Recent Patent Decisions In The English Courts

In the last few weeks the House of Lords has given its judgement

as to what a product claim needs in order to be sufficient. Both

the Court of Appeal and the High Court have refused to excuse

patentees for failing to pay renewal fees in time, with the

consequence that the patents were terminated. The High Court has

also considered obviousness, and the claim language used to claim a

Virgin Atlantic Upper Class seat.

Sufficiency of a Product Claim

Generics v Lundbeck

[2009] UKHL 12

House of Lords

Appellate Committee

Lords Phillips, Scott, Walker, Mance and

Neuberger

25th February 2009

Lundbeck was the proprietor of patents, now expired, for the

antidepressant drug citalopram. It was disclosed in those earlier

patents that citalopram is a racemate made up of two enantiomers.

Lundbeck managed to separate the racemate into its enantiomers and

found that the antidepressant effect was caused entirely by the (+)

enantiomer. The patent in this case, European patent (UK) 0347066,

included Claim 1 to the (+) enantiomer itself, Claim 3 to a

pharmaceutical composition comprising that compound, and Claim 6 to

a method for the preparation of the compound. Kitchin J found at

first instance that Claim 1 and Claim 3 were insufficient.

On appeal, the Court of Appeal panel, included one of the Law

Lords, Lord Hoffman. In his judgement, Lord Hoffman agreed that the

claims were neither anticipated nor obvious, but allowed

Lundbeck's appeal against the revocation of Claims 1 and 3 on

the grounds of insufficiency.

In this judgement, the Law Lords of this Appellate Committee,

which included judges very experienced in patent matters, upheld

the Court of Appeal decision.

As set out by Lord Neuberger "The only point in issue

on this appeal is that on which the Court of Appeal disagreed with

Kitchin J, namely whether the claim to the (+)-enantiomer was

insufficient. Accordingly, we are proceeding on the basis that the

enantiomer is a new product, in particular as against the racemate,

and on the basis that the obtaining of the enantiomer was not

obvious. The question is whether the claim fails on the ground of

insufficiency."

It was accepted that the claimed invention satisfied all the

requirements of Section 1(1) in that the invention was new,

involved an inventive step, was capable of industrial application,

and was not excluded. Therefore, it was necessary to look to

Section 14 of the Patents Act 1977 to see if any other objections

could be made to the patent. As noted by Lord Neuberger, Kitchin J

had "concluded that, as the specification disclosed that

the respondent had found only one way to make the (+)-enantiomer,

it would be a monopoly disproportionate to the technical

contribution if the Patent effectively covered all ways of making

the enantiomer, which would be the effect of the product claim. The

principle he relied on was... ... "The first person to find a

way of achieving an obviously desirable goal is not permitted to

monopolise every other way of doing so".

"The sole authority upon which Kitchin J relied in

support of this analysis was the speech of Lord Hoffman in

Biogen [1997] RPC 1."

Lord Neuberger concluded "that, unless precluded by the

reasoning in Biogen [1997] RPC 1... the product claim in

the present case is valid. I appreciate that this means that, by

finding one method of making a product a person can obtain a

monopoly for that product. However, that applies to any product

claim. Further, where (as here) the product is a known

desideratum, it can be said (as Lord Walker pointed out) that

the invention is all the more creditable, as it is likely that

there has been more competition than where the product has not been

thought of."

The case was distinguished from Biogen which had had a

very unusual claim described as "almost a

process-by-product-by-process claim".

Kitchin J is by no means alone in having taken the

mistaken view that the reasoning in Biogen [1997] RPC 1 is

of much wider application, and in particular that it applies to any

product claims (at least where they are claims to chemical

compounds)... ...

"When considering the validity of a simple product

claim (such as is under scrutiny on this appeal), it may be that

concentrating on the identification of the inventive step rather

than the technical contribution can...