CA: Jurisprudence récente brevets avec bons résumés des principes de nouveauté, non-évidence, revendication trop large- “overbroad claims”

Schering-Plough Canada Inc. v. Pharmascience Inc., 2009 FC 1128, (December 22, 2009)

Extraits pertinents:                        Principles of Anticipation


[66]           I begin this section of the Reasons by referring to the general legal principles of anticipation.

 [67]           The concept of anticipation arises from s. 28.2 of the Patent Act, R.S.C. 1985, c.P-4. In short, this provision requires that the subject matter of a claim must not have been disclosed to the public before the claim date.

 [68]           Until the decision of the Supreme Court in Apotex v. Sanofi-Synthelabo, 2008 SCC 61, [2008] 3 S.C.R. 265, the test for anticipation followed by the Courts was as described in Beloit Canada Ltd. 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 led to the claimed invention.

 [69]           In Sanofi-Synthelabo, at paragraph 23, the Supreme Court determined that the trial judge, by using the Beloit test, “overstated the stringency of the test for anticipation that the ‘exact invention’ has already been made and publicly disclosed”. The Supreme Court concluded that the issue of whether an invention is anticipated by the prior art requires that the Court have regard to two questions:

 1.                  Was the subject matter of the invention disclosed to the public by a single disclosure?

 2.                  If there has been such a clear disclosure, is the working of the invention enabled by that disclosure?

 [70]           At the first step of the analysis, the Supreme Court provided the following guidance (at para. 25):

When considering the role of the person skilled in the art in respect of disclosure, the skilled person is “taken to be trying to understand what the author of the description [in the prior patent] meant” (para.32). At this stage, there is no room for trial and error or experimentation by the skilled person. He is simply reading the prior patent for the purposes of understanding it.

 [71]           Once disclosure has been made, the question of enablement was described by the Supreme Court (at para 27):

Once the subject matter of the invention is disclosed by the prior patent, the person skilled in the art is assumed to be willing to make trial and error experiments to get it to work. While trial and error experimentation is permitted at the enablement stage, it is not at the disclosure stage. For purposes of enablement, the question is no longer what the skilled person would think the disclosure of the prior patent meant, but whether he or she would be able to work the invention.

 [72]           In Abbott Laboratories v. Canada (Minister of Health) 2008 FC 1359, 337 F.T.R. 17, aff’d 2009 FCA 94, 387 N.R. 347 (referred to as Abbott, Hughes J), Justice Hughes undertook a helpful survey of the law of anticipation as it exists after Sanofi-Synthelabo, above. He summarized the legal requirements for anticipation as follows (at para. 75):

1.         For there to be anticipation there must be both disclosure and enablement of the claimed invention.

 2.         The disclosure does not have to be an “exact description” of the claimed invention. The disclosure must be sufficient so that when read by a person skilled in the art willing to understand what is being said, it can be understood without trial and error.

 3.         If there is sufficient disclosure, what is disclosed must enable a person skilled in the art to carry out what is disclosed. A certain amount of trial and error experimentation of a kind normally expected may be carried out.

 4.         The disclosure when carried out may be done without a person necessarily recognizing what is present or what is happening.

5.         If the claimed invention is directed to a use different from that previously disclosed and enabled then such claimed use is not anticipated. However if the claimed use is the same as the previously disclosed and enabled use, then there is anticipation.

 6.         The Court is required to make its determinations as to disclosure and enablement on the usual civil burden of balance and probabilities, and not to any more exacting standard such as quasi-criminal.

 7.         If a person carrying out the prior disclosure would infringe the claim then the claim is infringed.                        General Principles of Obviousness

 [97]           The term “invention” is defined in s. 2 of the Patent Act to include “any new and useful . . . composition of matter”. Pharmascience asserts that Claims 1, 6, 9 and 23 of the ‘136 Patent would have been obvious to a person skilled in the art, as of the relevant date.

 [98]           The test for obviousness was recently clarified by the Supreme Court of Canada in Sanofi-Synthelabo. Justice Rothstein, writing for a unanimous Court, adopted a four-step approach (above, at para. 67):

1.         (a) Identify the notional “person skilled in the art”; and, (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?

 [99]           As part of his analysis, Justice Rothstein stated that the so-called “obvious to try” test, derived from UK jurisprudence, should be approached cautiously and with the understanding that “obvious to try” means “very plain” or “more or less self evident”.

… I am of the opinion that the “obvious to try” test will work only where it is very plain or, to use the words of Jacob LJ., more or less self evident that what is being tested ought to work.

 For a finding that an invention was “obvious to try”, there must be evidence to convince a judge on a balance of probabilities that it was more or less self-evident to try to obtain the invention. Mere possibility that something might turn up is not enough.(Sanofi-Synthelabo, above, at para 65-66)

 [100]      If an “obvious to try” analysis is warranted, Justice Rothstein proposed a non-exhaustive list of factors that may apply (Sanofi-Synthelabo, above, at paras. 69-71):

1.         Is it more or less self-evident that what is being tried ought to work? Are there a finite number of identified predictable solutions known to persons skilled in the art?

 2.         What is the extent, nature and amount of effort required to achieve the invention? Are routine trials carried out or is the experimentation prolonged and arduous, such that the trials would not be considered routine?

 3.         Is there a motive provided in the prior art to find the solution the patent addresses?

 4.         Another important factor may arise from considering the actual course of conduct which culminated in the making of the invention.

 [101]      In the recent case of Apotex Inc v. Pfizer Canada Inc., 2009 FCA 8, 385 N.R. 148, at paragraph 29, the Federal Court of Appeal provided further guidance on the “obvious to try” notion.

The test recognized is “obvious to try” where the word “obvious” means “very plain”. According to this test, an invention is not made obvious because the prior art would have alerted the person skilled in the art to the possibility that something might be worth trying. The invention must be more or less self-evident.

 [Emphasis added.]

 [102]      Although the Supreme Court emphasized that flexibility is required in applying the “obvious to try” test, it appears well-settled that the Court should address all of the components, and applying flexibility where appropriate.                        General Principles of Overbroad Claiming

 [131]      Finally, I will consider the allegation that Claim 23 is overbroad.

 [132]      A patent that claims more than that which was invented or disclosed is invalid for being overly broad (see, for example, Unilever PLC v. Procter & Gamble Inc. (1995), 61 C.P.R. (3d) 499 at 515 (F.C.A.); Eli Lilly Canada Inc. v. Apotex Inc., 2009 FC 320, 75 C.P.R. (4th) 165, at paras. 52-53; Biovail Pharmaceuticals Inc. v. Canada (Min. of Health & Welfare), 2005 FC 9, 37 C.P.R. (4th) 487, at para 15). An inventor ought not to claim a result rather than a means of achieving it. As stated in Free World Trust, above at paragraph. 32:

[T]he ingenuity of the patent lies not in the identification of a desirable result but in teaching one particular means to achieve it. The claims cannot be stretched to allow the patentee to monopolize anything that achieves the desirable result. It is not legitimate, for example, to obtain a patent for a particular method that grows hair on bald men and thereafter claim that anything that grows hair on bald men infringes.

 [133]      The consequence of overly-broad claiming is that the relevant claims will be invalid.


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