Apotex Inc. v. Wellcome Foundation Ltd.

citation(s): (2000) 10 C.P.R. (4th) 65 (F.C.A. per Sexton J.A., Rothstein and Malone JJ.A.) online;

                    appeal from: (1998) 79 C.P.R. (3d) 193  (F.C.T.D per Wetston J.) online

JurisDictioncom.gif (2187 bytes)  Case Comment        © 2005 Donald M. Cameron, Ogilvy Renault



This is the appeal from the trial decision in the AZT case. 


The Decision

[33]    Where a person is directed to engage in a purely mechanical act for the purpose of testing whether an invention will work, in circumstances where "the whole train of ideas put into motion . . . were those of others,"28 the person is not to be treated as an inventor. If a person merely verifies another's previous predictions, the person is not an inventor.29 To hold otherwise, would either discourage the inventor from obtaining assistance in realizing the invention or force the inventor to share the fruits of the invention with those retained to assist. The first premise would cause undue delay in bringing important inventions to the public. The second premise would diminish the economic incentive to invent built into the patent system. Neither premise, from the standpoint of the public, is desirable.

 28 Kellogg Company v. Helen L. Kellogg, [1942] Ex. C.R. 87, at p. 97.

29 Re May & Baker Ltd. and Ciba Ltd. (1948), 65 R.P.C. 255, at 281 ("their useful qualities must be the inventor's own discovery as opposed to mere verification by him of previous predictions.")

The interpretations of cases are erroneous:

            Lightening Fastener dealt with a zipper patent. The Court did not make the general statement made in the case above.  Rather it said:

            “Having regard to the state of knowledge at the time of the application, we agree with the learned President of the Exchequer Court that the improvement did not require such exercise of the inventive faculty as would justify the granting of a monopoly.  (Durable Electric Appliance Co. Ltd. v. Renfrew Electric Products Ltd. ([1928] Can. S.C.R. 8);  Atlantic Works v. Brady ((1882) 107 U.S. Reports, S.C. 192 at 199 & 200).  With the sliders already known to the art lying before them, Sundback and Prentice working independently, as the evidence shows, each produced the new article almost at the same time.  In both cases, the result was brought about by the exercise of mechanical skills.  It is not the object of the Patent Act to dignify by the name of invention every slight advance in the domain of mechanism.”

          The Kellogg case (Kellogg Company v. Helen L. Kellogg, [1942] Ex. C.R. 87, at p. 97) was one determining whether Kellogg Jr. was an inventor. He operated the machine designed by others [at p. 97]:

            “His [Kellogg Jr.’s] operation of the gun with Swartz, which they were directed to do, was purely a mechanical act, with an instrumentality purchased by the Kellogg company to do the very thing that was done by it.  It seems to me utterly untenable to say that this of itself was invention, or was an element contributed by Kellogg Jr. in making the invention.  It might well have happened that Kellogg Jr. would have been off duty at the important lunch hour in question here and replaced by some other of the Experimental Department staff, and there would not seem to be any reason why any one else could not have achieved the same result with the same gun.  I can conceive of no ground whatever for suggesting that anything Kellogg Jr. did had any of the elements of invention in it.”

The reference to May & Baker refers to the predictability of the “invention”. 

In Re May & Baker Ltd. and Ciba Ltd. (1948), 65 R.P.C. 255 (High Court per Jenkins J.) Jenkins J. , in attempting to “state the principles on which, and the limits within which, an invention consisting of the productions of new substances by known methods from known materials can be supported from the point of view of subject-matter, said at p. 281:

“(ii)  Such an invention may, however, be held to possess subject matter provided the substances produced are not only new but useful, though this is subject to the qualification that the substances produced must be truly new, as opposed to being merely additional members of a known series (such as homologues) and that their useful qualities must be the inventor’s own discovery as opposed to mere verification by him of previous prediction.”

The Court found no legal errors on which to disturb Wetston J.'s findings on the issue of obviousness.

[63]    It is clear from the reasons for judgment that the Trial Judge in examining the prior art considered the evidence of each of the virology witnesses on the issue of obviousness and applied the proper tests before concluding that the prior art, individually or taken together, would not have led an unimaginative skilled technician to the invention without undue experimentation.  The Trial Judge's assessment of the expert testimony was not "manifestly wrong".  His conclusions were reasonably drawn on the evidence presented at trial.  I find no legal errors on which to disturb any of his findings on the issue of obviousness.

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