Human 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 apply the jurisprudence of the European Board. The Board’s approach applied principles under which the disclosure of the existence and structure of Neutrokine-a and its gene, and its membership of the TNF ligand superfamily should have been sufficient, taking into account the common general knowledge, to satisfy the requirements of Article 57, because all known members of the TNF ligand family were expressed on T-cells and were able to co-stimulate T-cell proliferation, and therefore Neutrokine-a would be expected to have a similar function. The judge had erred in requiring demonstration that a particular use existed rather than merely that it was usable for research work, which work under the Board’s principles would satisfy the requirement of article 57.

Lord Hope, Deputy President, Lord Walker, Lord Neuberger, Lord Clarke, Lord Collins
[2011] UKSC 51, UKSC 2010/0047, [2012] 1 All ER 1154, [2012] Bus LR D37, [2012] RPC 6
Bailii, Bailii Summary, SC, SC Summary
European Patent Convention 57
England and Wales
At first instanceEli Lilly and Company v Human Genome Sciences Inc PatC 31-Jul-2008
The claimant sought the revocation of the defendant’s European patent in respect of a nucleotide and amino acid sequence of a novel member of the TNF ligand superfamily which it called Neutrokine-a.
Held: The patent was invalid for lack of . .
See AlsoEli Lilly and Company v Human Genome Sciences, Inc PatC 17-Oct-2008
The parties discussed the costs order to be made after a challenge to a patent succeeded on some grounds but not on others. . .
Directions for appealEli Lilly and Co v Human Genome Sciences CA 23-Feb-2009
The court considered directions for a forthcoming appeal, and in particular as to its date, where there were parallel revocation proceedings before the European Court. . .
Appeal fromEli Lilly and Co v Human Genome Sciences Inc CA 9-Feb-2010
The appellant had had granted to it a patent for a new human protein, Neutrokine-a. It now appealed against revocation of the patent on the basis that as yet there was no possible industrial application within the Convention so as to allow . .
CitedConor Medsystems Inc v Angiotech Pharmaceuticals Inc and others HL 9-Jul-2008
The respondents had applied for and obtained an order to revoke the appellant’s patent of a stent for obvousness. Though the parties had settled, the public law element required the intervention of the Comptroller General. The House was asked about . .
CitedGenerics (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 . .
CitedAktiebolaget Hassle v Alphapharm Pty Ltd 12-Dec-2002
Austlii (High Court of Australia) Patents – Revocation – Obviousness or lack of inventive step – Patent for an oral pharmaceutical preparation – Whether invention obvious and did not involve an inventive step . .
CitedLucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .

Cited by:
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, Health

Updated: 23 January 2022; Ref: scu.448089