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Wednesday, 25 February 2009

Biogen, Lundbeck, Lord Hoffmann and a tour de force

This morning the House of Lords, looking slightly unfamiliar without Lord Hoffmann in the line-up, gave its decision in Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12, dismissing Generics' appeal against the much-discussed decision of the Court of Appeal (equally unfamiliar with Lord Hofffmann in the starring role) on the application of the concept of "insufficiency" to the validity of a granted patent.

In short, their Lordships -- with Lords Scott, Walker and Mance each adding some thoughts of their own -- concurred with the speech of Lord Neuberger. Said Lord Walker at paragraphs 29-31:

"29 During the oral argument ... there was some discussion of whether "inventive concept" means the same as "technical contribution to the art." Neither expression is a statutory term of art. Lord Hoffmann used both expressions several times in his opinion in Biogen, the former mostly in section 10 (headed "Inventive Step") and the latter mostly in section 12 ("Support for the Claims"). Mr Thorley QC submitted in his reply that the two expressions (as used in Lord Hoffmann's opinion) are synonymous.
30. I do not think that this is quite right. The expressions are certainly connected, but I do not think it is helpful (either in considering Lord Hoffmann's opinion, or generally) to treat them as having precisely the same meaning. "Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention—the idea or principle, of more or less general application (see Kirin-Amgen [2005] RPC 169 paras 112-113) which entitles the inventor's achievement to be called inventive. The invention's technical contribution to the art is concerned with the evaluation of its inventive concept—how far forward has it carried the state of the art? The inventive concept and the technical contribution may command equal respect but that will not always be the case.

31. Biogen itself is, I think, a good illustration of this. ... If I may respectfully say so, Lord Hoffmann's opinion in Biogen is a tour de force. I have frequently commended it to bar students as an example of how a great judge can suffuse even the most technical subject with intellectual excitement. But its vivid and powerful language must be read in the context of the facts and issues in that case".
Lord Neuberger's speech effectively affirmed the unity of the principle of insufficiency and concluded:
"There is a difference between the "inventive step" or "inventive concept", on the one hand, and the "technical contribution to the art", on the other hand. I respectfully agree with the explanation of the difference between the two concepts given in paras 29 to 31 of Lord Walker's opinion. When considering the validity of a simple product claim (such as is under scrutiny on this appeal), it may be that concentrating on the identification of the inventive step rather than the technical contribution can lead to error. "Inventive step" suggests how something has been done, and, in the case of a product claim at any rate, one is primarily concerned with what has been allegedly invented, not how it has been done. On the other hand where the claim is for a process or (as in Biogen [1997] RPC 1) includes a process, the issue of how the alleged invention has been achieved seems to be more in point".
This is a complex decision which the IPKat will definitely revisit when he's had a chance to think as well as to read.

Tour de force here
Tour de France here
Tour de Londres here

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