On January 16, 2009, the Federal Court of Appeal issued its
first decision interpreting and applying the obviousness test set
out by the Supreme Court in Apotex Inc. v. Sanofi-Synthelabo
Canada Inc. (Sanofi). The Court of Appeal's
decision confirms that, despite some differences of emphasis,
Sanofi is consistent with the law of obviousness as it has
developed in Canada over the last 25 years.
The Effect of Sanofi
In Apotex Inc. v. Pfizer Canada Inc., Apotex appealed
an order prohibiting it from marketing generic sildenafil citrate
(the active ingredient in Viagra®) until the expiry
of Pfizer's 446 patent. Apotex had alleged that the patent was
invalid on the basis that it was obvious. The Federal Court
rejected this allegation, stating that, at its highest, the
invention was merely "worth a try" at the relevant time,
which did not render it obvious.1
In the Federal Court of Appeal, Apotex argued that whatever the
result before Sanofi, the 446 patent could not survive the
change to the law on obviousness. In particular, Apotex argued that
the test from Sanofi harmonized the law of Canada with
that of the United Kingdom, where courts have, in certain cases,
found inventions obvious because they were merely worth a try. The
Court of Appeal rejected Apotex's arguments and dismissed the
appeal. In so doing, the Court engaged in its first detailed
consideration of the Supreme Court's decision in
The Federal Court of Appeal's judgment recognized that
Sanofi had adjusted the obviousness test. Before
Sanofi, the idea that an invention might be "obvious
to try" was never sufficient to render it obvious. However,
the Supreme Court in Sanofi held that an obvious-to-try
analysis might be appropriate in certain circumstances. The
question before the Court of Appeal was therefore exactly how loose
the Supreme Court had intended the test for obviousness to become.
Was it enough that the invention might have been worth a try?
Fortunately for innovators, the Federal Court of Appeal found
that it was not. It specifically stated that "an invention is
not made obvious because the prior art would have alerted the
person skilled in the art to the possibility that something might
be worth trying." The Court of Appeal instead held that for an
invention to be obvious it must have been "more or less
self-evident" to a person of ordinary skill.
Canadian Test for Obviousness Still Differs from U.K. Law
Apotex's other major argument was that, since the U.K.
courts had invalidated the equivalent patent, and (Apotex argued)
the Supreme Court in Sanofi appeared to contemplate
harmonizing the obviousness test with that used in the United
States and the United Kingdom, the Federal Court of Appeal should
find the 446 patent to be obvious. The Court rejected this
approach, finding that in the United Kingdom, the key inquiry was
whether a person skilled in the art had sufficient motivation to
arrive at the invention, and that the expectation of success was a
minor matter. The Court of Appeal held that this was not the law in
Canada, concluding that "the degree of motivation cannot
transform a possible solution into an obvious one." For an
invention to be obvious, it must be both obvious to try
(not just "worthwhile to pursue") and more or
less self-evident, or "very plain" that it would
A studied read of this important decision indicates that, in
practical terms, Sanofi signals a modest evolution, rather
than a radical transformation, in the law on obviousness. An
invention will be obvious if it is more or less self-evident that
the invention ought to work – and not simply that it
ought to be tried.
1.Torys successfully represented Pfizer at the hearings in
the Federal Court and the Federal
Court of Appeal.
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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.
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