Novelty Destroying Acts In Clinical Trials

Author:Mr Erik Vollebregt
Profession:Axon Lawyers
 
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A recently published decision of the European Patent Office’s (EPO) Board of Appeal about European patents and clinical trials provides for interesting reading and for some important pointers about how to deal with clinical trials for medicinal products but also for medical devices as to not destroy novelty of a patentable invention with invalidity as result. The clinical trial concerned involved female contraceptive pills. It was established that only the researchers had signed confidentiality agreements, but not the patients enrolled in the trial. As required the patients had been informed of the nature of the medicinal product for the purpose of informed consent but not of the exact pharmaceutical form of the active ingredient in the investigative contraceptives. Finally, not all investigative medicinal products had been returned at the end of the trial. The Board held, in conformity with its normal strict line of interpretation of the concept of novelty (which is stricter than the US line), that the patent was invalid for lack of novelty as is established board of appeal case law that if a single member of the public, who is not under an obligation to maintain secrecy, has the theoretical possibility to access particular information, this information is considered as being available to the public within the meaning of Article 54(2) EPC. The respondents raised an interesting defense, arguing by reference to novelty cases involving implanted medical devices (T-0152/03 and T-0906/01) that any person involved in a clinical trial is implicitly bound by confidentiality. The Board however held that these cases concerned very different situations: the device trials concerned small groups of patients implanted with prototype investigational medical devices, whereas the drug trial at hand was a large trial in which patients were allowed to take home the medicinal products without confidentiality restrictions. Consequently, they could have shown or handed the medicinal products to anyone. The patients in the device trials referred to on the other hand could not explant their devices to hand them over to other people or have them inspected, so no novelty destroying act took place. Some critical remarks on the facts: I think that the Board’s reasoning with respect to the implantable devices cases is only as good as the very specific facts of those cases referred to, involving balloon catheters and implantable spinal correction devices. Even if visual...

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