tag:blogger.com,1999:blog-1454051731189268002.post2517433902007171093..comments2019-09-09T07:29:50.196-03:00Comments on Sufficient Description: Plavix: Obvious or Not?Unknownnoreply@blogger.comBlogger2125tag:blogger.com,1999:blog-1454051731189268002.post-39554005339431869542012-11-04T19:58:48.780-04:002012-11-04T19:58:48.780-04:001) It can be obvious to try a class of experiments...1) It can be obvious to try a class of experiments, as for example routine salt selection by screening of standard pharmaceutically acceptable salts: see eg ratiopharm inc. v. Pfizer Ltd. / amlodipine besylate 2009 FC 711, which I think is a good example of a correct application of the obvious to try test to find an invention obvious.<br /><br />2) The language does flip-flop a bit, but my view is that it must be self-evident to try to obtain the invention; if must be self-evident that to obtain the invention, then, as you point out, one could almost never say that an invention is obvious in an unpredictable art, no matter how obvious it was to try. So, when the SCC in Sanofi says that the “obvious to try” inquiry should be considered [62], it was saying that the invention need not be obvious to obtain. However, simply because it is obvious to try (ex ante 40% chance of success), and it actually succeeds once tried, does not mean it is necessarily obvious. It may turn out that there were unexpected hurdles in the way of ultimate success (the ex ante prediction of 40% chance of success was actually optimistic).<br /><br />3) This is a very good point, which was also made by Laddie J in Lilly Icos Ltd. v. Pfizer Ltd., [2000] EWHC Patents 49 ¶ 106 in the course of holding the invention in question to be obvious, aff’d with approval of this analysis [2002] EWCA Civ 1 ¶ 67-68:<br /> <br />Whether something is obvious to try depends to a large extent on balancing the expected rewards if there is success against the size of the risk of failure.<br /><br />The FCA in Pfizer Canada Inc v Apotex Inc / sildenafil (NOC) 2009 FCA 8 expressly considered this approach at ¶ 42-45 and rejected it, in my view correctly. The risk / reward analysis advanced by Laddie J is compelling as a purely textual interpretation of the word “obvious.” However, it is at odds with a purposive interpretation of the obviousness requirement, which serves to screen out inventions which do not require the lure of the patent. If an approach is almost certain to succeed if tried, and yet will cost $100 million to try, then the lure of a patent is needed, so such an invention should not be considered “obvious” on a purposive interpretation. The purposive interpretation, and the FCA conclusion, is supported by SCC case law. In Halocarbon [1979] 2 SCR 929, the SCC noted “Very few inventions are unexpected discoveries. Practically all research work is done by looking in directions where the "state of the art" points.” The Court went on to say in effect that the “patient searcher” is entitled to their reward. Similarly in Sanofi 2008 SCC 61 ¶ 37 noted that “prolonged or arduous trial and error would not be considered routine.” Note also that Laddie J himself, speaking extra-judicially, has recognized the irrationality of the implications of his argument: see Conor v Angiotech [2008] UKHL 49 ¶ 48.Normanhttps://www.blogger.com/profile/17573687140337856397noreply@blogger.comtag:blogger.com,1999:blog-1454051731189268002.post-60095728144616984672012-11-02T16:34:02.099-03:002012-11-02T16:34:02.099-03:00Interesting article. Please consider the following...Interesting article. Please consider the following situations:<br />1) Lets say there are 10 experiments of equal probability, where there is a high probability that at least one test/method from the 10 would yield the desired result (e.g. success of test GROUP is 70%, where success of each test is 7%). Can it be argued that it is "obvious" and "self evident" to try this CLASS of tests? Lets assume that all the tests are easy to do and "not arduous".<br />2) Is the notion of "self-evident" in relation to the "TRY to obtain invention" or "OBTAINING the invention" itself. The language in Sinofi and Pfizer Canada Inc. v. Apotex Inc. (F.C.A.) seem to flip-flop on this a bit in the language. What I mean is, if you have 10 possible approaches to "try", where 2 of them have 40% chance each of giving desired result (as estimated before experiments), while the other 8 tests share a 20% chance of success, it can be said that the two top approaches are "obvious to try" (I would certainly give a 40% chance experiment a shot). HOWEVER, no one can say that either of these promising tests would cause the "invention [to be] more or less self-evident." (see para 65: "more or less self-evident that what is being tested ought to work") - given the likelihood of success is less than 50% in each case.<br />3) Depending on your response to (2), if there are incredible riches awaiting to anyone who discovers an invention, wouldn't an experiment with a marginal rate of success, be elevated to the "obvious to try" category? If someone told me that I would get $10 billion dollars, I would certainly try all possibilities, even the ones that only have a 1% chance of success.<br /><br />Looking forward to your insight.Joe Isteadnoreply@blogger.com