Canada: Selecting Your Attack Lines – Court of Appeal Rules on Proper Grounds to Challenge Validity of a Selection Patent

Copyright 2010, Blake, Cassels & Graydon LLP

Originally published in Blakes Bulletin on Intellectual Property, August 2010

The Federal Court of Appeal recently confirmed that a selection patent is to be given the same treatment as any other patent in terms of assessing its validity. The court denied a separate ground of invalidity based on a patent being an "improper selection patent".

A selection patent is a patent granted for an invention based on the recognition that a particular selection of individual elements, subsets, or sub-ranges, within a larger, known set or range has benefits. Although not restricted to chemical patents, selection patents more commonly arise in that context. Simply stated, the patent typically refers, in general terms, to a group of products or processes from all of which a particular result (or results) may be obtained or predicted. Selection patents exist to encourage researchers to further use their inventive skills so as to discover new advantages for compounds within the known class. A selection patent can be claimed for a selection from a class of thousands or for a selection of one out of two.

Test for a Valid Selection Patent

In 2008, the Supreme Court of Canada, in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., described a valid selection patent as follows:

  1. there must be a substantial advantage to be secured or disadvantage to be avoided by the use of the selected members;
  2. the whole of the selected members, subject to "a few exceptions here and there", possess the advantage in question; and
  3. the selection must be in respect of a quality of a special character peculiar to the selected group. If further research revealed a small number of unselected compounds possessing the same advantage, that would not invalidate the selection patent. However, if research showed that a larger number of unselected compounds possessed the same advantage, the quality of the compound claimed in the selection patent would not be of a special character.

The question that still remained was at what stage, or where, are the noted conditions for a valid selection patent to be addressed. This was square before the Federal Court of Appeal in 2010 in Eli Lilly Inc. et. al v. Novopharm Ltd. Eli Lilly commenced an action in the Federal Court against Novopharm for infringement under Canadian Patent No. 2,041,113, of a selection patent for the compound olanzapine, sold under the brand name Zyprexa. Olanzapine is used to treat schizophrenia.

As part of its defence, Novopharm asserted that the patent at issue was invalid on various grounds, including anticipation, double patenting, and obviousness. One basis for attack was that the patent in suit was not a valid selection patent.

Trial Decision

After a 44-day trial, the trial judge agreed with Novopharm and concluded that the patent in suit was not a valid selection patent. In rendering his decision, Justice O'Reilly did not consider the elements of the Sanofi approach. Instead, he proceeded on the basis that, in order to uphold the patent in suit as a valid selection patent, he must satisfy himself that olanzapine has an advantage over the other compounds disclosed in an earlier, now expired, Eli Lilly patent which encompassed, but did not disclose, olanzapine. Further, the advantage must be substantial and somewhat peculiar to olanzapine and the patent in suit must clearly describe the substantial and special advantage.

The trial judge concluded that olanzapine fell within the "most preferred" compounds of that earlier patent, which specifically disclosed flumezapine, ethyl flumezapine and ethyl olanzapine.

Although recognizing that the patent at issue had advantages over the earlier patent, the trial judge concluded that there was insufficient evidence of the advantages identified in the patent in suit. Specifically the trial judge determined that: the stated advantages were not substantial and peculiar; a person skilled in the art would not be able to appreciate any inventive difference between the earlier patent and the patent in suit; the test for sound prediction was not met; Eli Lilly had very little idea about what olanzapine's effect was likely to be; and the patent in suit did not meet the requirements for adequate disclosure.

The Appeal Decision

On appeal, Eli Lilly argued that Justice O'Reilly erred by creating an "illegitimate amalgam by merging the doctrine of sound prediction of utility with obviousness and sufficiency and in the process required [Eli] Lilly to provide proof of the inventive step (i.e. the advantages) in the disclosure." Specifically, Eli Lilly argued that, in a selection patent, the advantages are part of the invention. Hence, if advantages are not established, there is no invention. Eli Lilly argued that the "selection" issue goes to the question of obviousness and is properly addressed as part of that inquiry.

The Federal Court of Appeal agreed with Eli Lilly and noted that a challenge directed to a determination that the conditions for a selection patent have not been met "does not constitute an independent basis upon which to attack the validity of a patent". Rather, the conditions for a valid selection patent serve to characterize the patent and inform the analysis for the grounds to attack its validity.

However, the validity of a selection patent is vulnerable to attack on any of the grounds set out in the Patent Act – novelty, obviousness, sufficiency and utility. In short, a selection patent is the same as any other patent when it comes time to assess its validity. The Federal Court of Appeal also noted that the Patent Act contains no reference to invalid selection. It necessarily followed that the trial judge erred in determining the validity of the patent in suit on the basis that he did. Given the manner in which the trial judge had proceeded, the Federal Court of Appeal determined that there were insufficient factual determinations in the trial judgment to conduct a meaningful review on the issues of utility and sufficiency. Accordingly, the case was remitted to the trial judge for a determination on these matters.


In recent years, there have been a number of cases where an alleged infringer has attacked a selection patent on the basis of improper selection, especially in the pharmaceutical context where such patents are more prevalent. This case appears to close the door to such attacks and will require defendants to focus and rely on traditional validity attacks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
27 Oct 2016, Seminar, Toronto, Canada

Please join members of the Blakes Commercial Real Estate group as they discuss five key provisions of a commercial real estate purchase agreement that are often the subject of much negotiation but are sometimes misunderstood.

1 Nov 2016, Seminar, Toronto, Canada

What is the emotional culture of your organization?

Every organization and workplace has an emotional culture that can have an impact on everything from employee performance to customer or client satisfaction.

3 Nov 2016, Seminar, Toronto, Canada

Join leading lawyers from the Blakes Pensions, Benefits & Executive Compensation group as they discuss recent updates and legal developments in pension and employee benefits law as well as strategies to identify and minimize common risks.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.