SUPREME COURT OF CANADA
Apotex Inc. v.
Sanofi-Synthelabo Canada Inc.,
Sanofi-Synthelabo Canada Inc., Sanofi -Synthelabo
and Minister of Health
Canadian Generic Pharmaceutical Association,
BIOTECanada and Canada’s Research -Based Pharmaceutical Companies
Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ.
REASONS FOR JUDGMENT:
Rothstein J. (Binnie, LeBel, Deschamps, Fish, Abella and
This document is subject to editorial revision before its reproduction in final form in theCanada Supreme Court Reports
Sanofi-Synthelabo Canada Inc., Sanofi -Synthelabo
and Minister of Health
Canadian Generic Pharmaceutical Association,
BIOTECanada and Canada’s Research -Based Pharmaceutical
Indexed as: Apotex Inc. v. Sanofi-Synthelabo Canada Inc.
Neutral citation: 2008 SCC 61.
Present: Binnie, LeBel, Deschamps, Fish, Abella, Charron and Rothstein JJ.
on appeal from the federal court of appeal
Intellectual property — Patents — Medicines — Selection patents — Validity
— Whether selection patent invalid on grounds of anticipation, obviousness or double
Intellectual property — Patents — Anticipation — Two-step approach to
anticipation — Requirements of “prior disclosure” and “enab lement”.
Intellectual property — Patents — Obviousness — Four-step approach to
obviousness — When “obvious to try” test appropriate.
Intellectual property — Patents — Double patenting — Whether doctrine of
selection patents invalid on ground of double patenting.
S is the holder of the ‘875 patent which discloses a large genus or class of
over 250,000 possible compounds useful in inhibiting platelet aggregation activity in the
blood. One of these compounds is the racemate relevant in this case. A racemate is a
substance containing equal amounts of two structurally different compounds, called the
dextro-rotatory isomer and the levo -rotatory isomer. S also holds the subse quent ‘777
patent which discloses and claims clopidogrel bisulphate, marketed by S under the trade
name of Plavix as an anti-coagulant that exhibits platelet aggregation inhibiting activity.
Clopidrogel is the dextro -rotatory isomer of the racemate that w as selected from and is
encompassed by the compounds claimed in the ‘875 patent, and is less toxic and better
tolerated than the levo-rotatory isomer and the racemate. In 2003, A, a generic
manufacturer served a Notice of Allegation on S to obtain a Noti ce of Compliance from
the Minister of Health in order to market its generic version of Plavix, claiming that it
would not infringe S’s patent for Plavix because the ‘777 patent was invalid on the
grounds of anticipation, obviousness and double patenting. S successfully sought an
order in the Federal Court prohibiting the Minister from issuing the Notice of
Compliance to A on the ground that the generic version of Plavix did infringe the ‘777
patent. The Federal Court of Appeal upheld the decision. The i ssue is whether selection
patents are invalid in principle or on the facts of this case, on the grounds of anticipation,
: The appeal should be dismissed.
In the field of chemical patents, originating or genus paten ts are based on the
discovery of a new invention, namely, a reaction or compound, while selection patents
are for compounds chosen from the compounds described in the originating patent.
Selection patents do not differ in nature from any other patent, but in order to be valid,
the selected compound must be novel and possess a substantial advantage to be secured
A system of genus and selection patents is acceptable in principle and does
not necessarily involve anticipation and therefore invalidity. The real question is
whether, on the facts of this case, the particular selection patent has been anticipated.
This means that, having regard to s. 27(1) of the Patent Act
, the claimed invention has
already been made or publicly disclosed. Here, the applications judge set the bar for
proving anticipation too high and overstated the stringency of the test by requiring that
the “exact invention” must have already been made and publicly disclosed. Rather, for a
successful anticipation claim, a two -step approach should be adopted whereby the
requirements of “prior disclosure” and “enablement” should be considered separat ely and
proven. For prior disclosure, the genus patent must disclose subject matter which, if
performed, would necessarily result in infringement of that patent. At this stage, the
person skilled in the art is reading the prior patent to understand wheth er it discloses the
special advantages of the second invention. No trial and error is permitted. If in reading
the genus patent, there is no discovery of the special advantages of the selection patent,
the genus patent does not anticipate the selection pa tent and the disclosure requirement to
prove anticipation, as in this case, fails. For “enablement”, the person skilled in the art
must have been able to perform the invention without undue burden. The question at this
stage of the test is how much trial and error or experimentation is permitted. If an
inventive step were required to get to the invention of the second patent, the specification
of the first patent would not have provided enabling disclosure. The entire prior genus
patent must provide enough information to allow a person skilled in the art to perform or
make the selected subsequently claimed invention without “undue burden”. The skilled
person may use his or her common general knowledge of the relevant art at the relevant
time to supplement information contained in the prior genus patent and may conduct
routine trials without being considered an undue burden, but prolonged or arduous trial
and error experiments would not be considered routine. In this case, the allegation that
the ‘777 patent is invalid on the basis of anticipation must fail. Twenty -one examples
from the ‘875 patent were made and tested, one of which was the relevant racemate.
There was no evidence that a person skilled in the art would know, from reading the ‘875
patent, the specific beneficial properties associated with the more active dextro -rotatory
isomer and that it would be less toxic than the racemate or levo -rotatory isomer or any of
the other compounds made and tested. Since the ‘875 patent did not teach these special
advantages, the invention of the ‘777 patent was not disclosed and was therefore not
anticipated. Regarding enablement, the evidence with respect to trial and error and the
methods of separating the racemate into its isomers, indicates that the i dentification of
clopidrogel, its bisulfate salt and their advantageous properties required extensive
investigation over a period of months. However, it was not necessary to determine the
question of enablement in view of the finding that there was no dis closure of the 777
invention in the 875 patent. [18 -20] [24-25] [27-29] [31-33] [37-38] [40-42]  [49-50]
The allegation that the ‘777 patent is invalid on the basis of obviousness
must also fail. Obviousness is largely concerned with how a skilled worker would have
acted in the light of the prior art. An obviousness inquiry should follow a four -step
approach. First, the notional "person skilled in the art" and that person’s relevant
common general knowledge must be identified.
pharmachemist. Second, the inventive concept of the claim in question must be
determined or construed. The inventive concept of the claims in the ‘777 patent is that it
is a compound useful in inhibiting platelet aggregati on which has greater therapeutic
effect and less toxicity than the other compounds of the ‘875 patent. Third, the
differences, if any, that exist between the matters cited as forming part of the “state of the
art” and the inventive concept of the claim or the claim as construed must be identified.
There is no disclosure in the ‘875 patent of the specific beneficial properties associated
with the dextro-rotatory isomer of this racemate or its bisulfate salt, in contrast to the
‘777 patent, which claims the invention of the dextro-rotatory isomer of the racemate,
clopidogrel, and its bisulfate salt, discloses their beneficial properties over the
levo-rotatory isomer and the racemate, and expressly describes how to separate the
racemate into its isomers. Fou rth, a court must consider whether, viewed without any
knowledge of the alleged invention as claimed, those differences constitute steps which
would have been obvious to the person skilled in the art or whether they require any
degree of inventiveness. [6 8,81] It is at this final step that the issue of “obvious to try”
will arise and the nature of the invention in this case is such as to warrant this test. For a
finding that an invention was “obvious to try”, there must be evidence to convince a
judge on a balance of probabilities that it was more or less self -evident to try to obtain the
invention. Mere possibility that something might turn up is not enough. Here, when the
relevant factors are considered, the invention was not self -evident from the prior art and
common general knowledge in order to satisfy the test. While there were five
well-known methods to separate this racemate into its isomers, there was no evidence
that a person skilled in the art would have known which of the five known separat ion
techniques would work with this racemate. Further, S spent millions of dollars and
several years developing the racemate up to the point of preliminary human clinic trials
before it was discovered that the dextro -rotatory isomer was active and non -toxic. As the
‘875 patent did not differentiate on the basis of efficacy and toxicity, what to select or
omit was not then self-evident to a person skilled in the art. It was also not self-evident
from the ‘875 patent or common general knowledge what the bene ficial properties of the
dextro-rotatory isomer of this racemate or its bisulfate salt would be and therefore what
was being tried ought to work. The course of conduct and the time involved throughout
demonstrate that the advantage of the dextro -rotatory isomer was not quickly or easily
predictable. [66-69]  [77-80] [85-86] [90-92]
Finally, the challenge to selection patents based on the ground of double
patenting is not well-founded. Strategies that attempt to extend the time limit of
exclusivity of a patent may be contrary to the objectives of the Patent Act
, depending on
the circumstances, but a generalized concern about evergreening is not a justification for
an attack on the doctrine of selection patents. A selection patent may be sought by a
party other than the inventor or owner of the original genus patent so that evergreening
does not arise. In addition, selection patents encourage improvements over the subject
matter of the original genus patent because that selection does so mething better than or
different from what was claimed in the genus patent. There is no “same invention”
double patenting because the claims of the ‘875 and ‘777 patents were not identical or
coterminous and the former is broader than the latter. Furthe r, as the claims in the ‘777
patent reflect a patentably distinct compound from the compounds in the ‘875 patent, it is
not invalid for “obviousness” double patenting. [97 -98] [100-101] [110-111]  
: In re I. G. Farbenindustrie A. G.’s Patents
(1930), 47 R.P.C. 289;
Synthon B.V. v. SmithKline Beecham plc
,  1 All E.R. 685,  UKHL 59;
Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.
