Obviousness, obvious to try by the numbers

by Michael Crinson

A version of this article was published by LexisNexis in The Lawyers Weekly, 7 August 2009

In 2008, in the context of a proceeding under the Patented Medicines (Notice of Compliance) Regulations, the Supreme Court of Canada re-examined the test for obviousness in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61. The Supreme Court's refinement of the test for obviousness seems likely to result in a radical change in outcomes to the detriment of patent rights holders. The United Kingdom and United States experience suggests the more relaxed test for obviousness put forward by the Supreme Court of Canada could result in a doubling in the findings of obviousness in patent litigation.

The previous leading case on the issue of obviousness had been Beloit v. Valmet-Dominion Inc., [1986] F.C.J. No. 87 (FCA). In Beloit, the classic touchstone for obviousness was described as "the technician skilled in the art but having no scintilla of inventiveness or imagination". The court in Beloit described the test for obviousness as "a very difficult test to satisfy".

The difficulty of satisfying the Beloit test for obviousness is borne out by looking at those cases in which the question of obviousness has been decided. In the past five years in Canada, in those cases other than PM(NOC) proceedings, the issue of obviousness has been decided in respect of eleven patents. In the single case heard and decided since Sanofi, the patent was found to be obvious. For the other ten patents in actions which were heard and decided prior to Sanofi, the obviousness attack succeeded against only two patents; i.e., obviousness was successful only 20 percent of the time. Even looking at PM(NOC) proceedings, allegations of obviousness were only found to be justified for about 32 percent of the patents at issue.

One of the motivations of the Supreme Court of Canada to re-examine the Beloit test was the convergence of United Kingdom and United States law on the issue whether a particular invention was "obvious to try". The test for obviousness set out in the 2007 UK decision of Pozzoli SPA v. BDMO SA, [2007] EWCA Civ 588, generally known as the Windsurfing/Pozzoli test, was endorsed by the Supreme Court in Sanofi. The final stage of that test asks, "viewed without any knowledge of the alleged invention as claimed, do these differences [between the prior art and the inventive concept] constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?" It is in this fourth step that the issue of "obvious to try" may arise.

In both Canada and the United Kingdom the "obvious to try" factor will not be appropriate in every case. Some factors that can be considered in the application of the obvious to try test in both jurisdictions include: (1) whether it was more or less self-evident that what is being tried ought to work; (2) what is the extent, nature and amount of effort required to achieve the invention; and (3) was there a motive provided in the prior art to find the solution the patent addresses. Further, in both jurisdictions the skilled addressee (which may be a team of individuals) is equipped with the common general knowledge but is also unimaginative. In the experience of the United Kingdom over the past five years where the "obvious to try" test may be a factor and obviousness has been decided, 71 percent of patents have been found to be obvious. This is more than double the rate at which patents have been found to be obvious in Canada.

The Supreme Court of the United States also revisited the issue of obviousness in 2007 in KSR v. Teleflex, 550 U.S. 398 (2007) [PDF]. In that case, the Court explained that the "teaching, suggestion, or motivation" (TSM) test which has been used cannot be applied in a rigid manner. The Court did also indicate that an invention would be "obvious to try" when there exists a defined problem with a limited number of predictable solutions that fall within the capabilities of a person of ordinary skill in the art. Notably, the person of ordinary skill in the art in the United States should be considered to have a level of creativity. Despite this difference, patents have been found to be invalid as obvious in 75 percent of the cases in which the issue has been decided (excluding District Court decisions) in the last five years.

While great caution must be exercised when comparing outcomes of different cases in different jurisdictions, the historical data show a significant difference between findings of obviousness in Canada versus the United Kingdom and the United States. There could be many explanations for, or contributing factors to, this difference; for example, different standards applied by the relevant patent offices, different procedural rules, different cases and different types of technology at issue. However, it seems likely that at least part of this difference in outcomes can be attributed to a more relaxed standard to establish obviousness that is "obvious to try".

Thanks to Bentley Gaikis for his research on this topic and the accumulation of the statistics referred to in the article. Bentley Gaikis is a summer student at Dimock Stratton LLP having recently completed his second year of the J.D. program at Queen’s University.