Inventive Concept R.I.P.

Ciba Specialty Chemicals Water Treatments Ltd v SNF Inc 2017 FCA 225 Pelletier JA: Rennie, Woods JJA aff’g 2015 FC 997 Phelan J
            2,515,581

As discussed in yesterday’s post, in Ciba v SNF Pelletier JA and Rennie JA held that all matter available to the public may be used in an obviousness attack, not just that which was generally known or reasonably discoverable, though Woods JA expressed no opinion on this point. This was not the only clarification made to the obviousness analysis. The FCA, unanimously on this point,^* also stated that the focus of the obviousness inquiry should be on the claims, not the inventive concept:

[77] 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. 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.

In particular, the FCA noted that “[p]art of the difficulty in the search for the inventive concept is the use made, or to be made, of the disclosure portion of the specification of the patent,” and stated, quoting Conor v Angiotech [2008] UKHL 49, [19], “[t]he patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description” [74]. This is consistent with s 28.3 which refers to “the subject-matter defined by a claim” [75].

This is a more emphatic restatement of a similar point made in BMS v Teva / atazanavir 2017 FCA 76, in which, as discussed here, the FCA downplayed the importance of the inventive concept. (Pelletier JA also wrote the reasons in Atazanavir, with Rennie and Near JJA concurring.) I agree entirely with the Court on this point. The pursuit of the inventive concept had in many cases turned into a major satellite debate which brought confusion rather than clarity. Indeed, it may be that it is time to reconsider the entire Windsurfing/Pozzoli framework. While that approach was endorsed by the SCC in Sanofi / Plavix 2008 SCC 61, the FCA pointed out in Wenzel Downhole Tools 2012 FCA 333, [105], “the Supreme Court of Canada in Sanofi clearly indicated that there is no single or mandatory approach in the obviousness inquiry,” and as the FCA pointed out in Atazanavir “[i]t is true that the Windsurfing/Pozzoli framework does provide structure but it is not obvious that it has been useful.” [64]. In any event, that is a question for another day.

The FCA held that Phelan J had erred in his formulation of the Windsuring/Pozzoli framework [63], but I would suggest the errors are ultimately a reflection of problems with the Windsuring/Pozzoli framework itself. The second and third steps of that framework are [45]:

2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

The FCA noted that in effect, Phelan J had “first defined the invention, then referred to the fact that the invention is an advance over the common general knowledge, and concluded that the difference between the two is the inventive concept” [65]

[66] This methodology appears to conflate steps 2 and 3 of the Windsurfing/Pozzoli framework as it was paraphrased by the Federal Court but instead of comparing the inventive step to the common general knowledge, it compares the invention to the common general knowledge to arrive at the inventive step.

While this observation is true enough, Phelan’s J’s approach has considerable appeal: after all, in the absence of any other guidance from the SCC, it seems quite reasonable to define the “inventive concept” as the difference between the state of the art and the invention. But, as the FCA pointed out, if that is the definition of the inventive concept, then the second and third steps of the Windsuring/Pozzoli framework are circular. On the other hand, if that is not the inventive concept, what is? No wonder the FCA held the whole inquiry is an unnecessary distraction.

Because the FCA held that Phelan J had applied the wrong legal test, the Court undertook the obviousness analysis de novo [69]. In so doing, Pelletier JA identified two distinct differences between the claim as construed and the prior art relied upon by SNF, namely the notions of an “effective rigidifying amount” and of “an aqueous solution of a water soluble polymer” [91]. Pelletier JA then considered separately whether either of these aspects of the claimed invention was inventive, at [94]-[95] and [93], respectively. Having concluded that both differences were obvious, it followed that the claimed invention was obvious [97].

This approach, of looking at different aspects of the invention separately to see whether any aspect might be inventive, calls to mind the approach used by the EPO, albeit in the context of the problem-solution approach to obviousness. For example, in T 0920/10, the BoA stated (citations omitted):

[14] Article 56 EPC stipulates that "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to the skilled person". Therefore, in the board's understanding, the decision on whether or not the requirements of Article 56 EPC are fulfilled requires a mandatory examination as to whether or not the claimed subject-matter is obvious. Therefore, it has been established by case law that, if an initially formulated problem is found not to have been solved, the problem is reformulated to one which is considered as having been solved and the obviousness of the claimed subject-matter is then assessed on that new basis.

^*Woods JA reserved opinion “on the issue discussed at paragraphs 51 to 63" [99]. The discussion of the role of the inventive concept is later in Pelletier JA’s reasons, at [74]ff.