Récente décision du Commissaire aux brevets sur le critère d’évidence

Voir la décision C.D. 1295 App’n No. 2,312,221

Avec les citations classiques de Beloit, Janssen-Ortho et Sanofi, il y a une insistance sur l’expression “very plain” lors de l’évaluation du critère d’évidence, selon les extraits suivants:

 [37] Although we are now bound to follow the Sanofi four-step approach, one must still, at the end of the day, answer the question “Was the invention obvious?” at step four. The Janssen-Ortho factors are certainly still useful in this regard. We also note that in Sanofi, Rothstein J. did not rule out use of the guidance from Beloit, but merely stated that he did not “… think that Hugessen J.A. in Beloit intended that the rather colourful description of obviousness that he coined be applied in an acontextual manner applicable to all classes of claims”.

[38] In Sanofi, Rothstein J., at para. 65, equates obvious with “very plain”. This interpretation has been noted by the Federal Court of Appeal in Pfizer Canada Inc. v. Apotex Inc., 2009 FCA 8 at para. 29, 72 C.P.R. (4th) 41.

[55] Can one say that it would have been obvious to include mailer addressing information in the digital postmark and then to read and capture that information upon delivery in order to generate a return receipt to be sent back to the mailer? Would these changes have been “very plain”? In the case of claims 1 and 4, the state of the art is represented by Sansone, which has been shown to be defective in pointing the skilled person towards the claimed invention.

[58] Referring back to the USPS Information Based Indicia specification referred to in Sansone,  it was acknowledged that this document teaches the inclusion of “value-added” service data in the proposed indicium and the USPS scanning and capturing of such data. While one could then argue that it was possible to include mailer address information in the digital indicium, and that such information could have been read and captured by the USPS during their scan, this does not explain why it would have been obvious or “very plain” for someone to do so prior to the claim date.

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