Patents

Case Note Asahi Medical Co Ltd v Macopharma (UK) Ltd. and Another

John Lambert

March 2001 , Updated 14 Apr 2004

This article formerly appeared on the Old Colony House website

One of the conditions for the grant of a patent is that "it involves an inventive step". S. 3 of the Patents Act 1977 explains that "an invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art having regard to any matter which forms part of the state of the art. Obvious in this context means "technically or practically obvious and not to whether it is commercially obvious" as Aldous J put it in Hallen v Brabantia [1989] RPC 307, 327. As his lordship said:

"The basis of the law is that the public are entitled to manufacture that which has been published, in the sense of made available to the public, with obvious modifications. By 'obvious modifications' are meant that which technically or practically would be obvious to the unimaginative skilled addressee in the art. Such a skilled man should be assured that his actions will not be covered by any monopoly granted to another if he does that which is part of the state of the art with modifications which are workshop modifications or otherwise technically or practically obvious alterations. He does not and should not have to look further and consider whether the step he is taking is obvious or not for commercial reasons. The prize for a good commercial decision or idea is a head start on the competition and not a monopoly for twenty years."

In Asahi Medical Co. Ltd. v Macopharma (UK) Limited a technique for separating blood into its components had been described in a paper published in 1974. The patented invention applied very much the same technique. The only substantial difference was that all the bags and connecting tubes of the patented invention were pre-assembled in sterile conditions, whereas the arrangement described in the paper was put together on an as-required basis using the equipment then available. The judge concluded that it would have been "nothing more than a workshop variation" at the priority date of the patent in suit to make the apparatus described by the paper in fully sterile conditions by asking one of the existing specialist manufacturers to use standard procedures to pre-assemble the parts of that apparatus in a factory in sterile conditions.
Counsel for the patentee had argued that there were good commercial reasons why that would not have been done. It was common ground that applying the techniques described in the paper would have required expensive filters and resulted in some wastage. An alternative method of obtaining the necessary blood component just before it was required was widely available. Nobody at the priority date would have thought of making that "workshop variation." Laddie J rejected those contentions. In his judgment, the notional skilled addressee came to the prior art with a practical interest in the design, manufacture and use of blood component separators. He would be taken to be interested in removing various constituents of blood at least from some blood products. He is assumed to have read the paper on which the defendants relied and to have an interest in its contents. Even if he were assumed to have settled into thinking of always filtering blood just before transfusion, the paper would have told him that there was an alternative method and that at least one blood bank had done this. 
The question whether the assembly of the apparatus previously described would have been obvious to the skilled addressee arose at the last stage of the test that Oliver LJ had proposed in Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd. [1985] RPC 59, 73: namely, whether the differences between what was known and used and the alleged invention would have been obvious to a skilled addressee or whether they would have required some degree of invention. Oliver LJ had stressed in Windsurfing that those differences had to be viewed without any knowledge of the alleged invention. Hindsight is a wonderful thing and it is very difficult in practice for someone who considers a technical advance after a priority date to put the alleged invention out of his mind. Design engineers are practical people who consider not only what is technically feasible but also what is cost-effective. Every application of the Windsurfing test must depend strictly on its own facts.
Laddie J's judgment was upheld on appeal.

 

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