,  R.P.C. 59;
Pozzoli SPA v. BDMO SA
,  F.S.R. 37,  EWCA Civ 588; Whirlpool Corp. v.
,  2 S.C.R. 1067, 2000 SCC 67; Monsanto Co. v. Commissioner of
,  2 S.C.R. 1108; referred to
: Commissioner of Patents v. Farbwerke
Hoechst Aktiengesellschaft Vormals Meister Lu cius & Bruning
,  S.C.R. 49; Free
World Trust v. lectro Sant Inc.
,  2 S.C.R. 1024, 2000 SCC 66; Beloit Canada
Ltd. v. Valmet OY
(1986), 8 C.P.R. (3d) 289; General Tire & Rubber Co. v. Firestone
Tyre & Rubber Co.
,  R.P.C. 457; Hills v. Evans
(1862), 31 L.J. Ch. (N.S.) 457; E.
I. Du Pont de Nemours & Co. (Witsiepe’s) Application
,  F.S.R. 303; Halliburton
Energy Services Inc. v. Smith International (North Sea) Ltd.
,  EWCA Civ 1715;
Wobben v. Vestas-Celtic Wind Technology Ltd.
,  EWHC 2636; Application of
, 363 F.2d 928 (1966); In re O’Farrell
, 853 F.2d 894 (1988); KSR
International Co. v. Teleflex Inc.
, 127 S. Ct. 1727 (2007); Johns-Manville Corporation’s
,  R.P.C. 479; H. Lundbeck A/S v. Generics (UK) Ltd.
,  R.P.C. 19,
 EWCA Civ 311; Angiotech Pharmaceuticals Inc. v. Conor Medsystems Inc.
 R.P.C. 20,  EWCA Civ 5, rev’d  R.P.C. 28,  UKHL 49;
Saint-Gobain PAM SA v. Fusion Pro vida Ltd.
,  EWCA Civ 177; Apotex Inc. v.
Wellcome Foundation Ltd.
,  4 S.C.R. 153, 2002 SCC 77; Ciba-Geigy AG v.
Commissioner of Patents
(1982), 65 C.P.R. (2d) 73; May & Baker Ltd. v. Boots Pure
(1950), 67 R.P.C. 23.
Statutes and Regulations Cited
Food and Drug Regulations
, C.R.C. 1978, c. 870, s. C.08.004.
, R.S.C. 1985, c. P-4, ss. 2, 27, 34(1)(b
) [rep. 1993, c. 13, s. 36], 55.2(4), 59.
Patented Medicines (Notice of Compliance) Regulations
, SOR/93-133, ss. 5, 6(1).
Patents Act 1977
(U.K.), 1977, c. 37.
Treaties and Other International Instruments
Convention on the Grant of European Patents
, 1065 U.N.T.S. 199.
Vaver, David. Intellectual Property Law: Copyright, Patents, Trade -mark
APPEAL from a judgment of the Federal Court of Appeal (Richard C.J. and
Noël and Evans JJ.A.) (2006), 282 D.L.R. (4th) 179, 358 N.R. 135, 59 C.P.R. (4th) 46,
 F.C.J. No. 1945 (QL), 2006 CarswellNat 45 87, 2006 FCA 421, affirming a
decision of Shore J. (2005), 271 F.T.R. 159, 39 C.P.R. (4th) 202,  R.P.C. 34,
 F.C.J. No. 482 (QL), 2005 CarswellNat 726, 2005 FC 390. Appeal dismissed.
Harry B. Radomski
, Richard Naiberg
, Andew R. Brodkin
and Miles Hastie
Cristin A. Wagner
, for the respondents
Sanofi-Synthelabo Canada Inc. and Sanofi -Synthelabo.
No one appeared for the respondent the Minister of Health.
, for the intervener the Canadian G eneric Pharmaceutical
and Jana Stettner
, for the intervener BIOTECanada.
Patrick E. Kierans
, Jason Markwell
and Cynthia L. Tape
, for the intervener
Canada’s Research-Based Pharmaceutical Companies.
The judgment of the Court was delivered by
 This appeal raises questions relating to the validity of what are known as
selection patents. In the context of chemical compounds, in general terms, a selection
patent is one whose subject matter (compounds) is a fraction of a larger known class of
compounds which was the subject matter of a prior patent.
 The appellant (“Apotex” ) challenges the validity of the selection patent
in this case on the grounds of anticipation, obviousness and double patenting. I would
 The parties have accepted that the Sanofi respondents (“Sanofi”) are the
relevant holders of patent 1,194,875 (‘875 patent). This patent disclosed a genus or class
of compounds useful in inhibiting platelet aggregation activity in the blood which is
important in treating coronary artery, peripheral vascular and cerebral vascular diseases .
This genus patent discloses over 250,000 possible different compounds useful for this
purpose. One of the compounds is a racemate described as methyl alpha –5 (4, 5, 6, 7–
tetrahydro (3, 2–c)–thieno pyridyl) (2–chlorophenyl)–acetate (the “racemate”).
 A racemate is a substance containing equal amounts of two structurally
different compounds, called enantiomers or optical isomers. The two isomers, the
dextro-rotatory isomer and the levo -rotatory isomer, are mirror images of each other and
rotate plane-polarized light in opposite directions.
 The parties have accepted that Sanofi is also the relevant holder of
subsequent Canadian patent 1,336,777 (‘777 patent), the patent in suit. It discloses and
claims clopidogrel bisulfate, which is marketed by Sanofi under the trade name of Plavix
as an anti-coagulant that inhibits platelet aggregation activity in the blood.
 Clopidogrel bisulfate is encompassed within the scope of the claims in
the ‘875 patent. Clopidogrel is the dextro -rotatory isomer of the racemate, having
beneficial properties over both the racemate and the levo -rotatory isomer. The dextro -
rotatory isomer exhibits a platelet aggregation inhibiting activity and is less toxic and
better tolerated than the levo -rotatory isomer and racemate. The salts of the dextro -
rotatory isomer, such as clopidogrel bisulfate, have a better therapeutic index than the
salts of the racemic mixture and in fact, the levo -rotatory isomer exhibits almost no
platelet aggregation inhibiting activity, and its toxicity is markedly higher than that of the
 On March 10, 2003, Apotex served a Notice of Allegation under the
Patented Medicines (Notice of Compliance) Regulations
, SOR/93-133 (“NOC
”), on Sanofi for the purpose of obtaining a Notice of Compliance pursuant to
section C.08.004 of the Food and Drug Regulations
, C.R.C. 1978, c. 870, from the
Minister of Health for a generic version of Plavix. The basis of Apotex’s Notice of
Allegation was that it would not infringe Sanofi’s ‘777 patent for Plavix because the ‘777
patent was invalid on account of anticipation, obviousness and double patenting. On
April 28, 2003, Sanofi initiated proceedings under s. 6(1) of the NOC Regulations
Federal Court seeking an order prohibiting the Minister of Health from issuing a Notice
of Compliance to Apotex on the grounds that its generic version of Plavix would infringe
the ‘777 patent. The Federal Court granted the order of prohibition ((2005), 271 F.T.R.
159, 2005 FC 390). The Federal Court of Appeal dismissed Apotex’s appeal ((2006),
282 D.L.R. (4th) 179, 2006 FCA 421).
 This appeal requires the Court to determine whether selection patents are
invalid in principle or on the facts of t his case on the grounds of anticipation,
 The locus classicus
describing selection patents is the decision of
Maugham J. in In re I. G. Farbenindustrie A. G.’s Patents
(1930), 47 R.P.C. 289 (Ch.
D.). At p. 321, he explained that in the field of chemical patents (which would of course
include pharmaceutical compounds), there are often two “sharply divided classes”. The
first class of patents, which he called originating patents, are based on an originating
invention, namely, the discovery of a new reaction or a new compound. The second class
comprises patents based on a selection of compounds from those described in general
terms and claimed in the originating patent. Maugham J. cautioned that the selected
compounds cannot have been made before, or the selection patent “would fail for want of
novelty”. But if the selected compound is “novel” and “possess[es] a special property of
an unexpected character”, the required “inventive” step would be satisfied (p. 321). At p.
