One of the most difficult concepts to define in patent law is the inventiveness or obviousness of an invention. To be valid, a patent must have claims directed to an invention that is non-obvious – i.e. is inventive.
Determining whether an invention obvious, at what point in time, to whom, and with what level of effort, all raise complicated evidentiary and legal issues that often have to be analyzed as part of patentability and validity opinions or at trial.
In 2008, the Supreme Court directly addressed the obviousness analysis by describing a four part analysis (Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 at 76):
(a) Identify the notional “person skilled in the art”;
(b) 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?
In introducing this four part analysis, the Supreme Court was critical of the application of previous ‘test’ for obviousness from Beloit (Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289), saying, “the courts have often tended to treat the word formulation of Beloit as if it were a statutory prescription that limits the obviousness inquiry.”
While the Supreme Court decision went on to focus on the issue of “obvious to try” as part of the obviousness analysis, I will focus on the definition of ‘inventive concept’ that arises in step 2 of the analysis.
Until this 2008 decision, determining an ‘inventive concept’ was not part of the obviousness analysis. The court stated, at para 77, that, “A bare chemical formula in a patent claim may not be sufficient to determine its inventiveness. In such cases, I think it must be acceptable to read the specification in the patent to determine the inventive concept of the claims. Of course, it is not permissible to read the specification in order to construe the claims more narrowly or widely than the text will allow.” Since this 2008 decision, numerous of cases have turned on the determination of the inventive concept of the patent claims being litigated.
Some of the issues with the ‘inventive concept’, including whether it needs to be considered at all instead of construing the claims, and how much significance should be given to the patent description when determining the ‘inventive concept’ have been the subject of numerous decisions.
As an example, in 2012, the Federal Court of Appeal was faced with two lower court decisions which had identified a different ‘inventive concept’ for the same claim. The different inventive concepts were determinative of the finding of obviousness and therefore the patent’s validity. In that decision (Apotex Inc. v. Allergan Inc., 2012 FCA 308), the court did look to the description, to incorporate an improved safety profile into the inventive concept, even though there was no explicit reference to the safety profile in the claim language.
Earlier this year, the Federal Court of Appeal, in Bristol-Myers Squibb Canada Co. v. Teva Canada Limited, 2017 FCA 76 at 65, directly addressed the impact of the 2008 Supreme Court decision in Sanofi on obviousness and held that:
It may be helpful to keep in mind that the obviousness analysis asks whether the distance between two points in the development of the art can be bridged by the Skilled Person using only the common general knowledge available to such a person. If so, it is obvious. The first of those points is the state of the prior art at the relevant date. References in the jurisprudence to “the inventive concept”, “the solution taught by the patent”, “what is claimed” or simply “the invention” are attempts to define the second point.
The previous Beloit precedent had used phrase “the solution taught by the patent” in its approach to obviousness, which the 2008 Supreme Court Sanofi decision had used ‘inventive concept’.
With the Federal Court of Appeal’s decision this year considering terms like “inventive concept”, “the solution taught by the patent” likely mean the same things, we have more available approaches to determining the obviousness of a patent. This will allow creative litigants to characterize the claims at issue in different ways to try obtain a most favourable ruling on obviousness, either upholding the validity of the patent or finding the patent invalid. Focusing on the specific language of the claims may make the claim easier to be found obvious, while a more complicated ‘inventive concept’ that incorporates additional benefits or properties may be easier to find inventive. No matter the approach, parties should carefully consider the claim language, the patent as a whole, the state of the art, the person skilled in the art and work with their experts to get their facts and arguments before the court.