efficacy of new medications before they can be put on the market.  The governing rules are set out in the Food and Drugs Act , R.S.C. 1985, c. F-27  (“FDA ”), and the Food and Drug Regulations, C.R.C. 1978, c. 870.  The FDA  process culminates (if successful) in the issuance of a NOC to an applicant manufacturer by the Minister of Health on the advice of his officials in the Therapeutic Products Directorate.  The FDA  objective is to encourage bringing safe and effective medicines to market to advance the nation’s health.  The achievement of this objective is tempered by a second and to some extent overlapping  regulatory system created by the Patent Act , R.S.C. 1985, c. P-4 .  Under that system, in exchange for disclosure to the public of an invention, including the invention of a medication, the innovator is given the exclusive right to its exploitation for a period of 20 years.  Until 1993, the two regulatory systems were largely kept distinct and separate.

13                               The problem perceived by Parliament in 1993 was that if a generic manufacturer waits to begin its preparation of a copy-cat medicine for regulatory approval until the patent expires, the FDA  approval process will likely add at least two years to the effective monopoly of the patent owner, which is two years of monopoly longer than the Patent Act  contemplates.  On the other hand, if the generic manufacturer tries to work the patented invention prior to the expiry of the patent, even if solely to satisfy the FDA  requirements for a NOC, it will infringe the patent, thus inviting litigation by the patent owner (and this is a very litigious industry).

14                               The solution arrived at by Parliament in Bill C-91 (1993) was to introduce an exemption from the owner’s patent rights which permits the generic manufacturers to work the patented invention within the 20-year period (the “early working” exception) to the extent necessary to obtain a NOC effective at the time the patent(s) expire (s. 55.2(1)) and to “stockpile” generic product towards the end of the 20-year period to await lawful market entry (s. 55.2(2)).  (The “stockpiling” exception was repealed by S.C. 2001, c. 10, s. 2(1) (in force July 12, 2001).)

15                               Recognizing that the “early working” and “stockpiling” exceptions could be abused, Parliament balanced creation of these exceptions with implementation of a summary procedure designed to strengthen the protection of patent owners against generic competitors within the 20-year patent period.  The legislative solution is found in s. 55.2  of the Patent Act  as follows:

55.2 (1)  It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture, construction, use or sale of any product. [The “early working” exception.]

(2)  It is not an infringement of a patent for any person who makes, constructs, uses or sells a patented invention in accordance with subsection (1) to make, construct or use the invention, during the applicable period provided for by the regulations, for the manufacture and storage of articles intended for sale after the date on which the term of the patent expires. [The “stockpiling” exception.]

(3)  The Governor in Council may make regulations for the purposes of subsection (2), but any period provided for by the regulations must terminate immediately preceding the date on which the term of the patent expires.

(4)  The Governor in Council may make such regulations as the Governor in Council considers necessary for preventing the infringement of a patent by any person who makes, constructs, uses or sells a patented invention in accordance with subsection (1) or (2) including, without limiting the generality of the foregoing, regulations

(a)  respecting the conditions that must be fulfilled before a notice [e.g. of compliance] . . . may be issued . . .;

(b)  respecting the earliest date on which a notice [e.g. of compliance] . . . may take effect . . .;

(c)  governing the resolution of disputes between a patentee or former patentee and any person who applies for a notice [e.g. of compliance] . . . as to the date on which that notice . . . may be issued or take effect;

The grant of the regulation-making power in s. 55.2(4) is thus expressly limited to prevention of infringement by a person who takes advantage of the “early working” exception (s. 55.2(1)) or (until its repeal) the “stockpiling” exception (s. 55.2(2)).

16                               The NOC Regulations were enacted pursuant to s. 55.2(4).  Their history and general structure were discussed by this Court in Bristol-Myers Squibb Co. v. Canada (Attorney General), [2005] 1 S.C.R. 533, 2005 SCC 26 (the “Biolyse” decision).  Serendipidously, our judgment was released the day following the decision of the Federal Court of Appeal in this case.  For present purposes, the important aspect of the Biolyse decision is the emphasis it placed on the need to interpret the NOC Regulations with careful regard to the limited purposes set out in the aforesaid s. 55.2(4)  of the Patent Act .

