CIPO announced a new Practice Direction on the test that the Patent Office will apply in assessing obviousness in light of Rothstein J.’s judgment for the Court in Apotex Inc. v. Sanofi-Synthelabo Canada, Inc. [2008 SCC 61]
The four-step approach to obviousness adopted by the Court is as follows:
(1) (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, 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;
(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?
Fortunately the Practice Direction will be applied prospectively.