In 2008, the Supreme Court of Canada (SCC) released its decision
in Apotex v. Sanofi, setting out a series of steps to
consider when assessing obviousness in a patent validity
challenge.1 The test was enumerated as follows:
(1) (a) Identify the notional "person skilled in the
(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?2
At the fourth step, the SCC held that the issue of whether
something is "obvious to try" may arise. The SCC set out
three further factors for consideration at this stage of the
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
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?
Is there a motive provided in the
prior art to find the solution the patent
Importantly, the SCC considered the United States and United
Kingdom jurisprudence on obviousness at that time, and adopted this
test, rather than the tests that may be easier to meet.
Furthermore, the Court held that "the "obvious to
try" test will work only where it is very plain or, to use the
words of Jacob L.J., more or less self-evident that what is being
tested ought to work."4 The mere possibility that
something may turn up was held not to be enough to render an
Despite this clear language, the Federal Court, in a series of
decisions, appeared to accept arguments from generic companies that
the "obvious to try" test was met if there was a
"fair expectation of success" in any solution tried in
response to a problem. This lower standard was cited to a Federal
Court of Appeal (FCA) case interpreting
Apotex.6 However, a thorough reading of that
case shows that the FCA did not lower the standard for obviousness
at all. In fact, the FCA was referring only to the motivation
factor of the "obvious to try" analysis.
Due to the inability of many patentees to appeal judgments
against them in NOC proceedings in Canada, this lower obviousness
standard was becoming pervasive. As a result, the standard for
patents to be invalidated due to obviousness allegations was being
However, recently, the FCA was able to hear a patentee's
appeal on this issue. Despite ruling against the patentee overall,
the FCA took the time to restate that the SCC's statement did,
indeed, govern the obviousness analysis:
First, Eli Lilly asserts that the Judge erred in law in his
obviousness analysis by applying an incorrect test for obviousness
when he wrote, at paragraph 150 of his reasons, that the
"test, rather, is whether the skilled person had good reason
to pursue predictable solutions or solutions that provide a
'fair expectation of success'". We agree that the
correct test, and the test that ought to be applied by the Federal
Court, is that articulated by the Supreme Court of Canada in
Apotex Inc. ...: "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."7 [emphasis
added; citations omitted]
This confirmation that the standard for invalidity due to
obviousness has not been lowered should be welcome to
1 Apotex Inc. v. Sanofi-Synthlabo Canada Inc.,
 3 S.C.R. 265 [hereinafter Apotex].
2 Apotex, at para. 67.
3 Apotex, at para. 69.
4 Apotex, at para. 65.
5 Apotex, at para. 66.
6 Apotex Inc. v. Pfizer Canada Inc., 2009 FCA 8
at para. 44
7 Eli Lilly Canada Inc. v. Mylan Pharmaceuticals
ULC, 2015 FCA 286 at para. 4.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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).