Practice Notice on Obviousness - 1 of 4

Pratice Notice on Obviousness - November 2, 2009
(PDF - 45 KB - 6 pages)

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NOTE: This practice notice is intended to provide guidance on current Canadian Intellectual Property Office (CIPO) practice and interpretation of relevant legislation and should not be quoted as, or considered to be, a legal authority. In the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. It is the responsibility of the applicant/patentee to decide how to proceed with respect to a particular application or other matter.

November 2, 2009

Overview

On November 6, 2008, the Supreme Court released its judgement in the case Apotex Inc. v. Sanofi-Synthelabo Canada, Inc. [2008 SCC 61].

In its reasons, the Court commented on the approach to obviousness in Canada, concluding that the inquiry into obviousness is not well served by attempting to rigidly apply any one test in all circumstances.

The Court considered recent jurisprudence in both the US and UK, and concluded that the approach known in the UK as Windsurfing/Pozzoli will be useful for framing an obviousness inquiry. [The approach is so-named for having been introduced in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd. [1985] R.P.C. 59 (C.A.) and refined in Pozzoli SPA v. BDMO SA [2007] EWCA Civ 588.]

The four-step approach to obviousness adopted by the Court is as follows:

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, difference exists 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?

Steps (1) to (3) establish the context within which, at step (4), the question of whether or not the claimed invention is obvious is asked. The Court's comment regarding attempting to rigidly apply any one test refers to the analysis performed at step (4). Whatever test is applied, if the claimed subject-matter is found to be the result of any degree of ingenuity, it will not be considered obvious.

The Court further indicated that, under certain circumstances, the question of obviousness can be considered by asking, in step (4), whether it would have been "obvious to try" a certain line of inquiry that would inevitably lead to the claimed invention (see part B of this notice).

Impact on examination

• Part A - Framing the obviousness inquiry
• Part B - "Obvious to try" considerations
• Part C - Impact on cases under prosecution

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