Obviousness - Recent Cases Of The Court Of Appeal

The Court of Appeal has considered the obviousness of patents in two recent cases. It is underlined that there is no "obvious to try" test and in each case upheld the decision of the judge at first instance.

Novartis AB v Generics (UK) Limited (trading as Mylan)[2012] EWCA Civ 1623 was an unsuccessful appeal from the decision of Floyd J ([2011] EWHC 2403 (Pat), to revoke UK Patent No. 2203040 and the corresponding Supplementary Protection Certificate SPC/GB98/038 on the ground of obviousness.

The patent related to the (-) enantiomer form of rivastigmine, used for treatment of Alzheimer's disease. A racemic mixture (that is, a mixture of (+) and (-) enantiomeric forms) of rivastigmine was proposed for treatment of Alzheimer's disease in the prior art.

Novartis argued that the invention was not obvious under the "obvious to try with a reasonable expectation of success" test. Kitchin LJ disagreed, emphasising with reference to his decision in MedImmune v Novartis [2012] EWCA Civ 1234 that the statutory question, "was the invention obvious?", should not be paraphrased. He stated that:

I reject the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose a straightjacket upon the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.

The judge quoted with approval the comment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479 that:

The correctness of a decision upon an issue of obviousness does not depend upon whether or not the decider has paraphrased the words of the Act in some particular verbal formula. I doubt whether there is any verbal formula which is appropriate to all classes of claims.

Lewison LJ agreed, commenting that:

This is another case in which a patentee defending his patent has attempted to analyse a single multi-faceted question ("was the invention obvious?") by chopping it up into a series of sub-questions, and then treating each of the sub-questions in isolation. For the reasons explained by this court in MedImmune that is the wrong approach.

In relation to obviousness of separating out one enantiomeric form from a racemic mixture, Kitchen LJ commented that:

Resolution of enantiomers is often relatively easy and so it is good science to get on and do it. This is not a matter of...