Sufficiency of disclosure

According to article 83 European Patent Convention (EPC): ‘The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.’ For the disclosure to be sufficient at least one way of carrying out the invention should be disclosed in the description such that it is apparent to the skilled person how to put the invention into practice. Lack of sufficiency is a ground for revocation of a European patent in opposition proceedings at the European Patent Office, and for invalidation by national courts.

(Indirect) infringement, Case Law, Equivalents, evidence, Kluwer Patent Cases, Legislation, Litigation, Patents, Pharma, Pharmaceutical patent, Prior art, Procedure, Scope of protection, Sufficiency of disclosure, United Kingdom, Validity

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As reported in last week’s post, on 20 January 2021 Birss J handed down what may be his last first instance decision before his elevation to the Court of Appeal.  The first post on the judgment considered the issues of identifying the skilled person, insufficiency and infringement.  This second part considers the decision relating to…

(Indirect) infringement, Case Law, Equivalents, evidence, Kluwer Patent Cases, Legislation, Litigation, Patents, Pharma, Pharmaceutical patent, Prior art, Procedure, Scope of protection, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/ /1 Comment

On 20 January 2021 Birss J handed down what may be his last first instance decision before he takes his place in the Court of Appeal.  If that turns out to the case then Illumina Cambridge Limited v Latvia MGI Tech SIA and others is a substantial judgment to mark this departure.  In this case…

Enforcement, evidence, Inventive step, Litigation, Novelty, Patents, Pharma, Pharmaceutical patent, Plausibility, Prior art, Revocation, Second Medical Use, Sufficiency of disclosure, United Kingdom, Validity

, (Bristows)/

On 4 December 2020, the English Patents Court handed down its decision in Neurim Pharmaceuticals (1991) Limited & Flynn Pharma Limited v Generics UK Limited (t/a Mylan) & Mylan UK Healthcare Limited, the main action proceedings regarding Neurim’s patent for Circadin™, EP 1 441 702 (“EP 702”).  The judgment is available here. Many readers will…

Case Law, Enforcement, Infringement, Litigation, Patents, Procedure, Revocation, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/

On 9 October 2019, the Court of Appeal dismissed an appeal against the finding that a patent directed towards ceramic compounds was sufficient and allowed two procedural appeals on issues of liability. Anan Kasei and Rhodia (“Rhodia”) are respectively the proprietor and exclusive licensee of a patent for ceric oxide compounds for use in catalytic…

Antibodies, Case Law, European Union, Litigation, Novelty, Patents, Pharma, Pharmaceutical patent, Prior art, Sufficiency of disclosure, United Kingdom, Validity

(Bristows)/

Among the flurry of pre-summer vacation judgments coming from the Patents Court is one from Mr Justice Birss (17 July 2019), concerning the validity of Hoffman-La Roche’s patent EP (UK) 2 007 809. EP’809 is a formulation patent for the monoclonal antibody vedolizumab, marketed as Entyvio® and used to treat ulcerative colitis and Crohn’s disease….

Australia, Case Law, Litigation, Patents, Pharma, Pharmaceutical patent, Plausibility, Sufficiency of disclosure, Validity

, (Clayton Utz)/

Two recent decisions in the UK and Australia in the long-running pregabalin litigations demonstrate the different approaches in these jurisdictions to determine if a patent specification has sufficiently disclosed an invention.  Readers will recall that the judgments concerned Warner-Lambert’s Swiss-style claims for the use of the compound pregabalin (marketed as Lyrica) in the treatment of…

(Indirect) infringement, Case Law, Infringement, Litigation, Patents, Pharmaceutical patent, Plausibility, Sufficiency of disclosure, United Kingdom

, , , (Bristows)/

Today, after nine months of waiting, the decision of the UK Supreme Court in the pregabalin litigation was handed down. Like Brexit and the nation, it is clear that the Supreme Court Judges were divided on several crucial issues. In this post, we will not attempt to give a detailed analysis of the decision but…

Antibodies, Infringement, Sufficiency of disclosure, United Kingdom

(Bristows)/

by Steven Willis and Olivia Henry On 28 March 2018, the Court of Appeal overturned Henry Carr J’s finding that two Regeneron patents (EP (UK) 1 360 287 and EP (UK) 2 264 163) were insufficient. The judgment is an important reminder of the importance of taking the nature of the invention into account when…

Australia, Case Law, Pharma, Revocation, Second Medical Use, Sufficiency of disclosure, United Kingdom, Validity

, , (Clayton Utz)/

On 21 October 2016, the Federal Court of Australia handed down its judgment in the case of Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) [2016] FCA 1238 (FCA Judgment).  Justice John Nicholas found in favour of Warner-Lambert, both upholding the validity of its patent claims and granting final injunctions restraining infringement by Apotex….

Case Law, Inventive step, Priority right, Revocation, Sufficiency of disclosure, United Kingdom, Validity

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by Steven Willis Yesterday, the Court of Appeal handed down its decision in Idenix v Gilead [2016] EWCA Civ 1089, a dispute involving SOVALDI® (sofosbuvir), which is sold by Gilead as a treatment for chronic hepatitis C infection in adults. At first instance, Arnold J held (in an epic 621 paragraph judgment) that Idenix’s Patent…