17                               The general scheme of the NOC Regulations is to create a Patent Registry within the Department of Health in which an innovator drug company like AstraZeneca may have patents listed relevant to its various drug submissions for regulatory approval (s. 4).  A generic manufacturer that is not prepared to await the expiry of what are alleged to be the relevant patents must challenge their validity or applicability to its proposed product  (s. 5).  The challenge is to be embodied in a notice of allegation, which will generally trigger an application in the Federal Court by the patent owner to prohibit the issuance of a NOC based on (in its view) the relevance, validity and applicability of the listed patents (s. 7).  The unusual feature of the NOC Regulations is that mere initiation by the patent owner of its application for prohibition freezes ministerial action for 24 months unless the prohibition proceedings are earlier disposed of, which seems to be rare (s. 7(1)(e)).  As pointed out in the majority judgment in Biolyse (at para. 24):

[U]nder this procedure, the court hearing the prohibition application has no discretion to lift the stay even if it thinks the innovator’s case for interim relief is weak.  Nor does the court have a discretion to leave the contending parties to their remedies under the Patent Act .  The “[generic manufacturer]”’s  application for a NOC simply goes into deep-freeze until the statutory procedures have played themselves out.  For these reasons, Iacobucci J. described the regime as “draconian” in Merck Frosst Canada Inc. v. Canada (Minister of National Health and Welfare), [1998] 2 S.C.R. 193, at para. 33.

18                               If, as Apotex says, it did not have the advantage of an “early working” of the after-listed 037 and 470 patents, because they came too late and were not incorporated in any product available to Apotex to copy, it is difficult to see in principle why in respect of those patents Apotex should be subject to the NOC Regulations regime, with a consequent further delay of two years, and perhaps longer.  The Apotex submission has already been pending since April 27, 1993.

D.  The New Drug Approval Process

19                               The Food and Drug Regulations and departmental policies require drug manufacturers to submit different types of new drug submission (“NDS”) for different purposes.  The two principal forms of submission are the NDS, filed by an innovative drug manufacturer for a new drug product, and the ANDS, filed by a generic manufacturer that claims its product is the “pharmaceutical equivalent” of a previously approved “Canadian reference product” (s. C.08.002.1(1)(a)).  A SNDS  may be submitted for substantive or for purely administrative reasons.  Unlike the situation in Biolyse, the intention of the applicant Apotex from the outset was to produce a generic (i.e. copy-cat) version of the AstraZeneca product marketed as Losec 20 in 1989.  In this case, Apotex makes no pretence of originality.

E.  Scope of Regulatory Protection

20                               The scope of the protection to which AstraZeneca is entitled as a person who has filed a NDS is predicated on the patent list established under s. 4(1).  As stated in Biolyse, at para. 58:  “The patent list becomes the minefield that the generic ‘copy-cat’ manufacturer must navigate to obtain a NOC.”  The list of relevant patents is to be filed by the “first person” (i.e. the innovator pharmaceutical company) at the time of its NDS (s. 4(3)), or updated within 30 days of issuance of a new patent(s) that had been applied for prior to filing for a submission but not issued until afterwards (s. 4(4)).  The 037 and 470 patents fall into this “after-issued” category.  (I note in passing that the 30-day limit seems not to have been observed in the case of the 037 and 470 patents, but nothing turns on that here.)  Section 4 reads in relevant part as follows:

Patent List

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

(a)   indicate the dosage form, strength and route of administration of the drug;

(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;

(c)   contain a statement that, in respect of each patent, the person applying for a notice of compliance is the owner . . .;

(d)   set out the date on which the term limited for the duration of each patent will expire pursuant to section 44  or 45  of the Patent Act ; and

(e)   set out the address in Canada for service on the person of any notice of an allegation . . . .

(3)   Subject to subsection (4), a person who submits a patent list must do so at the time the person files a submission for a notice of compliance.

(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).

