Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat) (21 December 2011)

Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat) (21 December 2011)

The patents were found invalid for obviousness. The skilled team would have known of spot-on formulations generally thought to act non-systemically, and the inventive concept of the claims did not involve a step that would not have been obvious to the skilled person at the priority date. The amendments proposed did not cure the lack of inventive step. The evidence did not establish that the mechanism of non-systemic distribution was part of the common general knowledge, but the existence and use of spot-on formulations was. The claims as proposed to be amended were therefore invalid for lack of inventive step.

Citation
[2011] EWHC 3393 (Pat)
Parties
Claimant: Omnipharm Limited; Defendant: Merial
Jurisdiction
England and Wales
Judgment Date
21 December 2011
Procedural Posture
Patent Revocation and Declaration of Non Infringement / First Instance Judgment
Outcome
Patents revoked for lack of inventive step (obviousness).
Legal Topics
Patent Validity, Obviousness, Insufficiency, Added Matter, Non Infringement, Amendment of Patent Claims
Intellectual Property Patents Patent Validity Obviousness Insufficiency Added Matter Non Infringement Amendment of Patent Claims

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Parties

Omnipharm Limited

Claimant

Merial

Defendant

Procedural Posture

Patent Revocation and Declaration of Non Infringement / First Instance Judgment

Legal Issues

  1. 1 Whether the patents in suit (European Patent (UK) No. 0 881 881 and UK Patent No. 2 317 564) are invalid for obviousness and/or insufficiency; whether proposed amendments introduce added matter; whether the claimant is entitled to declarations of non-infringement; construction of patent claims

Ratio Decidendi

The patents were found invalid for obviousness. The skilled team would have known of spot-on formulations generally thought to act non-systemically, and the inventive concept of the claims did not involve a step that would not have been obvious to the skilled person at the priority date. The amendments proposed did not cure the lack of inventive step. The evidence did not establish that the mechanism of non-systemic distribution was part of the common general knowledge, but the existence and use of spot-on formulations was. The claims as proposed to be amended were therefore invalid for lack of inventive step.

Court Disposition

Patents revoked for lack of inventive step (obviousness).

Orders

  • Revocation of European Patent (UK) No. 0 881 881 and UK Patent No. 2 317 564.
  • Declarations of non-infringement not granted as the substantive issues were resolved by revocation.