Glaxo Group Ltd -v- Patents Act [2009] IEHC 277 (26 June 2009)

Glaxo Group Ltd -v- Patents Act [2009] IEHC 277 (26 June 2009)

The Court found that, as of the priority date, the combination of salmeterol and fluticasone propionate in a single inhaler for regular use in asthma was obvious to a person skilled in the art. There was no sufficient technical prejudice or unexpected effect to render the combination inventive. The patent did not disclose any novel formulation or delivery system, and the combination was within the routine competence of the skilled team. Therefore, the patent lacked an inventive step and was invalid for obviousness.

Citation
[2009] IEHC 277
Parties
Petitioner: Ivax International B.V. trading as Ivax Pharmaceuticals Ireland Limited; Respondent: Glaxo Group Limited
Jurisdiction
Ireland
Judgment Date
26 June 2009
Procedural Posture
Patent Revocation/challenge / High Court Judgment
Outcome
Patent revoked for lack of inventive step (obviousness).
Legal Topics
Obviousness, Inventive Step, Pharmaceutical Patents, Supplementary Protection Certificate, Patent Revocation
Intellectual Property Law Patent Law Obviousness Inventive Step Pharmaceutical Patents Supplementary Protection Certificate Patent Revocation

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Parties

Ivax International B.V. trading as Ivax Pharmaceuticals Ireland Limited

Petitioner

Glaxo Group Limited

Respondent

Procedural Posture

Patent Revocation/challenge / High Court Judgment

Legal Issues

  1. 1 Whether the combination of salmeterol and fluticasone propionate in a single inhalation medicament (Seretide) was obvious to a person skilled in the art as of the priority date and thus not patentable under the Patents Act 1992 and relevant European law.
  2. 2 Whether there existed a technical prejudice in the state of the art against combining these two compounds, such that overcoming it would constitute an inventive step.
  3. 3 Whether the patent specification sufficiently disclosed the invention and whether the claims were supported by the description.

Ratio Decidendi

The Court found that, as of the priority date, the combination of salmeterol and fluticasone propionate in a single inhaler for regular use in asthma was obvious to a person skilled in the art. There was no sufficient technical prejudice or unexpected effect to render the combination inventive. The patent did not disclose any novel formulation or delivery system, and the combination was within the routine competence of the skilled team. Therefore, the patent lacked an inventive step and was invalid for obviousness.

Court Disposition

Patent revoked for lack of inventive step (obviousness).

Orders

  • Irish Patent No. 65535 and Supplementary Protection Certificate No. 1999/007 are revoked.