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High Court analyses “AgrEvo” obviousness in Merck v Shionogi

29 November 2016

Traditional challenges to the inventive step of a patent are based on an allegation that it would be obvious to take a step from a specific item of prior art to the claimed invention.

However, occasionally they may be framed on an allegation that the patent was not inventive because it made no technical contribution to the art - so called “AgrEvo obviousness” (based on the EPO Technical Board of Appeal decision).

The case of Merck v Shionogi examined the recent Court of Appeal authorities on AgrEvo obviousness and applied this to a dispute relating to Shionogi’s patent EP (UK) 1 422 218, concerning an antiviral agent for the treatment of HIV.

The court found the patent to lack inventive step and to be insufficient. If it had been valid, Merck would have infringed it.

This case also provides helpful guidance for patentees on the question of instructing multiple testifying experts in patent cases, particularly where there is an overlap in expertise of those experts. Practitioners will decide on the division of labour between such experts, and may ask an expert not to deal particular area of their expertise in evidence, to avoid duplication (and potentially inconsistency). It is clear from this decision that the court is very wary of allowing cross examination of that expert on such omissions.

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