Inventive step, obvious-to-try and hindsight

Gedeon Richter plc v Bayer Schering Pharma AG [2011] EWHC 583 (Pat), 17 March 2011, is a recent decisoin of Mr Justice Floyd in the Patents Court for England and Wales.  A keenly-fought contest which required six days of hearings, it resulted in a 186-paragraph judgment in which Richter, a Hungarian company, sought revocation of two Bayer contraceptive patents which are currently in the midst of opposition proceedings before the European Patent Office. In the result, Floyd J held some of Bayer's claims were invalid for obviousness but not for added subject matter.

PatLit picks up just one of the many points in this decision: the effect of something being obvious to try. In Conor v Angiotech (see the IPKat here) the House of Lords said that the notion of something being obvious to try was useful as a means of establishing obviousness only where there was a fair expectation of success resulting from trying it. However in this case both parties agreed that, while it would have been obvious to carry out in vitro pre-formulation testing, such tests would be performed in ignorance of the outcome and of whether any specific formulation strategy would have a fair expectation of success. There was no general rule: rather, it was necessary to look at each putative step which the skilled person was required to take and only then decide whether it was obvious.  One could then ask an overall question as to whether this step-by-step analysis, performed after the event, might not in fact be unrealistic or produce a result that was driven by hindsight.