Novartis had a good day in the Federal Circuit Court of Appeals this week. It's Alcon unit successfully fought off Apotex Inc. from marketing a generic version of the drug, Patanol.
The Patanol patent expires in 2015 and until then, Apotex is not allowed to sell the eye medication. While Federal Circuit invalidated some parts of the patent, it held other aspects of the patent valid.
The obviousness test came into play as Judge Kimberly Moore said that the methods of using olopatadine for the treatment of conjunctivitis didn't hold up as patentable.
Under the obviousness test, the court essentially asks whether the invention was obvious, in light of the information known to a "person having ordinary skill in the art."
However, two aspects related to the composition and the specific concentration of the compound were upheld.
The obviousness test
In conducting its obviousness inquiry, the court looked at (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the field of the invention; and (4) objective considerations such as commercial success, long felt need, and the failure of other.
Motivation need not be the same as the original patentee's. The important point in this case was on the motivation of the modification of the prior art. Specifically, the Federal Circuit court noted that the motivation to modify prior art for the claimed invention need not be the same motivation that the patentee had for the obviousness argument to work.
We've discussed the obviousness test many times on this blog. Have a look at some of our related resources below.
- The Obviousness Test: Court Explains, Remands Amrix Patent Case (Federal Circuit Blog)
- Apple Samsung Patent Infringement Case: Verdict is In (Federal Circuit Blog)
- Browse Federal Circuit Court of Appeals Cases (FindLaw Caselaw)
- Federal Circuit Court of Appeals (US Courts)