Appeal of a 55.2 decision; 2009 FCA 8; sildenafil; January 16, 2009

The Court of Appeal dismissed the generic company's appeal and upheld the decision of the trial judge prohibiting Apotex entering the market until the expiry of the patent.

Apotex revised the grounds of its appeal two days before the hearing and provided no advance submissions. The argument at hearing was that the Supreme Court in Sanofi fundamentally changed the approach to obviousness in Canada.

The Court of Appeal considered the test developed by the Supreme Court in Sanofi and held that the test was whether something is "obvious to try" where the word "obvious" means very plain. Under this test, an invention is not obvious because the prior art would have alerted the person skilled in the art to the possibility that something might be worth trying. The invention must be more or less self evident.

The Court then went on to consider whether the trial judge had in fact applied this test and found that he had. Thus, the Court dismissed Apotex' appeal. The Court then awarded increased costs by the reason of the late change in the appellant's position on appeal. If proper attention had been given to the matter, the change in the approach would have been communicated earlier and the respondents would have been in a better position to reflect their response.

Full text of the decision can be found at: