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Decision clarifies test for obviousness

A recent Federal Court of Appeal decision should return a degree of certainty to patent applicants challenged for obviousness as well as patentable subject matter, Toronto patent lawyer Aaron Edgar tells

Edgar, a partner with Edgar Chana Law, says patent applicants have faced “a great deal of difficulty overcoming obviousness and subject matter objections” ever since a landmark 2008 Supreme Court decision.

In that case, the nation’s top court endorsed a four-step framework for determining obviousness that requires decision-makers to identify the “inventive concept” of the claim as part of their assessment.

“Oftentimes, the patent office examiner states their opinion on what they believe is the inventive concept, and it is difficult, or frequently impossible, to convince them that they should be relying on the wording of the claim rather their opinion of inventive concept,” Edgar says. “In many cases, the conclusion on obviousness and subject matter is self-evident in how the examiner states what the inventive concept is.”

In its more recent case, the Federal Court of Appeal also acknowledged that the vagueness of the term has caused problems in practice.

“There may be cases in which the inventive concept can be grasped without difficulty but it appears to me that because ‘inventive concept’ remains undefined, the search for it has brought considerable confusion into the law of obviousness,” wrote Justice Denis Pelletier for the majority of the court. 

“That uncertainty can be reduced by simply avoiding the inventive concept altogether and pursuing the alternate course of construing the claim. Until such time as the Supreme Court is able to develop a workable definition of the inventive concept, that appears to me to be a more useful use of the parties’ and the Federal Court’s time than arguing about a distraction or engaging in an unnecessary satellite debate,” he added.

“I hope that this passage of the decision is adhered to by the courts and the patent office to bring back more certainty to Canadian patent law,” Edgar says. “I really like this decision, because it articulates what I have been trying to argue with the patent office over the past few years: The 2008 Supreme Court decision did not overturn the requirement to construe the claims established in earlier Supreme Court decisions”

The appeal court decision concerned a mining company’s invention for disposing of slurry whose validity was challenged by a competitor.

Although the trial judge erred in his application of the obviousness framework, the appeal court ruled that the correct performance of the test supported his ultimate finding that the patent was invalid for obviousness.

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