Patent Law

Santosh Chari, a patent agent with Blakes, writes on November 20, 2008 at the firm's website:

On November 6, 2008, the Supreme Court released its decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc. The primary issue before the court was the validity of selection patents. In its decision, the court upheld the validity of such patents and also established new guidelines for assessing anticipation and obviousness of patent claims.

The test for obviousness also stems from the...Beloit decision, which stated that for a claim to be found obvious, a person skilled in the art and having common general knowledge must have come directly and without difficulty to the invention. In the present decision, the Supreme Court held that the Beloit test for obviousness has been interpreted too restrictively in Canada and that such definition needed to be re-examined in view of recent U.K. and U.S. law. In this analysis, the court referred to the recent KSR decision by the U.S. Supreme Court.

In its decision, the court has established a refined test for obviousness and determined that an obviousness inquiry should comprise the following four steps:

1. Identification of the relevant "person skilled in the art" and the common general knowledge that such person would have.

2. Construction of the claims in question to identify the inventive concept.

3. Identification of the differences between the construed claim and the prior art.

4. Determination of whether such differences would have been obvious to the person skilled in the art or whether they require a degree of inventiveness.

The above criteria are essentially similar to the Beloit test for obviousness. However, the court further clarified that in some instances, such as where an invention was arrived at after experimentation (as in the case in question), the last step may also involve an assessment of whether the invention was "obvious to try".

With regard to obviousness, the court has arguably lowered the threshold by introducing an "obvious to try" test for determining inventive step.

Read the full article here.