(5)   When a first person submits a patent list or an amendment to an existing patent list in accordance with subsection (4), the first person must identify the submission to which the patent list or the amendment relates, including the date on which the submission was filed. 

(6)   A person who submits a patent list must keep the list up to date but may not add a patent to an existing patent list except in accordance with subsection (4).

(7)   A person who submits a patent list or an amendment to an existing patent list under subsection (1) or (4) must certify that

(a)   the information submitted is accurate; and

(b)   the patents set out on the patent list or in the amendment are eligible for inclusion on the register and are relevant to the dosage form, strength and route of administration of the drug in respect of which the submission for a notice of compliance has been filed.

21                               I emphasize the words in s. 4(5) that in the case of patents added afterwards, “the first person must identify the submission to which the patent list or the amendment relates, including the date on which the submission was filed”.  In addition, s. 3(3) provides that “[n]o information submitted pursuant to section 4 shall be included on the register until after the issuance of the notice of compliance in respect of which the information was submitted.”  These provisions, it seems to me, provide an important key to understanding the scheme. Entry of the “Patent list” does not destroy the linkage between the patent and the submission(s) to which it relates, nor to the NOC to which the submission(s) are directed.  Specific patents are associated with one or more NDS, ANDS or SNDS, which in turn (if approved) give rise to specific NOCs, which in turn approve a specific manufacturer’s product, which a generic manufacturer may seek to copy.  There is no linkage between the 037 and 470 patents and the submissions that lead to the Losec 20 product copied by Apotex.  Those after-acquired patents were listed in relation to a SNDS dated January 22, 1999 by AstraZeneca for a new medical use for Losec 20 (treatment of H. Pylori), a use for which the Apotex product is not approved, and to an administrative SNDS submitted by AstraZeneca dated July 12, 2000, which submission has nothing at all to do with the technology incorporated in Losec 20.

22                               Thus understood, the s. 4(1) patent list in relation to a medication that goes through various stages of development may become over time a list of lists, or lists within a list.  Section 4(5) ensures the Minister’s ability to identify the precise patents relevant to the “early working” by a generic manufacturer of its copy-cat product.  This identification is important having regard to the limited purposes for which the NOC Regulations are authorized by s. 55.2(4)  of the Patent Act .

23                               AstraZeneca relies on Eli Lilly Canada Inc. v. Canada (Minister of Health), [2003] 3 F.C. 140, 2003 FCA 24, for the proposition that a patent list is submitted in respect of a drug and not in respect of any particular submission.  This is also the view taken by the majority judgment of the Federal Court of Appeal in this case.  On this view a “first person” could carry on “evergreening” its product indefinitely by the addition of new patents of marginal significance which would trigger an indefinite series of 24-month statutory freezes even though such subsequently listed patents are not the subject of “early working” by the generic manufacturer, and from which (as in the circumstances here) the generic manufacturer derives no advantage.  As this case further illustrates, AstraZeneca even managed to piggy-back the 037 and 470 patents onto an administrative SNDS.  An interpretation that would freeze the generic product out of the market vacated by AstraZeneca in 1996 for a further two years or more in these circumstances flies in the face of the limited purpose authorized by s. 55.2(4)  of the Patent Act .  It is not to be presumed that s. 4(5) of the NOC Regulations insisted on linking particular patents to particular submissions for no purpose.

F.  Obligation of the Generic Applicant for a Notice of Compliance

24                               When Apotex decided to seek approval to manufacture and market a copy-cat version of Losec 20 in 1993, it saved itself a lot of time and expense by showing that its proposed product was “bioequivalent” to the AstraZeneca Losec 20 product, for which AstraZeneca had done the research and clinical work to permit it to be “marketed in Canada pursuant to a notice of compliance”.  If the Apotex product is bioequivalent, Parliament reasoned, the research and clinical work that shows AstraZeneca’s Losec 20 to be safe and effective equally shows the Apotex copy-cat product to be safe and effective.

1.  Standard of Review

25                               The outcome of this appeal turns on conflicting interpretations of the NOC

Regulations.  On a question of legal interpretation, the Minister’s opinion is not entitled to deference.  The Federal Court of Appeal properly found that the standard of review on the point in issue is correctness.