322, Maugham J. stated that a selection patent “does not in its nature differ from any
While not exhaustively defining a selection patent, he set out (at pp. 322 -
23) three conditions that must be satisfied for a selection patent to be va lid.
There must be a substantial advantage to be secured or disadvantage to
be avoided by the use of the selected members.
The whole of the selected members (subject to “a few exceptions here
and there”) possess the advantage in ques tion.
The selection must be in respect of a quality of a special character
peculiar to the selected group. If further research revealed a small
number of unselected compounds possessing the same advantage, that
would not invalidate the selection paten t. However, if research showed
that a larger number of unselected compounds possessed the same
advantage, the quality of the compound claimed in the selection patent
would not be of a special character.
Although much has been written about selection pate nts since I. G.
, Maugham J.’s analysis is consistently referred to and is well accepted. I
find it is a useful starting point for the analysis to be conducted in this case.
IV. The Regulatory Scheme Under Which The Matter Proceeded
At the outset, it is appropriate to refer to the words of Judson J. for this
Court in Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals
Meister Lucius & Braning
,  S.C.R. 49, at p. 57:
There is no inherent common law right to a patent. An inventor gets hispatent according to the terms of the Patent Act
, no more and no less.
The most recent reference to the law of patents being wholly statutory are the words of
Lord Walker in Synthon B.V. v. SmithKline Beecham plc
,  1 All E.R. 685, 
The law of patents is wholly statutory, and has a surprisingly long
history. In the interpretation and application of patent statutes judge -made
doctrine has over the years done much to clarify the abstract generalities ofthe statutes and to secure uniformity in their application.
Nevertheless it is salutary to be reminded, from time to time, that the
general concepts which are the common currency of patent l awyers arefounded on a statutory text, and cannot have any other firm foundation.
I therefore turn to the regulatory scheme applicable in this case.
The procedure under the NOC Regulations
pursuant to which a
manufacturer of drugs may apply to the Minister of Health for a Notice of Compliance is
well known. A manufacturer, usually a generic manufacturer, wishes to compare its drug
with that of a patent holder for which a patent list has been submitted to the Minister by
the patent holder. The gene ric manufacturer’s purpose is to establish the safety and
efficacy of its drug for the purposes of securing marketing approval from the Minister.
The process of comparison saves the generic competitor time and resources. However,
the Minister will not issue a Notice of Compliance unless the patent on the comparator
drug has expired, is invalid, or the generic’s product will not otherwise infringe the
patent. Thus the NOC Regulations
create a connection between government approval to
market a generic drug and the issue of patent validity and infringement.
) of the NOC Regulations
states that the generic
manufacturer, in its submission for a Notice of Compliance, may allege that the patent
has expired, is not valid or will not be infringed. The patent holder may then apply to the
Federal Court for an order prohibiting the Minister from issuing a Notice of Compliance
to the generic manufacturer until after expiration of the patent that is the subject of the
Notice of Allegation. The court will grant the prohibition order if it finds that the
allegation of invalidity, expiry or non -infringement is not justified. If it finds the
allegation justified, it will dismiss the application for prohibition and the Minister may
then issue a Notice of Compliance to the generic manufacturer if all other requirements
The NOC Regulations
do not provide guidance about how an allegation
of “not valid” as stated in s. 5(1)( b
)(iii) is to be considered and determined by the court.
For this purpose, reference must be made to the relevant version of the Patent Act
is R.S.C. 1985, c. P-4, applicable to patent applications filed prior to October 1, 1989.
The application for the ‘875 patent was filed in 1983. The patent was
issued in 1985 and expired in 2002. The application for the ‘777 patent was filed in
1988. The patent was issue d in 1995 and unless found to be invalid, will expire in 2012.
The use of the term “not valid” in s. 5 of the NOC Regulations
what would otherwise be a defence to an infringement action referred to in s. 59 of the
The defendant, in any action for infringement of a patent may plead as
matter of defence any fact or default which by this Act or by law renders thepatent void, and the court shall take cognizance of that pleading and of therelevant facts and decide accordingly.
The NOC Regulations
are promulgated under s. 55.2(4) of the Act, and it seems apparent
that the determination of the invalidity of a patent must be based on “any fact or default
which by this Act or by law renders the patent void”. In this case, Apotex relies on
anticipation, obviousness and double patenting to allege that the ‘777 patent is invalid.
These allegations implicate both the Act and the judge -made doctrine based on the Act.
For purposes of anticipation, it is necessary to have regard to s. 27 of the
Act which sets forth the basic conditions necessary for obtaining a patent. The invention
must not have been previously known or used nor described in any patent or other
publication printed in any country more than two years before the filing of the patent
application and must not have been in public use or sale in Canada more than two years
prior to the filing of the patent application. Section 27(1) provided:
(1)Subject to this section, any inventor or legal representative of an
not known or used by any other person before he invented it,
not described in any patent or in any publication printed in
Canada or in any other country more than two years before presentationof the petition hereunder mentioned, and(c
)not in public use or on sale in Canada for more than two years prior
may, on presentation to the Commissioner of a petition sett ing out the facts,in this Act, termed the filing in the application, and on compliance with allother requirements of this Act, obtain a patent granting to him an exclusiveproperty in the invention.
It is with s. 27 in mind that the law o f anticipation must be considered.
Apotex’s arguments based on anticipation are not that the applications judge erred in his
analysis of the law of anticipation or its application to the facts of this case. Rather,
Apotex implies that the current underst anding of the law sets the bar for proving
anticipation too high and that the acceptance of a system of genus and selection patents
necessarily, or at least on the facts of this case, involves anticipation and therefore
invalidity. I would reject the broa der objection. A system of genus and selection patents
is acceptable in principle, on the line of authority stemming from I. G. Farbenindustrie
The real question is whether, on the facts of this case, the particular selection patent has
(b) Reasons of the Applications Judge
In his reasons after referring to s. 27(1) of the Act, the applications judge
defined anticipation as meaning “that the exact invention has already been made and
publicly disclosed” (para. 55). Shore J. cited this Court’s decision in Free World Trust v.
lectro Sant Inc.
,  2 S.C.R. 1024, 2000 SCC 66, at para. 26, which approved of
the test for anticipation described in Beloit Canada Ltd. v. Valmet OY
(1986), 8 C.P.R.
One must, in effect, be able to look at a prior, single publication and find init all the information which for practical purposes, is needed to produce theclaimed invention without the exercise of any inventive skill. The priorpublication must contain so clear a direction that a skilled person readingand following it would in every case and without possibility of error be leadto the claimed invention. [Emphasis added by the applicat ions judge.]
 The applications judge noted that the English Court of Appeal stated in
General Tire & Rubber Co. v. Firestone Tyre & Rubber Co.
,  R.P.C. 457, at p.
If, on the other hand, the prior publication contains a direction which is
capable of being carried out in a manner which would infringe the patentee’s
claim, but would be at least as likely to be carried out in a way which would
not do so, the patentee’s claim will not have been anticipated, although it
may fail on the ground of obviousness. To anticipate the patentee’s claim
the prior publication must contain clear and unmistakable directions to do
what the patentee claims to have invented. [Emphasis added by the
He then noted that in Free World
, at para. 26, this Court approved the following
A signpost, however clear, upon the road to the patentee’s invention will notsuffice. The prior inventor must be clearly shown to have planted his flag atthe precise destination before the patentee. [p. 486]
The law of anticipation as explained in Beloit
and General Tire
accepted in Canada without reservation: see Free World
, at para. 26. In his application
of the law to the facts, there is no doubt that Shore J. was using the test as set out in
when he stated, at para. 57:
Based on the law, the question before the Court is whether a person
skilled in the art was given such a cl ear direction that, by reading and
following the ’875 patent (or its U.S. or French equivalents) would in every
case and without possibility of error make a compound or pharmaceutical
composition within the claims of the ’777 patent (e.g. the bisulfate sal t of
(c) Recent United Kingdom Jurisprudence
For the reasons that follow, and in light of recent jurisprudence, I am of
the respectful opinion that the applications judge overstated the stringency of the test for
anticipation that the “exact invention” has already been made and publicly disclosed.
In the 2005 decision of the House of Lords in Synthon
, Lord Hoffmann
has brought some further clarity to the law of anticipation as understood since General
. His reference at para. 20 to the “unquestionable authority” of Lord Westbury in
Hills v. Evans
(1862), 31 L.J. Ch. (N.S.) 457, at p. 463, makes it plain that his analysis
does not depend on any change on English law flowing from the enactment of the
Patents Act 1977
(U.K.), 1977, c. 37, or the U.K.’s adoption of the Convention on the
Grant of European Patents
, 1065 U.N.T.S. 199 (entered into force October 7, 1977). He
distinguishes between two requirements for anticipation that were not theretofore
expressly considered separately, prior disclosure and enablement.
