Conor again - a rejoinder from Luke

Conor Medsystems is recent UK patent case that has now been elevated to a major talking-point (see IPKat blogs here, here, here and here). This time, it's the turn of Luke Dylan Ueda-Sarson to reply to Brian Whtehead. For ease of reference, Brian's comments are in red, Luke's in blue. Says Luke:
"Thanks for the latest installment in what seems to becoming the Conor Medsystems saga... I am quite enjoying this, since it is making me think hard about some fundamental points of patent law.

For what it's worth, I agree with Merpel's comments, in which case the judge is perhaps merely guilty of somewhat sloppy phraseology. It is certainly a more encouraging notion that the other possible reason!

However, I am puzzled by some of Brian Whitehead's comments, specifically by his usage of the word "claimed" - although it seems to me he is using it the same way as the judge, so is in good company!

As I understand it, Pumfrey said that when considering the question of obviousness, one must first ascertain the scope of the invention claimed.

I thought one ascertained the scope of the invention *claimed* by reading the *claims* and ascertaining their scope - otherwise one is ascertaining the scope of the disclosure as a whole, which is surely another thing entirely. If the two do not coincide, then that is a matter of section 72.1 c, ie. enablement and sufficiency of description, etc. Why it should figure into inventive step is less clear to me.

At the end of para 24, he concludes that there is no example given in the patent of the use of taxol-coated stents for the inhibition of restenosis at angioplasty sites. This leads him to conclude, at para 62, that the disclosure of the specification is merely that taxol may be incorporated into a stent, and not that such a stent would actually work.

Which would seem to be a matter for striking the relevant claims (which may or may not equate to "the patent") down for lack of enablement, if in fact the skilled person in the art had no basis for concluding it would.

The patent therefore does not claim, as such, a stent containing taxol for use in controlling restenosis. At best, it claims the idea of trying taxol in a stent.

Hmmm. I would refer you to claim 12. Here are the claims from the judgment:

"1. A stent for expanding the lumen of a body passageway, comprising a generally tubular structure coated with a composition comprising an anti-angiogenic factor and a polymeric carrier, the factor being anti-angiogenic by the CAM assay, and wherein said anti-angiogenic factor is taxol, or an analogue or derivative thereof.

6. A stent according to any one of claims 1 to 5 wherein said stent is a vascular stent.

[11. A stent according to any one of claims 1 to 5 for treating narrowing of a body passageway.]

12. A stent according to claim 11 for treating or preventing recurrent stenosis."

It seems to me that that is precisely what the patent is claiming!

Therefore, if it would have been obvious to the skilled man to try taxol, the patent is invalid for lack of inventive step. The likely prospect of success is irrelevant, as the patent does not claim that such a device would in fact be successful.

The patent may not disclose enough evidence to convince the hypothetical skilled worker of the time that such a device would be successful, but it most certainly does claim exactly that, right there in claim 12.

If the patent is at fault for claiming this, then surely this is a matter for sction 72.1 c, and not section a?

I sense some confusion here between what the patent claims - in the claims - and what the patent actually describes, outside the claims (which could be talked about as "claims" - but not in the patent law sense).

I was always given to understand that inventive step should be looked at on a claim by claim basis; if that is so, asking whether "the invention", singular, is obvious, is a non sequiter. It is true that the 1977 act refers to invention singular when referring to inventive step, but the PCT is very careful to talk about the "claimed invention" in this regard, and I do not believe the UK practice is to distinguish the two. Have I been mislead? If the UK (and EPO) regard "an invention" differently from say the JPO (which even in literature for the general public equates claims with inventions, this the enormous numbers of "inventions" patented every year -since each patent will contain many such "inventions"), and more importantly, WIPO, this has serious repercussions for inetrnational applications.

The judge constantly talks about "the invention" being obvious, but it seems to me this is because he is providing his own definition of what the invention is - and it is not what is actually being claimed...
For the record, this is the first time anyone has confessed to agreeing with Merpel, who is purring with delight. The IPKat says, it's always impressive to see how carefully people read and analyse the words with which judges choose to express their reasoning.

Temples of meat

The IPKat has learned from De Morgen, via Ananova, of the Temples of Meat exhibition, which will only be on display for three days - until it goes off. The work, by artist Jan Fabre, is being shown at the Museum of Modern Art in Ghent; it includes a coat made of steaks and a tent of bacon with sleeping bags of steak.

Left: Fabre is not the only meat artist to have caught Ananova's attention. This is Gabriela Rivera, who is pictured here wrapped in meat.

Fabre says:
"Meat is a very erotic material. A lot of my work is about the cult of decay and death. I also love to create something that will be destroyed after three days. It's a lesson in modesty for every artist who confesses his love for eternity."
Fabre said he worked through the night with his assistants to turn 100kg of steak, 15kg of minced meat and a few kilometers of Parma bacon into art.

The IPKat used to believe that, when it came to art, de gustibus non disputandum ("there's no accounting for taste"). Looks like there's no accounting for smell either. There seems no doubt that the fact that a work is executed in meat does not disqualify it from any copyright protection as an artistic work that it might otherwise enjoy. Merpel adds, the move from porn to meat might be characterised as a shift from cleavage to cleaver ...

Art by Bacon here
Decayed corpse chips with entrail salsa here
Phobia art here
Treatment for meat phobia here
NO MORE ON CONOR; TEMPLES OF MEAT NO MORE ON <em>CONOR</em>; TEMPLES OF MEAT Reviewed by Jeremy on Monday, March 27, 2006 Rating: 5

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