2.  Principles of Statutory Interpretation

26                               It is now trite law that the words of an Act and regulations 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.  Further, the scope of a regulation such as the provisions of the NOC Regulations is constrained by its enabling legislation, in this case s. 55.2(4)  of Patent Act  (Biolyse, at para. 38).

3.  The Grammatical and Ordinary Sense of the Words

27                               The generic manufacturer’s obligations are set out in s. 5(1) of the NOC Regulations:

5. (1)  Where a person files or has filed a submission for a notice of compliance in respect of a drug and compares that drug with, or makes reference to, another drug for the purpose of demonstrating bioequivalence on the basis of pharmaceutical and, where applicable, bioavailability characteristics and that other drug has been marketed in Canada pursuant to a notice of compliance issued to a first person and in respect of which a patent list has been submitted, the person shall, in the submission, with respect to each patent on the register in respect of the other drug,

(a)     state that the person accepts that the notice of compliance will not issue until the patent expires; or

(b)     allege that

(i)    the statement made by the first person pursuant to paragraph 4(2)(c) is false,

(ii)    the patent has expired,

(iii)   the patent is not valid, or

(iv)   no claim for the medicine itself and no claim for the use of the medicine would be infringed by the making, constructing, using or selling by that person of the drug for which the submission for the notice of compliance is filed.

28                               I accept the linguistic point made by Noël J.A. in the Federal Court of Appeal that the words “in respect of which” in s. 5(1) refer to “the other drug”, i.e. the Canadian reference product, and not to a particular patent list or amended patent list.  However, it seems to me that the “other drug” is the drug to which the generic manufacturer makes reference “for the purpose of demonstrating bioequivalence”.  If that “other drug” evolves over time by means of patentably distinct inventions, the safety and efficacy of a new product containing those patentably distinct inventions must be established to the satisfaction of the Minister of Health (not the Commissioner of Patents).  Thus in Biolyse the Minister was not prepared to accept as bioequivalent a drug made with the medicine paclitaxel sourced from the yew species taxus canadensis in substitution for paclitaxel sourced from a different species of yew.  In matters of drug approval, bioequivalence requires proof, not conjecture.  If Apotex claims bioequivalence with Losec 20 it is important to be precise about what generation of Losec 20 is the comparator drug.

29                               As stated, however, the majority judgment of the Federal Court of Appeal proceeded on the basis that “the drug” was Losec 20 and that Apotex was required to address all patents listed against Losec 20 in the Patent Register, including the 037 and 470 patents.  On this view, presumably, Apotex would have to address new patents as fast as AstraZeneca could have them added to the Losec 20 patent list, regardless of their relevance to the issue of “early working” and “bioequivalence”.  Sharlow J.A. adopted a narrower view, excluding from consideration the 037 and 470 patents.  Considering the entire context, there is a measure of textual ambiguity as to what “another drug” and “the other drug” refers to, and this ambiguity seems to have given rise to the disagreement between Noël J.A. and Sharlow J.A. in the court below.

30                               Ambiguity does not have to manifest itself in the text of s. 5(1).  Rather, “one must consider the ‘entire context’ of a provision before one can determine if it is reasonably capable of multiple interpretations”  (Bell ExpressVu Limited Partnership v. Rex, [2002] 2 S.C.R. 559, 2002 SCC 42, at para. 29 (emphasis added)).

31                               As to the 037 and 470 patents, the question is whether the reference in s. 5(1) to “another drug for the purpose of demonstrating bioequivalence” and “the other drug” against which patents are listed is a reference to Losec 20 in any of its formulations, including formulations never brought to market (which is the AstraZeneca position); or does it mean, more narrowly, the Losec 20 drug based on the June 19, 1989 NOC which Apotex copied (as Apotex contends).