He explains that the requirement of prior dis closure means that the prior
patent must disclose subject matter which, if performed, would necessarily result in
infringement of that patent, and states, at para. 22:
If I may summarise the effect of these two well -known statements [from
and Hills v. Evans
], the matter relied upon as prior art must
disclose subject matter which, if performed, would necessarily result in an
infringement of the patent . It follows that, whether or not it would be
apparent to anyone at the time, whenever subj ect matter described in the
prior disclosure is capable of being performed and is such that, if performed,
it must result in the patent being infringed, the disclosure condition is
When considering the role of the person skilled in the art in respect of disclosure, the
skilled person is “taken to be trying to understand what the author of the description [in
the prior patent] meant” (para. 32). At this stage, there is no room for trial and error or
experimentation by the skilled person. He is simply reading the prior patent for the
If the disclosure requirement is satisfied, the second requirement to
prove anticipation is “enablement” which means that the person skilled in the art would
have been able to perform the invention (para. 26). Lord Hoffmann held that the test for
enablement for purposes of anticipation was the same as the test for sufficiency under the
relevant United Kingdom legislation. (Enablement for the purposes of sufficiency of th e
patent specification under the Canadian Patent Act
, s. 34(1)(b
) of the pre-October 1, 1989
Act, now s. 27(3)(b
), is not an issue to be decided in this case and my analysis of
enablement is solely related to the test for anticipation. The question of whe ther
enablement for purposes of sufficiency is identical in Canada is better left to another
Once the subject matter of the invention is disclosed by the prior patent,
the person skilled in the art is assumed to be willing to make trial and error experiments
to get it to work. While trial and error experimentation is permitted at the enablement
stage, it is not at the disclosure stage. For purposes of enablement, the question is no
longer what the skilled person would think the disclosure of the prior patent meant, but
whether he or she would be able to work the invention.
decision by which the applications judge rightly felt bound
dealt with only one aspect of anticipation, that is, whether or not the invention in a patent
had been disclosed in a single prior publication or patent. In that decision, Hugessen J.A.
held that it had not. He had no need to consider the further point whether or not, had
there been such a clear disclosure, the working of the invention was also enabled by that
disclosure. That point was not in issue in Beloit
. Explicitly separating disclosu re and
enablement is a refinement of the approach set out in Beloit
. It explains the process a
person skilled in the art would follow if the original patent anticipated the invention of
the subsequent patent. I would adopt this approach.
Subject to any limitations expressed in the Patent Act, I see no reason
why the discussion of anticipation should not apply to other prior art than merely genus
patents. Again, subject to limitations in the Patent Act, the discussion of anticipation and
obviousness would seem applicable to patents generally.
Two questions now must be answered: (1) what constitutes disclosure at
the first stage of the test for anticipation, and (2) how much trial and error or
experimentation is permitted at the enablement stage?
Section 27(1) of the Act requires as a condition for obtaining a patent
that the invention was not “known or used” and was not “described” in any patent or any
publication more than two years before the patent application was filed. In the contex t of
genus and selection patents, in E. I. Du Pont de Nemours & Co. (Witsiepe’s) Application
 F.S.R. 303 (H.L.), Lord Wilberforce stated, at p. 311:
It is the absence of the discovery of the special advantages, as well as the
fact of non-making, that makes it possible for such persons to make an
invention related to a member of the class.
The compound made for the selection patent was only soundly predicted at the time of
the genus patent. It was not made and its special advantages were not known. It is for
those reasons that a patent should not be denied to the inventor who made and disc overed
the special advantages of the selection compound for the first time.
In the context of disclosure as explained in Synthon
, “the absence of the
discovery of the special advantages” to which Lord Wilberforce was referring in
means that the genus patent does not disclose the special advantages of the
invention covered by the selection patent. Where there is no such disclosure, there is no
discovery of the special advantages of the selection patent as compared to the genus
patent, and the disclosure requirement to prove anticipation fails. At this stage, the
person skilled in the art is reading the prior patent to understand whether it discloses the
special advantages of the second invention. No trial and error is permitted. If in readin g
the genus patent the special advantages of the invention of the selection patent are not
disclosed, the genus patent does not anticipate the selection patent.
What amount of trial and error or experimentation is permitted before a
prior disclosure will not constitute enabling disclosure? Certainly, if the applications
judge finds that an inventive step was required to get to the invention of the second
patent, the specification of the first patent will not have provided enabling disclo sure.
But even if no inventive step is required, the skilled person must still be able to perform
or make the invention of the second patent without undue burden.
Two recent United Kingdom decisions are of assistance. In Halliburton
Energy Services Inc. v. Smith International (North Sea) Ltd.
,  EWCA Civ 1715,
Jacob L.J., a highly experienced patent judge, states at para. 18:
Patents are meant to teach people how to do things. If what is “taught”involves just too much [work] to be reasonable allowing for all thecircumstances including the nature of the art, then the patent cannot beregarded as an “enabling disclosure.” . The setting of a gigantic project,even if merely routine, will not do.
Jacob L.J. characterizes the problem at para. 20 as: “[H]ow is one to say
when the work involved to perform the invention is too much?” The determination of
how much work is too much is inevitably a line -drawing exercise. His answer to the
The answer is that the line is one to be drawn by an exercise of
judgment, taking into account all of the relevant factors, one of which is ofcourse the nature of the invention itself and its field of technology. But thereare other factors too — for instance, the width of the patent claim or whetherit has functional limitations which require too much work to explore.
A more extensive review of the law of enablement as defined in Synthon
is contained in a decision of Kitchin J. in Wobben v. Vestas-Celtic Wind Technology Ltd.
 EWHC 2636 (Pat.), at paras. 196 -97. Although Wobben
was a case in which the
alleged infringer raised as one of its defences insufficiency under the United Kingdom
legislation, I think guidance is provided as t o what will or will not constitute enablement
Drawing from this jurisprudence, I am of the opinion that the following
factors should normally be considered. The list is not exhaustive. The factors will apply
in accordance with the evidence in each case.
Enablement is to be assessed having regard to the prior patent as a whole
including the specification and the claims. There is no reason to limit what
the skilled person may consider in the prior patent in order to discover how
to perform or make the invention of the subsequent patent. The entire prior
The skilled person may use his or her common general knowledge to
supplement information contained in the prior patent. Common general
knowledge means knowledge generally known by persons skilled in the
The prior patent must provide enough inf ormation to allow the
subsequently claimed invention to be performed without undue burden.
When considering whether there is undue burden, the nature of the invention
must be taken into account. For example, if the invention takes place in a
field of technology in which trials and experiments are generally carried out,
the threshold for undue burden will tend to be higher than in circumstances
in which less effort is normal. If inventive steps are required, the prior art
will not be considered as enablin g. However, routine trials are acceptable
and would not be considered undue burden. But experiments or trials and
errors are not to be prolonged even in fields of technology in which trials and
experiments are generally carried out. No time limits on ex ercises of energy
can be laid down; however, prolonged or arduous trial and error would not
Obvious errors or omissions in the prior patent will not prevent
enablement if reasonable skill and knowledge in the art could readily co rrect
(d) Application to the Facts of this Case
i. Disclosure for the Purposes of Anticipation
The ‘875 genus patent covered over 250,000 possible different
compounds. Obviously, every compound was not made or test ed. The patent covering
those compounds was based on sound prediction. From the specification, it is apparent
that 21 examples were made and tested, one of which was the racemate relevant in this
case. According to the applications judge, there was no d isclosure in the ‘875 patent of
the specific beneficial properties associated with the dextro -rotatory isomer of this
racemate, nor was there disclosure of any advantages which flow from using the bisulfate
salt in combination with the dextro -rotatory isomer (para. 71).
It was open to Shore J. on the record before him to conclude that a
person skilled in the art and reading the ‘875 patent would not be able to come up with
the invention of the ‘777 patent. Nothing in the ‘875 patent disting uished this dextro-
rotatory isomer as having beneficial properties different from the racemate or the levo -
rotatory isomer or from any of the other compounds made and tested and referred to in
the ‘875 patent, let alone the compounds based only on sound pr ediction. At para. 72 of
The Court also notes that, although Dr. Klibanov agreed with Apotex’experts that a skilled person could have ascertained the activity andcharacteristics of two isomers and of different salts using well -knownmethods at the time, they did not say that the beneficial properties of theseisomers and of their salts — let alone of the dextro-rotatory isomer and of itsbisulfate salt — would be known with certitude before conducting the testsdesigned to identify the respective properties of the isomers and of the salt.
There was no evidence that the person skilled in the art would know
from reading the ‘875 patent that the more active dextro -rotatory isomer would be less
toxic than the racemate or levo -rotatory isomer or any of the other compounds made and
tested. Indeed, Dr. McClelland’s evidence was that while you “often” get more activity
by separating isomers, the answer to the question whether this increased activity was to
be found in the levo-rotatory isomer or the dextro -rotatory isomer was unknown.
