1. Obviousness

2. Non-Obviousness Originally a case-law requirement interpreting “manner of new Manufacture” requiring an “inventive step” Originally a case-law requirement interpreting “manner of new Manufacture” requiring an “inventive step” Long known in the UK as the “Cripps question” Long known in the UK as the “Cripps question” Now codified in s.28.3 Now codified in s.28.3

3. Non-Obviousness S.28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to... S.28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to...

4. Non-Obviousness (a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and (a) information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and (b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere. (b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.

5. State of the Art Novelty v Obviousness Novelty v Obviousness Matter in unpublished patent applications does NOT form part of the state of the art for obviousness purposes Matter in unpublished patent applications does NOT form part of the state of the art for obviousness purposes Why not? Why not?

6. Obviousness/Anticipation [O]bviousness is an attack on a patent based on its lack of inventiveness. The attacker, says, in effect, "Any fool could have done that" [O]bviousness is an attack on a patent based on its lack of inventiveness. The attacker, says, in effect, "Any fool could have done that" Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known" Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known" Per Hugesson J Beloit Canada Ltee/Ltd v Valmet Oy Per Hugesson J Beloit Canada Ltee/Ltd v Valmet Oy

7. The Cripps Question The traditional “test” The traditional “test” "Was it obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent that he could manufacture valuable therapeutic agents by making the higher resorcinols by the use of the condensation and reduction processes described If the answer is 'No' the patent is valid, if 'Yes' the patent is invalid" "Was it obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent that he could manufacture valuable therapeutic agents by making the higher resorcinols by the use of the condensation and reduction processes described If the answer is 'No' the patent is valid, if 'Yes' the patent is invalid" This does not define the standard: it tells us This does not define the standard: it tells us Test is objective Test is objective Measured by person skilled in the art Measured by person skilled in the art ‘person having ordinary skill in the art’ PHOSITA ‘person having ordinary skill in the art’ PHOSITA Relevant date is date of the patent application Relevant date is date of the patent application Obviousness test is now codified: s283 Obviousness test is now codified: s283

8. Two Problems What does “obvious” mean? What does “obvious” mean? How is “obviousness” implemented? How is “obviousness” implemented?

9. ‘But for’ Theory The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. The patent monopoly was not designed to secure to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge. Only inventions and discoveries which furthered, and were new and useful, justified the special inducement of a limited private monopoly. Only inventions and discoveries which furthered, and were new and useful, justified the special inducement of a limited private monopoly. The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent. The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent. Graham v John Deere (emphasis added) Graham v John Deere (emphasis added)

10. ‘But for’ Theory Why is non-obviousness a requirement? Why is non-obviousness a requirement? A monopoly is an evil – we want to grant a patent only when it is a necessary evil A monopoly is an evil – we want to grant a patent only when it is a necessary evil We want to reward only those inventions which require the lure of a patent to induce the research. We want to reward only those inventions which require the lure of a patent to induce the research.

11. Importance of non-obviousness No modern system permits patents on an anticipation standard alone: why not? No modern system permits patents on an anticipation standard alone: why not? Why is an obviousness criterion needed? Why is an obviousness criterion needed? An invention may be new, useful – and very valuable – and yet obvious An invention may be new, useful – and very valuable – and yet obvious Selden “Road Engine” (automobile) Selden “Road Engine” (automobile) US Pat # 549,160, issued 1885 US Pat # 549,160, issued 1885 Amazoncom “1-click shopping” Amazoncom “1-click shopping” US Pat # 5,960,411, issued 1999 US Pat # 5,960,411, issued 1999 NTP Wireless RF e-mail NTP Wireless RF e-mail US Pat # 5,436,960, filed 1991, issued 1995 US Pat # 5,436,960, filed 1991, issued 1995 RIM - forwarding e-mail to mobile unit RIM - forwarding e-mail to mobile unit US Pat # 6,219,694, filed 1998, issued 2001 US Pat # 6,219,694, filed 1998, issued 2001

12. “But for” Standard Note that the “but for” obviousness standard is very difficult to implement Note that the “but for” obviousness standard is very difficult to implement Only those inventions which required the patent lure should be patentable Only those inventions which required the patent lure should be patentable How high is that standard in cost or genius? How high is that standard in cost or genius? What evidence is available to the courts? What evidence is available to the courts? The court must exercise judgment in an area outside of its expertise The court must exercise judgment in an area outside of its expertise Cf. “evergreening” Cf. “evergreening”

