Validity of patents: 2002 developments

In two cases in 2002, the Court held that a patent may be revoked in a wider variety of circumstances than was previously thought, and other guidance on validity has been given.

Claims of prior art patent do not add to disclosure of specification

In the case of Hewlett Packard v Waters, in upholding the decision of the Judge at first instance in his finding of validity and non-infringement, the Court of Appeal confirmed that when considering prior art, the disclosure of an earlier patent is that set out in its specification and not its claims. Aldous LJ stated: “I believe that Mr Hobbs’ reliance on the [prior art patent’s] claims was misplaced. They set out the monopoly claimed by [the prior art patent]. They emphasise what the inventor thought was his invention but do not add to or modify the disclosure.”

Either “classic” or “Biogen” insufficiency may invalidate a patent.

In our UK Patents Review 2002 we reported the decision at first instance in Kirin Amgen v Roche & Transkaryotic Therapies in which Neuberger J found the patent-in-suit, (relating to the production of erythropoetin), to be “Biogen sufficient” and valid, notwithstanding a finding of classic insufficiency. This approach has now been discredited by the Court of Appeal on appeal in the case. A finding of “classic” or “Biogen” insufficiency will, in either case, invalidate the patent-in-suit.

On the facts, the Court of Appeal upheld the lower Court’s finding of sufficiency. Although Claim 1 covered many millions of analogues of erythroepitin, there was no evidence before the Court that any analogue would not work. This ground of insufficiency was thus dismissed for lack of evidence.

The finding in this case may be contrasted with that of Pharmacia v Merck (also reported in our UK Patents Review 2002), in which the patent-in-suit to a wide class of compounds claiming anti-inflammatory activity due to “Cox II selectivity” was found to be invalid due to insufficiency. In that case the evidence before the Court showed that a significant number of the compounds covered by the claims did not have “Cox II selectivity”.

On appeal, the Defendant raised a further ground of insufficiency in alleging a lack of clarity of a limitation in one of the claims of the patent-in-suit. The Court of Appeal dismissed this argument as being a “lack of clarity” attack dressed up as a “lack of enablement”. The Court confirmed that such arguments in relation to the “puzzles” at the edge of a claim are not open to attack on this basis post-grant.

Patents may be revoked by patent agents or where the application for revocation has been withdrawn

two cases in 2002, the Court held that a patent may be revoked in a wider variety of circumstances than might previously have been considered.

In Oystertec v Edward Evans Barker, the Court confirmed that “any person” can apply to revoke a patent pursuant to section 72(1) of the Patents Act 1977, and that this included a patent agent acting on behalf of an undisclosed client. The Patents Act 1977 did not require the applicant to have any interest in revocation – Parliament had purposely made a patent vulnerable to attack from anyone. The motives of a person seeking revocation were irrelevant and the fact that a patent agent was acting for someone else did not give rise to any procedural unfairness.

Further, it is clear from the case of R (on the application of Ash and Lacy Building Products Limited) v Comptroller General that the Comptroller has power to continue to consider the issue of revocation in the public interest in circumstances where the claim for revocation has been withdrawn. This is the case even though the Court would have no power to continue to consider revocation in equivalent circumstances. The difference between the powers of the Court and the Comptroller were justified in that the latter operated as a specialist tribunal, which was in a better position to decide whether revocation was in the public interest.

“Lack of fair basis” may amount to insufficiency

Under the Patents Act 1949, there was a requirement that a claim be “fairly based” on the patent specification. This requirement no longer exists under the Patents Act 1977. In Tickner v Honda, the Claimant contended that the Defendant’s assertions as to insufficiency were in fact really an objection that the claims had no fair basis in the specification. Dismissing the Claimant’s arguments Jacob J stated that it was not an objection to an insufficiency attack to say that it could have been an attack of a lack of fair basis in the past. One simply asks the statutory question under section 77(1)(b) of the Patents Act 1977 and whether it overlaps with the “fair basis” attack of the past is “neither here nor there”.

Implicit disclosure from patent application is limited when assessing added matter

In Storage Computer v Hitachi, the Defendant raised an objection to the validity of the patent-in-suit on the basis that there had been “added matter” in the specification as granted, compared to that applied for. In applying the well accepted legal approach on such issues (as set out in Bonzer v Intervention), the Judge observed that: “the scope for implicit disclosure is limited”. The matter in question must be clearly and unambiguously derivable from the application as filed, if it is not to be considered to have been added. Support for this position is set out in the guidelines for examination in the European Patent Office which were quoted by the Judge in the case.

Conventional mind-set of skilled reader is important

In Stena v Irish Ferries, Laddie J referred to the “conventional mind-set” of the skilled reader in considering the Defendant’s attack of obviousness. He held that the patent was not obvious since he had not been persuaded that the un-inventive skilled man or team in the art at the priority date working from the common general knowledge would have “broken out of the conventional mind-set”. This “mind-set” forms part of the “mantle of the skilled reader” which the Court is required to assume in the second step of the Windsurfing approach. In Panduit v Band-It, the Court of Appeal overturned the first instance decision on obviousness as a result of the Judge’s failure to adopt the mantle of the hypothetical skilled reader.

No separate law of collocation

In the case of SABAF v MFI, the Court of Appeal overruled the decision of Laddie J stating that there is no separate law of collocation, and that a “mere collocation” is no more than a species of obviousness judged by the statutory tests.

The Court of Appeal considered that Laddie J, in revoking the patent-in-suit at first instance, had focused too much on the two elements he claimed were a “mere collocation” rather than the statutory question “is the invention obvious?”. Laddie J had not also applied the well established Windsurfing test. Applying this test, the Court of Appeal found the patent to be valid and not obvious.

Importantly, the Court of Appeal has clarified the position on collocation. Counsel for the Respondent had argued that the pre-1977 law was still valid, namely that the collocation of two integers, both of which were obvious when considered individually, and which did not interact, would be presumed obvious. The position is now clear – there is no such presumption. The Court must consider, on the facts, whether the act of placing two particular elements together would involve an inventive step and whether or not the elements themselves are obvious individually.

The same decision was arrived at by Pumfrey J in Storage Computer v Hitachi, the hearing in which was before the judgment of the Court of Appeal in SABAF v MFI. Pumfrey J indicated that, even had the Court of Appeal decision not been reported in the intervening period, in any event he would not have accepted Laddie J’s decision at first instance in SABAF v MFI. The only test was whether something falling within the claim was in fact obvious at the date; there were no subsidiary legal propositions.

An enabling disclosure is one where two inventors have “in substance” reached the same invention

In the case of Synthon v SmithKline Beecham, Jacob J gave consideration to the law of novelty or anticipation. There are two ways of proving anticipation: the “enabling disclosure” and the “inevitable result” routes. Jacob J stated that “the “inevitable result” route is really about “anticipation by happenstance”. Thus, the earlier proposal, when carried out, happens to fall within the later claim even though the earlier inventor had a different idea.

The case, however, turned upon the “enabling disclosure” route of anticipation. In finding the patent-in-suit to have been anticipated by virtue of an “enabling disclosure”, Jacob J stated that the key question was whether the two inventors had “for practical purposes” disclosed the same invention. This involved the question of whether the prior inventor had “in substance” disclosed what the later inventor claimed. Jacob J considered that this view was essential if one was not to have a purely formalistic approach to anticipation. On the facts Jacob J found SmithKline Beecham’s later disclosure, for all practical purposes, to be equivalent to Synthon’s disclosure of a wide variety of methods of making crystalline paroxetine mesylate. The patent was thus found to be anticipated.