Dans l’affaire Janssen-Ortho Inc. v. Novopharm Ltd, un dossier de contrefaçon et d’attaque de la validité d’un brevet en défense, le Juge Hughes offre un bon résumé des critères de nouveauté en brevet au Canada et tente de faire jurisprudence en présentant de nouveaux critères à considérer par rapport au critère d’inventivité pour un brevet (et par le fait même, essayer de se distancer des principes établis dans l’affaire Beloit). Il sera intéressant de voir si le dossier sera porté en appel. Voici les extraits de discussion sur ces sujets:
 Turning first to the issue of novelty or anticipation, the Defendant says that the prior disclosure of Ofloxacin anticipates what is claimed in claim 4.
 The Supreme Court of Canada in Free World Trust v. Électro Santé Inc.,  2 S.C.R. 1024, 2000 SCC 66 outlined the test for anticipation is in Canada. The Court said at paragraph 26:
… The legal question is whether the Solov’eva article contains sufficient information to enable a person of ordinary skill and knowledge in the field to understand, without access to the two patents, “the nature of the invention and carry it into practical use without the aid of inventive genius but purely by mechanical skill”…. In other words, was the information given by Solov’eva for [the] purpose of practical utility, equal to that given in the patents in suit”?: …as was memorably put in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co.,  R.P.C. 457 (C.A.) at p. 486:
A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
The test for anticipation is difficult to meet:
One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. [Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 (F.C.A.), per Hugessen J.A., at p. 297].
 The House of Lords in Synthon v. SmithKline Beecham PLC’s Patent,  UKHL 59 para. 19 (Lexis),  1 All. E.R. 685,  RPC 10 has put the matter succinctly: there are two requirements for anticipation, enablement and disclosure.
 The Defendant argues that the phrases “purely by mechanical skill” and “produce the claimed invention without the exercise of any inventive skill” mean that if an ordinary person skilled in the art could bring to bear on the publication the understanding of the day and routine techniques of the day, from which the invention as claimed would result, there is anticipation. This is not the correct interpretation of the test for anticipation as set out by the Supreme Court of Canada.
 The Supreme Court test requires that the “flag” be planted at the point of the claimed invention and that the direction as to how to arrive at that point must be so clear such that an ordinary person skilled in the art would in every case, without possibility of error, be led to that point. No such flag is planted and no such direction is given in either the ’840 patent or the Daiichi publication. There is no anticipation of what is claimed in claim 4 of the Patent.
 Inventive ingenuity is not defined in the Patent Act. Obviousness has only been defined recently in the post-October 1, 1996 version of the Patent Act, section 28.3 (1993, c. 15, s.33) as being “subject matter that would not have been obvious [at the relevant date] to a person skilled in the art… having regard to information disclosed … in such a manner that [it] became available to the public.” This definition is not different from the law as it was generally understood previously.
 Obviousness is a measure of whether the invention, as claimed, possesses sufficient inventive ingenuity so as to merit the grant of a monopoly. It is to be determined by the Court on the evidence before it, on an objective and principled basis. As Hoffman L.J. said in Société Technique de Pulverisation Step v. Emson Europe Ltd.,  RPC 513 at 519 (Eng. C.A.)(Lexis), the question is that of fact and degree which must be answered in accordance with the general policy of the Patent Act to reward and encourage inventors without inhibiting improvements of existing technology by others.
 The classic test for obviousness as established by the Federal Court of Appeal is that of Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 at 294 [Beloit]:
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.
 This definition comes perilously close to that for anticipation as set out by the Supreme Court of Canada if it is to be interpreted that the person skilled in the art has “no scintilla of inventiveness or imagination” and that being led “directly and without difficulty” to “the solution taught by the patent” means that there must be only one way so as to inevitably arrive at the invention and that the “invention taught’ is different from the claim as properly construed. There would be no point in considering obviousness if it is, in effect, little different than a consideration of anticipation.
