By Jon Gowshall —

Over
the past few years the UK patents courts have moved closer to the approach of the
European Patent Office (EPO) on inventive step.  In particular, the UK courts
have started to acknowledge the importance of expectation of success when
dealing with obviousness.  A recent
decision (MedImmune Limited v Novatris
Pharmaceuticals UK Limited) reinforced this shift in approach.  It also showed how the court considered the
effect of speculative prior art in an obviousness objection.

The Case

MedImmune
was the owner of a patent directed to the use of antibody phage displays to
select antibody fragments and isolate their corresponding DNA.  The judge in the England and Wales High Court
(Patents Court) decided that the patent lacked inventive step.  The England and Wales Court of Appeal upheld
this decision.

Professor
Smith, the leader in the field, generated the two pertinent pieces of prior
art.  The first was a paper published by
Professor Smith and his greater history student, Steve Parmley.  This document disclosed a method of using a phage
display to identify peptides of interest.  The authors expressed reservations over the ability of the display to be
used for larger proteins.

Subsequently
Professor Smith gave a presentation at a conference.  During that presentation Professor Smith
raised the idea that his phage display procedures might be used to screen
antibody libraries.  He explained that he
was intending to do this, and he was very hopeful that it he could make it
work.

The Judgement

The
Court of Appeal followed the High Court judge's reasoning on obviousness.

Both
courts agreed that the claimed invention was inventive over the earlier Smith
and Parmley paper.  The courts looked at
the expectation of success in using the disclosed phage display to identify
antibodies.  The paper expressed concerns
over possibly using the technology with larger proteins.  Antibodies are such larger proteins.  Therefore the court decided that the claimed
technology was inventive over this paper, because the worker would have no
reasonable expectation that the technology described in the paper could be used
for antibodies.

However,
both courts agreed that the claims were obvious in the light of the paper and Professor
Smith's subsequent conference presentation. 
The courts acknowledged that Professor Smith had not carried out any of
the work.  However, they both decided
that it was a sufficient spur that he, a leader in the field, had suggested the
application of the technology to antibodies, and was positive about the
eventual outcome.  The courts also took
into consideration that the surrounding technology had moved on between the
publication of the paper and the conference giving the skilled person more
confidence about using the technology as suggested by Professor Smith in his
presentation.

Conclusions

The
UK courts continue to adapt their approach on obviousness, to more closely
follow that of the Boards of Appeal of the EPO. 
In particular, when they consider inventive step, the UK courts will
look at the expectation of successfully moving from the prior art to the
invention.

This
case also shows that some prior art can be devastating, even if it is merely
speculative, as long as it makes the link between the prior art and invention
with enough authority.

This article was reprinted with permission from Forresters.