On appeal from: [2017] EWCA Civ 1671

This appeal considered what the correct test is for obviousness in the context of assessing the validity of a pharmaceutical patent.

The Supreme Court unanimously dismissed the appeal.

The Court considered that, since the enactment of the 1623 Statute of Monopolies, the purpose of a grant of a patent has been to encourage innovation. The Court held that the question of obviousness must be considered on the facts of each case.

It identified ten considerations in determining obviousness:

  1. whether at the priority date something was “obvious to try”;
  2. the routine nature of the research and any established practice of following such research through to a particular point;
  3. the burden and cost of the research programme;
  4. the necessity for and the nature of the value judgments which the skilled team would have;
  5. the existence of alternative or multiple paths of research;
  6. the motive of the skilled person;
  7. the fact that the results of research which the inventor actually carried out are unexpected or surprising;
  8. one must not use hindsight;
  9. whether a feature of a claimed invention is an added benefit; and
  10. the nature of the invention.

The Supreme Court concluded that, in the present dispute, the balance or symmetry in patent law and the pre-established or at least readily foreseeable target of the skilled team’s tests hold the key to its resolution. The Court considered the trial judge’s findings of what would have been the sequence of the tests, which did not depend upon hindsight, included the finding, which the evidence clearly justified, that the team, having found a therapeutic plateau, would be very likely to test lower doses and so come upon the dosage regime which is the subject matter of the patent. It concluded that the Court of Appeal was entitled to treat the judge’s failure to appreciate the logical consequences of the finding – that it was very likely that the skilled team would continue the testing – as an error of principle which allowed an appellate court to carry out its own evaluation. Therefore the Supreme Court held that the Court of Appeal was entitled to interfere with the trial judge’s assessment of obviousness and to hold that the 181 patent was invalid for lacking an inventive step.

For judgment, please download: [2019] UKSC 15
For Court’s Press Summary, please download: Court’s Press Summary
For a non-PDF version of the judgment, please visit: BAILII

To watch the hearing, please visit: Supreme Court Website (19 Nov 2018 morning session) (19 Nov 2018 afternoon session) (20 Nov 2018 morning session)