The House of Lords has delivered a patent law decision which is likely to be welcomed by innovative companies throughout the UK and the pharmaceutical industry in particular.
Angiotech Pharmacetucials Inc and the University of British Columbia (collectively Angiotech) owned a patent concerning a stent coated with taxol for treating or preventing restenosis. Conor Medsystems Inc (Conor), a competitor of Angiotech, applied to revoke the patent in both the UK and the Netherlands.
The UK High Court and the Court of Appeal found the patent obvious, in contrast to the finding of the court in the Netherlands. The parties then settled, but Angiotech appealed the decision to revoke its patent to the House of Lords.
The lower UK courts had agreed with Conor's argument that the patent did not show that taxol would actually treat restenosis and accordingly the inventive concept was no more than that taxol was worth trying without any expectation of success. That, said Conor, was obvious. The Court of Appeal agreed with the High Court on the ground that there was no disclosure, showing that taxol actually works to prevent restenosis.
However, the House of Lords unanimously overturned the Court of Appeal decision. It found that the Court of Appeal should have held that the teaching of the patent was that a taxol-coated stent would prevent or treat restenosis and have asked whether that concept was obvious at the priority date.
The Dutch Court had correctly identified this as the test and had correctly held that the patent was not obvious. There was no requirement in patent law that the specification must demonstrate by experiment that the invention will work or why it will work. Otherwise, many patents with a potential to reap high rewards, such as those in the field of pharmaceuticals, would be rendered obvious.
Gordon Harris, head of Intellectual Property (IP), says, "The Court of Appeal's decision in Angiotech was a new high water mark for obviousness in the UK. This latest decision is a step in the right direction. But it is a shame that the Lords did not take the opportunity to conduct a wider review of obviousness in the UK."