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The UK House of Lords has ruled that when
considering the question of whether or not a claimed invention has an inventive
step, a patent specification need not demonstrate that the invention actually
works but that it must disclose enough to make the invention plausible.
The Lords’ decision in Conor Medsystems
Incorporated v Angiotech Pharmaceuticals Incorporated and others (the
“Angiotech” decision), handed down on 9 July 2008, relates to Angiotech’s
European patent EP 0706376 whose claims cover a stent coated with taxol for the
treatment of stenosis (the constriction of an artery, particularly caused by
sclerosis). The UK High Court and the Court of Appeal had previously found that
the patent lacked inventive step because the specification did not actually
demonstrate the use of a taxol-coated stent in treating stenosis, and therefore
allegedly did not solve the problem underlying the claimed invention. However,
the Lords have overruled the earlier courts and stated that once a threshold
test of plausibility has been passed, the question of inventive step should not
be subject to a different test according to the amount of evidence the patentee
has presented to justify a conclusion that the invention will work.
Accordingly, questions normally regarded as
relevant to insufficiency – i.e. whether the claimed invention is disclosed by
the specification sufficiently
clearly and completely for it to be carried out by a person skilled in the art
– should not be used to challenge a patent on the ground of lack of inventive
step.
The Angiotech decision may be seen to align
UK patent practice more closely with that of the European Patent
Office (EPO) which granted Angiotech’s European patent and also upheld it
following a post-grant opposition by other parties. However, differences
between the UK and EPO in assessing inventive step still exist, and the EPO is not
bound by decisions of European national courts. The Angiotech decision will
therefore have its impact mainly in the UK arena
in the following two ways.
Firstly, the decision will influence UK
Intellectual Property Office and UK court
findings on the requirement for an inventive step for patentability of patent applications.
However, patent applications will also need to show that the claimed invention
is supported by the description.
Secondly, as lack of support is not a
ground for revocation, the Angiotech decision is likely to be even more
significant for future litigation relating to challenges on the ground of lack
of inventive step to the validity of UK national patents and European patents
effective in the UK.
If you wish to read the full Angiotech decision,
click here.
If you have any queries regarding this case note or require any other
information about us please contact your usual Reddie & Grose
Partner, or Briget Harrison, Marketing Manager:
Email:
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9
July 2008
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