Monday, October 17, 2011

Relevance of Simultaneous Invention to Obviousness

Apotex inc. v. Warner-Lambert Company LLC 2011 FC 1136 Pinard J

This is an appeal from an order of Prothonotary Milczynski, compelling the defendant patentee to disclose when it became aware of patent filings by others that including claims related to the patentee’s invention. The grounds for the order were that such information was relevant to the prior art, and, more interestingly, that “one element of the obviousness of the patents in suit is the fact that other scientists in the field came to the same invention in and around the same time” [7]. In other words, the order raises the question of the relevance of simultaneous invention to the question of obviousness.

As I argued a post last week, so-called “secondary” evidence is not substantively secondary. With that said, not all secondary evidence is made equal. Failure of others is especially compelling evidence of inventiveness. As the High Court of Australia noted in Lockwood v Doric(No 2) [2004] HCA 58 at [119], “When skilled, non-inventive persons, and in this case also a skilled inventive person, looking for improvements, fail to arrive at the invention, it is impossible to suggest that it would have been obvious to the skilled and not necessarily inventive person.” The combination of long-felt need and commercial success, traditionally the strongest secondary evidence, is ultimately derived from this point, as those circumstances permit the inference that others tried and failed.

However, the converse is not true. Success of others – simultaneous invention – in itself, does not generally establish obviousness, as those others may also be inventive, particularly since invention does not require genius. As the English Court of Appeal noted in Mölnlycke v Procter & Gamble Ltd, [1994] RPC 49 (CA) at 132 “The inventive step may not have been large and it is not surprising to us that more than one inventor may have had broadly the same idea at around the same time.” This is especially likely in an active area of research. When several companies are pursuing a lucrative goal with talented researchers, it should not be surprising that several may arrive at the same solution, even though it requires invention. This is implicit in the old system of first-to-invent: as the Fed Cir has said 620 F.2d 1247 (1980): “Nothing should be more clear in the law of patents than the concept that the same patentable invention may be contemporaneously made by more than one inventor,” noting “The statute establishing interferences in the PTO, 35 U.S.C. s 135, is entirely premised on the concept that the same nonobvious invention may be contemporaneously made by a plurality of inventors.”

With that said, evidence of simultaneous invention may be relevant in light of the details of the circumstances of the invention. If all inventors had difficulty in arriving at the invention, simultaneous invention may reinforce a conclusion of non-obviousness; on the other hand, if several others arrived easily at the invention, this would be evidence of obviousness, even though the patentee might have struggled.

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