13. Obviousness/Anticipation

14. Obviousness/Anticipation Anticipation is a much easier standard to apply Anticipation is a much easier standard to apply The court has ready access to evidence of prior art The court has ready access to evidence of prior art It is much easier to determine whether one invention is the same as another than it is to tell whether an invention is “inventive” It is much easier to determine whether one invention is the same as another than it is to tell whether an invention is “inventive” Recall Muldoon J Unilever PLC v Procter & Gamble Inc (FCTD ) Recall Muldoon J Unilever PLC v Procter & Gamble Inc (FCTD ) When one considers the apparent silliness of trial by a judge who is utterly unschooled in the scientific substance of a patent, hearing conflicting testimony of so-called experts who speak the antithesis of scientific verity, and lawyers who have been engaged in the particular case for years before the trial, one knows that this field cries out for reform. When one considers the apparent silliness of trial by a judge who is utterly unschooled in the scientific substance of a patent, hearing conflicting testimony of so-called experts who speak the antithesis of scientific verity, and lawyers who have been engaged in the particular case for years before the trial, one knows that this field cries out for reform.

15. Obviousness/Anticipation In practice obviousness and anticipation are linked In practice obviousness and anticipation are linked It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?" It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?" Beloit (FCA) Beloit (FCA) Seeing that it is admittedly better, why was it not used sooner, if obvious? Seeing that it is admittedly better, why was it not used sooner, if obvious? Halocarbon (SCC) Halocarbon (SCC)

16. Implementing the Obviousness Standard

17. Beloit Consider whether the tests / approaches discussed implement or are consistent with the “but for” approach to obviousness Consider whether the tests / approaches discussed implement or are consistent with the “but for” approach to obviousness

18. 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... 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. 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... 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. Is this compatible with the “but for “approach? Is this compatible with the “but for “approach?

19. Sanofi

20. Sanofi Overall approach Overall approach Obvious to try “test” Obvious to try “test” ‘Windsurfer’ structured approach ‘Windsurfer’ structured approach Relevant factors Relevant factors

21. Overall Rejects the Beloit test Rejects the Beloit test... the restrictiveness with which the Beloit test has been interpreted in Canada should be re- examined.... the restrictiveness with which the Beloit test has been interpreted in Canada should be re- examined. No rigid rules No rigid rules an expansive and flexible approach that would include “any secondary considerations that [will] prove instructive” will be useful (p. 1739). an expansive and flexible approach that would include “any secondary considerations that [will] prove instructive” will be useful (p. 1739).

22. Overall Does not expressly accept the “but for” theory Does not expressly accept the “but for” theory But is consistent with it But is consistent with it The patent system is intended to provide an economic encouragement for research and development. It is well known that this is particularly important in the field of pharmaceuticals and biotechnology. The patent system is intended to provide an economic encouragement for research and development. It is well known that this is particularly important in the field of pharmaceuticals and biotechnology.

23. Obvious to Try “Test” Obvious to try “test” is used in two ways Obvious to try “test” is used in two ways (1) If obvious to try => obvious (1) If obvious to try => obvious This is REJECTED in Sanofi This is REJECTED in Sanofi

24. Obvious to Try “Test” (2) Whether the invention was obvious to try is a factor to be considered (2) Whether the invention was obvious to try is a factor to be considered This is ACCEPTED in Sanofi This is ACCEPTED in Sanofi If an “obvious to try” test is warranted, the following factors should be taken into consideration at the fourth step of the obviousness inquiry. If an “obvious to try” test is warranted, the following factors should be taken into consideration at the fourth step of the obviousness inquiry. But it is NOT a test But it is NOT a test If an invention is obvious to try, but not obvious to succeed, it may well be inventive If an invention is obvious to try, but not obvious to succeed, it may well be inventive

25. Obvious to Try? Generally, if an invention is not obvious to try, it is not obvious Generally, if an invention is not obvious to try, it is not obvious Why is it not obvious to try? Why is it not obvious to try? Not an obvious thing to do Not an obvious thing to do Flash of genius Flash of genius Not obvious that it would be worth doing Not obvious that it would be worth doing Surprising advantage Surprising advantage

26. Obvious to Try If Not Obvious to Try, then If Not Obvious to Try, then Not Obvious Not Obvious Even if Even if Obvious to succeed Obvious to succeed Why? Why?... inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.... inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result. Lord Diplock, quoted in Halocarbon Lord Diplock, quoted in Halocarbon See eg Tye-Sil Corp, Ch. 7 See eg Tye-Sil Corp, Ch. 7

27. Obvious to Try However, if an invention is obvious to try it, it is not necessarily obvious However, if an invention is obvious to try it, it is not necessarily obvious Not (sufficiently) obvious to succeed Not (sufficiently) obvious to succeed Not obvious Not obvious Obvious to succeed, but much effort required Obvious to succeed, but much effort required Patient searcher Patient searcher Is the patient searcher entitled to a patent? Is the patient searcher entitled to a patent?

