“The conversion of the intermediate (X) into the desired ofloxacin or an analog thereof can be carried out by a well-known process as disclosed, for example, in…European Patent Specification EP-B-47005…”
“It has never been easy to differentiate between common general knowledge and that which is known by some. It has become particularly difficult with the modern ability to circulate and retrieve information. Employees of some companies, with the use of libraries and patent departments, will become aware of information soon after it is published in a whole variety of documents; whereas others, without such advantages, may never do so until that information is accepted generally and put into practice. The notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have. The information in a patent specification is addressed to such a man and must contain sufficient details for him to understand and apply the invention. It will only lack an inventive step if it is obvious to such a man. It follows that evidence that a fact is known or even well-known to a witness does not establish that that fact forms part of the common general knowledge. Neither does it follow that it will form part of the common general knowledge if it is recorded in a document. As stated by the Court of Appeal in General Tire & Rubber Co. v. Firestone Tyre & Rubber Co. Ltd. [1972] R.P.C. 457, at page 482, line 33: "The two classes of documents which call for consideration in relation to common general knowledge in the instant case were individual patent specifications and widely read publications'. As to the former, it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge. As regards scientific papers generally, it was said by Luxmoore, J. in British Acoustic Films (53 R.P.C. 221 at 250): "In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art." And a little later, distinguishing between what has been written and what has been used, he said: "It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art." Those passages have often been quoted, and there has not been cited to us any case in which they have been criticised. We accept them as correctly stating in general the law on this point, though reserving for further consideration whether the words 'accepted without question' may not be putting the position rather high: for the purposes of this case we are disposed, without wishing to put forward any full definition, to substitute the words 'generally regarded as a good basis for further action'.” "The two classes of documents which call for consideration in relation to common general knowledge in the instant case were individual patent specifications and widely read publications'. As to the former, it is clear that individual patent specifications and their contents do not normally form part of the relevant common general knowledge, though there may be specifications which are so well known amongst those versed in the art that upon evidence of that state of affairs they form part of such knowledge, and also there may occasionally be particular industries (such as that of colour photography) in which the evidence may show that all specifications form part of the relevant knowledge. As regards scientific papers generally, it was said by Luxmoore, J. in British Acoustic Films (53 R.P.C. 221 at 250): "In my judgment it is not sufficient to prove common general knowledge that a particular disclosure is made in an article, or series of articles, in a scientific journal, no matter how wide the circulation of that journal may be, in the absence of any evidence that the disclosure is accepted generally by those who are engaged in the art to which the disclosure relates. A piece of particular knowledge as disclosed in a scientific paper does not become common general knowledge merely because it is widely read, and still less because it is widely circulated. Such a piece of knowledge only becomes general knowledge when it is generally known and accepted without question by the bulk of those who are engaged in the particular art; in other words, when it becomes part of their common stock of knowledge relating to the art." And a little later, distinguishing between what has been written and what has been used, he said: "It is certainly difficult to appreciate how the use of something which has in fact never been used in a particular art can ever be held to be common general knowledge in the art." Those passages have often been quoted, and there has not been cited to us any case in which they have been criticised. We accept them as correctly stating in general the law on this point, though reserving for further consideration whether the words 'accepted without question' may not be putting the position rather high: for the purposes of this case we are disposed, without wishing to put forward any full definition, to substitute the words 'generally regarded as a good basis for further action'.”
“It is well settled that the common general knowledge is knowledge that must be attributed to the skilled person, without which the latter may be taken not to be skilled. To it must be added any knowledge that every skilled person should be taken to acquire before he embarks on the problem to which the patent provides the solution, as, for example, the relevant properties of cyclosporin if the problem is to formulate cyclosporin.”
“35. These provisions do not permit what is sometimes called the mosaicing of individual documents or prior uses said to form part of the state of the art, unless it can be shown that the skilled person, confronted with a particular citation, would turn to some other citation to supplement the information provided by the first. Such cases are not common, and the problem most frequently arises when the patent in suit itself makes assumptions about what its disclosure enables a skilled man to do. To take an example, one might consider a prior use consisting of the sale of a particular pharmaceutical preparation. The defendant says that the nature of the active ingredient can be ascertained by analysis of the preparation. Whether that active ingredient forms part of the state of the art depends upon identifying the experimental techniques available to the skilled person. The use of such techniques may involve reference to books and journals, and the explanation of the results may require reference to particular publications. If it can be shown that this analysis is the kind of analysis that would be normally performed, then it is part of the common general knowledge even if only a fraction of the material can be ascertained without reference to the books. Laddie J gives a further example in paragraph 66 of his judgment in Pfizer: ‘When any piece of prior art is considered for the purposes of an obviousness attack, the question asked is “what would the skilled addressee think and do on the basis of this disclosure?”
