Document Type

Working Paper

Publication Date



The Supreme Court of Canada recently revised the doctrine of nonobviousness in a pharmaceutical "selection patent" case Apotex Inc v SanofiSynthelabo Canada Inc Although cognizant of changes to the same doctrine in the United States and the United Kingdom a critical flaw in how the doctrine is being applied in Canada escaped the Court's attention Using content analysis methodology this article shows that Canadian courts frequently fail to characterize the "person having ordinary skill in the art" PHOSITA for the purpose of the obviousness inquiry The article argues that this surprisingly common analytical mistake betrays a deep misunderstanding of innovation one which assumes that actors consult patents to learn about scientific developments devalues the importance of the public domain and ignores the industryspecific nature of innovation The article also describes the historical evolution of the nonobviousness test identifies factors that undermine PHOSITA's characterization and develops a multilayered prescription to remedy the problem