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European IP Bulletin, Issue 34, September 2006 - Patents
PATENTS
2. Yeda Research V Rhone_pulenc Rorer & Comptroller of Patents Designs and Trade Marks
On 31 July 2006, the Court of Appeal for England and Wales dismissed an appeal against the decision of Mr. Justice Lewinson in Yeda Research & Development Ltd v Rhône-Poulenc Rorer Holdings, Imclone Systems and the Comptroller [2006] EWCA Civ 1103.
The appeal pertained to a patent entitlement dispute between Yeda Research (Yeda) and Rhône-Poulenc (Rhône). The patent was granted to Rhône, and covered monopoly rights for a therapeutic composition containing monoclonal antibodies and anti-neoplastic drugs that together provide a cytotoxic effect (killing cancer cells), rather than a cytostatic effect (just preventing their replication).
Although Rhône had applied for the patent on 15 September 1989, it was not published in the European Patent Bulletin until as late as 27 March 2002. On 26 March 2004, just before the expiry of the two year limitation period prescribed for ownership disputes under s 37(5) of Patents Act 1977, Yeda made a reference to the patent office to claim joint ownership of the patent with Rhône. On 29 July 2005, and while the adjudication of the reference was still pending, Yeda sought to introduce amendments to claim sole ownership of the patent as an alternative to the joint ownership plea made earlier. Rhône objected to the amendments arguing the bar of limitation as prescribed under s 37(5) of the Act.
The patent office allowed the amendments, while Lewison J, on appeal [2006] EWHC 160 Ch, rejected the amendments on the ground that the new claims of sole ownership fell outside the limitation period.
Yeda appealed against this last decision in the Court of Appeal. The Court of Appeal dismissed Yeda’s appeal holding that:
- section 37(5)has to be read in the light of s 130(7) of the Patents Act 1977, which requires that certain provisions of the Act should be given the same meaning as the corresponding provisions in the European Patent Convention, the Community Patent Convention (CPC) and the Patent Co-operation Treaty. Since section 37 is one such provision mentioned in s 130(7), it is necessary that the courts read the provisions of the CPC as the applicable law for the resolution of the dispute so as to remove any deviation or error that may arise due to the adaptation of the CPC provisions in the domestic legislation
- therefore, the court will construe section 37(5) as having the same meaning as Article 23, of the Community Patent Convention which prevents the bringing of entitlement claims that are more than two years old from the date when a patent was granted, even though the Community Patent Convention has not come into force. This is necessary to achieve harmonisation of law across Europe
- it makes no sense for section 130(7) to apply only when the Community Patent Convention will come into effect
- even taking the more customary and conventional route of statutory construction, the UK provisions have to be construed so as to have the same meaning as the provisions upon which they are based. This is because the Conventions mentioned in section 130(7) are part of the travaux préparatoires of the 1977 Act
- where a reference is made under s 37(1)(a) claiming only a relief of joint ownership of the patent, it can not be said to automatically include a claim relating to sole ownership of the patent. The claim of sole ownership has to be pleaded explicitly
A pending claim of sole ownership of a patent can be amended to include an alternative claim of joint ownership even after the expiry of two-year limitation period mentioned under section 37(5). This is because the greater claim automatically includes the lesser one. However, an amendment pleading alternate relief of sole ownership of patent can not be allowed after two years where the original reference is merely for a joint-ownership.
3. To Amend or Not to Amend
On 7 July 2006, the High Court handed down a decision in the case Vector Corporation v Glatt Air Techiniques Limited [2006] EWHC 1638 concerning a patent held by Glatt.
In March 1997, Glatt were granted a patent relating to a gas suspension technique used in fluidising beds. Vector sought to invalidate this, claiming the patent lacked novelty and was obvious, based on four pieces of prior art, each being previously published patents, referred to as “Larson” “Suzakawa” “Kurita” and “Naunapper”, respectively.
In response, Glatt applied to amend the patent, specifically requesting permission to amend a number of the claims. Glatt maintained that the patent as granted was valid but sought these amendments to further distinguish the patent from the prior art. The request for amendment was opposed by Vector.
Section 75 of the Patent Act 1977 provides the court with the discretion to allow a patent holder to amend its patent in proceedings in which the validity of the patent my be put in issue. The case at hand was concerned with an application to amend the previously granted claims in order to render them valid in light of Vector’s prior art.
Vector asked the court not to accept the proposed amendments and to declare the patent invalid since:
- Glatt failed to tell the court the whole story about the relevant prior art.
- Glatt delayed in seeking to amend the patent.
- The amendments added matter and extended the scope of the patent in one of the claims.
As to no. 1, the court deemed that the patent history and the knowledge of the relevant prior art, as presented by Glatt, had to be considered as complete, in particular due to the lack of evidence to the contrary. As to no. 2, the court said that amendment was permissible since Glatt had not delayed in applying to amend. This was despite the fact that both Larson and Naunapper had been known to Glatt for many years and indeed were referred to in the patent itself. However, the judge held that the patent agent responsible for drafting the patent clearly regarded the patent as distinguished over the prior art, as did the EPO. Further, Glatt had declared that they had only become aware of Kurita in September 2005 and of Suzukawa in 2006. The application for amendment became unconditional in January 2006. Therefore, it was held that Glatt had not delayed in applying to amend. As to no. 3, the court held that there was no added matter and that there was sufficient disclosure to support the amended claim and no widening of the scope of the claim.
The court, having permitted Glatt to amend the patent, went on to find the patent valid and dismissed the action.
Practitioners should note that the court, in an aside, emphasised the importance of paragraph 9(e) of the Patents Court Guide, which requires that all important documents, including skeleton arguments, witness statements and expert reports should be supplied to the court in electronic format, and that this should become a routine part of preparing trial bundles.
4. Inventive Concept: Prejudice and False Prejudice
In at least two House of Lords decisions Lord Justice Hoffman has overturned findings by tribunals as a result of mis-identification of the inventive concepts in the patents in suit. In Biogen v Medeva [1997] RPC 1, 34, he said that the inventive concept was the idea behind the patent, “If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it”. Obviousness equates with an idea that would occur to the normally skilled person in the art who wants to achieve the goal Molnlycke v P&G [1994] RPC 49. So what happens when the only problem is a prejudice not to do something?
In the recent case of Pozzoli v BDMO et al [2006] EWHC 1398 (Pat) the issue was whether there was patent infringement. The claimant Pozzoli was an Italian company. The defendants were French and Belgian companies with offices in the UK.
The case concerned the packaging of CDs/DVDs allowing thinner cases for those containing multiple discs. The arrangement called for partially overlapping discs one elevated above the height of the other. Pozzoli’s counsel pointed out that simplicity must not necessarily be equated with obviousness. They argued that the claim to inventiveness lay in the prejudice that existed in the market to containing discs in an overlapping arrangement due the possible damage the edge of one disc might do to the other.
The court accepted that a prejudice might be part of the inventive concept but noted the difference between a commercial prejudice (not part of the inventive concept) and a technical prejudice (possibly forming part of the concept). Further just because the prejudice was technical, it must exist as a substantial part of the common general knowledge, not just limited to the persons engaged in the development work. Nonetheless, the court accepted the submission of the defendants that such a prejudice can only be considered part of the inventive concept (and thus be considered for purposes of whether the patent in suit was obvious or not) if the invention shows that the prejudice was false. Merely sidestepping the prejudice that might not have been shown to be false would not allow the fact of that prejudice to be considered as part of the inventive concept.
The court questioned whether the prejudice against overlapping discs really existed, but even if it did the invention in the patent in suit did not overcome it. There still existed a prejudice that the overlapping discs shown in the patent could damage one another and it did not demonstrate otherwise. The result for the claimant was that his patent was obvious over the prior art as, leaving aside the evidence of prejudice, the remaining problem was whether the disc carrier of the resulting dimensions would sell.
This is a helpful clarification of how to arrive at identifying the inventive concept. In essence one has to look at what the patented technology is actually doing rather than the goal of the invention or a more general method. Despite Lord Justice Hoffman explanation in Biogen, in which he asked tribunals to exclude from their consideration matters extraneous to the inventor’s actual idea, problems with identifying the inventive concept in patents still arise.
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