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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 [...]

Herceptin Round 2: Hospira enjoys the sweet smell of success once more

By Brian Cordery and Steven Willis

Regular readers of the Kluwer patent blog may recall that in April 2014, the English Patents Court revoked two patents relating to trastuzumab, the active ingredient in Herceptin, which is marketed outside of the US by Roche. One patent was for a dosage regimen and the other related to a composition of trastuzumab containing certain levels of impurities. The SPC for trastuzumab itself subsequently expired in July 2014, but as yet, Hospira has not launched its competing medicine in the UK. As part of its campaign to clear the way for launch, Hospira challenged two further related divisional patents – this time relating to lyophilised formulations of tra [...]

UKIPO gains new powers to revoke patents which fail a novelty or obviousness test – but only if ‘clearly invalid’

by Dr Mark A G Jones

The UK’s Intellectual Property Act 2014, enacted to implement recommendations of the 2011 Hargreaves Review of Intellectual Property, has extended the powers available to the United Kingdom Intellectual Property Office (UKIPO) to revoke British patents of its own motion. This applies both to patents granted directly by the UKIPO or patents obtained through the EPO route. The new statutory provisions are contained in Section 73 of the Patents Act 1977, as amended.

The new power, available from 1 October, 2014, allows the UKIPO to revoke a patent for lack of novelty or lack of inventive step where a third party has sought an Opinion from the UKIPO Opinions Service as to [...]

Gemalto’s UK appeal dismissed

by Naomi Hazenberg and Brian Cordery

On Wednesday 22 October 2014, the Court of Appeal (Ref [2014] EWCA Civ 1335) has upheld Birss J’s decision last year in HTC v Gemalto (Ref [2013] EWHC 1876 (Pat)) but has found that he erred on a point of construction. The appeal concerned just one of the patents considered at first instance (EP (UK) 0932865) which relates to using higher level programming with a microcontroller. Only claim 3 (and its dependent claims) survived the attack on validity at first instance and HTC’s devices were held not to infringe.

At first instance, the judge needed to construe the term “microcontroller”. As it was not an expression used in ordinary English, expert [...]

Obvious to try attacks remain topical even if they take a different path

By Gregory Bacon and Brian Cordery

The English Patents Court (Birss J) recently demonstrated a somewhat unconventional approach to answering the statutory question of obviousness when assessing inventive step*. The judgment also provides some guidance on the role of commercial as opposed to technical considerations, in particular regulatory concerns, when assessing obviousness. Leo Pharma, the defendant in these proceedings, market a successful product in the UK under the brand Dovobet Ointment. Teva sought to revoke two patents in Leo Pharma’s name which protect the Dovobet Ointment product. Leo Pharma in turn claimed infringement of the two patents by Teva’s proposed generic version of [...]

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