The State of the Art for the Purposes of Obviousness

This is a plug for my most recent article, “What is the State of the Art for the Purpose of an Obviousness Attack?” which has just appeared in 27(2) CIPR 385. Traditionally the body of prior art which may be set up against a patent in an obviousness attack includes only that prior art which is common general knowledge or reasonably discoverable by a person skilled in the art. However, the codification of the obviousness requirement in s 28.3 refers to information disclosed “in such a manner that the information became available to the public in Canada or elsewhere,” which is almost exactly the same wording as used in respect of anticipation, in s 28.2. On its face this implies that the entire body of public information is available in respect of an obviousness attack, as it is for an argument of anticipation: see AD Morrow, “Patent Update” (2003), 20 CIPR 237 at 248 suggesting that in consequence of the codification, the prior law has been “swept away, and everything available to the public is now to be considered.” Less dramatically, as Hughes J noted in Merck & Co Inc v Pharmascience Inc 2010 FC 510 [37], there is a “quaere” as to whether the codification of the non-obviousness requirement in section 28.3 of the new Act has changed the law, so that all publically available prior art may be used in an obviousness attack, regardless of whether it would have been discovered by a reasonably diligent search. My article reviews the debate, including the English case law, which addressed exactly the same question, inconclusively, under the Patents Act, 1949. In considering the purpose of the provision, I argue that the English Court of Appeal in Windsurfing v Tabur Marine [1985] RPC 59 – the source of the Windsurfing / Pozzoli test approach to obviousness – was wrong in principle when it held that the prior public, but isolated, use of a sailboard by Peter Chilvers, a 12 year old boy, was part of the state of the art for purposes of an obviousness attack. I conclude that the best view is that the codification has not changed the law, but the textual argument is strong enough that a judicial decision will be required to settle the question definitively.