Obviousness

To be valid, the claimed subject-matter must not have been obvious on the claim date.

Invention must not be 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 before the one-year period immediately preceding the filing date or, if the claim date is before that period, before the claim 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.

In the case of claims reciting alternatives, each alternative is treated as a separate claim under section 28.3.

Separate claims

(5) For greater certainty, if a claim defines the subject-matter of an invention in the alternative, each alternative is a separate claim for the purposes of sections 2, 28.1 to 28.3, 56 and 78.3.

The Supreme Court of Canada, in Sanofi, introduced distinct steps in assessing obviousness:

[67] It will be useful in an obviousness inquiry to follow the four-step approach first outlined by Oliver L.J. in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 (C.A.). This approach should bring better structure to the obviousness inquiry and more objectivity and clarity to the analysis. The Windsurfing approach was recently updated by Jacob L.J. in Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37 (p. 872), [2007] EWCA Civ 588, at para. 23: In the result I would restate the Windsurfing questions thus:

In the result I would restate the Windsurfing questions thus:

1. 1. Identify the notional person skilled in the art;
   2. Identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as forming part of the state of the art and the inventive concept of the claim or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? [Emphasis added.]

It will be at the fourth step of the Windsurfing/Pozzoli approach to obviousness that the issue of obvious to try will arise.

The inventive concept may not be readily discernable from the claims themselves, as may be the case with a bare chemical formula. In that case, it is appropriate to read the specification in the patent to determine the inventive concept of the claims.

[77] The inventive concept of the claims is not readily discernable from the claims themselves. A bare chemical formula in a patent claim may not be sufficient to determine its inventiveness. In such cases, I think it must be acceptable to read the specification in the patent to determine the inventive concept of the claims. Of course, it is not permissible to read the specification in order to construe the claims more narrowly or widely than the text will allow.

Step 3 of the obviousness analysis involves the state of the art. The scope of the state of the art was changed by the introduction of section 28.3 to the Patent Act. Prior to the introduction of section 28.3 to the Patent Act, prior public documents were not citable as forming the state of the art if the documents could not be located by the person of skill in the art conducting a reasonably diligent search. Section 28.3, however, contemplates information disclosed … in such a manner that the information became available to the public. Accordingly, it is an error to exclude from consideration prior art that was available to the public at the relevant date simply because it would not have been located in a reasonably diligent search. However, the likelihood that a prior art reference would not have been located by a person of skill in the art (PSA) may be relevant in that the uninventive PSA might not have thought to combine that prior art reference with other prior art to make the claimed invention.

[86] In light of section 28.3 of the Patent Act and the applicable jurisprudence and commentaries, I conclude that it is an error to exclude from consideration prior art that was available to the public at the relevant date simply because it would not have been located in a reasonably diligent search. The likelihood that a prior art reference would not have been located by a PSA may be relevant to consideration of step 4 of the obviousness analysis (whether differences between the state of the art and the inventive concept constitute steps which would have been obvious to the PSA) in that the uninventive PSA might not have thought to combine that prior art reference with other prior art to make the claimed invention. However, excluding prior art simply because it is difficult to find is problematic because it would result in the possibility of a valid patent on an invention that had, but for some non-inventive tweak, already been disclosed to the public. In my view, that is not what Canada’s patent regime is intended to permit.

Justice Hugessen warned that inventions will seem obvious in hindsight. It is so easy to say I could have done that. Before the assertion is can be given any weight, one must have a satisfactory answer to the question, Why didn’t you?

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? [p. 295]

A mosaic of prior art may be relied upon in an obviousness analysis.

[254] [A] mosaic of prior art may be assembled in order to render a claim obvious. Even uninventive skilled technicians would be presumed to read a number of professional journals, attend different conferences and apply the learnings from one source to another setting or even combine the sources. However, in doing so, the party claiming obviousness must be able to demonstrate not only that the prior art exists but how the person of ordinary skill in the art would have been led to combine the relevant components from the mosaic of prior art.

In the case of combination inventions, it is not fair to break down the combination into its constituent parts and find that, because the parts are well known, the combination is necessarily obvious.

