This morning the High Court refused an application by Sanofi-Aventis for special leave to appeal a decision of the Full Court of the Federal Court which found that its patent claiming salts of the isolated enantiomer of a known racemate was invalid for want of inventive step. A link to our alert on the Full Court’s decision can be found here.
Deciding that there were insufficient prospects of overturning the decision of the Full Court of the Federal Court, the High Court was unpersuaded by Sanofi’s submission that, under the 1952 Patents Act, the statutory starting point for assessing the inventive step of a claimed invention must always be the common general knowledge, irrespective of what other material the inventor actually considered in arriving at the claimed invention. That is, it did not matter that the starting point for the inventor in this case was the racemate, as when objectively assessing inventive step, the starting point must be the common general knowledge, which did not include the racemate.
Counsel for Apotex and Spirit submitted that, under the 1952 Act, where the patentee postulates a problem, this must be the starting point for an assessment of inventive step. In this case, the starting point was the racemate which was disclosed in the patent, even though the racemate did not form part of the common general knowledge.
Section 7(2) of the 1990 Act now clearly states that an invention involves an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the art in light of the common general knowledge.
However, as counsel for Sanofi recognised, in this case which was decided under the 1952 Act, if nothing had been said in the specification about the existence of the racemate which had been disclosed in an earlier Sanofi patent, then the invention would not have been found to be obvious!