Merck Frosst Canada Inc. v. Canada ( Minister of National Health and Welfare )
T-1305-93
Rothstein J.
26/3/97
20 pp.
Extension application under Patented Medicines (Notice of Compliance) Regulations, s. 7(5)-In main application, Merck seeking order prohibiting Minister from issuing notice of compliance to Apotex in respect of anti-cholesterol drug lovastatin until expiration of Merck's relevant patent therefor-Statutory stay herein expired on December 1, 1996-First issue: status of prohibition application brought by patentee under Regulations, s. 6(1) after expiry of statutory stay under Regulations, s. 7(1)(e) and whether Court may extend time under Regulations, s. 7(5) after expiry of stay-Regulations silent as to remedy for patentee if NOC issues after expiry of statutory stay based on non-justified allegation-Implication of silence: once statutory stay expires, Court without jurisdiction to grant any remedy under Regulations-30-month period considered reasonable time within which to complete prohibition proceedings in absence of cooperation-Inconsistent with expeditious way in which proceedings under Regulations to be carried out to construe Regulations as continuing right to prohibition indefinitely irrespective of expiry of statutory stay-Extension or shortening application must be made within period of statutory stay-Patentee would still have patent infringement action with possibility of interlocutory and/or permanent injunction and/or damages-Therefore, upon expiry of statutory stay, Court no longer has jurisdiction to issue prohibition order under Regulations, s. 6(2) and extension order under Regulations, s. 7(5)-Second issue: in hypothesis Court may extend time under s. 7(5) after expiry of statutory stay, whether extension application res judicata-Appeal from Trial Division order granting extension allowed by Federal Court of Appeal herein on ground only basis for altering 30-month statutory stay failure to reasonably cooperate by party in expediting application under Regulations, s. 7(5) and no such evidence put before Motions Judge-Merck now bringing application to extend time based on s. 7(5) alleging failure to reasonably cooperate-No new facts relating to failure to reasonably cooperate by Apotex not known at time of extension application decided by Motions Judge and reversed by F.C.A.-Attempt to introduce new element into previously adjudicated issue repugnant to general principle of res judicata-Third issue: if res judicata, whether special circumstances justifying Court exercising discretion to allow same issue to be raised and decided again-Fact in 1995, Richard J. granted extension application herein based on consent not special circumstances-Fact Court could not accommodate early hearing date not relevant to extension issue now res judicata, and therefore not constituting special circumstances-Fourth issue: if matter not res judicata, whether extension order should be made and for what period-Additional extension to provide effective remedy to Merck over and above period attributable to Apotex's failure not authorized by s. 7(5) as due to Merck's failure to bring extension application under s. 7(5) before expiry of statutory stay-Therefore: (1) Court without jurisdiction to issue prohibition order under Regulations, s. 6(2) after expiry of statutory stay; (2) Court without jurisdiction to extend time under Regulations, s. 7(5) after expiry of statutory stay; (3) extension issue res judicata and no special circumstances justifying Court in re-deciding issue-Extension application dismissed-Prohibition application dismissed-Patented Medicines (Notice of Compliance) Regulations, SOR/93-133, ss. 6(2), 7(5).