[51] It is not fair to a person claiming to have invented a combination invention to break the combination down into its parts and find that, because each part is well known, the combination is necessarily obvious: see, for example, Stiga Aktiebolag v. S.L.M. Canada Inc. (1990), 34 C.P.R. (3d) 216 at page 245 (F.C.T.D.), which quotes this passage from Wood & Amcolite Ltd. v. Gowshall Ltd. (1936), 54 R.P.C. 37 at page 40 (per Greene L.J.):

The dissection of a combination into its constituent elements and the examination of each element in order to see whether its use is obvious or not is, in our view, a method which ought to be applied with great caution since it tends to obscure the fact that the invention claimed is the combination. Moreover, this method also tends to obscure the facts that the conception of the combination is what normally governs and precedes the selection of the elements of which it is composed and that the obviousness or otherwise of each act of selection must in general be examined in the light of this consideration. The real and ultimate question is Is the combination obvious or not?

See also Omark Industries (1960) Ltd. v. Gouger Saw Chain Co. et al (1964), 45 C.P.R. 169 (Ex. Ct.) and Canamould Extrusions Ltd. v. Driangle Inc., 2003 FCT 244 (affirmed 2004 FCA 63).

The factors one would normally consider under step 4 are essentially the same as those enumerated as relevant factors under the obvious to try approach.

[94] Rothstein J. in Sanofi did not restrict the obvious to try approach to pharmaceutical cases involving, for example, chiral chemistry. However, considering the case before him, Rothstein J. certainly had this particular technology in mind, and that is what he used to exemplify what he meant by a field where advances are often won by experimentation.

[95] That is not to say however that the obvious to try approach cannot apply in a mechanical field. It will always depend on the facts and the evidence in each case.

…

[104] It is also worth noting here that the factors one would normally consider under step 4 are essentially the same as those Rothstein J. enumerated as relevant factors under the obvious to try approach, except that in the latter case, the approach would involve discussion of the numerous inter-related variables, a number of identified predictable solutions, and a need to assess the nature of the experimentation program involved. The actual course of action followed by an inventor, the climate in the industry, and secondary indicia such as commercial successes or awards are all factors that can be relevant in an obviousness inquiry in any field.

The obviousness analysis asks whether the distance between two points in the development of the art can be bridged by the skilled person using only the common general knowledge available to such a person.

[65] It may be helpful to keep in mind that the obviousness analysis asks whether the distance between two points in the development of the art can be bridged by the Skilled Person using only the common general knowledge available to such a person. If so, it is obvious. The first of those points is the state of the prior art at the relevant date. References in the jurisprudence to the inventive concept, the solution taught by the patent, what is claimed or simply the invention are attempts to define the second point.

The Supreme Court of Canada provided the following guidance concerning the obvious to try test and pointed out that it is only one factor in an obviousness inquiry. The Court emphasized that the test requires evidence that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough.

[64] … the obvious to try test must be approached cautiously. It is only one factor to assist in the obviousness inquiry. It is not a panacea for alleged infringers. The patent system is intended to provide an economic encouragement for research and development. It is well known that this is particularly important in the field of pharmaceuticals and biotechnology.

[65] In Saint-Gobain PAM SA v. Fusion Provida Ltd., [2005] EWCA Civ 177 (BAILII), Jacob L.J. stated, at para. 35:

Mere possible inclusion of something within a research programme on the basis you will find out more and something might turn up is not enough. If it were otherwise there would be few inventions that were patentable. The only research which would be worthwhile (because of the prospect of protection) would be into areas totally devoid of prospect. The obvious to try test really only works where it is more-or-less self-evident that what is being tested ought to work.

In General Tire, Sachs L.J. said, at p. 497:

Obvious is, after all, a much-used word and it does not seem to us that there is any need to go beyond the primary dictionary meaning of very plain.

In Intellectual Property Law, at p. 136, Professor Vaver also equates obvious to very plain. I am of the opinion that the obvious to try test will work only where it is very plain or, to use the words of Jacob L.J., more or less self-evident that what is being tested ought to work.

[66] For a finding that an invention was obvious to try, there must be evidence to convince a judge on a balance of probabilities that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough.

The Supreme Court of Canada observed that the obvious to try test might be appropriate where advances are often won by experimentation.

[68] In areas of endeavour where advances are often won by experimentation, an obvious to try test might be appropriate. In such areas, there may be numerous interrelated variables with which to experiment. For example, some inventions in the pharmaceutical industry might warrant an obvious to try test since there may be many chemically similar structures that can elicit different biological responses and offer the potential for significant therapeutic advances.

In the case where an obvious to try test is warranted, the Court listed three factors that should be taken into consideration at the fourth step of the obviousness inquiry.

ii. Obvious to Try Considerations

[69] If an obvious to try test is warranted, the following factors should be taken into consideration at the fourth step of the obviousness inquiry. As with anticipation, this list is not exhaustive. The factors will apply in accordance with the evidence in each case.

