Eli Lilly and Company v. Canada (ICSID Case No. UNCT/14/2), Witness Statement of Marcel Brisebois (January 26, 2015)
A. Introduction
1. My name is Marcel Brisebois. I am a Canadian citizen and reside in Gatineau, Quebec. Since 2007, I have worked in various positions relating to patent examination within the Canadian federal government, primarily at the Canadian Intellectual Property Office (CIPO). In December 2013 I was seconded to Industry Canada's Strategic Policy Sector. There, as a Senior Analyst, I have been engaged in analysing technical issues relating to the application of Canada's Patent Act, notably issues raised in the context of the Eli Lilly and Company (Claimant) NAFTA Chapter Eleven challenge.
2. I hold Bachelor of Science and Master of Science degrees from the University of Sherbrooke, Canada. For my Master’s degree, I studied the effect of a combination of two cell signalling compounds (IFN-gamma and IL-2) on the repair activity of lung cells.1
3. In 2007, I obtained a Ph.D. in Immunology from the University of Sherbrooke's Faculty of Medicine. The main object of my doctoral thesis was to characterize the inflammatory and cellular mechanisms involved in an animal model of multiple sclerosis.2
4. In 2007, I joined CIPO as a Patent Examiner in the Biotechnology division of the Patent of Office. In October 2008 I was promoted to Senior Patent Examiner. I continued in that function until December 2013, when I was seconded to Industry Canada.
5. As a Senior Patent Examiner, I provided professional, scientific, technical and legal assistance and advice in the examination and disposition of patents applications from Canadian and foreign applicants, both those filed directly into the Canadian system and those filed via the Patent Cooperation Treaty (PCT). I notably analysed the biotechnological and pharmaceutical concepts disclosed in patent applications, to determine whether they constituted advances over the current state-of-the-art; developed comprehensive search strategies to identify relevant technical publications, providing the basis to evaluate novel and inventive features of alleged inventions; set out the Office's position on each application in light of my technical determinations and based upon the Patent Act and Rules; analyzed responses from patent agents; and overall, determined whether patent applications for various biotechnical and pharmaceutical inventions should be approved or denied.
6. As a Senior Patent Examiner, I also trained junior examiners in patent examination procedures, coached and mentored, provided technical guidance, and exercised qualitycontrol over technical and legal work, throughout these examiners' two-year training period. I further supervised and managed staff on several occasions as an acting Section Head in the Biotechnology Division.
7. Through my work as a Senior Patent Examiner, I acquired extensive experience and skills in examining patent applications and in conducting searches in different patent and legal research databases. I also extensively studied Canadian jurisprudence concerning the interpretation and application of the Patent Act and Rules.
8. From January 2010 to November 2011, while continuing in my position as a Senior Examiner, I was cross-appointed to the Patent Appeal Board (PAB). My principal responsibility as a member of PAB was to review examiners’ rejections of patent applications, in light of the rejected applicant’s submissions and the file record. Based upon my review, together with other Board members, I made recommendations to the Commissioner of Patents on the ultimate disposition of these applications.