28. Halocarbon [I]t seems to me, the requirement of "inventive ingenuity" is not met in the circumstances of the claim in question where the "state of the art" points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully. (FCA) [I]t seems to me, the requirement of "inventive ingenuity" is not met in the circumstances of the claim in question where the "state of the art" points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully. (FCA) Ie, if obvious to try, then obvious Ie, if obvious to try, then obvious This standard was rejected by the SCC This standard was rejected by the SCC In my view this statement of the requirement of inventive ingenuity puts it much too high. (SCC) In my view this statement of the requirement of inventive ingenuity puts it much too high. (SCC)

29. Obvious to Try and Succeed If obvious to try AND obvious to work => obvious (probably) If obvious to try AND obvious to work => obvious (probably) The “obvious to try” test really only works where it is more-or-less self-evident that what is being tested ought to work. The “obvious to try” test really only works where it is more-or-less self-evident that what is being tested ought to work.

30. Patient Searcher Suppose an innovation is Suppose an innovation is Obvious to try Obvious to try Likely to succeed given $300 million Likely to succeed given $300 million Eg much genetic engineering Eg much genetic engineering Obvious to get human insulin by recombinant DNA technology Obvious to get human insulin by recombinant DNA technology Should it be considered obvious? Should it be considered obvious?

31. Patient Searcher Query: What if invention is obvious to try AND obvious to succeed, IF $300 million is spent Query: What if invention is obvious to try AND obvious to succeed, IF $300 million is spent E.g patient searching, where you know systematic research will reveal the answer, but the research is expensive E.g patient searching, where you know systematic research will reveal the answer, but the research is expensive

32. Patient Searcher Should this be patentable? Should this be patentable? Is this patentable? Is this patentable? Some UK courts have held not Some UK courts have held not A mere commercial decision is not an invention. A mere commercial decision is not an invention. Biogen v Medeva 1995 UKCA, re sequencing genome of Hepatis B virus Biogen v Medeva 1995 UKCA, re sequencing genome of Hepatis B virus

33. Patient Searcher What about in Canada? What about in Canada? 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? 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? 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?

34. Patient Searcher Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where the "state of the art" points... "A patient searcher is as much entitled to the benefits of a monopoly as someone who hits upon an invention by some lucky chance or inspiration". Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where the "state of the art" points... "A patient searcher is as much entitled to the benefits of a monopoly as someone who hits upon an invention by some lucky chance or inspiration". Halocarbon SCC Halocarbon SCC

35. Patent Race Problem If ‘obvious’ many inventors will try to be the first to get the patent If ‘obvious’ many inventors will try to be the first to get the patent In principle, all of the benefits of the patent may be squandered in the race to be first to get the patent. In principle, all of the benefits of the patent may be squandered in the race to be first to get the patent. Obviousness in this sense is different from obviousness in the ‘but for’ theory Obviousness in this sense is different from obviousness in the ‘but for’ theory

36. Windsurfer Approach (1)(a) Identify the notional "person skilled in the art"; (1)(a) Identify the notional "person skilled in the art"; (b) Identify the relevant common general knowledge of that person; (b) Identify the relevant common general knowledge of that person; What is the state of the art? What is the state of the art?

37. Windsurfer Approach (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it; What is the inventive concept? What is the inventive concept?

38. Windsurfer Approach (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; (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; What is the difference between the two? What is the difference between the two?

39. Windsurfer Approach (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? (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? Is that difference inventive? Is that difference inventive? Judging without hindsight Judging without hindsight

40. TSM Approach Compare “teaching, suggestion, motivation” approach used in US prior to KSR Compare “teaching, suggestion, motivation” approach used in US prior to KSR The party seeking patent invalidity based on obviousness must also show some motivation or suggestion to combine the prior art teachings. A suggestion or motivation to combine generally arises in the references themselves, but may also be inferred from the nature of the problem or occasionally from the knowledge of those of ordinary skill in the art. The party seeking patent invalidity based on obviousness must also show some motivation or suggestion to combine the prior art teachings. A suggestion or motivation to combine generally arises in the references themselves, but may also be inferred from the nature of the problem or occasionally from the knowledge of those of ordinary skill in the art. Al-Site Corp. v. VSI Int'l, Inc., CAFC 1999 Al-Site Corp. v. VSI Int'l, Inc., CAFC 1999