(Affidavit, at para. 42, and cross -examination, at pp. 928-30 and question 322).
Since the ‘875 patent did not disclose the special advantages of the
dextro-rotatory isomer and of its bisulfate salt, as compared to the levo -rotatory isomer or
the racemate and their salts, or the other compounds made and tested or otherwise
referred to in the ‘875 pate nt, the invention of the ‘777 patent cannot be said to have been
disclosed and therefore it cannot be said to have been anticipated.
ii. Enablement for the Purposes of Anticipation
It is not strictly necessary to discuss enablement since anticipation
requires proof of both disclosure and enablement, and disclosure has not been proven.
However, for future guidance, I would make the following few observations about
enablement on the facts of this case.
The applications judge was of the opi nion that “the skilled reader
following the prior art must be able to arrive at the invention claimed in the impugned
patent the first time he or she tries and every time thereafter
” (para. 65 (emphasis in
original)). However, under the test for enablemen t as described in these reasons, some
For anticipation, the genus patent must provide enough information so as
to allow the selected invention to be performed without undue burden. In this case, the
applications judge concluded that the ‘875 patent did not specifically lead to the claimed
invention. He noted, on the record before him, that if one were to follow the teachings of
the prior art, one would obtain racemates, never their isomers.
However, Apotex argues that t he methods for separating the isomers
were well known to persons skilled in the art at the time of the invention. According to
Apotex, such a person could eventually obtain the isomer through what amounts to
In determining whether the en ablement step for proving anticipation has
been met, it is important to note that routine trials are acceptable but inventive steps are
not permitted. Also, reasonable skill and knowledge of the art is expected in order to
correct omissions in the origina l patent if a means of determining what is missing can
readily be found. The skilled person may use his or her common general knowledge to
supplement information contained in the patent.
Even though Shore J. referred to the excessively stringent anticipation
test “in every case”, his findings are relevant to trial and error. He found that the
evidence with respect to the methods of separation, including the evidence of the
inventor, shows that the identification of clopidogrel, its bisulfate salt and their
advantageous properties required extensive investigation over a period of months (paras.
One might infer that, had the applications judge been asked to decide if
these investigations constituted an undue burden for the skilled person, he would have
held that they did. However, in view of my earlier conclusion on disclosure, it is
unnecessary for me to pursue this point further.
As indicated above, in the context of anticipation, the two -step approach,
disclosure and enablement, is a refinement of the approach set out in Beloit
and should be
In the case at bar, the invention of the ‘777 patent was not disclosed by
the ‘875 patent and was therefore not anticipated. The allegation of anticipation has not
The definition of invention in s. 2 of the Act is relevant because at the
time the pre-October 1, 1989 version of the Act was in force, there was no statutory
provision expressly providing that obvious inventions were unpatentable. As explained
by Professor D. Vaver in Intellectual Property Law: Copyright, Patents, Trade -marks
Until very recently, the Patent Act
did not expressly say that obviousinventions were unpatentable. Courts implied this criterion from the notionof “invention”. Inventions implied inventive ingenuity, without which anadvance was obvious; and patents are not granted fo r the obvious.
The definition of invention in s. 2 of the Act provided:
“invention” means any new and useful . composition of matter, or any
new and useful improvement in any . composition of matter
(b) Reasons of the Applications Judge
Shore J. first correctly observed that at the relevant time obviousness
was not mentioned expressly in the Act. He then cited the well -known test for
obviousness in Beloit
(at p. 294):
The test for obviousness is not to ask what competent inventors did o r
would have done to solve the problem. Inventors are by definition inventive.
The classical touchstone for obviousness is the technician skilled in the art
but having no scintilla of inventiveness or imagination; a paragon of
deduction and dexterity, wh olly devoid of intuition; a triumph of the left
hemisphere over the right. The question to be asked is whether this mythical
creature (the man in the Clapham omnibus of patent law) would, in the light
of the state of the art and of common general knowledg e as at the claimed
date of invention, have come directly and without difficulty to the solution
taught by the patent. It is a very difficult test to satisfy. [Emphasis added by
In the view of Shore J., the Beloit
test would not accommodate a “worth a try” test by the
The applications judge accepted that there were five well -known
separation techniques in order to obtain the dextro -rotatory isomer of the racemate. At
. what the experts are really saying from a legal perspective is that
separating the racemate was worth a try. Having to try different methods,
though they be well-known, in order to discover which one will yield the
desired result cannot mean that the desired result, in this case, the
compounds in claims 1 and 3 and their pharmaceutical compositions, was
He further held that the dextro -rotatory isomer and its salts had to be
tested for their beneficial properties to be discovered and that the isomer and its
beneficial properties were therefore not known before the racemate was separated into its
Here again, having to try different separation techniques with uncertainty as
to whether each or some specific techniques would actually result in a
successful separation and then having to perform tests to discover what the
properties of the dextro-rotatory isomer of the racemate were, cannot mean
that this compound and its beneficial propert ies were obvious.
(c) United Kingdom and United States Approach to Obviousness
Apotex says that the Beloit
approach is excessively rigid and is out of
step with the tests for obviousness in the United Kingdom and the United States, where
“worth a try” has been accepted.
Generally, in the United States, it appears that at the Court of Appeals
level, the “obvious to try” test had not been accepted. In Application of Tomlinson
F.2d 928 (C.C.P.A. 1966), Rich J. wrote, at p. 931:
Slight reflection suggests, we think, that there is usually an element of
“obviousness to try” in any research endeavour, that is not undertaken with
complete blindness but rather with some semblance of a chance of success,
and that patentability determina tions based on that as the test would not only
be contrary to statute but result in a marked deterioration of the entire patent
system as an incentive to invest in those efforts and attempts which go by the
See also In re O’Farrell
, 853 F.2d 894 (Fed. Cir. 1988), at p. 903.
However, in KSR International Co. v. Teleflex Inc.
, 127 S. Ct. 1727
(2007), Kennedy J., for a unanimous court, rejected the restrictive approach that the
Court of Appeals had taken in that case. He stated, at p. 1 739:
Throughout this Court’s engagement with the question of obviousness, our
cases have set forth an expansive and flexible approach inconsistent with the
way the Court of Appeals applied its TSM [Teaching -Suggestion-
Motivation] test here. To be sure, Graham
recognized the need for
“uniformity and definiteness”. Yet the principles laid down in Graham
reaffirmed the “functional approach” of Hotchkiss
. To this end, Graham
forth a broad inquiry and invited courts, where appropriate, to look at any
secondary considerations that would prove instructive.
At p. 1742, he was clear that “obvious to try” could be a relevant test in
The same constricted analysis led the Court of Appeals to conclude, in
error, that a patent claim cannot be proved obvious merely by showing that
the combination of elements was “obvious to try”. . When there is a design
need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under §103.
In the United Kingdom the “obvious to try” test has been accepted since
at least 1967: see Johns-Manville Corporation’s Patent
,  R.P.C. 479 (C.A.). The
current state of the law in the United Kingdom was summarized in Generics (UK) Ltd. v.
H. Lundbeck A/S
,  R.P.C. 19,  EWCA Civ 311. Lord Hoffmann stated the
following, at paras. 24-25, in response to the argument that the trial judge in that case,
Kitchin J., had refused to consider the “obvious to try” test:
[The trial judge] cited from Angiotech Pharmaceuticals Inc. v. ConorMedsystems Inc.
 R.P.C. 20, which represents this [Court of Appeal’s]last word on the extent to which the notion of some step being obvious to tryis helpful in deciding whether an invention is obvious. The judge thensummed up (at para. 72) the current state of the law:
“The question of obviousness must be considered on the facts of eachcase. The court must consider the wei ght to be attached to anyparticular factor in the light of all the relevant circumstances. Thesemay include such matters as the motive to find a solution to the problemthe patent addresses, the number and extent of the possible avenues ofresearch, the effort involved in pursuing them and the expectation ofsuccess.”
No criticism has been made of this statement of principle.
See also Angiotech Pharmaceuticals Inc. v. Conor Medsystems Inc.
,  R.P.C. 20,
 EWCA Civ 5, at para. 45, rev’d [ 2008] R.P.C. 28,  UKHL 49. The passage
at para. 45 in the decision of the Court of Appeal remains relevant and uncontested.
