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Anticipation in Canada since Sanofi

Anticipation in Canada since Sanofi. February 15, 2012. Don Cameron. Donald M. Cameron. What’s a patentable invention need to be?. New Useful Inventive An invention of the court: 1890: it’s an “invention”, so it must be “inventive”

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Anticipation in Canada since Sanofi

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  1. Anticipation in Canada since Sanofi February 15, 2012 Don Cameron Donald M. Cameron

  2. What’s a patentable invention need to be? • New • Useful • Inventive • An invention of the court: • 1890: it’s an “invention”, so it must be “inventive” • 1936: SCC required “a degree of ingenuity” to be present • Now in the New Patent Act, s. 28.3

  3. New – Novelty/Anticipation

  4. Current Patent Act • 28.2(1) The subject-matter defined by a claim in an application for a patent in Canada (the "pending application") must not have been disclosed • (a) more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant, in such a manner that the subject-matter became available to the public in Canada or elsewhere; • (b) before the claim date by a person not mentioned in paragraph (a) in such a manner that the subject-matter became available to the public in Canada or elsewhere;

  5. What Sanofi said Enabling disclosure

  6. What Sanofi said

  7. What Sanofi said

  8. Enablement: The “IKEA” threshold

  9. Cases since Sanofi disclose enable Merck v. Apotex(2010) • Prior art: fermentation process with yeast – did it produce lovostatin? • No disclosure: • Not inevitable that claimed product would be produced • No evidence process was actually used before key date

  10. Cases since Sanofi disclose enable Sloan Kettering (P.A.B.) • Claim was for an antibody • No disclosure: • BTW: No enablement: • starting material: you couldn’t buy it, you’d have to make it • To make it would take: • “hopeful yet prolonged and arduous experimentation”

  11. Cases since Sanofi disclose enable AstraZeneca v. Apotex esomeprazole, a stereoisomer of enalapril Prior art said it separated optically pure compounds Apotex: slight change in process produced esmeprazole AstraZeneca: no it didn’t Court: result not consistent

  12. Cases since Sanofi disclose enable Easton v. Bauer • Hockey skate boot: a one-piece rear quarter • Used in test league, but in public rink • Disclosed but not enabled • You’d have to dismantle the skate to reproduce it

  13. Conclusions since Sanofi disclose enable Mechanical: • “The Caramilk bar test” • If you can see it, you can figure it out • Observing isn’t “experimenting”

  14. Conclusions since Sanofi disclose enable Chem/Pharma: • “The Coca-cola test” • Can’t figure out how they made it.

  15. Thank You Don Cameron DCameron@bereskinparr.com Bereskin & Parr LLP

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