citation(s): (1998) 79 C.P.R. (3d) 193 (F.C.T.D. per Wetston J.) online; affirmed (2000) 10 C.P.R. (4th) 65 (F.C.A.)
Case Comment © 2005 Donald M. Cameron, Cameron MacKendrick LLP
 There is no inventiveness in following an obvious and well-charted route using known techniques and processes involving known compositions unless the inventor encounters difficulties that could not have been reasonably expected by a person versed in the art or overcome by the application of ordinary skill: Burns & Russell of Canada v. Day and Campbell Ltd. (1965), 48 C.P.R. 207; Genentech Inc.'s Patent,  R.P.C. 147 (C.A.).
 A & N submit that there can be no invention in pursuing an obvious line of research involving simple empirical experiments on compounds which are themselves neither novel nor inventive unless the idea prompting the research was not obvious or the research generated an otherwise unexpected result. In support of this position, A & N rely on the cases involving workshop improvement: Leithiser et al. v. Pengo Hydra-Pull of Canada Ltd. (1974), 17 C.P.R. (2d) 110 (F.C.A.); Burns & Russell of Canada v. Day and Campbell Ltd., supra; Genentech Inc.'s Patent, supra. Glaxo submits that inventions which are arrived at by methodical testing are valid and equally deserving of protection: Farbwerke Hoechst A.G. v. Halocarbon (Ont.) Ltd., supra.
 The general question to be resolved is whether or not the alleged invention required the exercise of inventive ingenuity: Windsurfing International Inc. et al. v. Trilantic Corporation (1985), 8 C.P.R. (3d) 241 (F.C.A.). That is, was the invention "plain as day" or "crystal clear" to a technician skilled in the art at the date of the invention: Bayer v. Apotex Inc., supra, at 79. Something is said to be obvious when it would occur directly to the ordinary person skilled in the relevant art searching for something novel without serious thought, research or experiment: G.F. Takach, Patents: A Canadian compendium of law and practice, (Edmonton: Juriliber, 1993).
Paragraph 243 refers to the Genentech Inc.'s Patent case, which is a U.K. case that rely upon the "worth a try" test, which is not good law in Canada. Hoescht, which was cited in paragraph 244, relied upon the "patient research" of Pope Alliance, a sort of "sweat of the brow" discovery.
 I am satisfied that the prior art, individually or taken together, would not have led an unimaginative skilled technician to the invention without undue experimentation. At the time there was an admitted health care crisis and AIDS was considered to be in epidemic proportions. Many laboratories, both private and government, had mobilized to search for a treatment for this disease. Despite these efforts, no other scientific investigator or researcher was led to the solution.
 Furthermore, in my opinion, the four articles would not have necessarily led to the invention. In particular, in Ostertag, I am satisfied that the statement that AZT would act as a chain terminator was purely speculative. Moreover, at the time of the Ostertag article human retroviruses had not even been discovered and could not, therefore, have been within the contemplation of the writer. The De Clercq article admittedly showed that the compound had no activity against the three viruses, and would have taught away from the use of AZT as a human therapeutic. The Krieg article was dealing with chronically infected cells which all of the experts agreed would not measure the effect of chain terminators. Furthermore, I am satisfied that on the evidence the existence of IAPs would have caused a retrovirologist considerable concern regarding the use of this compound.
 In conclusion, the '277 patent was not rendered obvious by the prior art in existence at the date of the invention.
Therefore, Wetston found that:
The Court of Appeal (at paragraph 63) found no legal errors on which to disturb Wetston J.'s findings on the issue of obviousness.
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