CA: jurisprudence récente: test d’anticipation et un conflit sous la loi avant 1989

Merck & Co Inc. v. Apotex Inc., 2010 FC 1265, (December 22, 2010)

Une décision qui discute de plusieurs sujets différents, incluant

 -“circumstantial vs DNA evidence” de contrefaçon

-Une situation de conflit sous l’ancienne loi (pre-1989):

D.        First Inventorship/Missed Conflict

 [533]      Apotex submits that the Merck inventors were not the first inventors of the compound lovastatin as claimed in the ‘380 Patent and that, therefore, the ‘380 Patent should be invalidated on the basis that the “invention” of the ‘380 Patent was known or used as of the date of filing the patent application. In so arguing, Apotex recognizes that it must overcome the requirements of the Patent Act.


[534]      The patent application that resulted in the issuance of the ‘380 Patent was patent application No. 353, 777 filed with the Patent Office on June 11, 1980 (the Monaghan Application). Apotex submits that the Monaghan Application disclosed the invention of lovastatin and ought to have been placed into conflict with patent application No. 345, 983 (the Endo Application), which was filed with the Patent Office on February 19, 1980. The Endo Application ultimately resulted in the issuance of the ‘794 Patent.

-Test de nouveauté (bon résumé fourni par la Cour):

 [565]      The guiding jurisprudence on the legal test of anticipation is found in the Supreme Court of Canada decision in Apotex v. Sanofi-Synthelabo, 2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi-Synthelabo]. At paragraphs 23-27, the Supreme Court teaches 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?

[566]      At the first step of the analysis, the Supreme Court provided the following guidance (Sanofi‑Synthelabo, above, 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.

 [567]      Once disclosure has been made, the question of enablement was described by the Supreme Court (Sanofi-Synthelabo, above, 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.

 [568]      In Abbott Laboratories v. Canada (Minister of Health), 2008 FC 1359, 337 F.T.R. 17 [Abbott Clarithromycin (FC)], aff’d 2009 FCA 94, 387 N.R. 347, 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 (Abbott Clarithromycin (FC), above, at para. 75):

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

 1.                  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.

 2.                  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.

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

 4.                  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.

 5.                  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.

 6.                  If a person carrying out the prior disclosure would infringe the claim then the claim is anticipated.


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