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Novartis loses appeal

Written by Michael Coyle on 25 February 2010

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Novartis loses appeal on Stain remover

The Courts have laid the following test as referred to by the Supreme Court in Warren J and his decision of 16th January 2009, [2009] EWHC 41 (Ch) </ew/cases/EWHC/Patents/2009/41.html>, that its EP (UK) 0948320 is invalid for obviousness. Novartis appealed but were unsuccessful.

Obviousness: the Law

The answer to what is obvious in Patent law can be found under the European Patent Convention, enacted by the Patents Act 1977. The Convention says:

Art 52 Patentable Inventions

(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

Art 56 Inventive Step

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. So the key question is whether the invention is obvious.

The stages are

"(1)(a) Identify the notional "person skilled in the art"

(b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Obvious for the purposes of step 4 means technically rather than commercially obvious......In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation[1967] RPC 479, by saying that the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success. How much of an expectation would be needed depended upon the particular facts of the case"

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