Home » Patents » Pharma Patents UK Case Law in 2013

Pharma Patents UK Case Law in 2013

Keltie LLP

K2 IP Limited

About IPcopy

IPcopy is an intellectual property related news site covering a wide variety of IP related news and issues. We will also take the odd lighthearted look at IP. Feel free to contact us via the details on the About Us page.

Disclaimer: Unless stated otherwise, the contributors to IPcopy (the "IPcopy writers") are patent and trade mark attorneys or patent and trade mark assistants at Keltie LLP or are network attorneys at K2 IP Limited. Guest contributors will be identified.

This news site is the personal site of the contributors and is not edited by the authors' employer in any way. From time to time however IPcopy may publish practice notes, legal updates and marketing news from Keltie LLP or K2 IP Limited. Any such posts will be clearly marked.

This news site is for information purposes only. Information posted to this news site is not legal advice and should not be taken as such. If you require IP related legal advice please contact your legal representative.

For the avoidance of doubt Keltie LLP and K2 IP Limited have no liability as to the content of IPcopy and any related tweets or social media posts.

Privacy Policy

IPcopy’s Privacy Policy can be viewed here.

pharmaToday we have a guest post from Suleman Ali of Holly IP and K2 on the subject of UK Pharma caselaw in 2013. This post was originally posted on the Holly IP blog IP Trends and is reproduced with the permission of the author.  These points are gleaned from a talk by Neil Jenkins given at the CIPA Life Sciences Conference on 14 November 2013.

1. There was not much in the way of developing substantive patent law in 2013. Instead there more developments concerning procedure. There were 3 first instance pharma cases, of which 2 were ‘clearing the path’ cases and one concerned infringement. There were 4 cases at the Court of Appeal, of which 3 were ‘clearing the path’ cases. Essentially the finding of the first instance decisions were mostly upheld.

2. In Generics v Yeda there was the issue of whether post dated evidence could be used to demonstrate that the technical effect described in the specification did not occur. The first instance had said it could not, but the Court of Appeal disagreed and said a party could rely on post dated evidence to show a technical effect did not occur.

3. In Actavis v Lilly there was the issue or whether a UK Court could give a declaration of non-infringement on the French, German, Italian and Spanish designations of a European Patent. The Court of Appeal confirmed a UK Court did have the right to give a declaration in respect of the foreign patents which represents a shift in the attitude of the English judiciary.

4. On the issue of whether UK proceedings should be stayed whilst EPO opposition proceedings are pending the pendulum has shifted over the years. In the 80s and 90s the UK Courts were reluctant to stay based on the fact EPO opposition proceedings take so long, and therefore this is a case of justice denied. From 2000 onwards there was more consideration of the issue and in Glaxo v Genetech in 2008 it was decided that in the normal course of events a stay would not granted.

This summer in Virgin v Zodiac before the UK Supreme Court the Unilin issue came up, which concerns the situation where damages given on a patent later found by the EPO to be invalid or where the patent was subsequently amended at the EPO to a scope where infringement did not occur. The Supreme Court decided that the case law up to that point was incorrect, and that damages were not appropriate where the EPO revoked or amended the patent.

5. In Novartis v Hospira the Court of Appeal decided that an interim injunction could remain pending during an appeal, even where the first instance decision had found the patent to be invalid. This means that generics companies will need to now also consider the time taken for appeal when attempting to ‘clear the path’.

The talk by Neil Jenkins also covered the issue of Regulatory Data Exclusivity. A report on the second part of the talk can be accessed on the Holly IP site here.

Suleman Ali 21 March 2014

Holly IP Vectored (2)

K2 logo

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s

This site uses Akismet to reduce spam. Learn how your comment data is processed.

%d bloggers like this: