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Pfizer Overseas Pharmaceuticals v. Eli Lilly and Company [2005] FCAFC 224 dealt with Pfizer’s attempts to sustain broad claims for treatment of penile erectile dysfunction over and above specific claims to the Viagra compounds. While the Court majority found such broad claims not fairly based on the specification and therefore invalid, they also discussed in detail the ground of obviousness.
The Court initially considered what information would be available to the skilled person under obviousness and the Court was quite prepared to accept that the skilled person, in the present instance, would actually be a whole research group and “The hypothetical skilled person will not confine himself or herself to the common general knowledge in considering the question answered by the allegedly inventive step. He or she can be expected to carry out literature searches using relevant contemporary search facilities including on-line data bases”. Now, with internet capabilities, the whole libraries of PCT, US, Japanese, European and other patent applications are readily available to any researcher for free searching. It follows that all the information available in these libraries would be searched by the hypothetical skilled addressee and available in establishing obviousness. This is closer to the European position on obviousness where little qualification is placed on the documents that can be utilised under this ground. Previously in Australia, strict limitations were placed on whether a document could even be considered under the obviousness ground.
In a further development, it had been normal practice to find a skilled addressee within the jurisdiction to give evidence. Given the highly specialised nature of penile erectile dysfunction research, the Court took a lenient approach and was prepared to have “regard to the evidence of expert witnesses from outside Australia as proxies for people who worked in the relevant field in Australia”. Again, this means that in some cases, litigants may be able to utilise the service of overseas experts in establishing obviousness, thereby reducing the burden of finding Australian experts.
The Court acknowledged the present day difficulties of the somewhat artificial obviousness requirement, quoting from a recent article by Justice Hugh Laddie: “It has been said that patents are not granted simply for coming first in the race to achieve an obvious product or process. Yet in many cases, absent the commercial incentive of a patent, there will not be a race at all.”
This case also dealt with the issue of the best mode requirements in Australia. Previously, the lower trial Court had found the relevant date for the best mode requirement was the date of grant. However, on appeal, it was clearly stated that the date of filing is the date at which the best mode requirement must be met. This again aligns Australia with other countries and practitioners, in the main, seem to have breathed a collective sigh of relief.
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