UNITED KINGDOM—PATENTS
UK PATENTS
Te judge considered the mental acts exclusion in some detail. He said that this patentability exclusion is intended to ensure that patent claims cannot be performed by purely mental means. Following this interpretation, a computer- implemented method of processing information, even if the method can be performed mentally, will not fall foul of the mental act exclusion.
Tis decision provides some welcome certainty on how future patents for CIIs will be treated by the UKIPO and English courts.
Human Genome Sciences Inc v Eli Lilly and Company
Te UK Supreme Court handed down its judgment in this case in November 2011. It concerned the validity of a patent for a nucleotide sequence of a gene that encodes a novel protein. Te case looked at whether a patent for a biological material could satisfy the need for a patentable invention to be “susceptible of industrial application”. Tis decision has far-reaching consequences for biological research.
Human Genome Sciences (HGS) was the patentee and appellant. Eli Lilly argued that HGS’s patent should be revoked because the patented protein’s use, as described in the patent, was speculative and contradictory. Te UK High Court and UK Court of Appeal both agreed that this was the case and held that the protein could not be patented on the ground that it could not be industrially applied.
However, the Supreme Court disagreed with the lower courts and allowed HGS’s appeal. In his lead judgement, Lord David Neuberger said: “On policy, just as it was undesirable to let someone have a monopoly over a particular biological molecule too early, because it risks closing down competition, so it would be wrong to set the hurdle of patentability too high.”
If industrial applicability remains a hurdle to patentability, it is clearly a low one. It seems that the Supreme Court was influenced by arguments made by the UK BioIndustry Association, a third-party intervener in the case. Te association argued that a relaxed standard of industrial applicability was needed, because a standard that was hard to satisfy would make it difficult for biotechnology companies to attract investment at an early stage in the research and development process.
The Patents County Court
Aſter its ‘re-launch’ in the Autumn of 2010, the Patents County Court (PCC) has been hailed as an effective and efficient forum in which small and medium-sized enterprises (SMEs) can enforce and defend their intellectual property (IP) rights. Judge Colin Birss has delivered prompt judgments on
246 World Intellectual Property Review e-Digest 2012
trademark, passing off, copyright and design right cases but not, as yet, on any cases of alleged patent infringement or invalidity.
In 2011, a recoverable damages cap of £500,000 was imposed in the PCC. With costs awards limited to £50,000, it was thought that the PCC would be a better forum for smaller design, copyright and trademark disputes, than patent cases.
Recently, however, a number of patent cases have appeared in the PCC list and they include parties that are much too large to be described as SMEs. We may in future see companies large and small increase their use of the PCC as a forum for litigating patents. Tis could be when, for example, damages are minimal, such as in a revocation action, or when an action is started before an infringing product is launched.
First, the damages and costs caps are not necessarily set in stone. If industry demand for these to be increased is demonstrated, the caps could be reassessed. Second, as PCC procedures and the court’s speedy and efficient manner become common knowledge, and its decisions remain reliable, it may develop into a more popular forum for international litigants. Te PCC is a sort of hybrid of the traditional English justice system and those in Europe. It may serve as a useful prototype for the projected European patent court system. Cross-examination, expert evidence and disclosure, for example, are available in the PCC but they are closely controlled and restricted by the judge in order to limit costs.
Richard Price is a partner at Winston & Strawn LLP. He can be contacted at:
rcprice@winston.com
Sarah Innes is an associate solicitor at Winston & Strawn LLP. She can be contacted at:
sinnes@winston.com
Richard Price is a patent, trademark and copyright litigator. He litigates all aspects of IP law and has a high success rate in securing victories for his clients at trial and before the highest appeal courts.
Sarah Innes’s practice focuses on contentious IP matters and she has worked on high profile patent litigation in the English courts. Innes studied science before entering the legal profession and has a first class degree in biological sciences from Oxford University.
www.worldipreview.com
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