Obviousness: New Decision Holds that Court is to Look at Patent Disclosure to Determine the Inventive Concept

To determine whether an invention claimed in a patent is obvious, what parts of a patent can the court consider to ascertain the inventive concept of the claims? According to the Federal Court decision in Allergan Inc. v. Canada (Minister of Health), the disclosure of a patent – not just the claims themselves – can be used as part of this inquiry.

In Allergan, Sandoz argued that the patent claims define the invention and, therefore, the inventive concept of the patent “must be discerned solely from the language in the claims of the patent.” However, the Court held that in cases where “the inventive concept of the claims is not readily discernible from the claims themselves” it is not only permissible but also necessary for a court to consider “the whole of the disclosure” of the patent “to ascertain the nature of the invention” found in the claims and to determine the difference, if any, between the invention and the prior art.

Additionally, the Court rejected the notion that Sanofi suggests that a court can only look beyond the claims of a patent when the claims are confined to a bare chemical formula or to a selection patent.

McCarthy Tétrault acted for the applicants in this case.

Key Takeaway

The disclosure of a patent will be relevant to a determination of the inventive concept of a claim as part of the obviousness inquiry.  When defending or challenging a claim on the basis of obviousness, the disclosure should be carefully considered.

Federal Court invention inventive concept IP obviousness patent patent claims patent disclosure selection patent

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