Apotex appealed a decision allowing Pfizer's application for
a prohibition order relating to a Viagra® patent.
Two days prior to the hearing, Apotex advised that that it would
only pursue its appeal on the issue of obviousness, relying upon
what it characterized as the "worth a try" test allegedly
established by the Supreme Court in its 2008 decision on Apotex
Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61
The Court of Appeal first identified the test from
Sanofi as being the "obvious to try" test, where
the word "obvious" meant "very plain."
According to this test, 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."
Instead, the invention must be more or less
The Court of Appeal held that, contrary to Apotex's
arguments, the trial judge had not erred. Rather, he had correctly
rejected the contention that the invention was obvious based on
"mere possibilities or speculation," and had correctly
looked for evidence that the invention was more or less
"self-evident." The trial judge further held that the
most he could gather from the prior art at the priority date was
that key aspects of the invention were "worth a try." It
was apparent he had looked for more than "mere
possibilities," with the understanding that they were not
enough and that the prior art had to show more than that.
In so holding, the trial judge drew the line precisely where the
Supreme Court drew it in Sanofi when it held that
"the mere possibility that something might turn up is not
Apotex also urged the Court to accept the English Court of
Appeal's pronouncement that where the motivation to achieve a
result is very high, the degree of expected success becomes a minor
matter. In such circumstances, the skilled person may feel
compelled to pursue experimentation even though the chances of
success are not particularly high.
However, the Court of Appeal held that this approach was based
on the possibility that something might work, which was
expressly rejected in Sanofi. The English test appears to
be met if the prior art indicates that something may work,
and the motivation is such as to make this avenue
"worthwhile" to pursue. As such, a solution may be
"worthwhile" to pursue even though it is not
"obvious to try" or "more or less self-evident"
as required by Sanofi.
Accordingly, the appeal was dismissed.
Though patent challengers may contend that in Sanofi
the Supreme Court has expanded the grounds of an obviousness attack
by adopting the "obvious to try test," it is equally
important be mindful of the Supreme Court's caveat that the
test "is not a panacea for alleged infringers." The Court
of Appeal's decision confirms that in the "obvious to
try" test, an invention is not made obvious because the prior
art would have cued the skilled person to the possibility
that something might be worth trying. Mere possibilities
are not enough. Rather, the invention must be more or less
Also, the Federal Court of appeal recognized that the test is
Canadian-made and is not equivalent to the "worth a try
test" adopted in the UK. Whereas the English test appears to
be satisfied if something may work, the Canadian test will
only be satisfied if it is self-evident. Thus, though one
of the stated goals of Sanofi in adopting the
"obvious to try" test is to bring Canadian caselaw in
synch with American and English law, the UK jurisprudence is
ultimately of limited value since the Canadian test is distinct
from its English counterpart.
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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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