SCC clarifies areas of challenge for selection patents

Abstract

There is a grey area for inventors - or more realistically, their employers - between the time when they know they have a good idea that will probably work, and having a demonstrably new invention that will be patentable. This leaves them with the challenge as to when to file for a patent and what it can cover. It has become common practice for the chemical, biotechnology, and drug industries to file for a patent (the "genus" patent) when the inventors have a discernible group of materials and compounds that can do "something," and which satisfies the requirements for utility, novelty and unobviousness, and then to continue working on those compounds in order to tease out best candidates with specific properties. In 'Apotex Inc. v. Sanofi-Synthelabo Canada Inc.', [2008] S.C.J. No. 63, the innovator company Sanofi had obtained a genus patent covering a large group of compounds on the basis of years of work and sound prediction. In the genus patent there was no distinction drawn between the effects of different isomers, where the compounds have the same chemical formula, but one version rotates polarised light to the right, "dextrorotatory," and the other to the left, "levorotatory." One version of the compound can be imagined as a mirror image of the other.