House of Lords finds European approach “sufficient”'

Recent months have seen a number of decisions by the UK Courts that explicitly seek to align patent practice in the UK with the approach of the European Patent Office (EPO).  This trend has now been reaffirmed by the House of Lords in the recently-issued judgement in Generics v Lundbeck¹  when considering the concept of sufficiency under UK law.

The patent under scrutiny in Generics v Lundbeck claimed a specific product whose desirable properties were obvious at the filing date of the patent.  However, patent protection was granted to Lundbeck on the basis that there was no previous obvious way of making the specific product and therefore the patent provided for the first time enablement to make the product.

During litigation, it was argued that granting patent protection for the product itself was not merited because the invention's contribution to its field was only a single method of manufacturing an obviously desirable product.  This argument was accepted at first instance and was explained in the judgement under UK law with reference to the concept of sufficiency.

In particular, it was found at first instance²  that, with reference to an earlier House of Lords decision in Biogen v Medeva³ , a claim to a product whose inventive step depended only on the method of manufacture of the product was effectively claiming no more than a class of possible methods of manufacturing the product.  Therefore, since the patent only provided details of one possible manufacturing method and did not provide enablement across the class of methods, the patent was held to be insufficient.

This decision at first instance was reversed on Appeal⁴  and the reversal of the decision has now been endorsed by the House of Lords.  In particular, in relation to patents claiming specific products, it was found that "what the description discloses must … enable a skilled person to make the patented product across its full width or to its full extent.  This does not mean that it must also enable the skilled person to make it by all possible methods" ⁵.

One policy reason behind the reversal of the decision appears to be that the decision at first instance was based on the concept of "Biogen insufficiency" established under UK law rather than on the principles of sufficiency established at the Boards of Appeal of the EPO.

For example, Lord Neuberger, one of the five Lords giving the judgement, stressed that the House of Lords "has frequently emphasized that the principles of patent law adapted by the courts [in the UK] should, if at all possible, be the same as those adopted [by the Boards of Appeal at the EPO]"⁶.  In this case, the balance between UK law and EPO law has been achieved by narrowing the applicability of the previous judgement in Biogen v Medeva much closer to the "context of the facts and issues in that case" ⁷ rather than more broadly to create a new concept of sufficiency.

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^[1] Generics v Lundbeck [2009] UKHL 12

^[2] Generics v Lundbeck [2007] EWHC 1040 (Pat)

^[3] Biogen v Medeva [1997] RPC 1

^[4] Generics v Lundbeck [2008] EWCA Civ 311

^[5] Paragraph 51 of the judgement by the House of Lords

^[6] Paragraph 86 of the judgement by the House of Lords

^[7] Paragraph 31 of the judgement by the House of Lords

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