Canada’s Intellectual Property Firm

Federal Court grants motion to strike plaintiff’s quia timet pleading in oxycodone infringement action

On February 21, 2018, Justice O’Reilly granted Collegium’s motion to strike Purdue’s statement of claim for infringement of a patent relating to oxycodone salt (Purdue’s OXYNEO): Purdue Pharma v Collegium Pharmaceutical, 2018 FC 199. The Court overturned the Prothonotary’s dismissal of the motion, finding that the facts did not allege anything beyond the regulatory use exemption and that the imminence branch for the test for a quia timet action was not met: Purdue’s allegations merely suggested that Collegium was attempting to meet Canadian regulatory requirements, and did not contemplate when Collegium might obtain a Notice of Compliance (NOC). Purdue’s action was brought in parallel with an application under the pre-amended (PMNOC) Regulations. The amended PMNOC Regulations (previously reported) will now effectively allow for quia timet actions by permitting a patent owner who receives a notice of allegation (NOA) to bring an action for infringement of patents not covered by the NOA, but which could be infringed by the generic drug.