This proceeding for an order of prohibition was a companion case to the case described below. Apotex sought a NOC for its dorzolamide product. Apotex alleged that the ‘211 patent was invalid for double patenting as Merck is the proprietor of another patent (the ‘262 patent) which also covers dorzolamide. Notwithstanding that Merck had dedicated the ‘262 patent to the public in 2007, Mr. Justice O’Reilly found Apotex’s allegations of double patenting justified. Although the Judge acknowledged that a recent decision of the Federal Court of Appeal (Sandoz v Abbott, 2010) had decided that a dedication “may remove the evidentiary basis for the allegation of double patenting”, he distinguished the present case. In this case, the dedication by Merck of the ‘262 patent gave Merck 17 years and 28 days of monopoly for dorzolamide. This was longer than the statutory period of 17 years provided under the “old” Patent Act and the dedication did not therefore, for policy reasons, defeat the allegations of double patenting.

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