Obviousness

Non-Obviousness

Originally a case-law requirement interpreting “manner of new Manufacture” requiring an “inventive step”

Long known in the UK as the “Cripps question”

Now codified in s.28.3

Non-Obviousness

S.28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to . . .

Non-Obviousness

(a) information disclosed 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 information became available to the public in Canada or elsewhere; and

(b) information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.

State of the Art

Novelty v Obviousness Matter in unpublished patent

applications does NOT form part of the state of the art for obviousness purposes Why not?

Obviousness/Anticipation

[O]bviousness is an attack on a patent based on its lack of inventiveness. The attacker, says, in effect, "Any fool could have done that"

Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. The charge is: "Your invention, though clever, was already known"

Per Hugesson J Beloit Canada Ltee/Ltd v Valmet Oy

The Cripps Question The traditional “test”

"Was it obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent that he could manufacture valuable therapeutic agents by making the higher resorcinols by the use of the condensation and reduction processes described If the answer is 'No' the patent is valid, if 'Yes' the patent is invalid"

This does not define the standard: it tells us Test is objective Measured by person skilled in the art

‘person having ordinary skill in the art’ PHOSITA Relevant date is date of the patent application

Obviousness test is now codified: s283

Two Problems

What does “obvious” mean? How is “obviousness” implemented?

‘But for’ Theory The patent monopoly was not designed to secure

to the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring forth new knowledge.

Only inventions and discoveries which furthered , and were new and useful, justified the special inducement of a limited private monopoly.

The inherent problem was to develop some means of weeding out those inventions which would not be disclosed or devised but for the inducement of a patent.

Graham v John Deere (emphasis added)

‘But for’ Theory

Why is non-obviousness a requirement?

A monopoly is an evil – we want to grant a patent only when it is a necessary evil

We want to reward only those inventions which require the lure of a patent to induce the research.

Importance of non-obviousness

No modern system permits patents on an anticipation standard alone: why not? Why is an obviousness criterion needed?

An invention may be new, useful – and very valuable – and yet obvious Selden “Road Engine” (automobile)

US Pat # 549,160, issued 1885 Amazoncom “1-click shopping”

US Pat # 5,960,411, issued 1999 NTP Wireless RF e-mail

US Pat # 5,436,960, filed 1991, issued 1995 RIM - forwarding e-mail to mobile unit

US Pat # 6,219,694, filed 1998, issued 2001

“But for” Standard

Note that the “but for” obviousness standard is very difficult to implement Only those inventions which required the

patent lure should be patentable How high is that standard in cost or

genius? What evidence is available to the courts? The court must exercise judgment in an

area outside of its expertise Cf. “evergreening”

Obviousness/Anticipation

Obviousness/Anticipation Anticipation is a much easier standard to apply

The court has ready access to evidence of prior art It is much easier to determine whether one invention

is the same as another than it is to tell whether an invention is “inventive”

Recall Muldoon J Unilever PLC v Procter & Gamble Inc (FCTD )

When one considers the apparent silliness of trial by a judge who is utterly unschooled in the scientific substance of a patent, hearing conflicting testimony of so-called experts who speak the antithesis of scientific verity, and lawyers who have been engaged in the particular case for years before the trial, one knows that this field cries out for reform.

Obviousness/Anticipation

In practice obviousness and anticipation are linked

It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?"

Beloit (FCA)

Seeing that it is admittedly better, why was it not used sooner, if obvious? Halocarbon (SCC)

Implementing the Obviousness Standard

Beloit

Consider whether the tests / approaches discussed implement or are consistent with the “but for” approach to obviousness

Beloit The classical touchstone for obviousness is the

technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature . . . would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.

Is this compatible with the “but for “approach?

Sanofi

Sanofi

Overall approach Obvious to try “test” ‘Windsurfer’ structured approach Relevant factors

Overall

Rejects the Beloit test . . . the restrictiveness with which

the Beloit test has been interpreted in Canada should be re-examined.

No rigid rules an expansive and flexible approach that

would include “any secondary considerations that [will] prove instructive” will be useful (p. 1739).

Overall

Does not expressly accept the “but for” theory

But is consistent with it The patent system is intended to

provide an economic encouragement for research and development. It is well known that this is particularly important in the field of pharmaceuticals and biotechnology.

Obvious to Try “Test”

Obvious to try “test” is used in two ways

(1) If obvious to try => obvious This is REJECTED in Sanofi

Obvious to Try “Test”

(2) Whether the invention was obvious to try is a factor to be considered This is ACCEPTED in Sanofi If an “obvious to try” test is warranted, the

following factors should be taken into consideration at the fourth step of the obviousness inquiry.

But it is NOT a test If an invention is obvious to try, but not

obvious to succeed, it may well be inventive

Obvious to Try?

Generally, if an invention is not obvious to try, it is not obvious

Why is it not obvious to try? Not an obvious thing to do

Flash of genius Not obvious that it would be worth

doing Surprising advantage

Obvious to Try If Not Obvious to Try, then

Not Obvious Even if

Obvious to succeed Why?

. . . inventive ingenuity lay in perceiving that the final result which it was the object of the inventor to achieve was attainable from the particular starting point and in his selection of the particular combination of steps which would lead to that result.

