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Supreme Court patent ruling 'brings UK closer to Europe'

7 November 2011

A ruling by the Supreme Court on the validity of a patent protecting a gene sequence used in a new drug aimed at tackling the auto-immune disease lupus has brought UK laws closer to those used by other states in European Patent Convention.

Giving judgment in Human Genome Sciences v Eli Lilly [2011] UKSC 51, Lord Walker said there were “two strong policy arguments” for allowing the appeal by Human Genome Sciences.

“The first is to reduce the risk of a chilling effect on investment in bioscience (though here the arguments are certainly not all one way).

“The other is to align this country’s interpretation of the European Patent Convention more closely with that of other contracting states.”

The dispute centred on the concept of whether an invention is capable of ‘industrial application’ under articles 52 and 57 of the European Patent Convention. The court heard that the Technical Board of Appeal of the European Patent Office allowed the patent, granted in 2005, to be maintained.

Having lost its European challenge, Eli Lilly brought parallel proceedings in the UK and persuaded the High Court to revoke the patent, a decision upheld by the Court of Appeal.

Lord Hope described the case as “difficult and troublesome”. He went on: “It is well known that modern techniques in the field of biomedical science offer immense benefits in the promotion of human health, particularly in the combating of a wide range of degenerative diseases previously thought to be incurable and in the provision of techniques for the effective treatment of cancers.

“As the BioIndustry Association has pointed out in its written intervention, patent portfolios are often the most valuable asset of companies in the bioscience industry.

“So assessments of the value of a bioscience company’s patent portfolio are likely to be a key consideration in deciding whether to acquire or invest in such a company. This in turn affects the funding that is made available for research and development, without which effective progress in putting a patented invention to practical use is likely to be very limited.”

Lords Hope, Walker and Neuberger allowed the appeal by Human Genome Sciences. Lords Clarke and Collins agreed.

Gareth Williams, partner at global IP firm Marks & Clerk, said the ruling confirmed the approach taken by recent UK judgments that European patent law should be followed “unless there are very strong reasons to differ”.

Williams said: “The ruling rebukes the Court of Appeal judge for not following EPO case law and confirms that the judge had in effect been applying a stricter standard than used in the EPO.”

He added that the ruling made “far clearer” to innovators hoping to operate in the UK the level of detail needed in a patent application.

“We already knew that Europe accepts that ‘plausible’ speculation is sufficient; now we know for sure that this is the case for the UK as well.

“This will be good news commercially speaking for HGS, which has a product on the market based on this patent, but also anyone else with patents based on similar ‘catch-all’ indications of use.”

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