Obviousness (Page 2 of 4)
Pratice Notice on Obviousness - November 2, 2009
(PDF - 45 KB - 6 pages)
A - Framing the obviousness inquiry
In analysing whether claimed subject-matter satisfies the requirement in section 28.3 of the Patent Act, Canadian examiners will henceforth be guided by the four-step approach enumerated above. During examination, however, the steps need not be explicitly addressed unless doing so is relevant to the objection in suit. Depending on the fact circumstances of the case, certain steps may require little or no explicit consideration. Where the course of prosecution dictates a need, a more rigorous consideration of each step may be developed. Where an impasse appears to be developing between the examiner and applicant, it is important that all the points of disagreement be identified and considered prior to the writing of a final action.
Examiners will adhere to the following guidance regarding the steps set out by the Court (the numbering provided refers to that used in enumerating the steps in the approach, above):
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- Where necessary, examiners will identify the person skilled in the art by reference to the field or fields relevant to the invention, and where applicable by reference to attributes such as their proclivity for engaging in research or experimentation (see part B, below). In circumstances where the nature of the person skilled in the art does not appear to be debatable or where it does not appear that their nature will impact the obviousness analysis, it may not be necessary to explicitly address this step.
- Examiners, in formulating objections, may refer to information they believe to have been common general knowledge as of the claim date. Unless it becomes evident through the applicant's comments that the nature of the common general knowledge is not common ground and is reasonably in dispute, an examiner need not identify documents establishing the common general knowledge.
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The identification of the inventive concept is performed on a claim-by-claim basis, recognising that the specific inventive concept of each claim can (and should) be a refinement of the single general inventive concept that must link the claims as a whole in order to satisfy section 36 of the Patent Rules. The relevant inventive concept is that of the claim under examination, and not a generalised inventive concept derived from the specification as a whole.
The inventive concept of a claim, at this step of the inquiry, is identified without regard to the prior art. It is the essence of the claimed invention and can generally be identified by approaching the matter of the claim as a solution to whatever problem the inventors have set out to address, and relates to those elements of the claim that were described, or which would be recognised by the person skilled in the art, as providing the solution to a given problem. In identifying the problem that the inventors set out to address, and the solution proposed through the invention, guidance will generally be found in the description, in accordance with paragraph 80(1)(d) of the Patent Rules.
The concept of "solving a problem" should be understood in the context of "achieving the objects of the invention" and "fulfilling the purpose of the invention". It is worth reiterating that identifying the problem being addressed is done in the context provided by the description, and not by reference to the closest prior art. This exercise is not to be confused with the "problem and solution" approach to obviousness used by the European Patent Office, which frames the problem in view of the closest prior art.
The inventive concept may be clear from the language of the claim itself, where the purpose of the claimed matter is explicitly defined. This would be particularly likely in the case of a claim presented in the European or Jepson format. Where it is not clear from the language of the claim itself what problem is being solved by the claimed matter, the remainder of the specification is consulted to assist in identifying the inventive concept of that claim.
- At this step, the inventive concept (the solution in the claim) identified in step (2) is compared to the state of the art to determine whether, or to what extent, an equivalent or similar inventive concept (solution) was known at the claim date. The term "state of the art" refers to the information available to the person skilled in the art in accordance with section 28.3 of the Patent Act, and generally will be identified by reference to specific prior art documents.
- Where differences exist between the inventive concept embodied in the claim and the state of the art, it must be determined if these differences would have been obvious as of the claim date. This must be done without presupposing that the specific problem addressed by the inventors was recognized in the prior art. This is important to avoid adopting an improper "hindsight" perspective; where the existence or nature of a problem was unobvious, identifying the problem can contribute to the necessary inventive step. Note that should no difference be identified between the inventive concept and the state of the art, the claim is most likely defective.
At step (4) it must be determined whether the subject-matter of the claim is obvious or is the result of ingenuity. Various tests have been articulated in the jurisprudence in order to answer this question, and the Supreme Court has cautioned that no single expression of this test is likely to apply to all circumstances. Although the test question may be framed taking into account the nature of the specific case in question, one must never lose sight that its purpose is to evaluate the statutory requirement of section 28.3 of the Patent Act and care should be taken to ensure the question is not phrased in such a way that a different standard is applied. The test articulated in Beloit Canada Ltd. v. Valmet Oy [(1986), 8 C.P.R. (3rd), 289 (F.C.A.)], for example, is not to be viewed as mandatory although it may be relevant in certain situations.
The Office considers the guidance affirmed by the Federal Court of Appeal in Novopharm Limited v. Janssen-Ortho Inc. [2007 FCA 217] to remain relevant in view of the guidance of the Supreme Court in Sanofi-Synthelabo. Particularly, the obviousness inquiry should be framed in the context of:
- the climate in the relevant field at the time the alleged invention was made, including not only knowledge and information available but also attitudes, trends, prejudices and expectations that would define the person skilled in the art; and
- any motivation in existence at the time of the alleged invention to solve a recognized problem in the field of the invention.