Supreme Court Denies Leave in Novopharm Limited v Janssen-Ortho Inc

On December 3, 2007, the Supreme Court of Canada dismissed an application brought by Novopharm for leave to appeal the ruling in Novopharm Limited v Janssen-Ortho Inc 2007 FCA 217 (see the E-TIPS® article, "Justice Hughes' List of Obviousness Factors Confirmed by the Federal Court Of Appeal", Vol 6, No 2, July 18, 2007). In that decision the Federal Court of Appeal affirmed Justice Hughes' trial level findings that a claim to an isomer [S(-)ofloxacin] of a known racemate (ofloxacin) was non-obvious. The Court of Appeal also affirmed the set of obviousness factors that were developed by Justice Hughes to assist courts in assessing whether an "invention" is obvious (see the E-TIPS® article, "Federal Court of Canada Re-examines Test of Obviousness in Patent Law", Vol 5, No 11, November 22, 2006). The Supreme Court's recent dismissal of Novopharm's application provides further affirmation of Justice Hughes approach to the question of obviousness. While the Supreme Court will not have the chance in Novopharm to address the specific factors that make a claim to an isomer either "obvious" or "non-obvious", it will shed light on these issues in the spring of 2008, when it hears Sanofi-Synthelabo Canada Inc v Apotex Inc, which deals with selection patents and claims to isomers. See the Supreme Court of Canada December 7, 2007 Bulletin of Proceedings: http://tinyurl.com/2e4ndl Summary by: Michael Migus