Novelty and non-obviousness in Canadian patent law
For a patent to be valid in Canada, the invention claimed therein needs to be new and inventive. In patent law, these requirements are known as novelty and non-obviousness. A patent cannot in theory be granted for an invention without meeting these basic requirements or at least, if a patent which does not meet these requirements is granted, it cannot later be maintained. These requirements are borne out of a combination of statute and case law. Novelty. The definition of “invention” in section 2 of the "Patent Act (R.S.C. , 1985, c. P-4)" uses the word “new”. This means the invention must not already be known. Section 28.2(1) of the "Patent Act" explicitly codifies the novelty requirement. Section 28.2 thus blocks patent applications if the applicant, or someone who obtained their knowledge from the applicant, made the invention public more than a year before applying; if anyone else made the invention public before the application; or if the invention is already subject to an earlier patent application. Disclosure by the applicant. Paragraph 28.2(1)(a) provides a grace period that allows claims to "subject matter" in a patent (application) in Canada up  until twelve months after its public disclosure by the applicant or somebody who obtained knowledge about it from the applicant. It can also allow inventors to discuss their invention with potential investors, for instance, without requiring non-disclosure agreements. However, since such a grace period is non-universal, it remains limited in its helpfulness to inventors. Disclosure by another party. The section also provides that the subject-matter defined in the claim cannot have been previously disclosed in Canada or elsewhere. If the subject-matter has been disclosed in Canada or in a foreign jurisdiction, a patent cannot  be granted on the same subject-matter in Canada. The section does not restrict disclosure to prior patents. As long as the subject-matter was disclosed “in such manner that the subject-matter became available to the public”, the subject-matter is barred from being patented. This includes prior patents, publications, or the invention itself being put on display. Disclosures in a private document, such as an internal memo that is not available to the public, do not count. Ignorance regarding prior disclosure is not an excuse. Where there has been prior disclosure of the same subject-matter, the invention  will be deemed to be not novel, the prior disclosure being anticipatory of the invention. However, the prior disclosure must be sufficiently detailed to be anticipatory. The disclosure must also be self-contained; a combination of prior art is not adequate for showing anticipation. In "Reeves Brothers Inc. v. Toronto Quilting & Embroidery Ltd.", Justice Gibson the Federal Court enunciated an eight-pronged test for determining whether prior art is anticipatory of the subject-matter of a patent. The prior art must: The final statement is credited with creating a misinterpretation that the tests are cumulative. However, the tests are not  cumulative. The Court of Appeal has commented that "Gibson J. had only enumerated various formulations for the test of anticipation retained in earlier decisions and his conclusion really is that there could be no finding of anticipation unless one met any, rather that each of these eight 'tests'. In "Beloit Canada Ltd. et al v. Valmet Oy", one of the leading cases on anticipation by publication, the Federal Court of Appeal stated: One must, in effect, be able to look at a prior, single publication and find in it all the information which, for practical purposes, is needed to produce  the claimed invention without the exercise of any inventive skill. The prior publication must contain so clear a direction that a skilled person reading and following it would in every case and without possibility of error be led to the claimed invention. In "Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.", the Federal Court of Appeal listed the following eight principles for anticipation by prior use or sale, which supplement the principles from "Beloit Canada Ltd. et al v. Valmet Oy": In "Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.", it was claimed that Sanofi-Synthelabo’s patent was invalid because it  covered only a selection of a prior, broader genus patent. One of the alleged grounds of invalidity was lack of novelty. The Supreme Court of Canada employed a two-part test for anticipation. In order for there to be a finding of anticipation, the prior art must satisfy both of the following branches: The test for disclosure is whether a person skilled in the art, reading the prior patent, would understand that it discloses the special advantages of the second invention. No trial and error is permitted. Once it is established that the prior disclosure indicates the special advantages of  the second invention, some trial and error or experimentation is permitted to determine whether that disclosure also enables the development of the second invention. However, the skilled person must be able to perform or make the invention of the second patent without undue burden. The Supreme Court based their test on an earlier British test: “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 the circumstances including the nature of the art, then the patent cannot be regarded as an “enabling disclosure.” . . . The  setting of a gigantic project, even if merely routine, will not