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Anticipation in Canada since Sanofi. February 15, 2012. Don Cameron. Donald M. Cameron. 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” - PowerPoint PPT Presentation
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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
