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Is the invention obvious?

Obvious to try

4.97 The “obvious to try” test for inventive step, first used in Johns Manville Corporation’s Patent [1967] RPC 479, has not been adopted by Singapore Courts in their consideration of inventive step. However, it has been applied under the UK Patents Act 1977 and as a consequence could provide some guidance.

4.98 As recently noted in Kitchin LJ in Novartis AG v Generics (UK) Limited (t/a Mylan) [2012] EWCA Civ 1623:

“[I]n deciding whether the invention was obvious to the skilled but unimaginative addressee at the priority date the court will have regard to all the circumstances of the case including, where appropriate, whether it was obvious to try a  particular route with a reasonable or fair expectation of success. What is areasonable or fair expectation of success will again depend upon all the circumstances and will vary from case to case.”

4.99 Notably, the enquiry is one as to whether there is a “reasonable or fair expectation of success” as opposed to a “hope to succeed” (MedImmune v Novartis [2012] EWCA Civ 1234). Thus simply including something in a research project is unlikely to be enough, but if it is self-evident that what is being tested ought to work then the  invention may be considered obvious (Saint-Gobain PAM SA v Fusion Provida Ltdand Electrosteel Castings Ltd [2005] EWCA Civ 177). However, in Novartis v Generics, Kitchen LJ stated:

“But I reject the submission that the court can only make a finding of obviousness where it is manifest that a test ought to work. That would be to impose astraightjacket upon the assessment of obviousness which is not warranted by the statutory test and would, for example, preclude a finding of obviousness in a case where the results of an entirely routine test are unpredictable.”

4.100 Kitchen LJ went on to say that the “correct approach” was that set out in MedImmune v Novartis:

“[O]ne of the matters which it may be appropriate to take into account is whether it was obvious to try a particular route to an improved product orprocess. There may be no certainty of success but the skilled person might nevertheless assess the prospects of success as being sufficient to warrant a trial.” [emphasis added]

4.101 If a particular route is an obvious one to take or try, it is not rendered non-obvious merely because it is one of a number of other obvious routes. As noted by Laddie J in Brugger and others v Medic-Aid Ltd [1996] RPC 635, there “is no rule of law or logic which says that only the option which is likely to be tried first or second is to be treated as obvious for the purposes of patent legislation”. However, this does not mean that the skilled person would pursue every avenue of research relentlessly where there were only the mildest reasons for doing so.

4.102 In Lilly Icos Ltd v Pfizer Ltd [2002] EWCA Civ 1, a document disclosed the use of  compounds as vasodilators through inhibition of cGMP PDE. The Court foundthat the further use of this to treat impotence was obvious in view of a second document which disclosed that compounds that inhibited this enzyme may be useful for treating impotence. In particular, the Court considered that the claimed invention was little  more than putting into practice something that the prior art suggested and whichwould have been considered by the skilled person as being sound and worth trying.

4.103 In Omnipharm Limited v Merial [2011] EWHC 3393 (Pat), the invention related to a “spot on” formulation for the treatment of fleas in pets. The closest prior art was a “spray on” formulation comprising the same active ingredient. Despite the Court considering that it would be obvious to try to develop a spot on formulation since they have advantages in terms of ease of application, there was no basis on which the skilled person would predict that a “spot on” formulation would work. That is, the skilled person would not have had sufficient expectation of success to render the invention obvious.