 A determination of obviousness on a principled and objective basis requires that the Court take into consideration a number of factors. These factors may vary in number and importance dependant upon the circumstances of the case. The Court is not a scientific body, thus it must take the facts of the case, the opinions of the experts and the circumstances as presented into consideration and come up with a weighed decision (Molnlycke AB v. Procter & Gamble Ltd.,  FSR 549 (Ch.) (Lexis),  RPC 49 (Ch.) at 442 ff). The factors to be considered as of the date of the invention which can be considered as December 1985, include:
1. What is the invention as claimed? The claim or claims at issue, as construed by the Court is what are at issue. The “invention” as generally expressed in the patent or by the inventors is not the issue, it is the claim as properly construed.
2. Who is the person skilled in the art to whom the patent is addressed? To that extent the uninventive and unimaginative person postulated in the Beloit quotation has been supplanted by the Supreme Court of Canada in Whirlpool at para.74. The Court said that while such a person is deemed to be uninventive as part of his future personality he or she is thought to be reasonably diligent in keeping up with advances in the field to which the patent relates. The common knowledge of skilled workers undergoes continuous evolution and growth.
3. What body of knowledge and information would the ordinary person skilled in the art be expected to have, or to be reasonably able to obtain, as of the date of the alleged invention? Not all knowledge is found in print form, much is simply commonly known and passed from person to person. Just as one might learn to cook at mother’s elbow, it is not all in the recipe book. Similarly, not all knowledge that has been written down, perhaps fleetingly, becomes part of the knowledge that an ordinary person skilled in the art is expected to know or find.
4. What is the climate in the relevant field at the time the alleged invention was made? The general state of the art includes not only knowledge and information but also attitudes, trends, prejudices and expectations.
5. What motivation existed at the time the alleged invention was made to solve a recognized problem? There may have been a general motivation such that everybody in the particular area was looking for a solution. The more unique and personal the motivation was, apart from any general motivation, the more one might be expected to be inventive. If motivation came from an outside source, and common place thought and techniques can come up with a solution, the less one is expected to have exercised inventive ingenuity. The United States Supreme Court is expected to consider the issue of motivation shortly in KSR International Co. v. Teleflex Inc., U.S. No. 04-1350 review granted 6/26/06, scheduled to be heard November 28, 2006.
6. What effort and time was involved? Were the efforts randomized or focused? In this regard phrases such as “worth a try” and “directly and without difficulty” and “routine testing” have been used by the courts. It is not useful to use such phrases as they tend to work their way into expressions of law or statements of expert witnesses. Sachs L.J. deprecated the coining of such phrases in General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited,  R.P.C. 195 at pages 211-12. The length of time an expense involves in the efforts are not, in themselves, useful considerations as an invention may be the result of a lucky hit, or be simply the uninventive application of routine, of time consuming and expensive techniques.
Of secondary importance are factors arising after the time that the alleged invention is made since, after all, the Court is to be concerned with “inventive ingenuity” exercised at the time of making the invention. These secondary factors include:
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. This may also reflect things other than inventive ingenuity such as marketing skills, market power and features other than the invention.
8. Subsequently recognized advantages. The inventors may have perceived only certain advantages, yet later those inventors or others may determine that other, previously unrecognized advantages lay in the alleged invention. This factor is of limited usefulness in considering inventive ingenuity as of the date of the invention. The recognition of later advantages, if unexpected, may themselves be the subject of a patent. To the extent that the United States Courts in cases such as Re Zenitz 33 F. 2d 924 have placed weight upon subsequently discovered advantages that is not the law here. Little, if any, weight should be put on this factor.
9. Meritorious awards, if in fact 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.
The most dangerous of all the factors and one to be avoided or applied only with the greatest of care is:
10. Hindsight. It is far too easy to see how the alleged invention could have been arrived at, even easily, once it has been done. As some cases say, simplicity does not negate invention. However, if the number of decisions to be made in arriving at the solution were few, and commonplace, hindsight may merely confirm that no inventive ingenuity was required so as to arrive at the solution. If the points for decision were many and choices abundant, there may be inventiveness in making the proper decisions and choices.