What is obvious – the route or the destination?

When this Kat was an IPKitten, he learnt that, in the case of a product claim defined structurally (as opposed to functionally), the approach taken by patent offices such as the EPO to the analysis of inventive step was to investigate whether the structural features themselves were obvious, not to enquire whether the process of arriving at the structure was obvious.

For this reason, he was a little surprised by the EPO Board of Appeal Decision T 777/08 Atorvastatin Polymorphs (OJEPO 12/11).  This Kat has already blogged a factual note about this case, but, in essence, the Decision states that a claim to a crystalline form or polymorph of a compound [defined, for example, by its X-ray diffraction data] will in general lack inventive step over prior art disclosing the amorphous form of the same compound, unless in any particular case there is a technical prejudice or unexpected property of the polymorph discovered.  The main reason given was that screening for polymorphs is a routine procedure.

[Note for non-chemists – in a crystalline form the molecules of a solid substance are packed in a regular manner; if more than one such packing exists for the same substance it is termed polymorphism, and polymorphs have different X-ray diffraction data from each other; while in an amorphous form the molecules of a solid are not packed regularly.]

The counter view, following the reasoning to which this Kat has been accustomed, is that although it may be routine to look for crystalline forms, there is absolutely no way to predict what crystalline form(s) will be found, and therefore any specifically defined crystalline form is not obvious.

Last week this Kat was listening to Stephen Ingham’s CIPA Webinar on Antibody Patenting, in which technical field a similar dichotomy arises – the EPO since T 735/00 only acknowledges inventive step for an antibody (claimed structurally) “if and when there is evidence that a claimed monoclonal antibody prepared by routine methods shows unexpected properties”.

Stephen pointed out that this was inconsistent with the approach taken in the field of small molecule chemistry.  And now within the field of small molecule chemistry we have another inconsistency.

Which leaves this Kat pondering:

1)     Can there be any justification for applying the tests of obviousness differently in different technical fields?

2)     Should the patentability of a claim defined in structural terms be determined by reference to features other than the structural features recited?

What do our readers think?