A Study on the patent Law Standard of Non-obviousness: Executive Summary
There are three basic requirements imposed by law and jurisprudence on claims in a patent application before they can be said to be directed to new subject matter. Section 2 of the Patent Act defines "invention" as:
Any new and useful art, process, machine, manufacture, or composition of matter, or any new and useful improvement in any art, process, machine, manufacture, or composition of matter.
In addition to novelty and utility the invention must also involve inventive ingenuity to be patentable. This is enunciated in Canadian Gypsum Co. Ltd. v. Gypsum, Lime & Alabastine, Canada Ltd.Footnote (1) :
To support a valid patent there must be something more than a new and useful manufacture, it must have involved somehow the application of the inventive mind: the invention must have required for its evolution some amount of ingenuity to constitute subject matter, or in other words invention.
In the mid 1960's a suitable test for non-obviousness was adopted by the Canadian Courts from British case law, from a chemical case. This test, known as the "Cripps question", is as follows:
Was it for all practical purposes obvious to any skilled chemist in the state of chemical knowledge existing at the date of the patent which consists of the chemical literature available ... and his general chemical knowledge, that he could manufacture valuable therapeutic agents by making the higher alkyl resorcinols ...?Footnote (2)
The test for non-obviousness has evolved over the years by the judiciary and has been applied to all types of technology. In Beloit Canada Ltd. v. Valmet OYFootnote (3) Mr. Justice Hugessen stated the test of obviousness, at p 294, as:
The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.
It is a purpose of this report to review the standard of non-obviousness, as it is applied by the Canadian Patent Office and the Canadian Courts, and determine if the standard is applied equally to different fields of technology and equally within a field of technology, as the field develops. The findings of this review will be compared with the standards and practice from other jurisdictions, primarily the United States and Europe.
The determination of obviousness is a factual determination. In all jurisdictions, there must be a determination of the invention, or the problem to which the invention is directed. There must then be an assessment of the prior art, whether it is the closest prior art as considered in European practice, or relevant prior art as determined in Canadian and United States practice. Once the prior art has been identified, it then must be determined whether a person of ordinary skill in the art having knowledge of the prior art, and the common general knowledge which such a skilled person would possess, would consider the invention as non-obvious, or involving an inventive step.
In our review of the Canadian Court and Canadian Patent Appeal Board decisions, we determined whether there was a different set of criteria applied to different types of technology in determining obviousness or non-obviousness. By the term "criteria" it is meant to refer to the reasons provided by the Patent Appeal Board and/or the Canadian Courts for either accepting or rejecting a case. Our hypothesis in this extensive review, was the following: if the Canadian Patent Office and the Canadian Courts accepted or rejected claims based on the same criteria for each type of technology then it could be concluded that a uniform standard is applied to the different fields of technology.
It is our conclusion, based on our review of published decisions, that the criteria used by the Courts and by the Canadian Patent Office, in determining non-obviousness does not differ from one field of technology to another. The test of obviousness, whether it is the Cripps question or the Cripps question as applied in the Beecham Canada Ltd. v. Procter & Gamble Co.Footnote (4) , or more recently in the Beloit Canada Ltd. v. Valmet OYFootnote (5) is the same for all fields of technology.
What is not constant, and what varies through time and through the development of a technology, is the benchmark to which obviousness/non-obviousness is to be judged. This benchmark is the unimaginative skilled technician, his common general knowledge, and the applicable prior art.
As the technology develops, the skill and the common general knowledge of the ordinary workman in the pertinent art increases. It is this yardstick, against which obviousness/non-obviousness is judged, which changes as the technology develops. Thus, the test for obviousness is still based on the Cripps or the modified Cripps question, but the general knowledge of the unimaginative skilled technician changes throughout the development of a technology. Furthermore, the literature and the information available to him to determine obviousness (prior art) change as the field or technology develops. What would appear obvious or non-obviousness to this unimaginative skilled technician will change through the development of the technology.
This point has been accepted by Canadian Courts as discussed, for example, in Monsanto Co. v. Commissioner of PatentsFootnote (6) . As the field of technology develops, so does the knowledge of the unskilled technician and the common general knowledge from which he can draw. A similar conclusion was also reached in a review of the standard of obviousness as applied to chemical patents as the field of chemistry developedFootnote (7) . It is our position that the standard does not change throughout the development of the technology, but what changes is the benchmark to which the standard is to be judged. Thus, the benchmark to which the standard of non-obviousness is judged, is a continually evolving benchmark which continues to change as the field of technology develops.
