Jurisprudence récente de la Cour fédérale qui applique les principes de l’affaire Sanofi pour la nouveauté et la non-évidence

Encore une décision sur les énantiomères (même les ingénieurs spécialisés en mécanique seulement commencent à devenir spécialistes sur ce domaine de chimie étant donné que la jurisprudence de la Cour fédérale semble porter exclusivement sur les énantiomères ces temps-ci…


Lundbeck Canada Inc. v. Canada (Health), 2009 FC 146, (February 25, 2009) 


  Et voici des extraits sur les concepts d’interprétation de revendications, de nouveauté et évidence, potentiellement utiles pour les examens d’agents de brevets:


[29]           At the heart of any dispute regarding a patent is its meaning. The principles have been well-established and were clearly set forth by the Supreme Court in Free World Trust v. Électro Santé Inc., 2000 SCC 66, 9 C.P.R. (4th) 168 and Whirlpool Corp. v. Camco Inc., 2000 SCC 67, 9 C.P.R. (4th) 129. As applicable to these applications:

a.      It is a statutory requirement that the patent contain a specification and end with a claim or claims “defining distinctly and in explicit terms the subject-matter of the invention for which an exclusive privilege or property is claimed”. The specification must be sufficiently full, clear, concise and exact “as to enable any person skilled in the art or science to which it pertains, or to which it is most closely connected, to make, construct, compound or use it”. (Patent Act, pre-1 October 1989, s. 34).

b.      The patent is notionally addressed to a person skilled in the art or science of the subject-matter and is to be read as such a person would have read it when it first became public.

c.      The claims are to be read in an informed and purposive way to permit fairness and predictability and to define the limits of the monopoly.

d.      The claim portion of the patent specification takes precedence over the disclosure portion in the sense that the disclosure is read to understand what was meant by a word in the claims “…but not to enlarge or contract the scope of the claim as written and thus understood” (Whirlpool at para. 52).

e.      To overclaim is to lose everything. If the inventor underclaims, the court will not broaden the monopoly in the interests of the “spirit” thereof

f.        A patent is not an ordinary document. It meets the definition of a “regulation” in the Interpretation Act, and must be read to assure the attainment of its objects. “[C]laims construction is a matter of law for the judge, and he was quite entitled to adopt a construction of the claims that differed from that put forward by the parties.” (Whirlpool at para. 61.)

(See also Biovail Pharmaceuticals Inc. v. Canada (Minister of National Health and Welfare), 2005 FC 9, 37 C.P.R. (4th) 487, at para. 15).


[44]           However, I am satisfied that escitalopram is not a selection patent. In Plavix, the Supreme Court clarified the circumstances in which a patent, selection or otherwise, may be invalided on the grounds of anticipation. In first instance, Mr. Justice Shore cited Free World, above, which approved the test for anticipation set out by Mr. Justice Hugessen in Beloit Canada Ltd. et al v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A.) at p. 297:

…. 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 lead to the claimed invention. … [Emphasis added by Mr. Justice Shore.]


However, and drawing from the decision of Lord Hoffmann in Synthon B.V. v. SmithKline Beecham plc, [2005] UKHL 59, [2006] 1 All E.R. 685, [2006] R.P.C. 10, Mr. Justice Rothstein held that there are two components to anticipation: prior disclosure and enablement. “…[P]rior disclosure means that the prior patent must disclose subject matter, which, if performed, would necessarily result in infringement of that patent…” (para. 25).


[45]           No trial and error experimentation is permitted at the disclosure stage, but such experimentation is permitted at the enablement stage (para. 27). The decision of Mr. Justice Hugessen has now been held to only be applicable to the disclosure stage.


[46]           The evidence is clear that if the subject matter of either prior U.S. patent were worked, the result would be a racemate, not an enantiomer. Consequently it cannot be said that patent ‘452 formed part of either U.S. patent, and so the selection patent argument falls for lack of prior disclosure. (See Abbott Laboratories v. Canada (Minister of Health), 2008 FC 1359 at paragraph 75.)


[47]           It was urged upon me that as a result of the Plavix decision, the disclosure and claim of a racemate in a prior patent is automatically a disclosure and claim of the enantiomers. That cannot be so. It is not enough to say that everyone knew there were two enantiomers within citalopram. That is no better than saying that any undergraduate student in organic chemistry could have read the formula and realized that citalopram contains a carbon atom bonded with four separate constituents. Nowhere do I see support in Plavix for the proposition that the claim of a racemate is ipso facto a claim for its two enantiomers. Considering that if one overclaims one gets nothing, and considering that one could not possibly know the exact qualities of the enantiomers, i.e. which, if either, would be useful in treating depression, I cannot construe the patent as invited by the respondents. In fact, at paragraph 19 Mr. Justice Rothstein said:

….Apotex implies that the current understanding of the law sets the bar for proving anticipation too high and that the acceptance of a system of genus and selection patents necessarily, or at least on the facts of this case, involves anticipation and therefore invalidity. I would reject the broader objection. … 




[53]           The Supreme Court’s decision in Plavix has also clarified the application of Beloit, above, to invalidity on the grounds of obviousness. Mr. Justice Hugessen had said at page 294:

The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. 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.



[54]           The skilled addressee is now allowed some imagination and intuition. After reviewing developments in the United States and the United Kingdom, Mr. Justice Rothstein held at paragraph 68 that there are circumstances which permit an element of “obvious to try”. He agreed with the current state of the law in the United Kingdom as summarized by Lord Hoffmann in the Court of Appeal on this same escitalopram invention (Generics (U.K.), above). Lord Hoffmann had in turn endorsed, at paragraph 24, the state of the law expressed at trial by Mr. Justice Kitchin:

…. The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.



[55]           Mr. Justice Rothstein went on to apply the four-step approach outlined in the United Kingdom in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd., [1985] R.P.C. 59 (C.A.) and in Pozzoli Spa v. BDMO SA, [2007] EWCA Civ 588. They are, as set out in Pozzoli by Jacob L.J.:

…In the result I would restate the Windsurfing questions thus:

(1)  (a) Identify the notional “person skilled in the art”;

      (b) 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?


[56]           Mr. Justice Rothstein noted that it is at this fourth step that the “obvious to try” issue will arise. At paragraphs 69 and 70 he set out four non-mandatory, non-exhaustive, factors to consider:

a)      Is it more or less self-evident that what is being tried ought to work?


b)      What is the extent, nature and amount of effort required?


c)      Is there a motive provided in the prior art to find the solution?


d)      The actual course of conduct which culminated in the making of the invention.


[57]           This is not to say that other factors as listed by the Court of Appeal in Janssen-Ortho Inc. v. Novopharm Ltd., 2007 FCA 217, 59 C.P.R. (4th) 116, may not be relevant as well. Apart from motivation, at paragraph 25 the Court of Appeal referred to “[t]he climate in the relevant field at the time the alleged invention was made” and as secondary factors, commercial success and meritorious awards.


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