Anticipation and Obviousness in Canada since Sanofi

41 Pages·2012·0.75 MB·English

Anticipation and
Obviousness in Canada
since Sanofi
February 15, 2012
Donald M. Cameron
What’s a patentable invention need to be?
•
New
•
Useful
•
Inventive
•
An invention of the court:
• 1890: it’s an “invention”, so it must be “inventive”
• 1936: SCC required “a degree of ingenuity” to be present
•
Now in the New Patent Act, s. 28.3
2
New – Novelty/Anticipation
Current Patent Act
•
28.2 (1) The subject-matter defined by a claim in an
application for a patent in Canada (the "pending application")
must not have been disclosed
•
(a) 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
subject-matter became available to the public in
Canada or elsewhere;
•
(b) before the claim date by a person not mentioned in paragraph
(a) in such a manner that the subject-matter became
available to the public in Canada or elsewhere;
4
What Sanofi said
•
Enabling disclosure
5
What Sanofi said
6
What Sanofi said
7
Enablement: The “IKEA” threshold
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Cases since Sanofi
Merck v. Apotex (2010)
•
Prior art: fermentation
disclose enable
process with yeast – did it
produce lovostatin?
•
No disclosure:
•
Not inevitable that claimed
product would be produced
•
No evidence process was
actually used before key
date
9
Cases since Sanofi
Sloan Kettering (P.A.B.)
•
Claim was for an antibody
disclose enable
•
No disclosure:
•
BTW: No enablement:
•
starting material: you
couldn’t buy it, you’d have
to make it
•
To make it would take:
• “hopeful yet prolonged and
arduous experimentation”
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