C’right: overview, 2

Obviousness

1. 
   Overview:
   
   1. 
      If patent is obvious = not patentable
      
   2. 
      Purpose of patent law is to reward for inventions for full disclosre of invention. If invention is obvious there is no need to get a 20 year monopoly.
      
   3. 
      TEST PERSON:
      
      1. 
         POSITA- Person ordinarily skilled in the art
         
         1. 
            Would the person skilled in the relevant art and science, based on their skill and knowledge but without a scintilla of imagination have been led to this invention?
            
2. 
   #1: S.28.3 = What qualifies as prior art [previous invention]
   
   1. 
      Test person: would the person skilled in the relevant art and science to which patent pertains, based on their skill and knowledge but without a scintilla of imagination have been led to this invention?
      
      1. 
         If inventor discloses information before 1 year of filing application = prior art and is obvious
         
      2. 
         Or if any person who discloses information before the claim date before information becomes public
         
         1. 
            Research assistant.
            

3. Case example: Apotex v Sanofi

   1. 
      TEST:
      
      1. 
         Requirement for obviousness
         
         1. 
            Was the invention obvious to try [POISTA]
            
            1. 
               There must be evidence to convince a judge on a balance of probabilities that it was more or less self evidence to try and obtain the invention
               
               1. 
                  Mere possibility that something might turn up is not enough
                  
         2. 
            POSITA def’n + Need to identify person + common knowledge of that person
            
      2. 
         Obviousness inquiry TEST
         
         1. 
            POSITA: would the person skilled in the relevant art and science based on their skill and knowledge but without a scintilla of imagination have been led to this invention?
            
            1. 
               Identify the notional person skilled in the art
               
            2. 
               Identify the relevant common general knowledge of that person
               
         2. 
            Identify the inventive concept of the claim in question or construe it
            
            1. 
               What is the claim they are making?
               
         3. 
            Identify what, if any differences between the matter cited as forming part of the state of the art and the inventive concept of the claim as construed
            
            1. 
               Difference between the 2 claims and state of art?
               
         4. 
            Viewed without 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
            
            1. 
               Once you know difference would they be obvious to the POSITA? Look at additional factors below
               
            2. 
               Is it more or less self-evidence that what is being tried ought to work?
               
               1. 
                  Is it obvious?
                  
            3. 
               What is the extent, nature and amount of effort required to carry out the invention
               
               1. 
                  Obvious to try?
                  
            4. 
               Is there a motive provided in the prior art to find the solution the patent addresses
               
               1. 
                  Has there been a need to deal with this issue that non one has managed to deal with it?
                  
            5. 
               Look at the history of the invention.
               
               1. 
                  Did invention or routine invention easily or quickly or with time money and effort looking for result?
                  
               2. 
                  How skilled was team
                  
               3. 
                  How did they arrive at result?
                  
   2. 
      Decision
      
      1. 
         After apply 4 part test, held that when all factors are considered the invention was not self evident and common general knowledge to satisfy test.