Notes on Canadian intellectual property law
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To be patentable, an invention must not be obvious. The requirement of non-obviousness is a natural corollary of the concept of "invention", [(Gibney v Ford Motor Co of Canada,  2 Ex CR 279 at 303; Diversified Products Corp v Tye-Sil Corp (1991), 35 CPR (3d) 350 (FCA).)] since the word "invention" itself implies a degree of "inventive ingenuity".[(Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61,  3 SCR 265 at para 51.)] Something is obvious if it is not inventive. Thus, patents cannot be granted to the obvious.
In other words, "obviousness is an attack on a patent based on its lack of inventiveness. The attacker, says, in effect, 'Any fool could have done that.'"[(Beloit Canada Ltd v Valmet Oy (1986), 8 CPR (3d) 289 at 293 (FCA).)]
Prior to 1996, the Patent Act in Canada did not expressly require non-obviousness. Nonetheless, courts developed a threshold for obviousness to give meaning to the term "invention". For patents filed on or after October 1, 1989,[(Changes made by the Intellectual Property Law Improvement Act, SC 1993, c 15, s 33 came in force on October 1, 1996.)] the Patent Act expressly requires that an invention be non-obvious:
28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
>(a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
>(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.[(Patent Act, RSC 1985, c P-4, s 28.3.)]
The post-1996 statutory language, however, continued to leave the term "obvious" undefined. As such, the amendments to the Patent Act did not change the law regarding obviousness.[(Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234, 57 CPR (4th) 6 at para 109, aff'd 2007 FCA 217; Canamould Extrusions Ltd v Driangle Inc, 2003 FCT 244, 25 CPR (4th) 343 at para 61.)] It merely codified what was already the law.
The most definitive statement in Canada on the requirement of obviousness is found in Apotex Inc v Sanofi‑Synthelabo Canada Inc,[(2008 SCC 61,  3 SCR 265.)] where Rothstein J. of the Supreme Court adopted a four-step approach developed in the UK:[(Pozzoli SPA v BDMO SA,  FSR 37,  EWCA Civ 588 at para 23; Windsurfing International Inc v Tabur Marine (Great Britain) Ltd,  RPC 59 (CA).)]
<wrap indent>See also: POSITA</wrap>
The person skilled in the art (sometimes referred to as a person of ordinary skill in the art or a person having ordinary skill in the art) is a hypothetical person versed in the field of the invention to which the patent is addressed.[(Janssen-Ortho Inc v Novopharm Ltd, 2007 FCA 217 at para 4)]
This hypothetical person was colourfully described in the context of the obviousness analysis by Hugessen J.A. in Beloit Canada Ltd v Valmet Oy:
The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.[(Beloit Canada Ltd v Valmet Oy (1986), 8 CPR (3d) 289 at 294 (FCA).)]
Despite the label, the skilled person or technician need not be thought of as a single individual. It may also be a "composite of scientists, researchers and technicians bringing their combined expertise to bear on the problem at hand".[(Bayer AG v Apotex Inc (1995), 60 CPR (3d) 58 at para 57 (Ont SC), citing Mobil Oil Corp v Hercules Canada Inc (1994), 57 CPR (3d) 488 at 494.)] This person or team, however, is not omnipotent. Rather, the skilled person is "ordinary",[(Xerox of Canada Ltd v IBM Canada Ltd (1977), 33 CPR (2d) 24 at 53 (FC TD). See also a definition provided by the Association Internationale pour la Protection de la Propriete Intellectuelle (AIPPI) as adopted in Merck & Co v Pharmascience Inc, 2010 FC 510 at para 35.)] "unimaginative",[(Beecham Canada Ltd v Proctor & Gamble Co (1982), 61 CPR (2d) 1 at 27 (FCA); Technograph Printed Circuits Ltd v Mills & Rockley (Electronics) Ltd (1971),  RPC 346 at 355 (HL).)] "devoid of intuiton",[(Beloit Canada Ltd v Valmet Oy (1986), 8 CPR (3d) 289 at 294 (FCA).)] and "middle of her class".[(Merck-Frosst - Schering Pharma GP v Canada (Minister of Health), 2010 FC 933 at para 69.)]
<wrap indent>See also: Common General Knowledge</wrap>
The person of ordinary skill is also assumed to have some common general knowledge in the field of the invention.[(Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 at para 37.)] Furthermore, he or she "is thought to be reasonably diligent in keeping up with advances in the field to which the patent relates" and their common knowledge "undergoes continuous evolution and growth".[(Whirlpool Corp v Camco Inc, 2000 SCC 67 at para 74.)]
It is important to note, however, that not all "public knowledge" can be imputed to the skilled person. Whereas public knowledge may include everything that has been published and available in some form (including all published patent specifications), common general knowledge includes only information that can be found by a "reasonably diligent search".[(Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234 at para 57, aff'd 2007 FCA 217.)] Public knowledge only becomes common general knowledge "when it is generally regarded as a good basis for further action by the bulk of those who are engaged in the particular art".[(Eurocopter v Bell Helicopter Textron Canada Ltée, 2012 FC 113 at para 47.)]