G.  The Regulatory Context

32                               At the time of the Apotex ANDS in 1993, its Canadian reference product was the version of Losec 20 brought to market in Canada by AstraZeneca pursuant to the June 19, 1989 NOC.  Section C.08.001.1 of the Food and Drug Regulations defines “Canadian reference product” as

(a)   a drug in respect of which a notice of compliance is issued pursuant to section C.08.004 and which is marketed in Canada by the innovator of the drug,

(b)   a drug, acceptable to the Minister, that can be used for the purpose of demonstrating bioequivalence on the basis of pharmaceutical and, where applicable, bioavailability characteristics, where a drug in respect of which a notice of compliance has been issued pursuant to section C.08.004 cannot be used for that purpose because it is no longer marketed in Canada, or

(c)   a drug, acceptable to the Minister, that can be used for the purpose of demonstrating bioequivalence on the basis of pharmaceutical and, where applicable, bioavailability characteristics, in comparison to a drug referred to in paragraph (a);

33                               It is significant that this series of definitions draws distinctions between a drug which is marketed in Canada (para. (a)) and a drug “acceptable to the Minister that . . . cannot be used for that purpose” [i.e. as a reference drug] because it is no longer marketed in Canada (para. (b)).  Under (b), unlike (a), the Minister is given a discretion based on nothing but the fact that the product to which reference is made has been withdrawn from the market.  As a practical matter, there was no AstraZeneca omeprazole product on the market after 1996 which Apotex could copy.  However, Apotex had obtained samples prior to 1996 sufficient to demonstrate bioequivalence to the earlier technology incorporated in Losec 20.  As stated, that product did not incorporate the 037 and 470 patent inventions.

34                               I agree with Noël and Malone JJ.A. that “[t]he fact that a first person does not presently occupy the market has no bearing on the question whether a second person’s proposed drug will infringe” (para. 54).  However, as Noël J.A. also conceded, “it is the actual drug, from which samples can be taken and used for comparative purposes, that is relevant to the application of subsection 5(1) of the NOC Regulations” (para. 46 (emphasis added)).

35                               In my opinion, the rules governing acceptable “comparator” drugs give a further important clue to the legislative intention.  If, as para. (b) says, a drug cannot be used as a comparator unless acceptable to the Minister “because it is no longer marketed in Canada”, it seems obvious that a drug cannot be used as a comparator if it has never been marketed in Canada.  That is the significance of the fact that AstraZeneca has never had a product on the market based on AstraZeneca’s later submissions in relation to which the 037 and 470 patents were listed.

36                               Viewed in this light, it seems to me inescapable that the expression “another drug” in s. 5(1) refers to the actual comparator drug — not a drug that never became available for comparison — and that the words “with respect to each patent on the register in respect of the other drug” carries the same meaning.

37                               The whole obligation incurred by the generic manufacturer under the NOC Regulations is based on its “early working” of patents embodied in “another drug for the purpose of demonstrating bioequivalence”.  The only drug that fits the description is the version of Losec 20 approved in the June 19, 1989 NOC.

H.  The Broader Statutory Purpose

38                               I repeat that Parliament’s stated purpose in authorizing the NOC Regulations was to permit the “early working” of the patented invention (s. 55.2(4)).  As Apotex did not make use of the patented inventions taught by the 037 and 470 patents, Apotex is not on this occasion within the mischief aimed at by the NOC Regulations. 

39                               By imposing the 24-month delay called for by the NOC Regulations, the decision of the Federal Court of Appeal undermines achievement of the balance struck by Parliament between the objectives of the FDA and regulations thereunder (making safe and effective drugs available to the public) and the Patent Act  and its regulations (preventing abuse of the “early working” exception to patent infringement).  Given the evident (and entirely understandable) commercial strategy of the innovative drug companies to evergreen their products by adding bells and whistles to a pioneering product even after the original patent for that pioneering product has expired, the decision of the Federal Court of Appeal would reward evergreening even if the generic manufacturer (and thus the public) does not thereby derive any benefit from the subsequently listed patents.  In my view, s. 5(1) of the NOC Regulations requires a patent-specific analysis, i.e. the generic manufacturer is only required to address the cluster of patents listed against submissions relevant to the NOC that gave rise to the comparator drug, in this case the 1989 version of Losec 20.

