A Respondent That Was Added Pursuant to the NOC Regulations is Not Jointly and Severally Liable for Costs
Sanofi-Aventis Canada Inc. v. Novopharm Limited and The Minister of Health and Schering Corporation, 2009 FC 1003 (Preston, Assessment Officer)

October 2, 2009

Junyi Chen for the Applicant, Sanofi-Aventis Canada Inc. (Sanofi)
Mark Edward Davis and Keya Dasgupta for the Respondent, Novopharm Limited (Novopharm)
Marc Richard for the Respondent, Schering Corporation (Schering)

The Prothonotary of the Federal Court dismissed the motion of the respondent Novopharm for an order dismissing a NOC application pursuant to the Patented Medicines (Notice of Compliance) Regulations. The Federal Court granted Novopharm’s appeal of the prothonotary’s order, and dismissed the NOC application, with costs. The Federal Court of Appeal dismissed the applicant Sanofi’s appeal of the Federal Court’s order, with costs.

The Federal Court of Appeal awarded costs “in favor of Novopharm against Sanofi and Schering to be assessed by the Assessment Officer […]”. There also has been a motion for directions concerning costs, which resulted in directions given by the Federal Court, with no mention of an award of costs against Schering or joint liability against Sanofi and Schering.

The main preliminary question before the Assessment officer is whether Schering was jointly and severally responsible for these costs.

Pursuant to the NOC Regulations, Schering, as respondent/patentee, is not an applicant, but is required to be added as a respondent. This being said, Schering was an active participant in the appeal of the order of the prothonotary. The NOC Regulations also require adding the Minister as a respondent.

As a general rule, costs should follow the event. As Sanofi’s application was dismissed, it follows that costs were awarded against Sanofi. There has been no exercise of discretion by the Federal Court awarding costs against the Minister or Schering, or awarding costs jointly and severally against Sanofi and Schering.

Without an award of costs “both here and below”, the Court of Appeal decision concerning costs is not determinative of the issue in the Federal Court.

An assessment officer has no jurisdiction to allow costs not previously awarded, absent an exercise of discretion by the Court to award costs jointly and severally.

Decision of the Assessment Officer
Schering is not liable for costs awarded to Novopharm. Assessment of costs is adjourned pending decision on any appeal of the Assessment officer’s decision.

By: Marvin Harik, CMHC