It has been held, for instance, that individual patent specifications do not necessarily form a part of the common general knowledge unless they are well known.[(Eli Lilly and Company v Apotex Inc, 2009 FC 991 at para 97, citing General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971),  RPC 457 at 482 (Eng CA).)] On the other hand, common general knowledge can include things that are not written down.[(Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234 at para 113, aff'd 2007 FCA 217.)] In light of modern information technology, the distinction between public knowledge and common general knowledge may become moot.[(Eurocopter v Bell Helicopter Textron Canada Ltée, 2012 FC 113 at para 48.)]
In patent trials, courts will generally hear testimony from expert witnesses in order to place themselves in the shoes of the person of ordinary skill in the art.[(Apotex Inc v Bayer AG, 2007 FCA 243 at para 19.)] However, such witnesses are often in the paradoxical position of testifying as "ordinary" persons in their field despite the fact that they are usually highly qualified experts with accomplished careers and lengthy resumes. As a result, courts have cautioned against relying too heavily on statements by "overqualified" experts.[(Apotex Inc v H Lundbeck A/S, 2013 FC 192 at para 109; Merck & Co v Pharmascience Inc, 2010 FC 510 at para 28; Lundbeck Canada Inc v Canada (Minister of Health), 2009 FC 146 at para 73; SmithKline Beecham Pharma Inc v Apotex Inc, 2001 FCT 770 at para 22.)]
The words of Hugessen J.A. should continue to be heeded:
Every invention is obvious after it has been made, and to no one more so than an expert in the field. Where the expert has been hired for the purpose of testifying, his infallible hindsight is even more suspect. It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"[(Beloit Canada Ltd v Valmet Oy (1986), 8 CPR (3d) 289 at 295 (FCA).)]
<wrap indent>See also: claim construction</wrap>
The last step of the Sanofi inquiry requires courts to look for a "degree of invention".[(Apotex Inc v Sanofi‑Synthelabo Canada Inc, 2008 SCC 61 at para 67.)] If there is no degree of invention, then the patent as claimed is invalid due to obviousness. In many respects, the inquiry into inventiveness is at the heart of patent law. Patents are granted to "inventive solutions to practical problems".[(Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at para 37.)] The degree of inventiveness required should be sufficiently high to justify a state-enforced monopoly.[(Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234 at para 110; Société Technique de Pulverisation Step v Emson Europe Ltd,  RPC 513 at 519 (Eng CA).)]
The structure laid out by the Supreme Court in Sanofi has not made it any easier to answer the question of what degree of inventiveness is actually required. Courts must still ask whether there was an "inventive step" made by the patentee. Only a "scintilla" of inventiveness is necessary to meet the threshold.[(O'Cedar of Canada Ltd v Mallory Hardware Products Ltd,  ExCR 299 at 318; DeFrees v Dominion Auto Accessories Ltd,  ExCR 331 at 364; Diversified Products Corp v Tye-Sil Corp (1991), 35 CPR (3d) 350.)] What is meant by a "scintilla of inventiveness" has proven somewhat difficult to pin down.
Over the years, courts have developed numerous tests and proposed numerous factors to evaluate inventiveness. In Janssen-Ortho Inc v Novopharm Ltd, Hughes J. surveyed the jurisprudence from the United Kingdom, the United States, and Canada, arriving at a non-exhaustive list of factors that may be used to objectively evaluate the obviousness of a claimed invention.[(Janssen-Ortho Inc v Novopharm Ltd, 2006 FC 1234.)] These factors were generally approved by Sharlow J.A. on appeal.[(2007 FCA 217.)] While the Supreme Court of Canada declined to weigh in on these factors,[(Appeal dismissed without reasons,  3 SCR xii.)] its later decision in Sanofi is not inconsistent with the Janssen-Ortho approach.[(Laboratoires Servier v Apotex Inc, 2009 FCA 222 at para 67.)]
In addition to the steps listed in Sanofi, primary factors that may be used in determining obviousness include the climate in the relevant field, motivation, and effort and time spent on the alleged invention. Secondary factors may include commercial success and meritorious awards.[(Janssen-Ortho Inc v Novopharm Ltd, 2007 FCA 217 at para 25.)]
The climate in the relevant field refers to the general state of the art, and "includes not only knowledge and information but also attitudes, trends, prejudices and expectations."[(Ibid.)] If it can be established that the state of the art in the field was generally biased against or taught away from the claimed invention, the invention may be non-obvious.[(Apotex Inc v Wellcome Foundation Ltd (1998) 79 CPR (3d) 193 at paras 265-266, rev'd in part (on another issue)  1 FC 495 (FCA), aff'd 2002 SCC 77; Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361 at paras 237-240, 280; General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971),  RPC 457 at 505 (Eng CA).)] A discovery that is unexpected or surprising to persons skilled in the art may meet the required inventive step.[(Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 at para 9; Novo Nordisk Canada Inc v Cobalt Pharmaceuticals Inc, 2010 FC 746 at para 308; Eli Lilly Canada Inc v Novopharm Ltd, 2009 FC 235 at para 97.)]