Accord Healthcare Ltd v Research Corporation Technologies, Inc (Rev 1)

A priority claim must be held by the applicant when the later application claiming priority is filed. A later acquisition cannot retrospectively cure the defect. Where the applicable local law recognises separate legal and equitable interests, the applicant’s entire equitable interest may nevertheless suffice. The court must determine whether that interest was actually acquired. For obviousness, information outside the common general knowledge may be considered where it would be obvious to obtain, but the resulting route must still provide a fair expectation of success. A sequence involving literature searches, selection among many compounds, uncertain structure–activity relationships and unpredictable pharmacological effects may fall short of that standard.

Accord, a generic pharmaceutical company, challenged the validity of RCT’s patent for lacosamide, an antiepileptic compound. The challenges concerned entitlement to priority and obviousness.

The patent claimed priority from a United States filing made by Professor Kohn. The later international application was filed by RCT. Accord argued that Professor Kohn had transferred only the bare legal title, while the University of Houston retained the beneficial interest, so RCT lacked entitlement to priority when the international application was filed. Accord also argued that lacosamide was obvious over a thesis by Le Gall, or alternatively a paper by Bardel, together with supplementary information obtainable by a conventional literature search.

The central issues were whether RCT had acquired the relevant priority right by the filing date and whether the skilled team had a fair expectation of success in developing lacosamide.

1. Priority. The right to claim priority must be with the person making the later application at the time the priority claim is made. A later acquisition cannot cure the defect. However, where the applicable local law permits legal and equitable interests to be separated, the applicant’s entire equitable interest may suffice. A legally enforceable right to call for transfer of the legal title constitutes the equitable interest for this purpose.
2. Applying those principles, Professor Kohn held the bare legal title when he executed the February 1997 assignment, while Houston held the equitable interest. The evidence did not justify inferring that Houston had made the necessary specific offer to RCT, or that an implied-in-fact contract had transferred the equitable interest. RCT nevertheless acquired good title as a bona fide purchaser for value without notice. The assignment and surrounding documents showed that RCT reasonably understood the invention to have been conveyed to it pursuant to the existing arrangements, and RCT was not on notice of a conflicting university interest. RCT therefore held the substantive priority right when the PCT application was filed.
3. Obviousness. Supplementary information which was not common general knowledge could be considered if it would have been obvious for the skilled team to obtain. The skilled team would have searched the literature after reading Le Gall and would have found a substantial body of work from the Kohn group. It would also have been conventional to obtain papers expressly referred to in Bardel.
4. That did not make lacosamide obvious. The team would have had to select compounds from a large body of mixed positive and negative data, conceive the methoxymethyl analogue and predict its activity despite uncertainty about aromaticity, beta-heteroatoms, bioisosterism and ADME effects. The evidence did not establish a sufficient expectation that the racemate would perform well in the relevant tests. Even if the compound were made and tested, the uncertainty did not amount to a fair prospect of success. The claims therefore involved an inventive step.
5. The action was dismissed.

First-instance patent validity action. The judgment records no appeal or earlier decision in the same proceedings.