40                               If AstraZeneca had brought to market a Losec 20 product pursuant to the later NOCs and if Apotex had made reference to that modified product for the purpose of demonstrating bioequivalence, Apotex would have been required to file a notice of allegation with respect to the 037 and 470 patents.

41                               However, it is clear that AstraZeneca did not market any product pursuant to the subsequent NOCs and that the preconditions to any obligations of Apotex under s. 5(1) were therefore not triggered.

I.  The Apotex Product Cannot Claim the Advantages of the 037 and 470 Patents

42                               Apotex acknowledges that its NOC dated January 27, 2004 does not permit Apotex to produce a product formulated or manufactured in accordance with the 037 and 470 patents, nor to claim that the Apotex product is indicated for the treatment of H. Pylori.  This opinion deals only with the obligations of Apotex under the NOC Regulations.  AstraZeneca seemed to suggest at various points during the oral hearing that Apotex is indeed infringing AstraZeneca patents.  If this be so (and there is no evidence before us either way), then of course AstraZeneca retains all its remedies under the Patent Act , including, in appropriate circumstances, an interlocutory injunction.  The only patent-related consequence of the present decision is to deny AstraZeneca the benefit of a 24-month freeze without any proof of patent infringement.

J.   Conclusion

43                               I would allow the appeal.  The order of the Federal Court of Appeal is set aside and the order of the Federal Court, Trial Division is restored.  Apotex is entitled to its costs in this Court and in the courts below.  The Minister is entitled to his costs in this Court and in the Federal Court of Appeal.

APPENDIX

Patent Act , R.S.C. 1985, c. P‑4 

Infringement

. . .

55.2 (1) [Exception] It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture, construction, use or sale of any product.

(2)     [Repealed, S.C. 2001, c. 10, s. 2(1)]

(3)     [Repealed, S.C. 2001, c. 10, s. 2(1)]

(4)     [Regulations] The Governor in Council may make such regulations as the Governor in Council considers necessary for preventing the infringement of a patent by any person who makes, constructs, uses or sells a patented invention in accordance with subsection (1), including, without limiting the generality of the foregoing, regulations

(a)     respecting the conditions that must be fulfilled before a notice, certificate, permit or other document concerning any product to which a patent may relate may be issued to a patentee or other person under any Act of Parliament that regulates the manufacture, construction, use or sale of that product, in addition to any conditions provided for by or under that Act;

(b)     respecting the earliest date on which a notice, certificate, permit or other document referred to in paragraph (a) that is issued or to be issued to a person other than the patentee may take effect and respecting the manner in which that date is to be determined;

(c)      governing the resolution of disputes between a patentee or former patentee and any person who applies for a notice, certificate, permit or other document referred to in paragraph (a) as to the date on which that notice, certificate, permit or other document may be issued or take effect;

(d)     conferring rights of action in any court of competent jurisdiction with respect to any disputes referred to in paragraph (c) and respecting the remedies that may be sought in the court, the procedure of the court in the matter and the decisions and orders it may make; and

(e)      generally governing the issue of a notice, certificate, permit or other document referred to in paragraph (a) in circumstances where the issue of that notice, certificate, permit or other document might result directly or indirectly in the infringement of a patent.

(5)     [Inconsistency or conflict] In the event of any inconsistency or conflict between

(a)     this section or any regulations made under this section, and

(b)     any Act of Parliament or any regulations made thereunder,

this section or the regulations made under this section shall prevail to the extent of the inconsistency or conflict.

(6)     [For greater certainty] For greater certainty, subsection (1) does not affect any exception to the exclusive property or privilege granted by a patent that exists at law in respect of acts done privately and on a non‑commercial scale or for a non‑commercial purpose or in respect of any use, manufacture, construction or sale of the patented invention solely for the purpose of experiments that relate to the subject‑matter of the patent.

