Apotex Inc. v. Sanofi-Synthelabo Canada Inc.: A Landmark Patent Case Decided by the Supreme Court of Canada

Abstract:

In Apotex Inc. v. Sanofi Synthelabo Canada Inc. et al., the Supreme Court of Canada provides the latest pronouncement on the law of anticipation and obviousness under Canadian patent law. Writing for the court, Justice Rothstein “refined” the test of anticipation, requiring the prior art both to disclose the invention and enable one to make it. The court adopted the U.K. Windsurfing four-part obviousness test, which includes a determination of the “inventive concept” of a claim. Borrowing from U.S. and U.K. jurisprudence, the court also held that, under certain circumstances, the “obvious to try” analysis should be part of the obviousness analysis. The court confirmed that selection patents (which claim one or more products from a previously disclosed group of products due to a superior or surprising quality that is particular to the selection) are not inherently invalid for double patenting.