Amicus Curiae Submission on Eli Lily the Company vs. The Government of Canada

Submitted to the ICSID Case No. UNCT14/2

11 Pages Posted: 22 May 2018

See all articles by Burcu Kilic

Burcu Kilic

Public Citizen

Brook K. Baker

Northeastern University - School of Law

Cynthia M. Ho

Loyola University of Chicago School of Law

Yuan Qiong Hu

University of London-School of Oriental and African Studies(SOAS), School of Law

Luke McDonagh

City University London - The City Law School

Yaniv Heled

Georgia State University College of Law

Pratyush Nath Upreti

Sciences Po Law School

Date Written: February 12, 2016

Abstract

This amicus brief was submitted to the North American Free Trade Agreement (NAFTA) arbitral tribunal in Eli Lilly v. Canada (ICSID Case No. UNCT/14/2) by Amici. Amici are scholars whose research and teaching focus is intellectual property law (Dr. Burcu Kilic, Professor Brook Baker, HU Yuanqiong, Professor Cynthia Ho, Dr Luke McDonagh, Pratyush Upreti and Yaniv Heled, J.S.D.). The brief was accepted by the Tribunal with respect to Dr. Burcu Kilic (Washington DC, United States), Professor Brook K. Baker (Boston, United States), Professor Cynthia Ho (Chicago, United States), and Mr. Yaniv Heled J.S.D. (Atlanta, United States), denied with respect to the other academics for lack of standing.

In September 2013, the Claimant Eli Lilly and Company (Lilly) launched a CDN $ 500 million claim against the Government of Canada under the North American Free Trade Agreement’s (NAFTA) investment chapter. The Claimant is challenging Canada’s invalidation of secondary patents related to the previously-known and patented active ingredients atomoxotine (Strattera) and olanzapine (Zyprexa), drugs used to treat attention deficit hyperactivity disorder, schizophrenia and bipolar disorder.

Lilly is challenging the decision of Canadian courts to invalidate two patents for failing to comply with Canada’s requirement of usefulness after failing to prevail in Canadian courts. The challenge is under the “investment” chapter of NAFTA, rather than the IP chapter. Lilly argues that this “improper” and “discreditable” invalidation of its patents constitutes a NAFTA-prohibited “indirect expropriation” and a breach of NAFTA’s guarantee of a “minimum standard of treatment” for foreign investors.

This case against Canada is a case of first impression and the first case pursuing investor-state dispute resolution (ISDS) with respect to intellectual property rights affecting pharmaceuticals, the case has heightened significance. The outcome of this case will be instructive about whether other foreign investors pursue future attacks on substantive policies embedded in national patent systems through the arbitral proceedings challenging differences in patentability standards that frustrate their “expectations”.

Of particular concern is that this challenge may make countries hesitant to use legitimate flexibilities under the Agreement on Trade Related Aspects of Intellectual Property (TRIPS). In addition, the invalidated patents are secondary patents that Eli Lilly seeks to use to extend its patent term after initial patents expired, but without substantial evidence that these new inventions are in fact useful. Although Canada bars such patents under the “promise of a patent” for usefulness that is unique, other countries similarly bar such patents, under different patentability doctrines.

The Brief addresses, amongst other issues: • NAFTA Chapter 17 patentability standards • Patentability standards in Canada and their judicial interpretation • Secondary patents and patent evergreening • Evolving nature of patent law • Abuse of the system of international investment protection and misuse of the system • Adverse chilling effect of the case on efforts to enhance access to medicines globally

Keywords: IP, patent, ISDS, investor-state arbitration, TRIPS, NAFTA, expropriation, fair and equitable treatment, utility, industrial application, promise doctrine, secondary patents, evergreening

Suggested Citation

Kilic, Burcu and Baker, Brook K. and Ho, Cynthia M. and Hu, Yuan Qiong and McDonagh, Luke and Heled, Yaniv and Upreti, Pratyush Nath, Amicus Curiae Submission on Eli Lily the Company vs. The Government of Canada (February 12, 2016). Submitted to the ICSID Case No. UNCT14/2. Available at SSRN: https://ssrn.com/abstract=3175606

Burcu Kilic (Contact Author)

Public Citizen ( email )

1600 20th Street NW
Washington, DC 20009
United States

Brook K. Baker

Northeastern University - School of Law ( email )

416 Huntington Avenue
Boston, MA 02115
United States

Cynthia M. Ho

Loyola University of Chicago School of Law ( email )

25 E. Pearson
Chicago, IL 60611
United States

Yuan Qiong Hu

University of London-School of Oriental and African Studies(SOAS), School of Law ( email )

Thornhaugh Street
Russell Square: College Buildings 541
London, WC1H 0XG
United Kingdom

Luke McDonagh

City University London - The City Law School ( email )

London, EC1V OHB
United Kingdom

Yaniv Heled

Georgia State University College of Law ( email )

140 Decatur St.
Atlanta, GA 30303
United States
404-413-9092 (Phone)

Pratyush Nath Upreti

Sciences Po Law School ( email )

27 rue Saint-Guillaume
Paris, 75337
France

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