Newsletter of AIPPI-Canada

Bulletin du Groupe Canadien de l’AIPPI

In This Issue:

• AIPPI-Canada 2009 Annual General Meeting

• Key Events from 2009

• Canadian IP Law Update

• Toronto 2014 Congress

• A Word from the Editor

• Future Events

Steve Garland, VP of AIPPI Canada addresses the AGM in November 2009

On November 17, 2009, AIPPI-Canada held its annual meeting in Ottawa at the Rideau Club. The Annual meeting was held in conjunction was held in conjunction with a Lunch and Learn which was attended by about 60 participants. Mr. John White of Cooper & Dunham in New York spoke on Implications of Recent US Court Decisions. Following the Lunch and Learn by John White a brief AIPPI Canada General Meeting took place.

That Annual General Meeting included the President's report and the Treasurer's report. While AIPPI-Canada has been able to hold its membership rates constant for the last 3 terms, due to increased costs to AIPPI-Canada from Zurich the individual membership for AIPPI Canada for 2010 has been increased slightly to $200.00. In addition a report on the Buenos Aires ExCo meeting of October 2009 was presented. At that ExCo meeting resolutions were passed on each of these: questions:

Q208 – Border Measures and other means of customs Intervention against infringers

Q209 – Selection inventions – the inventive step requirement, other patentability criteria and scope of protection

Q210 – The protection of major sports events and associated commercial activities through Trade marks and other IPR

Mary Carman, Commissioner of Patents & Registrar of Trade-marks

The Resolutions passed at the AIPPI ExCo meeting in Buenos Aries are posted on both the AIPPI Canada website and the website for the international AIPPI organisation. The Questions to be debated at the Paris Congress in early October 2010 were also presented.

Mary Carman, the Commissioner of Patents and Registrar of Trade-marks, providing an update on developments in the Canadian Intellectual Property Office and Don MacOdrum of Lang Michener providing an update on Canadian IP cases in his “A Year in Review” presentation.

The meeting was a success in all aspects, including a great view of Parliament Hill and fantastic sunny weather, and drew everyone’s focus to the benefits and opportunities of AIPPI as an organization, and particularly AIPPI Canada.

Don MacOdrum, a Past President of AIPPI Canada

Key Events from 2009

5th FORPIQ Meeting

The 5th edition of FORPIQ was held on February 18-19, 2009 at the Nelligan Hotel located in Old Montréal, Québec. Approximately a hundred people participated including people from the IP sector and also a good contingency from the corporate sector of Montréal were present. Speakers included Mr. Pathiyal from Research In Motion, Ms. Ball from Molson Canada, Ms. Garneau from Bell Helicopter Textron Canada Ltd, and Mr. Astle from Pratt & Whitney Canada Corp. Attendees really appreciated the meeting in terms of the topics covered, the content and the networking.

AIPPI Lunch’n learn

On May 26, 2009, at the University Club of Montreal AIPPI Canada held its first session of an AIPPI Lunch’n Learn series entitled “Implications of Recent US Court decisions For Patent Prosecution and Litigation". John P. White, a Partner at COOPER & DUNHAM LLP in New York was the speaker. In the past year there have been a number of decisions in the Federal Circuit such as Ariad Pharmaceuticals and In Re Kubin among others that will have a dramatic effect on U.S. patent prosecution and litigation. John provided valuable insight regarding the significance of these decisions. A group of 30 patent practitioners and litigators of the Montreal area were present.

Canadian IP Law Update

Obviousness, obvious to try by the numbers

by Michael Crinson

- A version of this article was published by LexisNexis in The Lawyers Weekly, 7 August 2009

In 2008, in the context of a proceeding under the Patented Medicines (Notice of Compliance) Regulations, the Supreme Court of Canada re-examined the test for obviousness in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61.The Supreme Court's refinement of the test for obviousness seems likely to result in a radical change in outcomes to the detriment of patent rights holders.  The United Kingdom and United States experience suggests the more relaxed test for obviousness put forward by the Supreme Court of Canada could result in a doubling in the findings of obviousness in patent litigation.

   John White addresses AIPPI Canada in Ottawa at its Annual meeting following his successful Lunch 'n Learn presentation in Montreal earlier in 2009

The previous leading case on the issue of obviousness had been Beloit v. Valmet-Dominion Inc., [1986] F.C.J. No. 87 (FCA). In Beloit, the classic touchstone for obviousness was described as "the technician skilled in the art but having no scintilla of inventiveness or imagination". The court in Beloit described the test for obviousness as "a very difficult test to satisfy".

