A Study on the Patent Law Standard of Non-obviousness: Chapter 6

6. Recommendations

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.

The determination of non-obviousness is a fact-based question. The person of ordinary skill in the art, who must address the question of non-obviousness, must be defined for each individual case. Also, the common general knowledge which this person will being to bear on the question must also be defined. Thirdly, the relevant prior art against which the invention is to be judged, must also be determined. 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.