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Supreme Court of Canada Refuses to Hear Mining Patent Obviousness Appeal     

On June 14, 2018, the Supreme Court of Canada dismissed Ciba’s application for leave to appeal the decision of the Federal Court of Appeal holding Canadian Patent 2,515,581 invalid for obviousness (see our previous post here).  This a final decision with no other available avenues of appeal.

Appellants from the Federal Court of Appeal do not have an automatic right to have their appeal heard by the Supreme Court of Canada but must first seek the Court’s permission by filing an application for leave to appeal. To obtain leave, the application must identify an issue of national importance to be decided by the Supreme Court.

In seeking leave to appeal, Ciba argued that its application raised the following issues of national importance:

a) Does the test for assessing non-obviousness set out in Plavix still apply under s. 28.3 of the new Act?

b) Should lower courts first attempt to identify a patent’s “inventive concept” and, if so, how is this to be performed?

c) Does the body of prior art that may be set up against a patent in an obviousness attack under the new Act include all information that could theoretically be available to the public, or alternatively only that prior art that formed part of the skilled person’s common general knowledge (including by conducting a reasonably diligent search)?

Consistent with the Court’s normal practice, no reasons were provided in dismissing Ciba’s leave application.

A copy of the Judgment dismissing Ciba’s application, with costs, may be found here.

Michael Crinson of Aitken Klee was counsel to SNF Inc., the successful respondent, throughout the case.