1. Is it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art?
2. What is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine?
3. Is there a motive provided in the prior art to find the solution the patent addresses?

The Court also accepted that the course of conduct that led to the invention and the skill level of the inventor may be factors as well.

[70] Another important factor may arise from considering the actual course of conduct which culminated in the making of the invention. It is true that obviousness is largely concerned with how a skilled worker would have acted in the light of the prior art. But this is no reason to exclude evidence of the history of the invention, particularly where the knowledge of those involved in finding the invention is no lower than what would be expected of the skilled person.

[71] For example, if the inventor and his or her team reached the invention quickly, easily, directly and relatively inexpensively, in light of the prior art and common general knowledge, that may be evidence supporting a finding of obviousness, unless the level at which they worked and their knowledge base was above what should be attributed to the skilled person. Their course of conduct would suggest that a skilled person, using his/her common general knowledge and the prior art, would have acted similarly and come up with the same result. On the other hand, if time, money and effort was expended in research looking for the result the invention ultimately provided before the inventor turned or was instructed to turn to search for the invention, including what turned out to be fruitless wild goose chases, that evidence may support a finding of non-obviousness. It would suggest that the skilled person, using his/her common general knowledge and the prior art, would have done no better. Indeed, where those involved including the inventor and his or her team were highly skilled in the particular technology involved, the evidence may suggest that the skilled person would have done a lot worse and would not likely have managed to find the invention. It would not have been obvious to him/her to try the course that led to the invention.

[Emphasis added.]

The Federal Court of Appeal clarified that possibility and speculation is not the test, nor is worth a try; the invention must be more or less self-evident.

[28] I take it from this that the test adopted by the Supreme Court is not the test loosely referred to as worth a try. After having noted Apotex’ argument that the worth a try test should be accepted (at paragraph 55), Rothstein J. never again uses the expression worth a try and the error which he identifies in the matter before him is the failure to apply the obvious to try test (at paragraph 82).

[29] The test recognized is obvious to try where the word obvious means very plain. According to this test, an invention is not made obvious because the prior art would have alerted the person skilled in the art to the possibility that something might be worth trying. The invention must be more or less self-evident. The issue which must be decided in this appeal is whether the Federal Court Judge failed to apply this test.

[30] In my respectful view, he did not. While the Federal Court Judge does not use the phrase obvious to try, his reasons show that he conducted his analysis along the dividing line drawn in Sanofi-Synthelabo. Specifically, he rejected the contention that the invention was obvious based on mere possibilities or speculation and looked for evidence that the invention was more or less self-evident.

The Federal Court of Appeal confirmed that the test for whether something is obvious to try is whether it is more or less self-evident to try to obtain the invention, and not whether the skilled person had good reason to pursue predictable solutions or solutions that provide a fair expectation of success.

[4] First, Eli Lilly asserts that the Judge erred in law in his obviousness analysis by applying an incorrect test for obviousness when he wrote, at paragraph 150 of his reasons, that the test, rather, is whether the skilled person had good reason to pursue predictable solutions or solutions that provide a fair expectation of success. We agree that the correct test, and the test that ought to be applied by the Federal Court, is that articulated by the Supreme Court of Canada in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 (CanLII), [2008] 3 S.C.R. 265, at paragraph 66: For a finding that an invention was obvious to try, there must be evidence to convince a judge on a balance of probabilities that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough. This said, the Judge went on, at paragraph 151 of his reasons, to note that it was more or less self-evident that the invention ought to work. The Judge then concluded even if the standard is not fair expectation of success, I find that the invention was obvious to try according to the test in Sanofi-Synthelabo. It follows that any error by the Judge in his initial articulation of the test for assessing obviousness was not material to the Judge’s decision.

The Federal Court of Appeal considered whether more or less self-evident that it ought to work should be treated as a factor or as a requirement in the obviousness to try analysis. The Court concluded that it should be treated as a factor, and not as a requirement, since that appeared to be more consistent with what the Supreme Court intended.

[36] A final observation on paragraph 195 of the Reasons is that the Federal Court can be forgiven for its lack of clarity as to whether more or less self-evident that it ought to work should be considered a factor in the obviousness to try analysis, or a requirement. The Supreme Court itself gave mixed signals on the point. Before the passages quoted above from Sanofi, the Supreme Court stated as follows at paragraph 65: I am of the opinion that the obvious to try test will work only where it is […] more or less self-evident that what is being tested ought to work. Therefore, it appears that the Supreme Court treated this aspect as a requirement at paragraph 65, and then as a factor at paragraph 69. I maintain my view that more or less self-evident that it ought to work should be treated as a factor in the obviousness to try analysis, and not as a requirement. This appears to be more consistent with what the Supreme Court intended.

