Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan)

For obviousness, the relevant question is what the skilled person would do in the light of the state of the art. The inquiry is not confined to information contained in a prior-art document or forming part of common general knowledge. Information may be taken into account where the skilled person would obtain it as a matter of routine, including by making an obvious enquiry of an obvious source, if the answer would be freely given and clear. The skilled person cannot be assumed to obtain confidential information or information requiring insight or undue effort. This differs from novelty: a document cannot be treated as disclosing information absent from it. The approach is fact-sensitive, and the route from disclosure to the further information must be precise and non-inventive.

The patentee appealed against the decision of Sales J in the Patents Court, reported at [2014] EWHC 1666 (Pat), holding its patent for a single-dose levonorgestrel emergency contraceptive composition invalid for obviousness. The prior publication, known as Killick, reported a single-dose trial but stated the dose as 1.5 g rather than 1.5 mg. The judge found that the skilled person would recognise the error, contact an obvious source and obtain an unambiguous correction. The appeal raised whether the court could rely on information obtained through such a notional enquiry, and whether prior art had to exist in permanent written form.

The Court of Appeal unanimously dismissed the appeal. Sir Robin Jacob gave the first judgment; Arnold J and Floyd LJ agreed. The court held as follows.

1. Jurisdiction. Although permission to appeal had initially been limited to the permanent form point, the Court of Appeal had jurisdiction to hear the argued point concerning the skilled person’s enquiry. The order could either be amended or read more widely because the appellant’s redrafted grounds and skeleton argument had been approved.
2. Permanent form. The permanent form point was not pursued in oral argument. The court nevertheless stated that oral prior disclosure may constitute prior art. That had been established in Humpherson v Syer (1887) 4 RPC 407 and was reflected in article 54(2) of the European Patent Convention, which includes material made available by oral description. There was no requirement that the information be permanently recorded.
3. Obviousness. The question is what the skilled person would do in the light of the state of the art. It is not confined to what is expressly disclosed in the prior art or to common general knowledge. Information may be considered where the skilled person would acquire it routinely. The principle stated in KCI v Smith & Nephew [2010] EWHC 1487 (Pat), and approved on appeal at [2010] EWCA Civ 1260, applied.
4. Notional enquiry. There was no logical distinction between looking up information in a reference work and asking an obvious source for it. The skilled person may be assumed to make the enquiry where the state of the art prompts it, the source is obvious, and the answer would be freely given and clear. The route cannot depend on confidential information, insight, undue effort or an unknown source. Floyd LJ described the issue as one of fact, subject only to the skilled person’s incapacity for invention.
5. Application. The error in Killick was obvious, the source of correction was clear, and the answer would have been unambiguous. The correct 1.5 mg dose was therefore obvious. The judge’s conclusion was open on the facts, and the appeal was dismissed.

• Court of Appeal (Civil Division): unanimously dismissed the appeal; [2016] EWCA Civ 410.
• High Court of Justice, Chancery Division, Patents Court: Sales J held the patent invalid for obviousness; [2014] EWHC 1666 (Pat).