L’arrêt Janssen-Ortho Inc. v. Novopharm Ltd., 2006 FC 1234, (October 17, 2006) concerne la contrefaÃ§on et la validité d’un brevet canadien portant sur un médicament anti-microbien connu sous le nom de levofloxavin. Plus précisement, la revendication 4 du brevet 1,304,080 était en cause.
Bien que cette cause soit intéressante sur plusieurs points, c’est la revue des critères de nouveauté et d’inventivité, essentielles Ã la brevetabilité d’une invention, qui retient notre attention.
Concernant le critère de nouveauté, le juge Hughes rappelle le test établie par la Cour Suprême:
“ The Supreme Court test requires that the â€œflagâ€ be planted at the point of the claimed invention and that the direction as to how to arrive at that point must be so clear such that an ordinary person skilled in the art would in every case, without possibility of error, be led to that point. No such flag is planted and no such direction is given in either the ‘840 patent or the Daiichi publication. There is no anticipation of what is claimed in claim 4 of the Patent.”
Concernant le critère d’inventivité, le juge Hughes mentionne le test classique de l’arrêt Beloit Canada Ltd. v. Valmet OY (1986), 8 C.P.R. (3d) 289 at 294 [Beloit]:
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, 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. It is a very difficult test to satisfy.
 A determination of obviousness on a principled and objective basis requires that the Court take into consideration a number of factors. These factors may vary in number and importance dependant upon the circumstances of the case. The Court is not a scientific body, thus it must take the facts of the case, the opinions of the experts and the circumstances as presented into consideration and come up with a weighed decision (Molnlycke AB v. Procter & Gamble Ltd.,  FSR 549 (Ch.) (Lexis),  RPC 49 (Ch.) at 442 ff). The factors to be considered as of the date of the invention which can be considered as December 1985, include:
1. What is the invention as claimed? The claim or claims at issue, as construed by the Court is what are at issue. The â€œinventionâ€ as generally expressed in the patent or by the inventors is not the issue, it is the claim as properly construed.
2. Who is the person skilled in the art to whom the patent is addressed? To that extent the uninventive and unimaginative person postulated in the Beloit quotation has been supplanted by the Supreme Court of Canada in Whirlpool at para.74. The Court said that while such a person is deemed to be uninventive as part of his future personality he or she is thought to be reasonably diligent in keeping up with advances in the field to which the patent relates. The common knowledge of skilled workers undergoes continuous evolution and growth.
3. What body of knowledge and information would the ordinary person skilled in the art be expected to have, or to be reasonably able to obtain, as of the date of the alleged invention? Not all knowledge is found in print form, much is simply commonly known and passed from person to person. Just as one might learn to cook at mother’s elbow, it is not all in the recipe book. Similarly, not all knowledge that has been written down, perhaps fleetingly, becomes part of the knowledge that an ordinary person skilled in the art is expected to know or find.
4. What is the climate in the relevant field at the time the alleged invention was made? The general state of the art includes not only knowledge and information but also attitudes, trends, prejudices and expectations.
5. What motivation existed at the time the alleged invention was made to solve a recognized problem? There may have been a general motivation such that everybody in the particular area was looking for a solution. The more unique and personal the motivation was, apart from any general motivation, the more one might be expected to be inventive. If motivation came from an outside source, and common place thought and techniques can come up with a solution, the less one is expected to have exercised inventive ingenuity. The United States Supreme Court is expected to consider the issue of motivation shortly in KSR International Co. v. Teleflex Inc., U.S. No. 04-1350 review granted 6/26/06, scheduled to be heard November 28, 2006.
6. What effort and time was involved? Were the efforts randomized or focused? In this regard phrases such as â€œworth a tryâ€ and â€œdirectly and without difficultyâ€ and â€œroutine testingâ€ have been used by the courts. It is not useful to use such phrases as they tend to work their way into expressions of law or statements of expert witnesses. Sachs L.J. deprecated the coining of such phrases in General Tire & Rubber Company v. Firestone Tyre & Rubber Company Limited,  R.P.C. 195 at pages 211-12. The length of time an expense involves in the efforts are not, in themselves, useful considerations as an invention may be the result of a lucky hit, or be simply the uninventive application of routine, of time consuming and expensive techniques.
Of secondary importance are factors arising after the time that the alleged invention is made since, after all, the Court is to be concerned with â€œinventive ingenuityâ€ exercised at the time of making the invention. These secondary factors include:
7. Commercial success. Was the subject of the invention quickly and anxiously received by relevant consumers? This may reflect a fact that many persons were motivated to fill the commercial market. This may also reflect things other than inventive ingenuity such as marketing skills, market power and features other than the invention.
8. Subsequently recognized advantages. The inventors may have perceived only certain advantages, yet later those inventors or others may determine that other, previously unrecognized advantages lay in the alleged invention. This factor is of limited usefulness in considering inventive ingenuity as of the date of the invention. The recognition of later advantages, if unexpected, may themselves be the subject of a patent. To the extent that the United States Courts in cases such as Re Zenitz 33 F. 2d 924 have placed weight upon subsequently discovered advantages that is not the law here. Little, if any, weight should be put on this factor.
9. Meritorious awards, if in fact directed to the alleged invention may be recognition that the appropriate community of persons skilled in the art believed that activity to be something of merit.
The most dangerous of all the factors and one to be avoided or applied only with the greatest of care is:
10. Hindsight. It is far too easy to see how the alleged invention could have been arrived at, even easily, once it has been done. As some cases say, simplicity does not negate invention. However, if the number of decisions to be made in arriving at the solution were few, and commonplace, hindsight may merely confirm that no inventive ingenuity was required so as to arrive at the solution. If the points for decision were many and choices abundant, there may be inventiveness in making the proper decisions and choices.