41. Secondary Factors

42. Simultaneous Invention... it was a fact that the named inventors on the patents granted to both plaintiff and defendant were highly experienced and skilled in the art and had, on a number of previous occasions, demonstrated their inventive ability. That such people should come up with the idea in a relatively short space of time is nothing to the point on the question of obviousness unless it be to show that only they, and no one else, in the vast international fraternity of paper makers could devise the concept.... it was a fact that the named inventors on the patents granted to both plaintiff and defendant were highly experienced and skilled in the art and had, on a number of previous occasions, demonstrated their inventive ability. That such people should come up with the idea in a relatively short space of time is nothing to the point on the question of obviousness unless it be to show that only they, and no one else, in the vast international fraternity of paper makers could devise the concept. Beloit Beloit

43. Beloit There are many instances in various branches of science of independent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent There are many instances in various branches of science of independent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent Pope Appliance, quoted in Halocarbon Pope Appliance, quoted in Halocarbon Simultaneous invention does not prove obviousness Simultaneous invention does not prove obviousness Why not? Why not?

44. Long Felt Need As previously stated, the press section had been recognised for some time as the limiting factor in the design of paper machines. Once the invention was adopted in the industry, the speed of these machines was increased from its previous maximum of about three thousand feet per minute to the present maximum of about four thousand feet per minute. Paper machines, as a rule, run twenty-four hours a day, seven days a week, and the increased economy and profitability resulting from such increase in speed require no demonstration. As previously stated, the press section had been recognised for some time as the limiting factor in the design of paper machines. Once the invention was adopted in the industry, the speed of these machines was increased from its previous maximum of about three thousand feet per minute to the present maximum of about four thousand feet per minute. Paper machines, as a rule, run twenty-four hours a day, seven days a week, and the increased economy and profitability resulting from such increase in speed require no demonstration. Beloit Beloit

45. Contrary to Conventional Wisdom Conventional wisdom in the industry at the time of the invention in 1969 pointed away from the teaching of the patent and there was strong industry resistance to its acceptance. In fact, the plaintiff did not succeed in getting a customer to take the new machine until May 1972. The machine itself was not started up until April 1973. Conventional wisdom in the industry at the time of the invention in 1969 pointed away from the teaching of the patent and there was strong industry resistance to its acceptance. In fact, the plaintiff did not succeed in getting a customer to take the new machine until May 1972. The machine itself was not started up until April 1973. Beloit Beloit

46. Commercial Success Since its acceptance, the machine has had an outstanding commercial success, to the point that, as the trial judge himself said, it "is now almost universally adopted for use in the press section of paper making machines." Since its acceptance, the machine has had an outstanding commercial success, to the point that, as the trial judge himself said, it "is now almost universally adopted for use in the press section of paper making machines." Beloit Beloit

47. Secondary Factors While none of these factors taken in isolation is necessarily determinative on the issue of obviousness, each of them argues more eloquently than any ex post facto analysis can ever do that the patent is inventive; cumulatively their effect is simply irresistible. While none of these factors taken in isolation is necessarily determinative on the issue of obviousness, each of them argues more eloquently than any ex post facto analysis can ever do that the patent is inventive; cumulatively their effect is simply irresistible. Beloit Beloit Why did the Beloit Court impose a low standard of inventiveness? Was a low standard necessary to support its conclusion? Why did the Beloit Court impose a low standard of inventiveness? Was a low standard necessary to support its conclusion?

48. Secondary Factors Commercial success Commercial success Long-felt need Long-felt need Conventional wisdom teaches away from the invention Conventional wisdom teaches away from the invention Combination of commercial success & long-felt need is very persuasive re non-obviousness Combination of commercial success & long-felt need is very persuasive re non-obviousness But commercial success may be explained by other factors, eg marketing But commercial success may be explained by other factors, eg marketing

49. Secondary Factors If the secondary factors can be established, they are powerful evidence of non-obviousness If the secondary factors can be established, they are powerful evidence of non-obviousness HOWEVER, it is not necessary to establish the secondary factors in order to establish non- obviousness HOWEVER, it is not necessary to establish the secondary factors in order to establish non- obviousness Absence of any or all of these factors does NOT prove obviousness Absence of any or all of these factors does NOT prove obviousness

50. Why was it not done before? It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?“ It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?“ Beloit Beloit It is possible to rebut this: e.g little time between pioneer patent and improvement It is possible to rebut this: e.g little time between pioneer patent and improvement