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My invention might not work – is it patentable?
22 September 2008
Answer - it could be.
Inventions must be novel and contain an
inventive step in order to be capable of being protected by a
patent. There has been some recent debate as to whether an
“inventive step” requires the invention to be shown to work, or
whether patentability requires only that the invention is worth
trying. Overturning decisions from the lower courts the House
of Lords has now given its view on this issue in Conor Medsystems
Inc v Angiotech Pharmaceuticals Inc.
Angiotech, a Canadian company, applied for a
patent for a stent (preventing the walls of arteries collapsing). A
problem associated with the insertion of stents is that this can
sometimes cause tissue damage, which promotes the development of
new tissue, which can itself narrow the healed artery (a process
called restenosis). The stent which was the subject of the patent
application is coated with taxol (a substance used in cancer
treatments) to prevent restenosis.
It was argued successfully before the High
Court and the Court of Appeal that, since the patent specification
did not contain data relating to whether and how coating stents
with taxol would work, and that on this basis the patent was no
more than an idea that it might work, the patent did not contain an
inventive step and was therefore invalid.
The House of Lords took a different view,
deciding that there was no requirement that the patent
specification must demonstrate that the invention would work or why
it would work. The correct question is whether the invention
is obvious. On this basis the patent was found to be valid.
This decision, which is in line with two
parallel Dutch cases, has been welcomed by patentees and is
important for all those considering the validity of their own and
other’s patents. As a result of the decision, a patent’s validity
cannot be attacked on the basis that the invention would be carried
out without any expectation of success. However, it has not
affected the continuing requirement that the specification must
include sufficient information to ensure that the invention can be
carried out.
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