English Court of Appeal finds HGS patent invalid

In a judgement handed down on 9 February 2010[1], the English Court of Appeal has upheld the decision of Mr Justice Kitchin to revoke the UK National part of Human Genome Science's European patent for neutrokine-a for lack of industrial application[2].

This decision was eagerly anticipated because the same European patent has been the subject of parallel Opposition and Appeal proceedings before the European Patent Office. The patent had been revoked by the EPO Opposition Division, but this decision was set aside by Technical Board of Appeal 3.3.08 in October 2009[3].

Lord Justice Jacob's analysis of the law on industrial application was almost entirely based on decisions of the EPO Technical Boards of Appeal (TBAs), and he emphasised that the English courts would follow any principle of law clearly laid down by the TBAs, only reserving the right to differ in instances where [the English court] considers "the commodore is steering the fleet on to the rocks"[4]. However, Jacob LJ did not consider it essential for the English court to follow the TBA on findings of fact in any specific case, particularly in view of the differing standards on the taking and evaluation of technical evidence. Nor were the English courts bound to follow the TBAs on the application of a particular principle of law to the factual situation in any specific case.

In the HGS case, Jacob LJ stressed that the principle of law to be applied when determining if the patent met the requirement for industrial application was the same as that developed through the case law of the EPO in relation to Article 57 EPC, and the same as that applied in the parallel proceedings before TBA 3.3.08. Nevertheless, the intensive investigation and testing of evidence before the English court had established a different factual framework against which this principle of law had to be applied. Jacob LJ considered that Kitchin J had been correct in his application of the law on industrial application to the facts before him, and hence upheld the decision to revoke the patent. As stated in paragraph 157 of the judgement,

"The upshot of all this is that the Board [TBA 3.3.08], working on different evidence and using a different procedure came to a different conclusion on the facts. We are not bound to follow, or even give deference to, the Board's finding of fact"  

-ENDS-

For more information please contact Partner Nina White on +44 (0)20 7430 7500 or email nwhite@boult.com.

[1] ^{[2010] EWCA Civ 33}
[2] ^{[2008] EWHC 1903 (Pat), 31st July 2009}
[3] ^{Case T 18/09; reasons for decision issued 1 December 2009}
[4] ^{Actavis v Merck [2008] EWCA Civ 444, at [45-48]}