Patented Medicines (Notice of Compliance) Regulations, SOR/93‑133

Patent List

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

(a)     indicate the dosage form, strength and route of administration of the drug;

(b)     set out any Canadian patent that is owned by the person, or in respect of which the person has an exclusive licence or has obtained the consent of the owner of the patent for the inclusion of the patent on the patent list, 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;

(c)      contain a statement that, in respect of each patent, the person applying for a notice of compliance is the owner, has an exclusive licence or has obtained the consent of the owner of the patent for the inclusion of the patent on the patent list;

(d)     set out the date on which the term limited for the duration of each patent will expire pursuant to section 44  or 45  of the Patent Act ; and

(e)      set out the address in Canada for service on the person of any notice of an allegation referred to in paragraph 5(3)(b) or (c), or the name and address in Canada of another person on whom service may be made, with the same effect as if service had been made on the person.

(3)     Subject to subsection (4), a person who submits a patent list must do so at the time the person files a submission for a notice of compliance.

(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).

(5)     When a first person submits a patent list or an amendment to an existing patent list in accordance with subsection (4), the first person must identify the submission to which the patent list or the amendment relates, including the date on which the submission was filed.

(6)     A person who submits a patent list must keep the list up to date but may not add a patent to an existing patent list except in accordance with subsection (4).

(7)     A person who submits a patent list or an amendment to an existing patent list under subsection (1) or (4) must certify that

(a)     the information submitted is accurate; and

(b)     the patents set out on the patent list or in the amendment are eligible for inclusion on the register and are relevant to the dosage form, strength and route of administration of the drug in respect of which the submission for a notice of compliance has been filed.

5. (1) Where a person files or has filed a submission for a notice of compliance in respect of a drug and compares that drug with, or makes reference to, another drug for the purpose of demonstrating bioequivalence on the basis of pharmaceutical and, where applicable, bioavailability characteristics and that other drug has been marketed in Canada pursuant to a notice of compliance issued to a first person and in respect of which a patent list has been submitted, the person shall, in the submission, with respect to each patent on the register in respect of the other drug,

(a)     state that the person accepts that the notice of compliance will not issue until the patent expires; or

(b)     allege that

(i)    the statement made by the first person pursuant to paragraph 4(2)(c) is false,

(ii)    the patent has expired,

(iii)   the patent is not valid, or

(iv)   no claim for the medicine itself and no claim for the use of the medicine would be infringed by the making, constructing, using or selling by that person of the drug for which the submission for the notice of compliance is filed.

. . .

(2)     Where, after a second person files a submission for a notice of compliance but before the notice of compliance is issued, a patent list or an amendment to a patent list is submitted in respect of a patent pursuant to subsection 4(4), the second person shall amend the submission to include, in respect of that patent, the statement or allegation that is required by subsection (1) or (1.1), as the case may be.

(3)     Where a person makes an allegation pursuant to paragraph (1)(b) or (1.1)(b) or subsection (2), the person shall

(a)     provide a detailed statement of the legal and factual basis for the allegation;

(b)     if the allegation is made under any of subparagraphs (1)(b)(i) to (iii) or (1.1)(b)(i) to (iii), serve a notice of the allegation on the first person;

(c)      if the allegation is made under subparagraph (1)(b)(iv) or (1.1)(b)(iv),

(i)    serve on the first person a notice of the allegation relating to the submission filed under subsection (1) or (1.1) at the time that the person files the submission or at any time thereafter, and

(ii)    include in the notice of allegation a description of the dosage form, strength and route of administration of the drug in respect of which the submission has been filed; and

(d)     serve proof of service of the information referred to in paragraph (b) or (c) on the Minister.

Right of Action

6. (1) A first person may, within 45 days after being served with a notice of an allegation pursuant to paragraph 5(3)(b) or (c), apply to a court for an order prohibiting the Minister from issuing a notice of compliance until after the expiration of a patent that is the subject of the allegation.

(2)     The court shall make an order pursuant to subsection (1) in respect of a patent that is the subject of one or more allegations if it finds that none of those allegations is justified.

(3)     The first person shall, within the 45 days referred to in subsection (1), serve the Minister with proof that an application referred to in that subsection has been made.

. . .

