An invention will be patentable if it is new, constitutes an inventive step and is capable of industrial application.
However, in the case of Laboratorios Almirall SA v Boehringer Ingelheim International GmbH, heard by HHJ Fysh, it appears that a patent application filed by Boehringer was filed with the intention of ‘later on’ meeting the requirements of patentability.
The case related to two patents, the first of which was granted to Boehringer, the second to Almirall. Both related to combination medicines for respiratory disorders, which included an anticholinergic compound together with a beta agonist. Boehringer’s treatment was marketed under the trade name Combivent.
Almirall applied to revoke Boehringer’s patent, on the grounds that the invention was anticipated or was obvious. Boehringer counter-claimed that, if their patent was invalid, then so was Almirall’s for the same reasons.
Further, Almirall argued that Boehringer’s patent was obvious in light of two posters presented at a conference that was held a short time before Boehringer made their applications, one of which eventually led to the patent. Almirall alleged that Boehringer had seen the poster, photographed it, and then gone ahead on this basis to apply for their patents. This turned out to be true, as photographs of the poster were uncovered during disclosure. Regarding Boehringer’s patent, HHJ Fysh found it strange that, for a company with the resources available to Boehringer, there was next to nothing in the patent about why the claimed invention was inventive, as the skilled person would not be able to figure out exactly what the technical contribution would be. Regarding the technical contribution, the judge stated:
“In my judgment, the addressee would simply be left guessing. This is of course an unsatisfactory conclusion but since the public has a right to know what technical contribution has been made by the patent, this is no place for indulgence. Speculative statements, guesses and unsupported predictions are not good enough. In my judgment, this finding has a decisive resonance in the resolution of this entire case…sufficient justification for the solution to a technical problem must be found in the patent as filed. Experiments performed thereafter cannot be relied on at law to make good an initial deficiency of disclosure. It is not even enough that the teaching of the patent is such that it is ‘at least plausible’ that what was proposed was capable of solving the problem it purports to solve.”
Both patents were found to be mutually invalid.