do." The prior art information must thus: The Supreme Court stated four non-exhaustive factors to be considered in determining whether there has been enablement: As an example of an application of this test: under the disclosure branch of the test, a compound is not clearly disclosed simply because it is part of a larger class of compounds; under the enablement branch, a compound is not enabled simply by disclosing its theoretical formula, unless the compound has actually been prepared or the skilled worker would know, from the given  directions or his ordinary knowledge, how to prepare it. Earlier patent application. Priority is determined by order of applications, thus a prior application will bar a subsequent one. This "first to file" approach is used globally. Although previously holding to its first to invent system,the United States, switched on March 16, 2013 after the enactment of the America Invents Act (see "First to file and first to invent"). An earlier application that remains secret because it is abandoned or withdrawn before being published does not constitute disclosure. Non-obviousness. A valid patent also requires a non-obvious invention. The  invention must have some element of inventiveness. This concept originated in common law out of the notion that an invention must be inventive. It is now explicitly codified in section 28.3 of the "Patent Act". Section 28.3 has a grace period of one year that allows the inventor, or a person who obtained knowledge directly or indirectly from the inventor, to disclose the invention without rendering the subsequent invention non-obvious. The non-obvious requirement is explained in "Beloit Canada Ltd. v. Valmet Oy". Justice Hugessen contrasted the concepts of anticipation and non-obviousness: They are, of course, quite different ; obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, ‘Any fool could have done that’. Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been disclosed to the public prior to the application for the patent. It should be clarified that while Justice Hugessen says “any fool”, the proper standard in patents is a person skilled in the art. The man skilled in the art is the hypothetical person used as the benchmark for determining obviousness. The  description of this man is: the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly 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 knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. In "Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.", Justice  Rothstein adopted the approach from "Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.": Each of these steps is crucial, and can affect the outcome of the obviousness inquiry. Cases can turn on the interpretation of who the presumed skilled person is, since this will affect how large a step is big enough for the subsequent invention to be considered non-obvious. A nuance to this test will be included for inventions in areas where advances are often won by experimentation; an “obvious to try” test can be used to extend obviousness and invalidate a patent. Commercial success of the  invention sought to be patented also impacts a finding of obviousness. Obvious-to-try. In fields where experimentation is common, such as in the pharmaceutical industry, an invention may be unpatentable if a skilled worker would have found it obvious to try the course that led to it. As stated by the Supreme Court of Canada in "Apotex Inc. v. Sanofi‑Synthelabo Canada Inc.", the following non-exclusive factors should be taken into consideration at the fourth step of the obviousness inquiry: If the answer to these questions leads to a finding that it was obvious to take this additional step , the patent will be considered obvious and invalid. The court makes clear that where the required experimentation to take the leap is extensive, a patent can be granted for the further step taken. The American Approach to Obvious-to-Try: "KSR International Co. v. Teleflex Inc.". The Supreme Court of the United States was confronted with the obvious to try issue in "KSR International Co. v. Teleflex Inc.", where the subject-matter of a patent was a combination of known components. They held that “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 in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that the result is not innovative enough to be patentable.” This is similar to Canada in that an invention can still be deemed to be obvious, despite going a step beyond the prior art. Commercial success. A patented item that is an instant hit on the market is less likely to be found obvious than a patent for a product that  was poorly received. In "Diversified Products Corp. v. Tye-Sil Corp." the Federal Court of Appeal stated that: [w]hile the factor of commercial success, taken alone, is not conclusive evidence of inventiveness, where as here, it is but one of many factors, it cannot be disregarded. The court listed other factors that may support a finding of non-obviousness: Looking at these various factors -- the device is novel and superior to what was available until then; it was since used widely and in preference to alternative devices; competitors as well as experts in the field had never thought of  the combination; amazement accompanied its first publication; commercial success -- it is, using the words of Tomlin J., in De Frees , supra, ‘practically impossible to say that there is not present that scintilla of invention necessary to support the patent’.