Federal Court of Canada Re-examines Test of Obviousness in Patent Law

In a lengthy and detailed decision [Janssen-Ortho Inc v Novopharm Ltd (2006 FC 1234)], Justice Roger Hughes of the Federal Court of Canada has upheld the validity of a Canadian Patent for an anti-microbial drug, levofloxin. In his examination of the obviousness of the patent, Justice Hughes questioned the traditional test of validity laid down by the Federal Court of Appeal in Beloit Canada Ltd v Valmet OY [8 CPR (3d) 289] and discussed the appropriate tests courts should consider in such an investigation, setting down 10 separate criteria (six major criteria and four secondary criteria) that should form the basis for analysis. It seems likely that this comprehensive list will be quite influential in future decisions on obviousness. Another interesting aspect of the case was that even though the Federal Court had previously ruled on the validity of the patent for purposes of the Patented Medicines (Notice of Compliance) Regulations, Justice Hughes concluded that the earlier finding of invalidity, being for a different purpose, was not determinative of the question before him and that it did not bar him, in an infringement action, from making the finding of validity that he ultimately made. For an extensive summary of the Court's findings, link to the article with the same title. Summary by: Michael Migus