An obvious observation about obviousness

The law of patents is not always patently clear, but one point is obvious. The question of obviousness is not one that admits of endless elaboration. It is, in fact, obvious.

In a judgment handed down yesterday, MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234, the Court of Appeal, dismissing appeals from Arnold J [2011] EWHC 1669 (Pat) and [2012] EWHC 181 (Pat) made a number of observations on the matter.

Kitchin LJ said, at para 93

The starting point is that an invention must involve an inventive step, and it is to be taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to matter which properly forms part of the state of the art at the priority date (sections 1(1) and 3 of the Patents Act 1977, corresponding to articles 52(1) and 56 of the European Patent Convention).

Surveying the authorities on obviousness he concluded, at para 93:

Ultimately the court has to evaluate all the relevant circumstances in order to answer a single and relatively simple question of fact: was it obvious to the skilled but unimaginative addressee to make a product or carry out a process falling within the claim?

Lewison LJ added a “few words of my own on the question of obviousness”, at paras 178 to 182 (including a stern admonition at para 181 which will no doubt be ignored in the same way as similar warnings have been in the past):

1. As Jacob LJ pointed out in Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 [2010] FSR 18 (§ 17):

So at bottom the question is simply whether the invention is obvious. Any paraphrase or other test is only an aid to answering the statutory question.”

1. The same point is made in Johns-Manville Corporation’s Patent [1967] RPC 479, which is the starting point in domestic law of the idea of “obvious to try”. In that case Diplock LJ said:

I have endeavoured to refrain from coining a definition of “obviousness” which counsel may be tempted to cite in subsequent cases relating to different types of claims. Patent law can too easily be bedevilled by linguistics and the citation of a plethora of cases about other inventions of different kinds. 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.”

1. In the same case Willmer LJ said:

I would, however, desire to associate myself particularly with what Diplock, LJ said as to the undesirability of coining phrases for the purpose of paraphrasing the words of the Act.”

1. These sentiments seem to have been largely ignored by the profession. It cannot be said too often that the statutory question is: was the invention obvious at the priority date? It is not: was it obvious to try? In my judgment too much elaboration of the statutory question has been attached to it. The questions of the degree of expectation of success and the length of time thought to be needed to undertake a trial have taken on lives of their own. I think that this happened in our case. Insistence on the statutory question is not a novel thought. It is also an obvious one: see Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2007] EWCA Civ 5 [2007] RPC 20 (§§ 44, 45 per Jacob LJ, approved on appeal: [2008] UKHL 49[2008] RPC 28 § 42 per Lord Hoffmann; § 49 per Lord Walker; § 55 per Lord Neuberger). In Generics (UK) Ltd v H Lundbeck A/S [2007] EWHC 1040 (Pat) [2007] RPC 32 (§72) Kitchin LJ (as he then wasn’t) said:

The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”

1. This statement of principle was also approved by the House of Lords in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. One of the important points, to my mind, is that all these considerations interact with each other. In short, it all depends…

Take this as a sort of practice note.

We aren’t going to report it because it doesn’t say anything that hasn’t been said before, and the endless reporting of cases which repeat what has already been said before only adds to the temptation to cite them, ad infinitum, and the courts (for obvious reasons) complain.

For a more technical appreciation of the background to the case, see the commentary provided by EIP patent attorneys here and by the EPLaw patent blog here.