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
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...
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