Supreme Court of Canada Rules Selection Patents are Acceptable and Refines Tests of Anticipation and Obviousness

The Supreme Court of Canada has ruled in Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 (Apotex) that the principle of selection patents is acceptable. In the chemical field, a selection patent is one that claims a selected compound or group of compounds chosen from a larger group of compounds claimed in a previous genus patent. The Court also refined the tests of anticipation and obviousness in patent law. At issue in Apotex was the validity of claims in a selection patent to a dextro-rotatory isomer (clopidrogel) and its bisulphate salt (the platelet aggregation inhibitor clopidrogel bisulphate or PLAVIX), which were selected from a larger genus of compounds claimed in a genus patent that disclosed the racemate. In reasons written by Justice Rothstein and concurred in by all other Justices of the seven-judge panel, the Court upheld the trial and Federal Court of Appeal rulings (Apotex v Sanofi-Synthelabo, 2005 FC 390, aff'd 2006 FCA 421), which had ruled that the claims were not invalid on the basis of anticipation, obviousness or double patenting. For an article giving considerable detail of Justice Rothstein's judgment (as well as a link to the full reasons), follow this link. Summary and article by: Michael Migus