"The requirement for claiming priority of 'the same invention', referred to in Article 87(1) EPC, means that priority of a previous application in respect of a claim in a European patent application in accordance with Article 88 EPC is to be acknowledged only if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole."
"47. Mr Tappin submitted that the position was simpler. He submitted that priority can be accorded to any invention the subject-matter of which is disclosed in and enabled by the priority document. Any claim or "consistory clause" (jargon for a repetition of the main claim in the body of the specification) in the priority document is not determinative. The important thing to focus on is whether the priority document as a whole discloses matter (i.e. information) which effectively gives the skilled man what is in the claim whose priority is in question and that that information is enabling. 48. I think Mr Tappin must be right. That is what both Biogen and G02/98 are saying. The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim. 49. Before going to the details of the priority document in this case I should deal with Mr Carr's submission about the main claim or consistory clause of the priority document, i.e. that although not determinative it is nearly so. That he could not get out of GO2/98 or indeed any other authority. GO2/98 refers to "the previous application as a whole," not the main claim nor the "main statement of invention" nor the "consistory clause"
“235 Both of these cases were concerned with synergy. But it seems to me that the logic behind them is not limited to such cases. A patentee cannot seek to bolster the inventive nature of his monopoly by relying on a discovery which he had not made at the time of the patent. That is the position here. At the date of the Patent, Lundbeck had not found that escitalopram was more efficacious or was effective in treating more patients than citalopram. Those discoveries were not made until some time later. They are nowhere hinted at in the specification and could not have been predicted from what is described. In these circumstances I do not believe that it is legitimate for Lundbeck to rely upon them in support of the alleged invention.”
“A chemical compound with an asymmetric carbon atom is no longer novel in the form of one of its enantiomers if the skilled person’s attention is concretely drawn in a prior publication to the enantiomer and if said person is able to prepare the compound by virtue of this concrete instruction and his general expert knowledge. It is not necessary that the compound was already prepared in reality… The novelty of the enantiomers of a chemical compound or the novelty of the enantiomers of a compound group described, for example, on the basis of a Markush formula must, however, also be denied if a prior publication just describes the preparation and the chemical structure of the compound or group of compounds occurring in the form of an enantiomer mixture, specifically as a racemate, without the existence of the corresponding enantiomer as a substance being pointed out expressis verbis. In such a case there is no room for the acknowledgment of the novelty of an individual enantiomer if the skilled person recognizes its presence in the form of an enantiomer mixture, thus readily implies the individual enantiomer and can also obtain the same singly by applying conventional separating methods and by taking reasonable efforts….”
“According to Federal Patent Court practice ….. the disclosure of a document pertinent as prior art is not limited to a literal description, but comprises everything that is obvious to the skilled person or that a skilled person would add as essential or that he would read as implied when carefully studying the document. These principles that are related to the disclosure of a prior publication in the field of mechanics are also applicable in the field of substance chemistry under the proviso that the novelty of a chemical compound is to be regarded as anticipated if the skilled person will derive from a prior publication or a publication with an earlier priority a clear indication to the specific compound, i.e. if he will read the presence of this compound as being implied without difficulty, and if due to this indication he will be capable of obtaining said substance. It is not required that this substance has de facto already been produced. All that is required is the mere possibility of its producibility and, thus, its accessibility …. What is characteristic in the present case of a stereoisomer is that, as a rule, compounds with one or more asymmetric carbon atoms in a chemical synthesis – other than natural substances in a biosynthesis – are present in a mixture of their stereoisomers with a more or less high portion of individual isomers. Therefore, the individual stereoisomers are already present in the reaction product. If a document pertinent as prior art discloses the preparation of a chemical compound with one or more asymmetric carbon atoms by way of a non-stereospecific reaction, this will be immediately evident to the skilled reader without requiring a further indication or even explicit naming of individual stereoisomers. Therefore, novelty of a stereoisomer (epimer, enantiomer, diastereoisomer) is to be denied if it is obvious to the skilled reader that it has already been disclosed in the prior art in form of its stereoisomeric mixture and, thus, is at his disposal by common separation processes, i.e. without difficulty ….. In that case, neither an indication nor an explicit naming of the respective stereoisomer is required, nor the naming or description of a working method of its isolation …..”
