Author(s):
J. Bradley White, Brad Jenkins
June 2015
In this article which originally appeared in IAM Life Sciences 2015, J Bradley White and Brad Jenkins of Osler’s Intellectual Property team explore the true value of a patent. Ultimately, it is the marketplace that decides the value of a patent. However, sales figures may not always provide a fair approximation of a patent’s true value. This becomes evident when trying to account for non-infringing alternatives to the patent product in qualifying damages from patent infringement.
If the demand for the patented product is strong and there is no infringing alternative, it may be fair to conclude that the majority of the infringer’s sales would have been made by the patentee but for the infringement. However, matters become less clear when the infringer could have, but did not, sell a non-infringing alternative. Should the existence of a non-infringing alternative be taken into consideration in recreating the market in this ‘but for’ world? More precisely, can an infringer minimize its liability by claiming that it would have taken the patentee’s sales in any event by selling a non-infringing product? These questions were at the forefront of two recent cases in the Federal Court of Canada – Lovastatin (Merck & Co, Inc v. Apotex Inc.) and Cefaclor (Eli Lilly and Company v. Apotex Inc.) – which we explore in further detail.
DOWNLOAD PDF: The non-infringing alternative in Canada