Supreme Court Of Canada Upholds Selection Patents

Selection patents represent a crucial instrument for protecting beneficial technological advances. This is particularly so for the pharmaceutical and biotechnology industries, in which innovators commonly seek protection for one or more members of a previously known class of therapeutic compounds on the basis of special qualities.

On November 6, 2008, in Apotex Inc. v. Sanofi-Synthelabo Canada Inc.,¹ the Supreme Court of Canada unanimously confirmed that a selection patent (described as a patent whose subject matter is a fraction of a larger known class of compounds that was the subject matter of a prior patent) is permissible under the Canadian Patent Act. Indeed, the Court confirmed that a selection patent "does not in its nature differ from any other patent," and its validity should be evaluated by the usual statutory criteria, such as novelty and inventiveness. The Court also refined the tests for these important prerequisites to patentability.