How can the meaning of a patent disclosure change when none of the words change? When the claims have been amended so that the invention is no longer the same. This clever argument, advanced by Simon Thorley QC for the appellant in
Gedeon Richter Plc v Bayer Pharma AG [2012] EWCA Civ 235, nicely illustrates the theoretical point that meaning turns on context, not just on the text, and it was accepted by both the Court of Appeal [51], and by Floyd J at first instance [2011] EWHC 583 (Pat), [76]. Unfortunately, cleverness and theory do not win appeals by themselves, and in the end this point, while true, didn’t make any difference.The point arose in an added matter argument respecting an invention related to a contraceptive tablet. The key sentence was “The composition of the invention may be formulated in any manner known in the pharmaceutical art.” In the parent application the claim was to a composition in a particular dosage range, so the teaching of this sentence was that “such a composition may be formulated in any manner known in the pharmaceutical art” [48]. In the first divisional patent at issue the claim had been amended to specify a particular dissolution rate, so “the skilled addressee is now being told that any method known to him as part of his common general knowledge can be employed to achieve the rapid dissolution advantage of the invention” [49]. While the meaning of this sentence changed, it did not constitute added matter, because the particular methods described in the disclosure were provided only by way of example, and the patent application, properly understood, had also taught that rapid dissolution could be achieved by any method known in the art. A similar attack on a second divisional failed for similar reasons. |
| Ob via, or not? |
Apart from this, the Court of Appeal decision has a nice summary of the law of added matter at [11]-[17]. Also, in dismissing an appeal against Floyd J’s finding of non-obviousness, Sir Robin Jacob and Kitchin LJ, who wrote jointly for the Court of Appeal, picked up a new (to this Kat) description of obviousness: “This invention was not ob via – in the way” [73]. A quick search reveals that this phrase had been previously used by Sir Robin in Leo Pharma A/S v Sandoz Ltd, [2009] EWCA Civ 1188 and before that in Bristol Myers Squibb Co v Baker Norton Pharmaceuticals Inc, [1999] RPC 253. In General Tire, [1972] RPC 457 at 497 Sachs LJ said, “‘Obvious’ is, after all, a much-used word and it does not seem to us that there is any need to go beyond the primary dictionary meaning of ‘very plain’” – but it’s always fun to fancy things up with a little Latin. (Merpel wonders, if the Act had said "very plain," would the courts explain how that just means "obvious"?)
