Conor Medsystems Inc v Angiotech Pharmaceuticals Inc
Obviousness is judged by reference to the claim, not the specification, and a patent need not show that the invention works, as long as it is not obvious to try.
Facts
Angiotech held a patent for a stent, a device used to keep arteries open, coated with taxol, a drug, to prevent the artery from narrowing again. Conor challenged the patent's validity, arguing that it was obvious to try taxol as a coating, because it was one of a number of possible drugs, and that the patent did not show that taxol would work.
Legal principle
The House of Lords held that the patent was valid. Lord Hoffmann said that the question of obviousness must be considered in relation to the invention as claimed, which was a stent coated with taxol, and that the question was whether it was obvious to use taxol, not whether it was obvious that it would work. It was not enough that it was obvious to try taxol among many possible candidates, unless there was a reasonable expectation of success. A patent does not need to demonstrate by evidence that the invention works, as long as it is plausible.
Related cases on patents: patentability and validity
- Aerotel Ltd v Telco Holdings Ltd; Macrossan's Application [2006] EWCA Civ 1371, [2007] RPC 7
- Biogen Inc v Medeva plc [1997] RPC 1
- Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2024] EWCA Civ 825
- Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13
- Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] RPC 6
- Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC 76
- Oliver Brüstle v Greenpeace eV Case C-34/10, [2011] ECR I-9821
- Pozzoli SpA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37
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