July 2008
Obviousness just became Obvious
This month saw the long awaited House of Lords decision in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. This case has helped to clarify the test for obviousness in patent law and smooth over some of the discrepancies in European patent law.
Angiotech owned a European patent for a stent (or a tube) used in coronary angioplasty (a technique of mechanically widening a narrowed blood vessel). The stent contained a little balloon which inflated when it was placed into a diseased artery in the course of angioplasty. The particular patent was designed to reduce the effects of restenosis (the gradual closure of an artery) during coronary angioplasty. Basically, the patent came up with another use for the multi-functional drug taxol, by coating the stent with a polymer and loading it with the drug in order to delay the closing of the artery.
The patent was then licensed to a manufacturer of stents, Boston Scientific. Conor, one of Boston Scientific’s competitors, wanted to utilize the drug in this way and sought to revoke the patent on the grounds that the invention was obvious. The patent was revoked in the first instance and by the Court of Appeal on the basis that it was obvious to anyone who needed a stent of this nature would have to use this drug. In addition Jacobs LJ in the Court of Appeal held that the patent claim had failed to demonstrate whether the drug actually prevented restenosis. The matter was further complicated when a Dutch court ruled the patent valid a day after the Court of Appeal decision.
The parties had already reached a settlement before the House of Lords gave their decision. As such the only issue to be decided was the validity of the patent. Guided by the Comptroller General of Patents, the House of Lords upheld the validity of the patent. Lord Hoffmann, giving the leading judgment, focused specifically on what was covered by the patent’s claim, “a stent coated with taxol”, and held this to have involved an inventive step since this was a new product:
“As in the case of many product claims, there was nothing inventive in discovering how to make the product. The alleged inventiveness lay in the claim that the product would have a particular property, namely, to prevent or treat restenosis. So the question of obviousness was whether it was obvious to use a taxol-coated stent for this purpose. In my opinion, ... 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”
Lord Hoffman also disagreed with Jacob LJ in finding that the patent claim disclosed sufficient information about how the drug worked to prevent restenosis:
“The issue in the Court of Appeal appears to have been whether the teaching of the patent was that a taxol-coated stent would prevent or treat restenosis. Jacob LJ disagreed with the view of the Dutch court….that that was precisely what the patent said. He said that the Dutch court had formed its view “with the hindsight knowledge that taxol stents work". I do not think that this is a fair criticism. The Dutch court was not addressing itself to whether taxol worked, or whether the specification proved that it would work, but to whether the specification taught that it should be used”
Briffa’s Opinion
This is a positive result for inventors and has helped simplify the test for obviousness. This is particularly good news for those industries whose innovation is largely based on trial and error, as it will only be necessary to show that the idea is plausible. This brings the UK in line with other EU jurisdictions. Indeed in this judgment Lord Hoffman indicated that in the absence of European Patent Court there is bound to be some inconsistency in how patents are interpreted in different EU countries. If this case had gone the other way then there would have been the very real possibility of a European Patent being valid in Holland but invalid in the UK. This is hardly an ideal position and is something which is in desperate need of reform.
For further information about patent law contact info@briffa.com.