Canadian Lawyer InHouse

9 canadianlawyermag.com/inhouse April 2014 by melanie szweras Intellectual Property Does success equal patentability? underlying facts play a big role in determination. I n order to obtain a patent, the invention must be new, non-obvious, and have utility. The test for obviousness has evolved over recent years to include, in appropriate circumstances, a test of whether the invention was "obvious to try." Once faced with the invention, or "the solution to a problem," it is difficult for an examiner or judge to set the solu- tion aside when assessing whether the prior art rendered the invention obvious. Often, to overcome the issue of hindsight analysis, the typical question asked is why didn't someone else invent it earlier? One objective fac- tor that can be used to negate hindsight analysis is the commercial success of the invention. However, there is controversy over whether commercial success should be used as an indication of patentability. Proponents believe commercial success and accep- tance of an invention is an indicator the invention was non-obvious over the prior art. It can be an objective indicator of the economic value of the invention over the prior art and removes the bias associated with hindsight analysis. In 2007, the Canadian Federal Court of Appeal in Janssen-Ortho Inc. v. Novopharm Ltd. breathed life into commercial success as one of a number of consider- ations for whether an invention is obvious. In that case, the Federal Court of Appeal approved of an amended version of a list of factors to consider for obviousness that Justice Roger T. Hughes compiled from various jurisdictions, including Canada and the United States. In doing so, the court specifically approved of two sec- ondary factors: meritorious awards and commercial success. The court noted these factors are secondary and may bear less weight because they arise after the date of the alleged invention. Janssen has been cited favourably in more recent decisions, including another 2009 Federal Court of Appeal decision, Pfizer Canada Inc. v. Apotex, relating to the drug Viagra. The court upheld the trial deci- sion, which cited the very evident commercial success as support for the use of sildenafil to treat erectile dys- function as being non-obvious. In the United States, the August 2013 decision of Leo v. Rea (726 F.3d 1346) relating to compositions for topical treatment of psoriasis, commercial success was favourably applied to reach a finding of non-obvious- ness. In that case, the United States Court of Appeals for the Federal circuit reasoned that objective indicia of non-obviousness (of which commercial success is a primary one) are important to avoid the trap of hind- sight analysis. The court emphasized the long time period between the cited prior art and the filing date of the patent application as also supporting inventive- ness. The court further emphasized that consideration of objective indicia is part of the whole obviousness analysis and should not be a mere "afterthought." Opponents of commercial success caution it is too far removed from the filing of the patent application to be used as an indicator of non-obviousness. Obvi- ousness needs to be determined as of the filing date of the application, and thus, opponents do not think what occurs after the application has been filed is relevant to the analysis. In the 2011 case Allergan Inc. v. Canada (Minister of Health), the Federal Court summarized the con- cern with using commercial success as an indicia of inventiveness. In particular, the court noted "com- mercial success may also simply reflect considerations unrelated to the invention, such as marketing skills and market power" and came to the conclusion that it "may merit little weight in the overall assessment of obviousness" if there is no other evidence supporting the argument that commercial success is suggestive of inventive ingenuity. On the facts, the court found commercial success weighed "slightly" in favour of non-obviousness. In Galderma v. Tolmar (737 F.3d 731), the United States Court of Appeals for the Federal Circuit was cautious about applying weight to the commercial suc- cess of the drug. The court explained that evidence of a generic wanting to come onto the market was not sufficient to establish commercial success as a factor against obviousness. Commercial success is just one factor in the ques- tion of obviousness and the weight attributed to this factor does vary considerably depending on the under- lying facts. Under certain circumstances, if one can show a clear nexus between the patent claims, i.e. the claimed invention, and its success, then commercial success, which occurs years after the filing of a patent application, can improve the likelihood of getting and enforcing a patent. IH Melanie Szweras is a partner and Canadian and U.S. patent agent at Bereskin & Parr LLP. Correction: In the last issue the Intellectual Property column was written by Adrian Zahl, not Timothy Bourne.

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