“…In consideration of Federal Court practice with regard to the novelty of chemical compounds …., the Senate cannot agree with these evaluations [by the EPO] that are based on a very narrow – sometimes blatantly referred to as “photographic” – notion of novelty [citing T181/82, T7/86, T286/87, T81/85], which is, by the way, not applied consistently even by the European Patent Office [citing T12/81, T12/90]. … f) The Senate cannot agree with Defendant’s point of view according to which the patentability of the patent-in-suit may not be assessed deviating from the Decision of the Board of Appeal of the EPO dated July 20, 2000 and from the Examining Division’s opinion dated October 19, 2006 for the sake of the required harmonization of national and European patent laws by a preferably uniform application of law ….. The Federal Patent Court emphasized this obligation. Irrespective of the known diverging practice of assessment in the individual contracting states, there are no binding rules of interpretation for novelty and inventive step comparable to those decided for the determination of the scope of protection of a European patent …… in the protocol for the interpretation of Art. 69 EPC. Moreover, it can also not be stated that, with regard to the presently relevant issue of novelty, in the majority of the EPC contracting states an application of law complying with the standard of valuation of the European Patent Office had become common practice that would form the basis of a decision-making according to Art. 31, sec. 3b of the relevant principles of interpretation of the Vienna Convention on the Law of Treaties of May 23, 1969 …”
“If I may summarise the effect of these two well-known statements, the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent.”
“Although it is sometimes said that there are two forms of anticipatory disclosure: a disclosure of the patented invention itself and a disclosure of an invention which, if performed, would necessarily infringe the patented invention (see, for example, Laddie J. in Inhale Therapeutic Systems Inc v Quadrant Healthcare Plc [2002] R.P.C. 21 at [43]) they are both aspects of a single principle, namely that anticipation requires prior disclosure of subject-matter which, when performed, must necessarily infringe the patented invention.”
“In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation's Patent[1967] RPC 479 , by saying that the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success. How much of an expectation would be needed depended upon the particular facts of the case. As Kitchin J said in Generics (UK) Ltd v H Lundbeck A/S[2007] RPC 32 , para 72: “The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”” “The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.””
"In addition to fluorination and the influence of adjacent substituents just described, the importance of configuration at position 5 (flumequine) has been established (Gerster, Rohlfing & Winandy 1982). This may be a feature of the improved potency we observed for ofloxacin and ciprofloxacin relative to their congeners."
“If that be right, then one asks "upon what ground could it be said that the substitution of a wishbone boom was not obvious?" Only, we think, upon the ground that the hypothetical skilled man in 1958 would have been so uninterested in this child's plaything that he would not have applied his mind to the matter at all for, on the evidence, it is, we think, clear that any skilled adult who applied his mind to Chilvers' device would at once have seen it as obvious that the unconventional and primitive split boom devised by Chilvers ought to be replaced by the conventional wishbone boom which, even though not in everyday use, would then have been familiar to anyone skilled in yacht building.”
“…it is settled law that there is no need to prove that anybody actually saw the disclosure provided the relevant disclosure was in public. Thus an anticipating description in a book will invalidate a patent if the book is on a shelf of a library open to the public, whether or not anybody read the book and whether or not it was situated in a dark and dusty corner of the library. If the book is available to the public, then the public have the right to make and use the information in the book without hindrance from a monopoly granted by the State.”
“(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application. (2) To do the same in respect of the patent as granted. (3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.”
“I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”
“A particular, and sometimes subtle, form of extended subject matter (what our Act calls “additional matter”) is what goes by the jargon term “intermediate generalisation”
“If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called “intermediate generalisation.”” “If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called “intermediate generalisation.””
“(1) Whereas pharmaceutical research plays a decisive role in the continuing improvement in public health; (2) Whereas medicinal products, especially those that are the result of long, costly research will not continue to be developed in the Community and in Europe unless they are covered by favourable rules that provide for sufficient protection to encourage such research; (3) Whereas at the moment the period that elapses between the filing of an application for a patent for a new medicinal product and authorization to place the medicinal product on the market makes the period of effective protection under the patent insufficient to cover the investment put into the research; (4) Whereas this situation leads to a lack of protection which penalizes pharmaceutical research; (5) Whereas the current situation is creating the risk of research centres situated in the Member States relocating to countries that already offer greater protection;”
“(8) Whereas the duration of the protection granted by the certificate should be such as to provide adequate effective protection; whereas, for this purpose, the holder of both a patent and a certificate should be able to enjoy an overall maximum of fifteen years of exclusivity from the time the medicinal product in question first obtains authorization to be placed on the market in the Community; (9) Whereas all the interests at stake, including those of public health, in a sector as complex and sensitive as the pharmaceutical sector must nevertheless be taken into account; whereas, for this purpose, the certificate cannot be granted for a period exceeding five years; whereas the protection granted should furthermore be strictly confined to the product which obtained authorization to be placed on the market as a medicinal product;”