Popular belief in patent litigation circles is that defendants, accused of a patent infringement like to turn to the UK courts to get the patent invalidated. The general presumption is that UK patent courts are skeptical of what comes out of the European Patent Office and are more receptive to invalidity arguments than their German, Dutch or French peers. Brian Whitehead, however, is of the opinion that English courts appear to have relaxed the formerly strict requirements for obviousness. He relies purely on the UK courts’ judgments from 2004-2008. Although he admits that the number of patents considered year on year is too small to allow any statistical trends to be ascertained above the “noise”, in his view commentators, accusing English courts of being patentee unfriendly, are not always right. In his opinion this has a lot to do with the type of patents that got litigated in the English courts. Nonetheless, it may be the case that English judges have now reacted to the trends in industry, particularly the pharma industry, towards improvement/formulation patents. He published his findings in the Journal of Intellectual Property Law & Practice[1]. Some of his findings:
1. Novelty
The requirements of disclosure and enablement have been distinguished, meaning that attacks on novelty must be tightly focused and rely on prior art which ‘plants a flag’ on the invention disclosed by the patent.
2. Inventive step
When considering inventive step, it is now clear that the issue of obviousness is to be assessed on the basis of what is claimed, rather than what is disclosed in the patent specification. Furthermore, if a revocation action is based on an ‘obvious to try’ argument, the court is required to decide, on the facts, what level of success the skilled person would need to foresee in order to render the patent in question invalid for obviousness. In some circumstances, the fact that a skilled person would consider the alleged invention ‘obvious to try with a reasonable expectation of a beneficial result’ (the old test) may no longer be sufficient to revoke the patent.
3. Insufficiency
The scope of ‘Biogen insufficiency’ has been circumscribed, and the doctrine is inapplicable to straightforward product claims.
[1] “Trends in English patent litigation: are patents more likely to be upheld as valid now than 5 years ago?”, JIPLP, 2010, Vol. 5, No. 3 (Oxford University Press)