The invention was a second medical use for a known drug rapamycin, which was found to have an immuno-suppressive effect. The court asked whether a claim to rapamycin should be construed to include derivatives.
Held: A person skilled in the art would be unable to say without experimentation that any particular derivative would have an immuno-suppressive effect. Applying the second Protocol question, it would have been absurd to ask whether, assuming that a derivative ‘worked’ in the sense of having an immuno-suppressive effect, it worked ‘in the same way’. That would really be to beg the question. Neither the product nor the process was new: the whole point of the invention was the newly discovered immuno-suppressive effect.
Citations:
[2000] EWCA Civ 231, [2001] RPC 159, [2001] FSR 784
Links:
Jurisdiction:
England and Wales
Citing:
Appeal from – American Home Products Corporation, Professor Roy Calne v Novartis Pharmaceuticals UK Limited ChD 2000
A patent was granted for a product, produced by the bacterium streptomyces hygroscopicus, called rapamycin, which was useful to suppress transplant rejection. Because rapamycin was a known product at the priority date, it could not be patented: . .
Applied – Wheatley, Bortec Limited v Drillsafe Limited, Force Group Services Plc, Foster, Foster, Carter, Davies CA 25-Jul-2000
In a claim for infringement of a patent, where variations on a patent were to be considered, the court should look to the three tests set down in Improver (‘the Protocal questions’), and the claim should be interpreted in a purposive and contextual . .
Cited by:
Cited – Three Rivers District Council and Others, HM Treasury, v HM Treasury, The Governor and Company of the Bank of England (No 4) CA 7-Aug-2002
The claimants had suffered having lost deposits with the Bank of Credit and Commerce International. They claimed their losses from the respondents as regulators of the bank, for negligence and misfeasance in public office. The action was based upon . .
Cited – Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
Cited – Generics (UK) Ltd and others v H Lundbeck A/S HL 25-Feb-2009
Patent properly granted
The House considered the patentability of a chemical product, citalopram made up of two enantiomers, as opposed to the process of its creation, questioning whether it could be new or was insufficient within the 1977 Act.
Held: The appeal . .
Cited – Flood v Times Newspapers Ltd and others QBD 5-Mar-2009
The claimant police officer complained of an alleged defamation in an article published by the defendant. The defendant wished to obtain information from the IPCC to show that they were investigating the matter as a credible issue. The court . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 31 May 2022; Ref: scu.147264