Anticipation in Canada since Sanofi

Anticipation in Canada since Sanofi

February 15, 2012

Don Cameron

Donald M. Cameron

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What’s a patentable invention need to be?

• New• Useful

• Inventive– An invention of the court:

• 1890: it’s an “invention”, so it must be “inventive”• 1936: SCC required “a degree of ingenuity” to be

present– Now in the New Patent Act, s. 28.3

NEW – NOVELTY/ANTICIPATION

Current Patent Act• 28.2 (1) The subject-matter defined by a claim in an

application for a patent in Canada (the "pending application") must not have been disclosed – (a) more than one year before the filing date by

the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere;

– (b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;

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What Sanofi said

• Enabling disclosure

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What Sanofi said

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What Sanofi said

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Enablement: The “IKEA” threshold

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Cases since Sanofi

Merck v. Apotex (2010)• Prior art: fermentation

process with yeast – did it produce lovostatin?

• No disclosure:– Not inevitable that claimed

product would be produced– No evidence process was

actually used before key date

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disclose enable

Cases since Sanofi

Sloan Kettering (P.A.B.)• Claim was for an antibody• No disclosure:• BTW: No enablement:

– starting material: you couldn’t buy it, you’d have to make it

– To make it would take:• “hopeful yet prolonged and

arduous experimentation”

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disclose enable

Cases since SanofiAstraZeneca v. Apotex• esomeprazole, a

stereoisomer of enalapril• Prior art said it separated

optically pure compounds• Apotex: slight change in

process produced esmeprazole

• AstraZeneca: no it didn’t• Court: result not consistent

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disclose enable

Cases since Sanofi

Easton v. Bauer• Hockey skate boot: a

one-piece rear quarter• Used in test league, but

in public rink• Disclosed but not

enabled– You’d have to dismantle

the skate to reproduce it

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disclose enable

Conclusions since Sanofi

Mechanical: – “The Caramilk bar test”– If you can see it, you can

figure it out– Observing isn’t

“experimenting”

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disclose enable

Conclusions since Sanofi

Chem/Pharma: – “The Coca-cola test”– Can’t figure out how

they made it.

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disclose enable

Thank You

Don CameronDCameron@bereskinparr.com

Bereskin & Parr LLP