(5)     In a proceeding in respect of an application under subsection (1), the court may, on the motion of a second person, dismiss the application

(a)     if the court is satisfied that the patents at issue are not eligible for inclusion on the register or are irrelevant to the dosage form, strength and route of administration of the drug for which the second person has filed a submission for a notice of compliance; or

(b)     on the ground that the application is redundant, scandalous, frivolous or vexatious or is otherwise an abuse of process.

. . .

(9)     In a proceeding in respect of an application under subsection (1), a court may make any order in respect of costs, including on a solicitor‑and‑client basis, in accordance with the rules of the court.

(10)   In addition to any other matter that the court may take into account in making an order as to costs, it may consider the following factors:

(a)     the diligence with which the parties have pursued the application;

(b)     the inclusion on the certified patent list of a patent that should not have been included under section 4; and

(c)      the failure of the first person to keep the patent list up to date in accordance with subsection 4(6).

Notice of Compliance

7. (1) The Minister shall not issue a notice of compliance to a second person before the latest of

(a)     [Repealed, SOR/98‑166, s. 6(1)]

(b)     the day on which the second person complies with section 5,

(c)      subject to subsection (3), the expiration of any patent on the register that is not the subject of an allegation,

(d)     subject to subsection (3), the expiration of 45 days after the receipt of proof of service of a notice of any allegation pursuant to paragraph 5(3)(b) or (c) in respect of any patent on the register,

(e)      subject to subsections (2), (3) and (4), the expiration of 24 months after the receipt of proof of the making of any application under subsection 6(1), and

(f)      the expiration of any patent that is the subject of an order pursuant to subsection 6(1).

(2)     Paragraph (1)(e) does not apply if at any time, in respect of each patent that is the subject of an application pursuant to subsection 6(1),

(a)     the patent has expired; or

(b)     the court has declared that the patent is not valid or that no claim for the medicine itself and no claim for the use of the medicine would be infringed.

. . .

(4)     Paragraph (1)(e) ceases to apply in respect of an application under subsection 6(1) if the application is withdrawn or discontinued by the first person or is dismissed by the court hearing the application.

(5)     If the court has not yet made an order under subsection 6(1) in respect of an application, the court may

(a)     shorten the time limit referred to in paragraph (1)(e) on consent of the first and second persons or if the court finds that the first person has failed, at any time during the proceeding, to reasonably cooperate in expediting the application; or

(b)     extend the time limit referred to in paragraph (1)(e) on consent of the first and second persons or, if the court finds that the second person has failed, at any time during the proceeding, to reasonably cooperate in expediting the application.

8. (1) If an application made under subsection 6(1) is withdrawn or discontinued by the first person or is dismissed by the court hearing the application or if an order preventing the Minister from issuing a notice of compliance, made pursuant to that subsection, is reversed on appeal, the first person is liable to the second person for any loss suffered during the period

(a)     beginning on the date, as certified by the Minister, on which a notice of compliance would have been issued in the absence of these Regulations, unless the court is satisfied on the evidence that another date is more appropriate; and

(b)     ending on the date of the withdrawal, the discontinuance, the dismissal or the reversal.

(2)     A second person may, by action against a first person, apply to the court for an order requiring the first person to compensate the second person for the loss referred to in subsection (1).

. . .

(4)     The court may make such order for relief by way of damages or profits as the circumstances require in respect of any loss referred to in subsection (1).

(5)     In assessing the amount of compensation the court shall take into account all matters that it considers relevant to the assessment of the amount, including any conduct of the first or second person which contributed to delay the disposition of the application under subsection 6(1).

Appeal allowed with costs.

Solicitors for the appellant:  Goodmans, Toronto.

Solicitors for the respondent AstraZeneca Canada Inc.:  Smart & Biggar, Toronto.

Solicitor for the respondents the Minister of Health and the Attorney General of Canada:  Attorney General of Canada, Ottawa.

Solicitors for the intervener the Canadian Generic Pharmaceutical Association:  Hazzard & Hore, Toronto.

Solicitors for the intervener Canada’s Research‑Based Pharmaceutical Companies:  Gowling Lafleur Henderson, Ottawa.