There is a similarity between the current state of the law in the United
Kingdom and the United States in respect of “obvious to try”. It is now clear that both
jurisdictions accept that an “obvious to try” test can be relevant in an obviousness
inquiry. The United States Supreme Court has now stated so explicitly in KSR
convergence of the United Kingdom and the United States law on this issue suggests that
the restrictiveness with which the Beloit
test has been interpreted in Canada should be re -
(d) Approach to Obviousness in Canada
I take as a starting point the words of Diplock L.J. in Johns-Manville
Patent law can too easily be bedevilled by linguistics, and the citat ion of a
plethora of cases about other inventions of different kinds. The correctness
of a decision upon an issue of obviousness does not depend upon whether or
not the decider has paraphrased the words of the Act in some particular
verbal formula. I doubt whether there is any verbal formula which is
appropriate to all classes of claims.
Although we are not here dealing with obviousness provided by an express statutory test,
but rather by necessary implication based on the requirement for invention in th e Patent
, the words of Diplock L.J. are nonetheless apt because the courts have often tended to
treat the word formulation of Beloit
as if it were a statutory prescription that limits the
I do not think that Hugess en J.A. in Beloit
intended that the rather
colourful description of obviousness that he coined be applied in an acontextual manner
applicable to all classes of claims. I note particularly that “obvious to try” is not a
mandatory test in the United Kingdom or in the United States. It is one factor of a
number that should be considered, having regard to the context and the nature of the
, Kennedy J. warns against an overly rigid rule that limits the
obviousness inquiry. Rather, an expans ive and flexible approach that would include “any
secondary considerations that [will] prove instructive” will be useful (p. 1739). I read
as teaching that as in most matters in which a judge or a jury is called upon to make
a factual determination, rigid rules are inappropriate unless mandated by statute.
While I do not think the list is exhaustive, the factors set forth by Kitchin
J. and adopted by Lord Hoffmann in Lundbeck
, referred to at para. 59 of these reasons,
are useful guides in deciding whether a particular step was “obvious to try”. However,
the “obvious to try” test must be approached cautiously. It is only one factor to assist in
the obviousness inquiry. It is not a panacea for alleged infringers. The patent system is
intended to provide an economic encouragement for research and development. It is well
known that this is particularly important in the field of pharmaceuticals and
In Saint-Gobain PAM SA v. Fusion Provida Ltd.
,  EWCA Civ
Mere possible inclusion of something within a research programme on the
basis you will find out more and something might turn up is not enough. If it
were otherwise there would be few inventions that were patentable. The
only research which would be worthwhile (because of the prospect of
protection) would be into areas totally devoid of prospect. The “obvious to
try” test really only works where it is more -or-less self-evident that what is
In General Tire
, Sachs L.J. said, at p. 497:
“Obvious” is, after all, a much -used word and it does not seem to us that
there is any need to go beyond the primary dictionary meaning of “very
In Intellectual Property Law
, at p. 136, Professor Vaver al so equates “obvious” to “very
plain”. 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
For a finding that an invention was “obvious to try”, there must be
evidence to convince a judge on a balance of probabilities that it was more or less self -
evident to try to obtain the invention. Mere possibility that something might turn up is
It will be useful in an obviousness inquiry to follow the four -step
approach first outlined by Oliver L.J. in Windsurfing International Inc. v. Tabur Marine
(Great Britain) Ltd.
,  R.P.C. 59 (C.A.). This approach should bring better
structure to the obviousness inquiry and more objectivity and clarity to the analysis. The
approach was recently updated by Jacob L.J. in Pozzoli SPA v. BDMO SA
 F.S.R. 37,  EWCA Civ 588, at para. 23:
In the result I would restate the Windsurfing
(a) Identify the notional “person skilled in the art”;(b) Identify the relevant common general knowledge of thatperson;
Identify the inventive concept of the claim in question or if thatcannot readily be done, construe it;
Identify what, if any, differences exist between the matter citedas forming part of the “state of the art” and the inventive conceptof 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? [Emphasis added.]
It will be at the fourth step of the Windsurfing/Pozzoli
approach to obviousness that the
issue of “obvious to try” will arise.
i. When Is the “Obvious to Try” Test Appropriate?
In areas of endeavour where advances are often won by experimentation,
an “obvious to try” test might be appropriate. In such areas, there may be numerous
interrelated variables with which to experiment. For example, some inventions in the
pharmaceutical industry might warrant an “obvious to try” test since there may be many
chemically similar structures that can elicit different biological responses and offer the
potential for significant therapeutic advances.
If an “obvious to try” test is warranted, the following factors should be
taken into consideration at the fourth step of the obviousness inquiry. As with
anticipation, this list is not exhaustive. The factors will apply in accordance with the
(1) Is it more or less self -evident that what is being tried ought to work?
Are there a finite number of identified predictable solutions known to
(2) What is the extent, nature and amount of effort required t o achieve the
invention? Are routine trials carried out or is the experimentation prolonged
and arduous, such that the trials would not be considered routine?
(3) Is there a motive provided in the prior art to find the solution the patent
Another important factor may arise from considering the actual course of
conduct which culminated in the making of the invention. It is true that obviousness is
largely concerned with how a skilled worker would have acted in the light of the prior art.
But this is no reason to exclude evidence of the history of the invention, particularly
where the knowledge of those involved in finding the invention is no lower than what
would be expected of the skilled person.
For example, if the inventor and his or her team reached the invention
quickly, easily, directly and relatively inexpensively, in light of the prior art and common
general knowledge, that may be evidence supporting a finding of obviousness, unless the
level at which they worked and th eir knowledge base was above what should be
attributed to the skilled person. Their course of conduct would suggest that a skilled
person, using his/her common general knowledge and the prior art, would have acted
similarly and come up with the same resul t. On the other hand, if time, money and effort
was expended in research looking for the result the invention ultimately provided before
the inventor turned or was instructed to turn to search for the invention, including what
turned out to be fruitless “ wild goose chases”, that evidence may support a finding of
non-obviousness. It would suggest that the skilled person, using his/her common general
knowledge and the prior art, would have done no better. Indeed, where those involved
including the inventor and his or her team were highly skilled in the particular technology
involved, the evidence may suggest that the skilled person would have done a lot worse
and would not likely have managed to find the invention. It would not have been
obvious to him/her to try the course that led to the invention.
(e) Application to The Facts of This Case
Applying the four steps of Windsurfing/Pozzoli
, I accept the applications
judge’s findings of fact where they are unaffected by his rejection of the “obvious to try”
test. Where application of the obvious to try test requires further consideration of the
evidence, it will be necessary for this Court to make some findings of fact. In this case, I
think it is preferable to remitting the matter to the trial judge for r edetermination and
subjecting his decision to further possible appeals.
Apotex filed its Notice of Allegation in 2002. It is now some six years
later. If the ‘777 patent is invalid, and provided all other requirements are met, Apotex
should be entitled to a Notice of Compliance from the Minister without any further delay.
Indeed, the NOC Regulations
are intended to be a summary procedure. I think it is time
that this matter finally be resolved. I would conduct the following analysis:
Identify the Notional Person Skilled in the Art
Both parties agreed that a trained pharmachemist is that person.
Identify the Relevant Common General Knowledge of that Person
Apotex reiterates its submissions made with respect to anticipation,
insisting that, since the methods of separation were well known, the claimed invention
and its advantages would have been obvious to the person skilled in the art. Shore J.
found on the evidence before him that there were five well -known methods to separate
this racemate into its isomers. However, he did not find that the relative advantage of the
dextro-rotatory isomer would have been known by the skilled person.
iii. Identify the Inventive Concept of the Claim in Question or, if That
The construction of the claims in the ‘777 patent is not an issue. It is
agreed that they constitute the dextro -rotatory isomer of the racemate and its
pharmaceutically acceptable salts and processes for obtaining them.
The inventive concept of the claims is not readily discernable from the
claims themselves. 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
In the present case, it is apparent that the inventive concept of the claims
in the ‘777 patent is a compound useful in inhibiting platelet aggregation which has
greater therapeutic effect and less toxicity than the other compounds of the ‘875 patent
and the methods for obtaining tha t compound.
iv. Identify What if any Differences Exist Between the ‘875 Patent and the
The ‘875 patent disclosed over 250,000 possible different compounds
predicted to inhibit platelet aggregation. Twenty -one compounds were made and tested.
Nothing distinguishes the racemate in this case from other compounds disclosed or tested
in terms of therapeutic effect or toxicity. As stated above, there is no disclosure in the
‘875 patent of the specific beneficial properties associated with the dext ro-rotatory
isomer of this racemate in isolation; nor was there disclosure of any advantages which
flow from using the bisulfate salt of the dextro -rotatory isomer. The ‘875 patent did not
differentiate between the properties of the racemate, its dextro -rotatory isomer and levo-
rotatory isomer or indeed the other compounds made and tested or predicted to work.
On the other hand, the ‘777 patent claims that the invention of the
dextro-rotatory isomer of the racemate, clopidogrel, and its bisulfate salt di scloses their
beneficial properties over the levo -rotatory isomer and the racemate and expressly
describes how to separate the racemate into its isomers.
