Obviousness — Is The Revocation Bar Being Raised?

Two decisions handed down from the English appeal courts suggest that the manner in which the "obvious to try" test is being applied is raising the bar for patent challengers in demonstrating the skilled person (or team) would have arrived at the impugned invention through obvious routes given certain prior art.

The first case of Apimed Medical Honey Limited v Brightwake Limited [2012] EWCA Civ 5 was handed down in January and concerned an appeal from the judgment of the Patents County Court that the patent was invalid. The appeal was unopposed in the sense that Brightwake had withdrawn from the case because the parties had settled following a finding of non-infringement in the lower court. Hence Apimed appealed only on the invalidity of its patent and the Comptroller of the IPO opposed through the Treasury Solicitor because the case raised sufficiently important issues (namely the undesirability of invalid patents being returned to the register for want of opposition) for the Comptroller to seek judicial clarification.

The main points in issue were:

Whether the judge had correctly identified the patent's contribution over the prior art; Whether a finding of "obvious over the common general knowledge" could be justified; Whether the comptroller would be permitted to raise a new novelty argument. On these points, the first two flow in sequence. First, the Court of Appeal found that the judge had failed to identify the true invention as compared to the cited prior art. The invention itself required the use of an alginate gelling agent to thicken honey such that it could be used as a putty or rolled into a sheet to dress wounds, i.e. it did away with the need for dressings. When compared with the prior art that described the use of alginate/gauze dressings the true invention was to remove the need for a dressing, not the particular agents to use within a dressing. Having corrected the judge's analysis of the differences between the invention and the prior art the Court overturned his finding of obviousness.

The Court then turned to the finding of "obvious over the common general knowledge". In respect of this the Court said:

"It is well established that an obviousness argument based upon the common general knowledge alone must be treated with caution because it is unencumbered with any detail which might point to non-obviousness and is particularly likely to be tainted with the impermissible use of hindsight."

As one might expect, having thus...