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 against the patent was dismissed. The separated form, the (+) entantiomer had not previously been available and was new within the Act and European practice, and was entitled to a patent. The Biogen case did not operate in the way suggested, and European Patent Office practice supported the grant.
Lord Walker drew attention to ‘the importance of UK patent law aligning itself, so far as possible, with the jurisprudence of the EPO (and especially decisions of its Enlarged Boards of Appeal)’, even though ‘National courts may reach different conclusions as to the evaluation of the evidence in the light of the relevant principles’ even though ‘the principles themselves should be the same, stemming as they do from the EPC.’
Lord Neuberger of Abbotsbury said that the courts’ interpretative objective is to strive for consistency between European and UK patent law.

Lord Phillips of Worth Matravers, Lord Scott of Foscote, Lord Walker of Gestingthorpe, Lord Mance, Lord Neuberger of Abbotsbury
[2009] UKHL 12, [2009] Bus LR 828, (2009) 32(5) IPD 32033, 107 BMLR 121, [2009] RPC 13, [2009] 2 All ER 955, (2009) 107 BMLR 121
Bailii, HL
Patents Act 1977 1(1) 2, European Patent Convention
England and Wales
CitedMolnlycke AB v Proctor and Gamble Ltd 1992
The court considered the patentability of a baby’s disposable diaper. . .
CitedMentor Corporation v Hollister Incorporated CA 1993
Lloyd LJ added to the guidance at first instance:
‘In each case sufficiency will thus be a question of fact and degree, depending on the nature of the invention and the other circumstances of the case.
But if a working definition is required . .
CitedBiogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
At First InstanceGenerics (UK) Ltd and others v H Lundbeck A/S (Costs) PatC 27-Jun-2007
The parties disputed the patentability of an anti-depressant drug Citalopram (Prozac).
Held: the claims were invalid for insufficiency. . .
Appeal fromH Lundbeck A/S v Generics (UK) Ltd and others CA 10-Apr-2008
The court heard an appeal against a finding that a patent for a chemical compound was invalid for insufficiency.
Held: The appeal succeeded.
Enough information to ‘work the invention’ meant in order to make the product. . .
CitedAsahi Kasei Kogyo KK’s Application HL 1991
The House considered a case involving the issue of enablement of a particular peptide in a patent application.
Held: On the assumed facts that there had been a prior disclosure of the same invention neither the disclosed information nor common . .
CitedMentor Corporation v Hollister Incorporated ChD 1991
The court considered the meaning of the phrase a ‘person skilled in the art’ in the context of a patent claim.
Aldous J said: ‘The section requires the skilled man to be able to perform the invention, but does not lay down the limits as to the . .
CitedHallen Co v Brabantia (UK) Ltd CA 1991
Slade LJ said: ‘If the plea of obviousness is to succeed, the court has to be satisfied that it would have appeared to the hypothetical technician, skilled in the art but lacking in inventive capacity, worthwhile to coat the helix of a self-pulling . .
CitedAmerican Home Products Corporation, Professor Roy Calne v Novartis Pharmaceuticals UK Limited, Novartis Pharma AG CA 27-Jul-2000
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 . .
CitedKirin-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 . .
CitedPharmacia Corporation, G D Searle and Company, Pfizer Inc v Merck and Co, Inc, Merck, Sharp and Dohme Limited CA 14-Dec-2001
Question as to obviousness of patent. . .
CitedSynthon Bv v Smithkline Beecham Plc HL 20-Oct-2005
Synthon filed an international application for a patent. Before it was published, SB filed a similar application in the UK patents registry. Synthon had applied for the UK patent granted to SB to be revoked. Jacob J had found that the reader of the . .

Cited by:
CitedHuman Genome Sciences Inc v Eli Lilly and Company SC 2-Nov-2011
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
Held: The patentee’s appeal succeeded. The court had to . .
CitedRegeneron Pharmaceuticals Inc v Kymab Ltd SC 24-Jun-2020
SC Kymab Ltd (‘Kymab’) alleges that the relevant patents are invalid for insufficiency because they did not enable the ordinary skilled person to work the claimed invention across the breadth of the claims. The . .
CitedActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property, European

Updated: 23 January 2022; Ref: scu.304528