Approaches to Obviousness in Patent Claims Converging in Europe, US and Canada

In Generics UK Ltd v Daiichi ([2009] EWCA Civ 646), which concerned the patentability of levofloxacin, the English Court of Appeal (Court) recently considered the test for obviousness in patent claims, interpreting the principles set out by the House of Lords in Conor v Angiotech ([2008] UKHL 49). (If a patent claim is for something that was obvious, it is invalid. This is because a patent can only extend to an invention. If something is obvious, it is not inventive and, therefore, not an invention. Thus, a patent claim is only enforceable against an infringer if it is for something that was non-obvious. Courts in many jurisdictions have struggled to specify how an alleged infringer may establish obviousness, and the tests are now quite lengthy). The Court considered the four-stage "Windsurfing/Pozzoli" test for studying obviousness, which was recently adopted by the Supreme Court of Canada (see "Supreme Court of Canada Rules Selection Patents are Acceptable and Refines Tests of Anticipation and Obviousness," E-TIPS®, Vol 7, No 11, November 19, 2008). Briefly stated, the test requires: (1) identifying the notional skilled person and common general knowledge; (2) identifying or construing the inventive concept; (3) identifying aspects that distinguish the inventive concept from the state of the art; and (4) determining whether those aspects would have been obvious to the skilled person. The Court stated that this test is simply a structure by which the question, obvious or not, is to be approached. The Court further noted that "obvious to try" is a formula that may be useful in considering obviousness, but a finding of obviousness requires that "a particular route is an obvious one to take or try" and "it is only obvious to try when there is at least a fair expectation of success." This requires more than being "worthwhile exploring", so that the mere fact that something is worth a try does not make it obvious, as some prior decisions have been interpreted. Furthermore, the fact that there are a number of routes that are obvious to try does not render any particular such route less obvious. In the Court's view, the English approach does not differ from the EPO "problem/solution" approach, which applies at the fourth stage of the test with the first three stages being implicit. The US approach, as laid out in KSR International Co v Teleflex Inc (2007) (see "US Supreme Court Rules on Issue of Obviousness in Patent Law," E-TIPS®, Vol 5, No 22, May 9, 2007), also seems consistent with that of the English Court. KSR stated that the fact that a combination was obvious to try might show that it is obvious under patent law, but made it clear that there must be some good reason to attempt such an approach. Canadian courts have similarly rejected the "worth a try" approach, and stated that being "obvious to try" requires that the invention must be more or less self-evident (see "Federal Court of Appeal Clarifies the "Worth a Try" Test of Obviousness," E-TIPS®, Vol 7, No 17, February 25, 2009). For the full reasons for judgment, see: http://www.bailii.org/ew/cases/EWCA/Civ/2009/646.html For a related article, visit: http://dww.local/?page_id=1371 For the KSR decision, see: http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf Summary by: Tom Feather