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European IP Bulletin, Issue 27, November - Patents
Patents
5. Obviousness - Conflicts Between EPO and UK Approach
On 12 October 2005, the English High Court gave its decision in Ranbaxy & Arrow Generics v Warner-Jenkinson [2005] EWHC 2142 (Pat).
The substance concerned was atorvastatin, a cholesterol synthesis inhibitor of great commercial importance. The case concerned a patent covering the synthesis of a pharmaceutically active form of the chemical.
In choosing a salt to work on in screening for the pharmaceutically active form of the chemical, the teaching of the patent failed to show an advantage in focusing on particular salts. However, the European Patent Office (EPO) during prosecution of the application felt differently.
The EPO uses the ‘problem-solution’ approach to test for the presence of inventive step. UK law uses the ‘Windsurfing’ test. The latter includes reference to the common or background general knowledge of a person deemed to be skilled in the art, whereas the EPO test works by identifying the closest prior art and then identifying the problem to be overcome by the invention, which if necessary ignores the problem discussed in the patent itself.
Justice Pumfrey was concerned with the failure of the EPO test to acknowledge that prior art, which is not the ‘closest’, should still be considered since the common general knowledge of the skilled person (here the pharmaceutical organic chemist) might make other prior art which might not provide as much detail, relevant to the question of inventiveness.
Pumfrey J was also concerned, that the objective ‘problem’ to be overcome would be incorrectly reformulated after the priority date of the patent with the benefit of hindsight. Although the patent did not talk about the choice of salts, the EPO approach had been to consider this part of the problem. It was a problem, said the judge, that the patentee did not know existed.
As a result, in contrast to the EPO appeal board allowing the application, the Patents Court found the patent invalid for obviousness.
Pumfrey J decided that there was little difference between the effective laws but that the approaches using the different legal tests could produce different results in certain circumstances.
The problem-solution approach has been found wanting also in the case of biotechnological inventions where claims are often directed at inventions that have narrow and well known methods of developing a new product but which are drafted broadly to cover products made by other means. Identifying an objective problem in such claims using hindsight can divert attention away from the fact that the method of developing the new product in the patent still uses well-known techniques even though the claims will cover other techniques that may be less obvious.
It may be time that the EPO consider the benefits of using a more sophisticated test that takes into account what was known by the patentee and skilled person at the time the patent was filed, and in the context of the teaching actually disclosed.
6. London Search Facility of the UK Patent Office Merges with the British Library
The search facility of the UK Patent Office moved from Harmsworth House to the British Library’s new Business and Intellectual Property Centre (BIPC) located in the Library’s flagship building at St Pancras. The BIPC now replaces the Patent Office to become the entrepreneurs' chief information source on patents, innovation and intellectual property.
The transfer of these services took effect from Monday 5 September 2005. This creates a superior service in London for comprehensive database searching of patents, trade marks and designs as well as viewing legal cases, trade and business journals, over 49 million patent specifications, and market research reports and company annual reports. Users are given access to unique trade mark search files that are unavailable on the internet and can only be accessed at either the BIPC or the Patent Office in Newport.
The BIPC already provides free access to the world’s largest collection of market research reports and a comprehensive range of online subscription databases such as the Business Information Database. By incorporating the resources of the Patent Office, the BIPC offers researchers, SMEs and entrepreneurs comprehensive information on patents, markets, marketing and business.
Earlier this year, the Library was given £1 million by the London Development Agency (LDA) to transform the pilot project into a permanent national resource. To make the new search facility more efficient, training has been provided by the Patent Office to the BIPC staff who are now available to assist customers with their searching needs.
The combination of the resources of the British Library and the Patent Office will further promote learning and innovation with a long-term effect that will benefit many generations in the future.
MWE Partner, Justin Hill, continues to work with the British Library and Thompson Derwent Information Solutions on training schemes enabling users to maximise the benefits of using these resources.
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