眾律國際法律事務所

眾律國際法律事務所 專利工程師暨法務專員林春宏

美國柏克萊加州大學 分子生物學士

美國柏克萊加州大學 資訊管理 碩士

加拿大英屬哥倫比亞大學 法律博士

2012-12-11

Canadian Patent Law (Non-obviousness)

In addition to satisfying the requirements for Novelty, a patent application must also meet the criteria for non-obviousness (i.e. inventiveness or inventive step).

Section 28.3 of the Patent Act specifies the statutory requirements for non-obviousness:

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

(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.

This section provides a grace period of one year that permits the inventor, or anyone who acquired knowledge from the inventor, to disclose the invention without rendering it non-obvious.

In Beloit Canada Ltd. v. Valmet Oy, Justice Hugessen explained the concept of non-obviousness in comparison to the concept of anticipation:

“They are, of course, quite different; obviousness 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.” It should be noted that while the judge used the term “any fool”, the proper standard for non-obviousness is “a person skilled in the art or science.”

In Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., [2008] 3 S.C.R. 265, the Supreme Court of Canada affirmed the four-step approach for determining non-obviousness.

The four steps are:

1. Identify the notional “person skilled in the art” and 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?

References:

Section 28.3 of the Canadian Patent Act (R.S.C., 1985, c. P-4)

http://laws-lois.justice.gc.ca/eng/acts/P-4/page-18.html?term=28.3#s-28.3

Beloit Canada Ltd. v. Valmet Oy

http://www.jurisdiction.com/beloit.htm

Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., [2008] 3 S.C.R. 265

http://www.canlii.org/en/ca/scc/doc/2008/2008scc61/2008scc61.html