La décision de la Cour d’appel fédérale Apotex Inc. c. Sanofi-Synthelabo Canada Inc., 2006 FCA 421, (December 22, 2006) concerne un brevet de sélection “selection patent”. Selon Apotex, l’invention le juge de première instance a erré en traitant le brevet en cause (CA 1,336,777) comme un brevet de sélection valide.
Le juge d’appel a confirmé la décision du juge de première instance. Selon lui:
“ These findings of fact as to the difficulty involved in producing the claimed compounds and the impossibility of predicting the claimed advantages before the compounds could be produced and actually tested are amply supported by the record and unchallenged by Apotex (otherwise than by its attempt to recast these findings through its own : and in my respectful view flawed : vision of the person skilled in the art).”
La décision comprend un bref rappel de la jurisprudence en matière de brevet de sélection:
“The law with respect to selection patents was recently applied by this Court in Pfizer Canada Inc. v. (Minister of Health), 2006 FCA 214 (Pfizer v. Canada). Malone J.A. writing for the Court explained the rationale for the treatment given to selection patents:
 There are two general classes of chemical patents. The first is the ‘originating patent’ where there is an originating invention involving the discovery of a new reaction or a new compound. The second is the ‘selection patent’, which is based on a selection from related compounds derived from the original compound and which have been described in general terms and claimed in the originating patent (see In the Matter of I.G. Farbenindustrie A.G.’s Patents, (1930) 47 R.P.C. 283 at page 321 per Maugham J.).
 While there is little Canadian jurisprudence on the subject of selection patents, its elements are well defined in I.G. Farbenindustrie. Lord Diplock cited this decision with approval in the House of Lords where he stated that the ‘inventive step in a selection patent lies in the discovery that one or more members of a previously known class of products possess some special advantage for a particular purpose which could not be predicted before the discovery was made’ (see Beecham Group Ltd. v. Bristol Laboratories International S.A.  R.P.C. 521 at page 579). All claimed members of the known class must have the advantage and the advantage must not be one that those skilled in the art would expect to find in a large number of the previously disclosed class (i.e. a quality of special character) (see I.G. Farbenindustrie at page 323).
 Selection patents exist to encourage researchers to further use their inventive skills so as to discover new advantages for compounds within the known class. A selection patent can be claimed for a selection from a class of thousands or for a selection of one out of two (see for example I.G. Farbenindustrie at page 323 and E.I. Dupont de Nemours & Co (Witsiepse’s) Application, F.S.R. 303 (H.L) at page 310).”