Commercial success and meritorious awards may be relevant to the assessment of obviousness but generally bear less weight.

[25] There is no single factual question or a set of questions that will determine every case, or any particular case. Justice Hughes, at paragraph 113 of his reasons, proposes a list of factors to be considered when the validity of patent is challenged on the basis of obviousness. The list is apparently derived from a survey of numerous cases from Canada, the United States and the United Kingdom. In my view, despite the continual debate as to whether the legal test for obviousness is the same in all of those countries, the list of factors proposed by Justice Hughes is helpful to guide the required factual inquiry, and as a framework for the factual analysis that must be undertaken. What follows is an edited version of his list:

…

Secondary factors

These factors may be relevant but generally bear less weight because they relate to facts arising after the date of the alleged invention.

7. Commercial success

   Was the subject of the invention quickly and anxiously received by relevant consumers? This may reflect a fact that many persons were motivated to fill the commercial market, which may suggest inventive ingenuity. However, it may also reflect things other than inventive ingenuity such as marketing skills, market power and features other than the invention.

8. Meritorious awards

   Awards directed to the alleged invention may be recognition that the appropriate community of persons skilled in the art believed that activity to be something of merit. That may or may not say anything about inventive ingenuity.

[26] Justice Hughes included as a secondary factor subsequently recognized advantages, referring to the advantages of the claimed invention that are perceived only after the date of the invention. Justice Hughes said that this factor is of limited usefulness in considering inventive ingenuity, and should be given little weight. I find it difficult to envisage a situation where a subsequently recognized advantage to a claimed invention would be of any assistance in determining whether inventive ingenuity was required to make it. I can imagine a situation where the commercial success of an invention is attributable to a subsequently recognized advantage, but that would not assist the inquiry as to inventive ingenuity. I recognize that it is impossible to imagine every possible situation, but given the current state of the jurisprudence I would be inclined to give this factor no weight except in the most extraordinary case.

The Federal Court observed that:

1. commercial success cannot save an invention that is obvious;
2. commercial success is relevant only in borderline cases; and
3. there must be a causal relationship between the alleged invention and any commercial success — it may be that commercial success is due to other factors. The same may be said of meritorious awards.

[91] Commercial success and meritorious awards are two secondary factors that may be relevant to the assessment of obviousness: Novopharm Limited v Janssen-Ortho Inc, 2007 FCA 217 at para 25. However, these factors are not conclusive. Commercial success cannot save an invention that is obvious: Domtar Ltd v MacMillan Bloedel Packaging Ltd (1978), 41 CPR (2d) 182, [1978] FCJ No 906 (QL) (FCA). Commercial success is relevant only in borderline cases: Rothmans, Benson & Hedges Inc v Imperial Tobacco Ltd (1993), 47 CPR (3d) 188, [1993] FCJ No 135 (QL) (FCA), quoting from Fox.

[92] There must be a causal relationship between the alleged invention and any commercial success: D.H. MacOdrum, Fox on the Canadian Law of Patents, 5th ed (Toronto, Ont: Thomson Reuters Canada, 2013), ch 4:18 at 4-158.1; Corning Glass Works v Canada Wire & Cable Ltd (1984), 81 CPR (2d) 39, [1984] FCJ No 353 (QL) (FCA); Pollard Banknote Limited v BABN Technologies Corp, 2016 FC 883 at para 224. It may be that commercial success is due to other factors. The same may be said of meritorious awards.

An obviousness inquiry should be undertaken on a claim-by-claim basis. If an independent claim is not obvious, then dependent claims therefrom cannot be obvious. But, if an independent claim is held to be obvious, then the Court must go to consider each dependent claim.

[42] The FCA indicated at paragraph 47 of their decision that I should bear in mind that the obviousness inquiry should be undertaken on a claim-by-claim basis — it should be apparent that I did so. Moreover, it is trite law that if an independent claim is found not to be obvious, then dependent claims therefrom cannot be obvious. In contrast, if an independent claim is held to be obvious, then the Court must go to consider each dependent claim for obviousness, as each such claim adds an element or elements that may or may not be obvious in light of the relevant prior art and/or common general knowledge of the POSITA at the relevant date.