In the United States, there has been great concern expressed regarding the application of the standard of non-obviousness in the United States Patent and Trademark Office, specifically with regards to the emerging technologies of biotechnology and computer related technologies. In these areas, it was generally held that the application of the standard of obviousness was higher than in other areas of technology. There were many reasons given for this imbalance. For example, in these new areas of technology, there is a large body of new examiners, who lack legal training. As a result, it was felt that examiners frequently act as scientific peer reviewers in the biotechnology area, rather than as patent examiners. They often spend more time and effort critiquing the science than examining the patentability question. Inadequate search files in some cases, such as the software area, were also cited as a problem. It is proposed that the main reason for this higher standard of obviousness being applied, especially in the biotechnology area, reflects the higher skill that the biotechnology examiners bring with them to their task in determining the question of obviousness. They are perhaps reviewing the patent application not through the eyes of the unimaginative skilled technician, but through their own eyes, thus perhaps defining a higher skill, to the skilled technician than the law dictates. Thus, it is proposed that the United States patent examiners, in the biotechnology field in particular, are not using the correct yardstick to judge the question of non-obviousness.
In Canada in the biotechnology area, it was found that very few objections on obviousness are raised by the Canadian biotechnology examiners. The biotechnology examiners feel that as this technology is very new, it is difficult to say that an invention is obvious. At the present time the examiners feel that since there is not much known about the field, this field is very unpredictable and, thus, most inventions are considered non-obvious. They, however, recognize that as the field develops there will be an increase in the skill of the ordinary workman, and thus, one would expect to see more obviousness rejections raised by the Canadian biotechnology examiners.
Thus, at present, the Canadian biotechnology examiners have set the skill of the ordinary skilled technician and the common general knowledge which he brings with him to assess the invention as very low. The examiners' assessment of the unpredictability of the field, results in a different problem which is not seen in the United States. There is a reluctance by Canadian biotechnology examiners to allow any claims which go beyond the provided examples in an application. The examiners, thus, are attempting to restrict the applicant to the proved utility of their invention, and not its predicted utility. This is contrary to Canadian case law and Canadian practice in other fields of technology. This problem is really a question of sufficiency of disclosure and the definition of "sound prediction" which is outside the scope of the present study and, thus, has not been reviewed in any detail.
Thus, from our review, we could find no evidence of a different standard of obviousness being applied across different fields. In the area of biotechnology, the same standard of obviousness is being applied as in other fields. What does change is the yardstick against which inventions are judged. This yardstick includes the person skilled in the art; the common general knowledge in a particular field of invention which this skilled person brings to the task; and the prior art, against which the person skilled in the art will determine the question of non-obviousness. The level of the skill of a person skilled in the art will vary from one field to another. It will also vary as the field develops. Thus, although the standard of non-obviousness is the same from one field of technology to another, and within a field as the field develops, what varies during the development of technology, is the benchmark to which obviousness/non-obviousness is to be judged. The benchmark is a constantly evolving benchmark which must reflect the facts for each individual case.
It is not considered, as a result of the findings of this study, that a more comprehensive definition of non-obviousness is required. The Canadian judiciary has provided a clear set of guidelines in order to identify the standard in which inventions are to be judged. We could find no evidence that a different standard of non-obviousness being applied across different fields.
As biotechnology is still an emerging field of technology, there has been a tendency on the part of Canadian biotechnology examiners, in assessing the issue of non-obviousness, to consider the ambit of the common general knowledge in a somewhat more restrictive fashion than has been done is well established fields of technology. It is a recommendation of this report that the Canadian biotechnology examiners ensure that, as the field develops, they adjust the level of the skill of the unskilled technician and his common general knowledge accordingly to ensure that the correct yardstick, against which invention is to be judged, is used.
It is further a recommendation of this report that a more detailed review of the sufficiency of disclosure question and the issue of predicted utility is conducted, specifically with regard to the biotechnology inventions as compared to other inventions in other fields. As noted, at present the Canadian biotechnology examiners believe that the level of predicability in the field of biotechnology is very low. As a result, they are reluctant to allow claims which go outside the scope of the specific examples provided in the patent applications. They, thus, are only willing to allow claims to the proved utility, rather than any predicted utility.