Locatability: no longer a requirement for a prior art to be citable for obviousness

Catherine Thall Dubé [1]
ROBIC, LLP
Lawyers, Patent and Trademark Agents

For many years, a party alleging obviousness had to meet the reasonably diligent search test in order for prior art to be citable for an attack on the validity of a patent due to obviousness. This meant that not only did the information need to be available to the public, but it also required that a person skilled in the art be able to find the information with a reasonably diligent level of search. This also meant that prior art used in an anticipation analysis may not be citable in an obviousness argument; an anticipating book needed only to be on a shelf in a library open to the public to invalidate a patent, but the same book could well enough not have been citable for obviousness. Where it was not relevant to consider whether or not anybody had read the book and whether or not it was situated in a dark and dusty corner of the library for an anticipation analysis, it, often, was considered unreasonable to expect the same person skilled in the art to search in the darkest corner of a library for an obviousness analysis. This distinction could be puzzling, particularly when one considers that the wording of the sections of the Patent Act on anticipation and obviousness are the same when it comes to prior art.

Until May 10, 2019, when the Federal Court released decision in the patent impeachment action Aux Sable Liquid Products LP et al. v. JL Energy Transportation Inc., 2019 FC 581, many decisions had skimmed this issue regarding the test for obviousness but none had truly jumped deep into determining the parliament’s intention in using identical language as the anticipation provision under section 28.2 of the Patent Act in its drafting of the obviousness provision under section 28.3. In fact, there were many conflicting decisions on the matter.

Justice Southcott in his reasoning cited these conflicting decisions, but noted that these courts did not have the “benefit of significant and substantive argument of the sort presented by the parties in the case at hand”, including principles of statutory interpretation. He was, however, swayed by Justice Locke’s analysis in Pollard Banknote Ltd v. BABN Technologies Corp, 2016 FC 883 on the importance of patent monopolies resulting only from new and unobvious disclosures regardless of whether the prior art would have been located in a reasonably diligent search.

Along with the analysis provided in Pollard, Justice Southcott accepted Aux Sables’ statutory interpretation arguments which require legislation to be interpreted in light of its text, context and purpose. Interpreting the obviousness provision differently than the anticipation provision when both use the same language would violate the presumption that consistent provisions are intended to convey a consistent meaning.

Therefore, a prior art reference which was disclosed to the public, prior to the applicable date prescribed by s 28.3 of the Act, must now form part of the prior art for the purpose of an obviousness analysis, regardless of whether the reference would have been locatable through a reasonable diligent search.