A further interesting decision handed down by the Judges of the English Patents Court prior to the Easter break was a judgment from Nugee J concerning proceedings between E. Mishan and Hozelock relating to a UK patent and European patent, both entitled “Expandable Hose Assembly”. E. Mishan (trading as Emson) claimed that Hozelock’s expandable garden…

Last week the Board of Appeal issued a decision holding that Google’s patent application 04784004.6 was unallowable on the ground of lack of inventive step. Amongst other things, the decision contains useful guidance relevant to applications containing a mixture of technical and non-technical subject matter. The take-homes from the decision are as follows: 1. A…

Relevant prior art may prove not to be useful as a starting point for an attack on inventive step if the prior art teaching is negated by later studies before the effective date of the patent claims. In such a case, the skilled person would not have had an expectation of success. Case date:16 January…

A Markush claim is a type of claim commonly used in chemical and pharmaceutical fields. On December 20, 2017, in Beijing Winsunny Harmony Science & Technology Co., Ltd. v. Daiichi Sankyo Co., Ltd, (“Daiichi Sankyo Case”), the Supreme People’s Court (“SPC”) resolved a long standing-split among Chinese courts regarding the interpretation and amendment of Markush…

Suppose you are a (patent) attorney in a pharmaceutical company and want to advise your company how to best protect the results of a clinical trial designed to find out the best possible treatment regimen of a certain known and approved drug X. The researchers of your company have devised and been allowed to conduct…

In one of the saga of cases that involved Societé des Produits Nestlé and companies that are trying to market capsules compatible with Nescafé’s Dolce Gusto system, the defendant alleged, among other arguments, that some of the patents asserted were null due to a lack of inventive step. The case was handled by Commercial Court…

Around this time last year, in Edwards Lifesciences v Boston Scientific [2017], His Honour Judge Hacon (sitting as a High Court Judge) had the opportunity to analyse two interesting aspects of UK patent law: (i) the law of implied disclosures and anticipation; and (ii) the importance of so-called secondary evidence in the evaluation of inventive…

Last year, Actavis, Teva and Mylan (“Actavis”) sought revocation in the English Patents Court of two patents relating to tadalafil, which is sold by Eli Lilly (“Lilly”) as the active ingredient in CIALIS® to treat erectile dysfunction and pulmonary arterial hypertension. As is the usual course, ICOS (the patentee) and Lilly (the exclusive licensee) subsequently…

Patent lawyers in the UK have spent the last three months pondering, debating and at times indulging in an element of despair (to put it mildly) about what might be the impact of the judgment of the Supreme Court in Actavis v Eli Lilly [2017] UKSC 48 on issues of validity (see here). Today they…

For the first time, the Spanish Supreme Court made far-reaching observations on key issues of the assessment of inventive step and, in particular, on a) the reformulation of the “objective technical problem” as defined in the patent’s specification, b) the limits to the combination of prior art documents and c) the professional qualifications required for…