Obviousness practice notice
CIPO has released new guidance on assessing the “obviousness” of an invention. One of the requirements for patentability is non-obviousness (aka inventiveness). The other key requirements are novelty and utility.
The obviousness inquiry has undergone extensive change following the Supreme Court of Canada’s Sanofi decision released about a year ago.
The Canadian Patent Office has been digesting this decision and, in its new practice notice, has adopted the 4-step framework developed by Justice Rothstein:
- Identify the notional “person skilled in the art”;
- Identify the relevant common general knowledge of that person;
- Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
- Identify what, if any, difference exists 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;
- 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?
“Inventive concept” = “Spirit of the Invention”?
One of the main criticisms of the Sanofi case, and the framework above, which seems to have been sourced from UK decisions, is the apparent conflict with previous guidance of the Supreme Court on claim construction. Specifically, identifying the “inventive concept” of a claim in step #2 seems at odds with the rules of claim construction, requiring “adherence” to the language of the claims. In Free World Trust, the Court said:
“The language of the claims thus construed defines the monopoly. There is no recourse to such vague notions as the “spirit of the invention” to expand it further.”
“Obvious to try” & “the motivation factor”
The practice notice summarizes the “obvious to try” factors as focussing on “the motivation factor”:
“[The obvious to try factors] might be thought of as asking whether it was obvious to search for a solution to the problem addressed by the inventors (the motivation factor) and whether the route to the claimed subject-matter was also obvious. If there was no invention in either conceiving of the solution nor reducing it to a practical form, the claimed subject-matter is not the result of an inventive step and is therefore obvious.”
However, the Office seems to have glossed over an important distinction raised in the Sanofi case. In the decision, Justice Rothstein wrote: “I am of the opinion 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.”
In January, the Federal Court of Appeal in Pfizer said:
“The [Sanofi] test recognized is “obvious to try” where the word “obvious” means “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. The invention must be more or less self-evident.”
“The motivation factor” inquiry needs work. The Office should clarify for examiners and practitioners whether it is “obvious to try because it will work” (or “obvious to try because it might work”). If the Pfizer case is to be followed, then it should be the first formulation.
