In Reeves Brothers Inc. v. Toronto Quilting & Embroidery Ltd.,[8] 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 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.
[10]In Baker Petrolite Corp. v. Canwell Enviro-Industries Ltd.,[11] 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.
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.” .
[18] 28.3 The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to 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.
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.
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.
[20]In Apotex Inc. v. Sanofi‑Synthelabo Canada Inc., Justice Rothstein adopted the approach from Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.:[21] 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.
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.
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.
[22] 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.