Viewed Without any Knowledge of the ‘777 Patent, Do ThoseDifferences Constitute Steps which Would Have Been Obvious to thePerson Skilled in the Art or Do They Require a Degree ofInventiveness?
At this stage, it must be determined whether the nature of the invention
in this case is such as to warrant an “obvious to try” test. The dis covery of the dextro-
rotary isomer and its bisulfate salt came after experimentation. There were interrelated
variables with which Mr. Badorc had to experiment. An “obvious to try” test in this case
would recognize the evidence of the expert witnesses as to the discovery of the beneficial
properties of the dextro-rotary isomer and its bisulfate salt and the methods for finding
The applications judge cannot be faulted for the analysis he conducted as
far as it went. However, he erred in not allowing for the application of the “obvious to
try” test, which is warranted in this case.
The following factors are therefore relevant at this fourth step of the
(1.) Is it More or Less Self-evident that What is Being Tried Ought to Work?
As I have observed earlier, Shore J. found that the skilled person would
not know, before separating this particular racemate into its isomers and then testing the
separated isomers, that the properties of the dextro -rotatory isomer would be different
from the properties of the racemate or the levo -rotatory isomer (para. 81). Similarly, he
found that the person skilled in the art wo uld not know before trying the different salts in
combination with the dextro -rotatory isomer what the bisulfate salt’s beneficial
Just because there are known methods of separating a racemate into its
isomers does not mean that a person skilled in the art would necessarily apply them. The
fact that there are such known methods of separation will be of no account if the
evidence does not prove that it was more or less self -evident to try them. It is true tha t at
the relevant time there was evidence that a skilled person would know that the properties
of a racemate and its isomers might be different. However, a possibility of finding the
invention is not enough. The invention must be self -evident from the prior art and
common general knowledge in order to satisfy the “obvious to try” test. That is not the
(2.) What is the Extent, Nature and Amount of Effort Required to Achieve
As indicated, the applications judge found that there were five well -
known techniques for separating this racemate into its isomers. He also found that there
was no evidence that at the relevant time, a person skilled in the art would know which
one would work with the racemate at issue in this c ase. The evidence was that a skilled
person would eventually find the right technique.
As earlier indicated, Shore J. also found that there was no evidence that
at the relevant time a person skilled in the art would know before separating the racemate
and testing the isomers what their properties would be, although the specific properties of
the isomers could be discovered. There was evidence that, using known techniques, the
properties of different pharmaceutically acceptable salts to be used with the d extro-
rotatory isomer could be discovered.
However, in considering whether it was “obvious to try” to find the
invention, once it was decided to isolate the dextro -rotatory isomer, the methods for
doing so were known, the methods for test ing the properties of the isomers were known
and the method for determining the beneficial properties of the salts to be used with the
According to Mr. Badorc’ s affidavit, it took from November 1985 to
April 1986 to find the ‘777 invention, and he was already familiar with the ‘875
invention. Potentially five different methods to separate the racemate would have had to
have been tried and tested before determin ing the properties of the dextro -rotatory
isomer. As in the case of anticipation, one might infer that the applications judge, if
asked to decide this question, would have held that the investigation here was not routine,
but rather was prolonged and ardu ous. In any event, on the facts of this case, this factor
would assume small significance in view of the finding I make with respect to the whole
course of conduct discussed at para. 91 below.
(3.) Is There a Motive from the Prior Art to Find the Solutio n that the ‘777
It is well known that the pharmaceutical industry is intensely
competitive. Market participants are continuously in search of new and improved
medications and want to reach the market with them as soon as possible. So demand for
an effective and non-toxic product to inhibit platelet aggregation might be assumed to
exist. However, nothing in the ‘875 patent or common general knowledge provided a
specific motivation for the skilled person to pursue the ‘777 invention. The prior patent
was a genus patent, and selection might be expected. However, the prior patent did not
differentiate between the efficacy and the toxicity of any of the compounds it covered.
This suggests that what to select or omit was not then self-evident to the person skilled in
(4.) What is the Course of Conduct which was Followed which Culminated
Mr. Badorc’s affidavit reveals that for several years prior to November
1985, Sanofi was in the process of developing the racemate in its salified form. In
November 1985, the racemate was being tested in preliminary human clinical trials. It
was at that time that Mr. Badorc was asked to separate the racemate into its isomers.
After he discovered that the dextro-rotatory isomer was active and non -toxic and that the
levo-rotatory isomer was non-active and toxic, Sanofi decided to develop the dextro -
rotatory isomer and abandon its work on the racemate. However, this was after it had
“spent millions of dollars and several years developing [the racemate] up to the point of
preliminary human clinic trials” without at least trying to see if the dextro -rotatory isomer
had advantageous properties to those of the racemate (Affidavit of Mr. Badorc, at para.
25). This evidence was uncontradicted.
(5.) Was the Invention of the ‘777 Patent “Obvious to Try”?
The methods to obtain the invention of the ‘777 patent were common
general knowledge. It can be assumed that there was a motive to find a n on-toxic
efficacious product to inhibit platelet aggregation in the blood. However, it was not self -
evident from the ‘875 patent or common general knowledge what the properties of the
dextro-rotatory isomer of this racemate would be or what the bisulfate salt’s beneficial
properties would be and therefore that what was being tried ought to work. The course of
conduct and the time involved throughout demonstrate that the advantage of the dextro -
rotatory isomer was not quickly or easily predictable. Had th e dextro-rotatory isomer
been “obvious to try”, it is difficult to believe that Sanofi would not have opted for it
before unnecessary time and investment were spent on the racemate. I conclude that the
prior art and common general knowledge of persons sk illed in the art at the relevant time
were not sufficient for it to be more or less self -evident to try to find the dextro -rotatory
As I have earlier explained, there was a significant difference between
the ‘875 genus patent and the ‘777 selection patent. The difference was not obvious.
Having regard to the foregoing analysis, I conclude that the allegation of obviousness is
Apotex also bases its challenge to the valid ity of the ‘777 patent on
double patenting. Apotex also challenges the validity of the doctrine of selection patents
There may only be one patent covering an invention ( Whirlpool Corp. v.
,  2 S.C.R. 1067, 2000 SCC 67, at para. 63). Apotex says that a
selection patent claims the same invention as the original class or genus patent and as a
result, the selection patent cannot be valid.
The concern expressed by Apotex is that the doctrine of selectio n patents
allows a patent holder to “evergreen” an invention. The original genus patent is granted
for a finite period of years. If a selection patent is later obtained by the owner of the
genus patent covering the same invention as the genus patent, the number of years the
owner is entitled to exclude others from making or using the invention is extended,
contrary to the limited period of exclusivity provided by the original patent.
Evergreening is a legitimate concern and, depending on the
circumstances, strategies that attempt to extend the time limit of exclusivity of a patent
may be contrary to the objectives of the Patent Act
. The Act aims to promote
inventiveness by conferring exclusivity for a limited period of time while providing for
public disclosure of the invention to enable others to make or use it after expiry of the
However, a generalized concern about evergreening is not a justification
for an attack on the doctrine of selection patents for two reasons. First, a s election patent
may be sought by a party other than the inventor or owner of the original genus patent. In
such a case, anticipation or obviousness may be an issue, but evergreening does not arise.
At the hearing, counsel for Apotex submi tted that, in the pharmaceutical
industry, the only party that would ever attempt to obtain a selection patent would be the
genus patent holder. This is a highly competitive industry and a market participant who
is able to develop a more effective product might be expected to be anxious to do so and
seek patent protection through a selection patent even if it requires the making of an
agreement with the holder of the genus patent to allow for the marketing of the selected
product. However, even if counsel is correct, the doctrine of genus and selection patents
is not restricted to the pharmaceutical industry. It is of general applicability.
 Second and more importantly, selection patents encourage
improvements by selection. The inventor selects only a b it of the subject matter of the
original genus patent because that bit does something better than and different from what
 The applications judge found that the claims of the ‘777 and ‘ 875
patents were not identical or coterminous. I agree with him. Apotex’s factum compares
claims 1, 8, 14 and 15 of the ‘875 patent with claims 1 and 3 of the ‘777 patent.
Claim 1 “A process for the preparation of derivatives of general formula (I):. as well as the 2 enantiomers or their mixture [racemate] of thesecompounds of formula (I); wherein: . if desired, its enantiomers areseparated and/or it is salified by mineral or organic acid action
; .” (page14)
Claim 8 “Process according to claim 1 for the preparation of methyl [4,5,6,7-tetrahydro-thieno[3,2-c]-5-pyridyl]-o.chlorophenylacetate, whereinthe 4,5,6,7-tetrahydro thieno[3,2-c]pyridine is condensed over the methyl2-chloro-o.chlorophenylacetate, and the derivative sought, which is isolated,is obtained.” (page 15)
Claim 14 “Derivatives of general formula (I): . as well as the 2 enantiomersor their mixture of these compounds of formula (I).
chlorophenylacetate, each time it is obtained by the process of claim 8 or itsmanifest chemical equivalents.” (page 16)
(Underlined text in trial reasons; italics added by Apotex)
1. Dextro-rotatory isomer of methyl alpha-5(4,5,6,7-tetrahydro (3, 2-c)thieno pyridyl) (2-chlorophenyl)-acetate and its pharmaceuticallyacceptable salts
3. Hydrogen sulfate
of the dextro-rotatory isomer of methyl alpha-5 (4, 5,6, 7-tetrahydro (3, 2-c) thieno pyridyl) (2-chlorophenyl)-acetate.
