Case: Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262
Outcome: cited
High Court also held in Astra (at [50] [53]) that obviousness was to be determined by asking whether a hypothetical non-inventive skilled addressee, equipped with the common general knowledge as at the priority date, would have taken steps towards the invention "as a matter of routine" in the expectation that they might well produce the invention or some other useful result (endorsing statements in Wellcome Foundation Ltd v V.R. Laboratories (Aust) Pty Ltd [1981] HCA 12 ; (1981) 148 CLR 262 ( Wellcome ) at 286 and Olin Mathieson Chemical Corporation v Biorex Laboratories Limited [1970] RPC 157 ( Olin ) at 187-188). The High Court has therefore insisted on the two elements: (1) being led as a matter of routine to the desired result; and (2) having a reasonable expectation of achieving that result. Evidence of the patentee's own lack of success in earlier attempts is probative of the inventive nature of a successful solution to a problem ( Wellcome at 287); the question of what weight is to be given to that evidence will depend on all the circumstances including the patentee's qualifications and experience in the field of the invention. Inventions that reveal an "unfelt want or need" are as likely or sometimes more likely to involve an inventive step as those that fulfil a "long-felt want" ( Wellcome at 287; Astra at [38]). Obviousness in relation to the product claims and the method claim Obviousness means different things in relation to the product claims (claims 1 5) and the method claim (claim 6). Alphapharm criticises Lundbeck for failing to make that distinction. In the case of the method claim, the question of obviousness assumes as the starting point the goal of obtaining the (+)-enantiomer. In relation to the product claims, on the other hand, the question is whether that goal was itself an obvious one to pursue. Common general knowledge of methods available to resolve racemates may, however, be relevant to the obviousness of the product claims. It is relevant to the question whether it was obvious to want to obtain (+)-citalopram to ask whether it was part of common general knowledge that there were or were not available straightforward, inexpensive methods of doing so that were expected to succeed. While evidence of the efforts of the inventor and of the efforts (or absence of them) of the patentee's opponent and others is admissible as relevant to the issue of obviousness (see, for example, Wellcome at 287), the question is an objective one requiring the creation of a hypothetical person, skilled but non-inventive in the art, or a hypothetical team of such persons. The concept of common general knowledge at the priority date must be proved by evidence, and the assumption made that the hypothetical person or team was possessed of that common general knowledge. In Wellcome, Aickin J, with whom the other members of the High Court agreed, stated (at 287): ... not all inventions are to be classified as fulfilling a long-felt want. Those which reveal an "unfelt want" are as likely, or sometimes more likely, to involve an inventive step. In Astra at [38], Gleeson CJ, Gaudron, Gummow and Hayne JJ approved of this passage. However, neither Aickin J in Wellcome nor their Honours in Astra were saying that evidence of unexpected benefits is admissible. Rather, the point they were making was that evidence of previous unsuccessful attempts to satisfy a long-felt want, while admissible, might not be entitled to much weight since inventive step can be present, not only in the presence of a long-felt want and associated motivation, but also in their absence. It seems to me that Lundbeck has set up a "straw man" to knock down. In the light of the nature of the case that Lundbeck had to counter, it was only evidence of what was commonly known and expected at the priority date that it was entitled to seek to prove. Evidence of post-priority date surprises did not fall within that description.