Wounded patent endures further - Smith & Nephew v Convatec Technologies

How many Kat statuses can a single moggy have? Are they finite, like lives? This Kat started as a Kat admirer, then Kat friend, then guest Kat, followed by ghost emeritus Kat, and is now team Kat member.  He feels he must be running out of lives…  In any event he is overjoyed to be back blogging again on the IPKat team.  The year has begun a little slowly, and although he is informed that Kats as a rule do not hibernate, this Kat feels as though he is emerging from an over-wintering.

A bigger Katpost is under preparation, but in the meantime the IPKat wishes to briefly record the result of the appeal for a case that he reported back when he was a Guest Kat last year here.

The case is an action by Smith & Nephew to revoke Convatec’s patent relating to antimicrobial wound dressings impregnated with silver.

Wound dressing for a Kat?
This case is not to be confused with a related case between the same parties, noted by the IPKat here. This latter case relates to a similar technology, but without the silver.  Readers interested in that case may wish to know that the decision was upheld on appeal (see here), and that there was a further decision, principally about costs (see here).

Anyway, shortly before Christmas (I know, I am late, and I am sorry, but I wasn’t a Kat at the time and my attention was diverted elsewhere…), 14 December to be precise, the Court of Appeal issued its decision which upheld the original decision of HHJ Birss, sitting as a judge of the Patents Court.

This Kat thought that the first instance decision was interesting to practitioners because the patent (as allowed to be amended in the proceedings) was found to be valid over two pieces of prior art (“Kreidl” and “Gibbins”), over each of which claim 1 of the patent was novel by only a single feature (these two features being added by the amendment).  So a single point of difference was in each case was sufficient to confer inventive step.  There were also interesting points concerning the allowability of the amendments.  His whiskers were therefore twitching to see what the Court of Appeal would make of it all.

From this point of view, the appeal decision is a little disappointing.  Of the interesting points, only one, obviousness over Kriedl, was taken forward to the appeal.  Kriedl was an old (1946) US patent document whose disclosure pre-dated the existence of the claimed gel-forming fibres.  Convatec challenged the judge's finding of inventive step on a number of grounds.  On each one, Kitchin LJ giving the leading judgement (with which Jackson LJ and Arden LJ concurred) held basically that the judge was entitled to reach the conclusion that he did.  A flavour of the tone of the whole judgement can be gleaned from the Conclusion paragraph:
The judge recognised that this was a difficult case. Kreidl taught a method which, if applied to Aquacel [a gel forming fibre], would have worked and would have been a method in the claim. Further, it would have been easy to perform, requiring no great time or effort. But it is all too easy to find an invention obvious with the benefit of hindsight. The issue of obviousness must be considered without any knowledge of the invention. The judge found this was a field in which the skilled team would not embark upon an experiment without thinking about its rationale. They would have read Kreidl with interest and not simply put it on one side; but it would have presented them with a puzzle. They would have considered the surface adsorption of complexes theory, and also the physical shielding theory. In the result the judge found it was not obvious to apply the teaching of Kreidl to modern wound dressing materials such as Aquacel. That, it seems to me, was a conclusion he was entitled to reach on the evidence before him.
Which is a fine disposition of the case at hand, but not exactly Katnip to an IPKat.

Merpel has noted that by a happy coincidence, the Opposition Division issued its Decision (available from the EPO Register here) with regard to the patent on 21 December 2012, a week after the Court of Appeal decision was handed down (but announced orally at Oral Proceedings on 15 November 2012, before the Court of Appeal decision).  The Opposition Division maintained the patent in amended form, similar in scope to that upheld in the UK, but not actually the identical wording.  Merpel wonders what is the patent wording currently in force in the UK, and also looks forward to the EPO Appeal, which still has scope to change matters.
Wounded patent endures further - Smith & Nephew v Convatec Technologies Wounded patent endures further - Smith & Nephew v Convatec Technologies Reviewed by Darren Smyth on Wednesday, January 23, 2013 Rating: 5


  1. This case clearly illustrate that a protocol of understanding between the courts of the United Kingdom and the EPO boards of appeal would be so helpful. Some parties may enjoy having endless bites of the cherry, but is it in the public interest for them to do so?

  2. Inventive step on chemical/pharma cases seems now to be decided on 'the circumstances of the case' so that the outcome is (perhaps)more likely to be influenced by the performance of the expert witnesses and documents that provide (minor) reasons as to why the invention would not have worked (or at least documents that muddy the water). That makes things more uncertain, but it's nice to see the Courts upholding a patent on a 'difficult case'.


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