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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 others patents. As a result of the decision, a patents 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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The content on this page is provided for the purposes of general interest and information. It contains only brief summaries of aspects of the subject matter and does not provide comprehensive statements of the law. It does not constitute legal advice and does not provide a substitute for it.

Mark Daniels

Mark Daniels

Partner and Head of Business Services

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