(Underlined text in trial reasons; italics added by Apotex)
 Although Apotex does not expressly state which of the ‘875 and ‘777
claims it is comparing, it is apparent, for double patenting pur poses, that there is no
identity between the product claims 1 and 5 of the ‘777 patent and claims 1, 8 and 15 of
the ‘875 patent because claims 1 and 8 are process claims and claim 15 is a product by
process claim. The only comparison that need be conside red is between claim 14 of the
‘875 patent and claim 1 of the ‘777 patent. Claim 3 of the ‘777 patent reflects the
hydrogen sulfate of claim 1 of the ‘777 patent, so that if claim 1 is not invalid, claim 3
 Claim 14 of the ‘875 patent claims all derivatives of general formula 1
as well as the 2 isomers and the racemic mixture. It is a broad claim for a class or genus.
Claim 1 of the ‘777 patent is specific. It claims only the dextro -rotatory isomer of the
racemate. This is a typical selection patent.
 Sound prediction was the basis for granting the original genus patent.
That had to be the case when the genus involved over 250,000 possible compounds. Not
every compound would itself have been tested. But there was, to the satisfaction of the
Commissioner of Patents, sound prediction that what was included in the original genus
patent was new, useful and not obvious. It was later determined that some of the subject
matter of the original genus patent did not work or did not work as well as the subject
matter of the selection patent. That information is valuable.
 The doctrine of “sound prediction”, explicitly adopted by this Court in
Monsanto Co. v. Commissioner of Patents
,  2 S.C.R. 1108, balances the public
interest in early disclosure of new and useful inventions even before their utility has been
fully verified by tests, and the public interest in avoiding cluttering the public domain
with useless patents and granting monopoly rights in exchange for misinformation: see
Apotex Inc. v. Wellcome Foundation Ltd.
,  4 S.C.R. 153, 2002 SCC 77, at para. 66.
, Pigeon J., writing for the majority, drew the following conclusion, at p.
I have quoted again the passage quoted by the [Patent Appeal] Board
because I consider the last sentence of the paragraph of some importance asit does clearly indicate what is meant by a “sound prediction”. It cannotmean a certainty since it does not exclude all risk that some of the areacovered may prove devoid of utility. It thus appears to me that the testformulated by Graham J. [in Olin Mathieson Chemical Corp. v. BiorexLaboratories Ltd.,
 R.P.C. 157 (Ch. D.)] involves just two possiblereasons for rejecting claims such as those in issue.
1. There is evidence of lack of utility in respect of some of the area
2. It is not a sound prediction. [Emphasis added.]
This approach has been consistently accepted by courts in Canada (se e for example
Ciba-Geigy AG v. Commissioner of Patents
(1982), 65 C.P.R. (2d) 73 (F.C.A.)).
 In the present case, it was found that the levo -rotatory isomer did not
work at all and was toxic. The racemate did not work as well as the dextro -rotatory
isomer. Isolating the dextro-rotatory isomer as being more effective and less toxic than
other compounds of the genus patent is a valuable advance to be encouraged as a matter
 It is true that the sound prediction of the ‘875 pa tent that the racemate
and the levo-rotatory isomer produced the same results as the dextro -rotatory isomer was
not borne out. That may leave parts of the original genus patent open to challenge. But it
does not affect the validity of the selection paten t.
 Apotex argues that the focus in a double patenting challenge is on the
claims of the two patents rather than on the disclosure. I agree. In Whirlpool
, Binnie J.
It is clear that the prohibition against double patenting involves a comparisonof the claims rather than the disclosure, because it is the claims that definethe monopoly.
was not a selection patent case. Howev er, because selection patents are to be
subject to the same considerations as other patents, the clear statement of Binnie J. in
must apply to selection patents.
 I agree with Apotex that a challenge to patent validity based on
double patenting does not require the existence of identical language in the two patent
claims. Even so, the wording of the claims, however different, must claim the same
 The invention defined by claim 14 of the ‘875 patent is not the same
as the invention claimed by claim 1 of the ‘777 patent because the former is broader than
the latter. Although not a selection patent case, there is a striking passage in the
judgment of Lord Simonds in May & Baker Ltd. v. Boots Pure Drug Co.
R.P.C. 23 (H.L.), at p. 32. It describes a scenario very much the same as in the case at
Is there then a difference in the inventions claimed in the original and
amended specifications? On the one hand a vast range of possiblecompounds, a fragment no doubt in the whole sphere of organic chemistryyet so numerous that the number becomes meaningless, within which no onecan say what hidden things might be brought to light, what benefitsdiscovered for the relief of humanity. On the other hand two specif ic drugs.
Are these inventions the same or different inventions? My Lords, I hesitateto appeal to common sense, lest others should take a different view of thecase. Yet in the consensus of opinion of all the learned judges who havedealt with this matter I find justification for the view which I mostemphatically hold that it is plain common sense to say that the inventions arenot the same but different: and I think that, if they are different, thesubstantial difference could not be denied.
I think Lord Simonds’ comments cover this case precisely.
 To this point, the issue has been what is sometimes called “same
invention” double patenting. This is the main thrust of Apotex’s double patenting
argument. The applications judge found that the claims i n the ‘777 and ‘875 patents
were not identical or coterminous, requirements to prove same invention double
patenting: see Whirlpool
, at paras. 64-65.
 Apotex also relies on “obviousness” double patenting. Binnie J.
explains in Whirlpool
, at para. 66, that “obviousness” double patenting
is a more flexible and less literal test that prohibits the issuance of a secondpatent with claims that are not “patently distinct” from those of the earlierpatent.
In Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister
Lucius & Bruning
, it was held that even though the claims were not identical nor
coterminous, the dilution of a new substance once its medical uses were established in
the first patent did not result in a further invention justifying a second patent. Even
though the claims were not identical or coterminous, the subsequent patent was found to
 A selection patent that claims a compound that is patentably distinct
from the genus patent will not be invalid for obviousness double patenting. Here, out of
the many compounds predicted to be effective as exhibiting platelet aggregation
inhibiting activity in the ‘875 patent, it was found that the dextro -rotatory isomer of the
racemate relevant in this case had beneficial properties over both the racemate and the
levo-rotatory isomer. As I have explained above, the claims in the ‘777 patent reflect a
patentably distinct compound from the compounds in the ‘875 patent. As a re sult, there
is no basis for a challenge based on “obviousness” double patenting.
 While double patenting requires a comparison of the claims of a
genus and selection patent, it is necessary that the specification of the selection patent
define in clear terms the nature of the characteristic which the patentee alleges to be
possessed by the selection for which he claims a monopoly. See I. G. Farbenindustrie
p. 323. Here the ‘777 specification satisfies this requirement by providing, at p. 1:
In an unexpected manner only the dextro -rotatory enantiomer Id exhibits
a platelet aggregation inhibiting activity, the levo -rotatory enantiomer I1being inactive. Moreover, the inactive levo -rotatory enantiomer I1 is the lesswell tolerated of the two enantiomers . [A.R., at p. 156]
 For these reasons, I do not find Apotex’s challenge to selection
patents on the grounds of double patenting, and in particular that Sanofi has engaged in
double patenting in the case of the ‘777 and ‘875 patents, to be well founded.
 It follows from the findings above that claims 1 and 3 of the ‘777
patent are neither anticipated nor obvious. The composition claims 10 and 11 of the ‘777
patent are therefore also neither anticipated nor obvious. Final ly, I find that Apotex’s
arguments in respect of double patenting are not well founded. In the result, the
allegations that the ‘777 patent is invalid for anticipation, obviousness and double
 I would dismiss the appeal with costs.
Solicitors for the appellant: Goodmans, Toronto.
Solicitors for the respondents Sanofi -Synthelabo Canada Inc. and
Sanofi-Synthelabo: Gowling Lafleur Henderson, Ottawa.
Solicitors for the intervener the Canadian Generic Pharmaceutical
Association: Hazzard & Hore, Toronto.
Solicitors for the intervener BIOTECanada: Torys, Toronto.
Solicitors for the intervener Canada’s Research -Based Pharmaceutical
Companies: Ogilvy Renault, Toronto.
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