The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about how to identify the concept embodied in the invention which may constitute the ‘inventive step’ for the purposes of article 56 of the EPC and section 1(1)(b) of the Patents Act 1977.
Held: The appeal succeeded, the courts of Appeal and at first instance had construed obviousness too narrowly. The ‘invention is the product specified in a claim and the patentee is entitled to have the question of obviousness determined by reference to his claim and not to some vague paraphrase based upon the extent of his disclosure in the description.’
Neither the Court of Appeal nor the Dutch patents court had asked exactly the correct question which was ‘whether it was obvious to use a taxol-coated stent to prevent restenosis.’
Lord Hoffmann said: ‘A European patent takes effect as a bundle of national patents over which the national courts have jurisdiction. It is therefore inevitable that they will occasionally give inconsistent decisions about the same patent. Sometimes this is because the evidence is different. In most continental jurisdictions, including the [EPO], cross-examination is limited or unknown. Sometimes one is dealing with questions of degree over which judges may legitimately differ. Obviousness is often in this category. But when the question is one of principle, it is desirable that so far as possible there should be uniformity in the way the national courts and the EPO interpret the [EPC].’
Lord Hoffmann, Lord Scott of Foscote, Lord Walker of Gestingthorpe, Baroness Hale of Richmond, Lord Neuberger of Abbotsbury
[2008] RPC 28, [2008] UKHL 49
Bailii, HL
Patents Act 1977 1(1)(b)
England and Wales
Citing:
At Patents Court – Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and Another PatC 24-Feb-2006
The court found the defendant’s patent invalid for obviousness. . .
Appeal from – Angiotech Pharmaceuticals and Another v Conor Medsystems Inc CA 16-Jan-2007
The appellants challenged a finding that their patent for a vascular stent failed for obviousness.
Held: To overcome a judge’s finding in such a case some error of principle had to be shown. No such error was shown and the appeal failed. . .
Procedure adopted – Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others CA 15-Dec-2006
. .
Cited – AGREVO ECFI 1992
A product claim was made for a patent for a class of chemical compounds alleged to be useful as herbicides. There was nothing in the description to justify the assertion that all the compounds in the class would have herbicidal properties. The Board . .
Cited – Johns-Manville Corporation’s Patent CA 1967
A patent for a method of producing asbestos cement was challenged for obviousness.
Diplock LJ considered that a development should be treated as obvious if ‘the person versed in the art would assess the likelihood of success as sufficient to . .
Cited – Re Prendergast’s Applications ChD 2000
The applicant attempted to patent the use of two known pharmaceuticals to treat the folowing: ‘battle fatigue, combat stress reaction, post-traumatic stress disorder in civilian and military emergency situations, neurological symptoms associated . .
Cited – Pharmacia Corporation, G D Searle and Company, Pfizer Inc v Merck and Co, Inc, Merck, Sharp and Dohme Limited CA 14-Dec-2001
Question as to obviousness of patent. . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S PatC 4-May-2007
Kitchin J said: ‘The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as . .
Cited by:
Cited – Symbian Ltd v Comptroller General of Patents CA 8-Oct-2008
No Pattern Established to Patent Computer Systems
The Comptroller appealed against the decision in Chancery to grant a patent to the clamant for an invention which the comptroller said should have been excluded from protection under section 1(2) as a computer program. It was argued that the UK was . .
Cited – Human Genome Sciences Inc v Eli Lilly and Company SC 2-Nov-2011
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
Held: The patentee’s appeal succeeded. The court had to . .
Cited – Warner-Lambert Company Llc v Generics (UK) Ltd (T/A Mylan) and Another SC 14-Nov-2018
These proceedings raise, for the first time in the courts of the United Kingdom, the question how the concepts of sufficiency and infringement are to be applied to a patent relating to a specified medical use of a known pharmaceutical compound. Four . .
Cited – Actavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 23 January 2022; Ref: scu.270656