The difficulty of satisfying the Beloit test for obviousness is borne out by looking at those cases in which the question of obviousness has been decided. In the past five years in Canada, in those cases other than PM(NOC) proceedings, the issue of obviousness has been decided in respect of eleven patents. In the single case heard and decided since Sanofi, the patent was found to be obvious. For the other ten patents in actions which were heard and decided prior to Sanofi, the obviousness attack succeeded against only two patents; i.e., obviousness was successful only 20 percent of the time. Even looking at PM(NOC) proceedings, allegations of obviousness were only found to be justified for about 32 percent of the patents at issue.

One of the motivations of the Supreme Court of Canada to re-examine the Beloit test was the convergence of United Kingdom and United States law on the issue whether a particular invention was "obvious to try". The test for obviousness set out in the 2007 UK decision of Pozzoli SPA v. BDMO SA, [2007] EWCA Civ 588, generally known as the Windsurfing/Pozzoli test, was endorsed by the Supreme Court in Sanofi. The final stage of that test asks, "viewed without any knowledge of the alleged invention as claimed, do these differences [between the prior art and the inventive concept] constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?" It is in this fourth step that the issue of "obvious to try" may arise.

In both Canada and the United Kingdom the "obvious to try" factor will not be appropriate in every case. Some factors that can be considered in the application of the obvious to try test in both jurisdictions include: (1) whether it was more or less self-evident that what is being tried ought to work; (2) what is the extent, nature and amount of effort required to achieve the invention; and (3) was there a motive provided in the prior art to find the solution the patent addresses. Further, in both jurisdictions the skilled addressee (which may be a team of individuals) is equipped with the common general knowledge but is also unimaginative. In the experience of the United Kingdom over the past five years where the "obvious to try" test may be a factor and obviousness has been decided, 71 percent of patents have been found to be obvious. This is more than double the rate at which patents have been found to be obvious in Canada.

The Supreme Court of the United States also revisited the issue of obviousness in 2007 in KSR v. Teleflex, 550 U.S. 398 (2007) [PDF]. In that case, the Court explained that the "teaching, suggestion, or motivation" (TSM) test which has been used cannot be applied in a rigid manner. The Court did also indicate that an invention would be "obvious to try" when there exists a defined problem with a limited number of predictable solutions that fall within the capabilities of a person of ordinary skill in the art. Notably, the person of ordinary skill in the art in the United States should be considered to have a level of creativity. Despite this difference, patents have been found to be invalid as obvious in 75 percent of the cases in which the issue has been decided (excluding District Court decisions) in the last five years.

While great caution must be exercised when comparing outcomes of different cases in different jurisdictions, the historical data show a significant difference between findings of obviousness in Canada versus the United Kingdom and the United States. There could be many explanations for, or contributing factors to, this difference; for example, different standards applied by the relevant patent offices, different procedural rules, different cases and different types of technology at issue. However, it seems likely that at least part of this difference in outcomes can be attributed to a more relaxed standard to establish obviousness that is "obvious to try".

Toronto 2014 AIPPI Congress

In the Fall of 2014 Toronto, Canada will host the 44th AIPPI Congress. Members of AIPPI Canada led by Philip Mendes da Costa have been making plans for that Congress. Those plans included meeting with the International Bureau of AIPPI at the Forum and ExCo in Buenos Aries as well as meeting with the Toronto Convention Centre and Toronto tourism.

While the exact dates for that Congress have yet to be set, AIPPI Canada has been meeting with potential Professional Conference Organizers to assist in those preparations.

A Word from the Editor

Suggestions for content or notices are welcome and can be submitted electronically to the editor, Michael Crinson at mcrinson@dimock.com. When proposing content or notices please bear in mind the objective of AIPPI which is to improve and promote the protection of intellectual property on both an international and national basis. It pursues this objective by working for the development, expansion and improvement of international and regional treaties and agreements and also of national laws relating to intellectual property.

April 21 2010

AIPPI Canada Lunch &Learn

Toronto, Canada

October 3-6, 2010

42^nd AIPPI Congress

Paris, France

December 2010

AIPPI Canada AGM

TBD, Canada

October 13-19, 2011

AIPPI Forum & ExCo

Hyderabad, India

Fall 2012

43^rd AIPPI Congress

Seoul, Rep. of Korea

Fall 2013

AIPPI Forum & ExCo

Finland, Helsinki

Fall, 2014

44^th AIPPI Congress

Toronto, Canada