Obvious To Try – Waking Up To Reality

"Obvious to try" is a stratagem which can be used to try to knock out a patent on the ground of lack of inventive step, also known as obviousness. The argument goes something like this - the skilled person in possession of the cited piece of prior art would think of using it in a particular way, and would have some expectation of success when doing so. So, if success actually happens then there is no basis for a valid patent. One difficulty in applying the test is determining the extent of the expectation of success. Recent jurisprudence in the UK has urged caution in applying it; courts have emphasised that it is merely one of many considerations that can be looked at in determining whether there has been an inventive step. In Generics v Lundbeck [2007] RPC 32, Kitchen J stated that the considerations might include "the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them, and the expectation of success". The Court of Appeal decision in Teva v Leo Pharma [2015] EWCA Civ 779 on 28 July 2015 illustrates the current approach. The patent in suit claimed an ointment for treating psoriasis, an inflammatory disease of the skin. The claims were to a...