Novartis fails the priority test - more patents fall
This moggy (having started calling myself this I cannot stop) was perusing BAILII and saw a judgment that came out on Friday that he had not seen up until now.
It is another weighty Arnold J special stretching to 187 paragraphs. The IPKat has given it only the briefest of reviews, but wanted to share a limited report with his dear readers straight away.
The claimants in the case are Hospira and Generics t/a Mylan, who sought to revoke (and have now succeeded in revoking) two patents of Novartis relating to use of the bisphosphonate zoledronate for treatment of osteoporosis. The patents are EP(UK) 1296689 and its divisional 1591122. The claims of the two cases were similar, the parent having Swiss form claims, and the divisional EPC 2000 medical use claims, in both cases the administration being specified to be "intravenously and intermittently and in which the period between administrations is at least about 6 months".
It was conceded by Novartis that if the claims were not entitled to priority then the patents are invalid in the light of the intervening publication Reid et al, "A single annual injection of the bisphosphonate, zoledronic acid, stably reduces bone turnover and increases bone density in postmenopausal osteoporosis", Bone 28(5), S89 (2001) ("Reid"). Although Reid is not one of the named inventors of the patents, as far as the IPKat can see this paper originated from the inventors and names them as co-authors.
Sure enough, Mr Justice Arnold found the priority claim invalid and therefore held the patents invalid. He rejected the other obviousness argument that had been put forward, but also found the patents invalid for insufficiency.
There is doubtless much that could be said about this decision. The IPKat shall for today limit himself to one observation - just one week earlier in two cases between Apple and Samsung (here and here), Mr Justice Floyd found a number of Samsung patents invalid in the light of an invalid priority claim and admitted invalidity in that event.
Is the priority system a false comfort, allowing applicants to publish or allow publication when in fact the protection provided is illusory? Or is it just applicant behaviour that needs to be modified? Is it possible to envisage a system better able to accommodate the requirements of novelty of patents on the the one hand, and the commercial imperative to publish on the other?
As usual, dear readers, over to you.
Jeremy's note: I am not going to accept any more spiteful and mean-spirited anonymous comments about the function of this blog in drawing the early attention of readers to the publication of cases which members of the blogging team may not yet have had the time or the opportunity to read. Will any reader who wishes to continue this line of commenting please give a verifiable name.
Sure enough, Mr Justice Arnold found the priority claim invalid and therefore held the patents invalid. He rejected the other obviousness argument that had been put forward, but also found the patents invalid for insufficiency.
There is doubtless much that could be said about this decision. The IPKat shall for today limit himself to one observation - just one week earlier in two cases between Apple and Samsung (here and here), Mr Justice Floyd found a number of Samsung patents invalid in the light of an invalid priority claim and admitted invalidity in that event.
Is the priority system a false comfort, allowing applicants to publish or allow publication when in fact the protection provided is illusory? Or is it just applicant behaviour that needs to be modified? Is it possible to envisage a system better able to accommodate the requirements of novelty of patents on the the one hand, and the commercial imperative to publish on the other?
As usual, dear readers, over to you.
Jeremy's note: I am not going to accept any more spiteful and mean-spirited anonymous comments about the function of this blog in drawing the early attention of readers to the publication of cases which members of the blogging team may not yet have had the time or the opportunity to read. Will any reader who wishes to continue this line of commenting please give a verifiable name.
