Date: 19980904
Docket: T-35-96
T-591-96
BETWEEN:
BAYER AG AND BAYER INC.
Applicants
- and -
APOTEX INC. and
THE MINISTER OF NATIONAL HEALTH AND WELFARE
Respondents
REASONS FOR ORDER ALLOWING BAYER
APPEAL OF DECISION OF ASSOCIATE
SENIOR PROTHONOTARY STRIKING PORTIONS
OF BAYER'S MEMORANDUM OF FACT AND LAW
[Delivered from the Bench at Toronto,
September 1, 1998, as edited]
ROTHSTEIN J.:
[1] These reasons apply to both court files T-35-96 and T-591-96. This is an appeal from a decision of the Associate Senior Prothonotary striking out documents from Bayer's application record in a prohibition application under Patented Medicines (Notice of Compliance) Regulations, SOR/93-133. Namely, a 1960 decision of the Commissioner of Patents, an excerpt from the Manual of Patent Office Procedure (MOPOP) and an excerpt of the 1923 debates of the Senate. No reasons were given by the Associate Senior Prothonotary for striking out these documents.
[2] Apotex says the documents are facts and must be proven by affidavit evidence and that the time for submitting such evidence has passed. Counsel argues that these facts are not capable of judicial notice. He says they cannot be "bootlegged in" as argument.
[3] I am of the opinion that this application should not have been brought to the Prothonotary and that this appeal was unnecessary. The material is filed in support of arguments pertaining to the interpretation of the Patent Act, R.S.C. 1985, c. P-4. The judge hearing the prohibition application should have the opportunity to consider and weigh the information or reject it if she or he considers it improperly included in the application record; see Merck Frosst v. Canada (1994), 88 F.T.R. 31 at 35 per Richard J., as he then was.
[4] I would note that the decision of the Patent Commissioner is a decision that may be appealed to the Federal Court. Counsel for Bayer points out that the decision has been cited in a legal review article. To the extent that the decision is a reasoned analysis that may assist the Court in this case in its interpretation in the Patent Act, I see no reason why it should not be treated as an authority. The MOPOP has been received in the Court in prior proceedings. See Merck v. Apotex Inc. (1984), 88 F.T.R. per MacKay J. Whether the MOPOP should be treated as an authority and the weight to be afforded to it in this case will be for the hearing judge to determine.
[5] The Court may take judicial notice of debates of the Senate; see Eastmain Band v. James Bay and Northern Quebec Agreement (Administrator) (1992), 98 D.L.R. (4th) 206 (F.C.A.) at 212. I see no reason why the Senate debates are not properly part of the applicants' material.
[6] While it would appear to me that some or all of the documents may only be entitled to limited weight, that is a decision best left for the hearing judge.
[7] The appeal is allowed. The material is to be returned to the applicants' record and the deletions ordered from the applicants' memorandum of fact and law are to be restored.
[8] With respect to costs, I have indicated that I do not think that this application should have been made to the Prothonotary and that this appeal should not have been necessitated. I think the order for costs here falls under Rule 401(2) of the Federal Court Rules, 1998, SOR/98-106. I would order costs for both files in the total sum of $3,000.00 inclusive of disbursement payable forthwith in view of the fact that, as I have said, the motion is one that should not have been brought initially.
Marshall Rothstein
J U D G E
OTTAWA, ONTARIO
SEPTEMBER 4, 1998