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Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Limited (t/a Mylan) UK, Court of Appeal Court, Floyd LJ, Arnold J & Sir Robin Jacob, 26 April 2016

This appeal was an appeal from the decision of Mr Justice Sales in which he held European Patent (UK) 1 448 207 invalid for obviousness.

The appeal was based on two specific points both of which were dismissed.

The first point which was not pursued in oral argument was whether there was any requirement in English law for prior art to be written down in order for the art to form the basis of an obviousness attack. This argument was quickly dismissed. Sir Robin Jacob, giving the lead judgement stated that it was established law since at least Humpherson v Syer (1887) 4 RPC 407 that no such requirement existed and that the reference to “oral description” in Article 54(2) which defines the state of the art to comprise “everything made available to the public by means of a written or oral description” clearly did not require prior art to be recorded in a permanent form.

The second point concerned the correction of an error in a prior art document. A prior art paper which was relied upon as the basis of an obviousness attack referred to a drug dosage as being a single dosage of 1.5g. The patent specified a dosage of 1.5mg (i.e. a dosage a thousandth of the dose stated in the prior art paper). Evidence established that a person skilled in the art would clearly realise that this was a mistake as a 1.5g dose was too massive to be credible.

At first instance the judge had held that it would have been obvious that the dose amount was suspect and the obviously sensible course for the person skilled in the art would have been to contact the author of the paper to establish what dose was actually intended. The question before the Court of Appeal was whether or not this approach was permissible.

The Court approved the approach adopted by the judge at first instance.

Sir Robin Jacob stated that he could not see there to be any logical distinction between a case where it is obvious to look something up and one where it is obvious to ask and clear that the answer would be given and would be clear. The notional asking is exactly equivalent to the notional looking up.

Lord Justice Floyd also approved of the approach that the judge had taken. Whilst noting that in the context of an attack based on lack of novelty the absence of the correct dosage in the prior art would make a patent novel and that it would not be legitimate to pretend that the paper disclosed something that it did not, obviousness is concerned with what the skilled person would do in the light of the disclosure contained in the prior art. In the present case the skilled person would have been prompted by the state of the art to ask for a specific piece of information from a source which would be obvious, and that the information requested would have been freely given.

A copy of the judgement can be found here.

Headnote: Nicholas Fox, Simmons & Simmons