Lord Diplock, quoted in Halocarbon See eg Tye-Sil Corp, Ch. 7

Obvious to Try

However, if an invention is obvious to try it, it is not necessarily obvious

Not (sufficiently) obvious to succeed Not obvious

Obvious to succeed, but much effort required Patient searcher Is the patient searcher entitled to a

patent?

Halocarbon

[I]t seems to me, the requirement of "inventive ingenuity" is not met in the circumstances of the claim in question where the "state of the art" points to a process and all that the alleged inventor has done is ascertain whether or not the process will work successfully. (FCA)

Ie, if obvious to try, then obvious This standard was rejected by the SCC In my view this statement of the requirement

of inventive ingenuity puts it much too high. (SCC)

Obvious to Try and Succeed

If obvious to try AND obvious to work => obvious (probably)

The “obvious to try” test really only works where it is more-or-less self-evident that what is being tested ought to work.

Patient Searcher

Suppose an innovation is Obvious to try Likely to succeed given $300 million

Eg much genetic engineering Obvious to get human insulin by

recombinant DNA technology Should it be considered obvious?

Patient Searcher

Query: What if invention is obvious to try AND obvious to succeed, IF $300 million is spent E.g patient searching, where you know

systematic research will reveal the answer, but the research is expensive

Patient Searcher

Should this be patentable? Is this patentable?

Some UK courts have held not A mere commercial decision is not an

invention. Biogen v Medeva 1995 UKCA, re

sequencing genome of Hepatis B virus

Patient Searcher

What about in Canada? 1. 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 art?

2. 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?

Patient Searcher

Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where the "state of the art" points. . . "A patient searcher is as much entitled to the benefits of a monopoly as someone who hits upon an invention by some lucky chance or inspiration". Halocarbon SCC

Patent Race Problem

If ‘obvious’ many inventors will try to be the first to get the patent In principle, all of the benefits of the

patent may be squandered in the race to be first to get the patent.

Obviousness in this sense is different from obviousness in the ‘but for’ theory

Windsurfer Approach

(1)(a) Identify the notional "person skilled in the art";

(b) Identify the relevant common general knowledge of that person;

What is the state of the art?

Windsurfer Approach

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

What is the inventive concept?

Windsurfer Approach

(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;

What is the difference between the two?

Windsurfer Approach

(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?

Is that difference inventive? Judging without hindsight

TSM Approach

Compare “teaching, suggestion, motivation” approach used in US prior to KSR

The party seeking patent invalidity based on obviousness must also show some motivation or suggestion to combine the prior art teachings. A suggestion or motivation to combine generally arises in the references themselves, but may also be inferred from the nature of the problem or occasionally from the knowledge of those of ordinary skill in the art. Al-Site Corp. v. VSI Int'l, Inc., CAFC 1999

Secondary Factors

Simultaneous Invention . . . it was a fact that the named inventors on the

patents granted to both plaintiff and defendant were highly experienced and skilled in the art and had, on a number of previous occasions, demonstrated their inventive ability. That such people should come up with the idea in a relatively short space of time is nothing to the point on the question of obviousness unless it be to show that only they, and no one else, in the vast international fraternity of paper makers could devise the concept. Beloit

Beloit

There are many instances in various branches of science of independent investigators making the same discovery. That does not prevent the one who first applies and gets a patent from having a good patent Pope Appliance, quoted in Halocarbon

Simultaneous invention does not prove obviousness

Why not?

Long Felt Need As previously stated, the press section had been

recognised for some time as the limiting factor in the design of paper machines. Once the invention was adopted in the industry, the speed of these machines was increased from its previous maximum of about three thousand feet per minute to the present maximum of about four thousand feet per minute. Paper machines, as a rule, run twenty-four hours a day, seven days a week, and the increased economy and profitability resulting from such increase in speed require no demonstration. Beloit

Contrary to Conventional Wisdom

Conventional wisdom in the industry at the time of the invention in 1969 pointed away from the teaching of the patent and there was strong industry resistance to its acceptance. In fact, the plaintiff did not succeed in getting a customer to take the new machine until May 1972. The machine itself was not started up until April 1973. Beloit

Commercial Success

Since its acceptance, the machine has had an outstanding commercial success, to the point that, as the trial judge himself said, it "is now almost universally adopted for use in the press section of paper making machines." Beloit

Secondary Factors

While none of these factors taken in isolation is necessarily determinative on the issue of obviousness, each of them argues more eloquently than any ex post facto analysis can ever do that the patent is inventive; cumulatively their effect is simply irresistible. Beloit

Why did the Beloit Court impose a low standard of inventiveness? Was a low standard necessary to support its conclusion?

Secondary Factors

Commercial success Long-felt need Conventional wisdom teaches away

from the invention Combination of commercial success &

long-felt need is very persuasive re non-obviousness But commercial success may be

explained by other factors, eg marketing

Secondary Factors

If the secondary factors can be established, they are powerful evidence of non-obviousness

HOWEVER, it is not necessary to establish the secondary factors in order to establish non-obviousness

Absence of any or all of these factors does NOT prove obviousness

Why was it not done before?

It is so easy, once the teaching of a patent is known, to say, "I could have done that"; before the assertion can be given any weight, one must have a satisfactory answer to the question, "Why didn't you?“ Beloit

It is possible to rebut this: e.g little time between pioneer patent and improvement