Browse Options
Fordham Conference 2015 – Biosimilars

Penny Gilbert from Powell Gilbert LLP explains the position of biosimilars in the pharmaceutical industry. Biosimilars are essentially generic versions of biologics. Traditional generic compounds are  chemical reproductions of the patented compound which makes regulatory approval more straightforward. Biological compounds (proteins or antibodies which are produced from genes) are not identical with one another and have higher hurdles in terms of achieving regulatory approval. The cost of bringing it to market is significant. Doctors may be less willing to prescribe biosimilars as compared to generic chemical compounds when considering the alternatives to the originator’s product. Undertakin [...]

Very Late Request for Long Extension of Time Allowed by UK Patent Office

In a recent decision of the UK Intellectual Property Office, an applicant for a UK patent was allowed to file a response to an examination report (“office action”) more than 18 months after the due date for response originally set in the examination report. This is an extraordinary effective extension of time, obtained well after the initial due date for response had passed, but serves as a reminder that a UK patent application is not normally treated as formally lapsed until the end of the normal acceptance period of 4½ years from the priority/filing date. The applicant appears to have been representing himself throughout.

The initial due date for response set in the examination repo [...]

Swiss-Form Claims, Skinny Labelling and the duty of the National Health Service – the Lyrica case continues

By Claire Phipps-Jones and Brian Cordery

At the end of January, we reported the Warner-Lambert v Actavis decision of 21 January 2015, in which Arnold J refused to grant Warner-Lambert interim relief in relation to an apprehension of patent infringement by Actavis of Warner-Lambert’s patent comprising Swiss-form claims directed to the use of pregabalin in the preparation of a medicament for the treatment of pain. The apprehended patent infringement pertained to Actavis’ generic pregabalin medicine. Actavis had carved-out pain indications from the label for its medicine but it was nevertheless foreseeable that some of these medicines would be dispensed and used for pain in the UK.

The ju [...]

Reform of UK Provisions on Groundless Threats of Patent Infringement

In August 2013, I produced a short commentary for the Kluwer Patent Blog regarding the decision of Mr Recorder Meade QC in SDL Hair Ltd v Next Row Ltd & Ors [2013] EWPCC 31, where Mr Meade was faced with the question of whether two letters and one email constituted groundless threats of patent infringement under s.70 of the UK’s 1977 Patents Act (“the Act”).  (

In that post, as well as summarising the decision on that issue, I also provided a very short background to the cause of action created by s.70 whereby a person (whether or not the proprietor o [...]

Swiss Form Claims and Skinny Labelling – the Lyrica Case

Most readers will know that so-called Swiss form claims (“Use of drug X in the manufacture of a medicament for the treatment of disease Y”) were first proposed by the Enlarged Board of Appeal of the EPO in the EISAI case back in December 1984 to allow new uses for known drugs to be patented. This area is of considerable importance, because, as was set out in the resolution of AIPPI on this issue passed at the Toronto congress in September 2014: “Second medical uses may provide solutions to unmet medical needs and provide significant benefits to patients. They may require significant investment in research and development and represent socially, medically and economically valuable [...]

Abuse of Process – Patentee does not have to assert all known means of infringement

A decision from Mr Justice Birss in Adaptive Spectrum And Signal Alignment Inc v British Telecommunications Plc [2014] EWHC 4194 has introduced additional complications for parties found to infringe a patent who then seek to work around the same. In essence that party cannot simply sit back and assume that the only feature to address is that which was successfully attacked by the patentee.  Instead that party must now consider whether their product or system might infringe in other ways (and work around the same as well).

The judgment stems from an infringement action brought by Adaptive Spectrum And Signal Alignment Inc. (ASSIA) against BT for infringement of two of its patents.  BT’s [...]

Contributors, Authors, Books, & More...