Arnold J at appellate level - EPO news and a timely decision for World IP Day

Arnold J gets appellate...
Tuesday 26 April 2016 was World Intellectual Property Day.  Fittingly, various nuggets of news emerged.

First, the IPKat learned from CIPA that Mr Justice Arnold has been appointed to the Enlarged Board of Appeal of the European Patent Office.  The IPKat understands that he is to replace Lord Justice Floyd, who has been the UK external member of the Enlarged Board for some years.  One or two external members of the Enlarged Board are included in the panel in cases where there is a referral to the Enlarged Board by an EPO Board of Appeal or the EPO President, and the scope of the matter extends beyond the internal administration of the EPO.  Such cases are relatively rare (single numbers per year) and there are over 20 external members, the IPKat does not imagine that Mr Justice Arnold will be having to jet over to Munich very frequently.

Meanwhile, Mr Justice Arnold has been trying his hand in the Court of Appeal, participating in a judgment - Richter Gedeon Vegyeszeti Gyar RT v Generics (UK) Ltd (t/a Mylan) [2016] EWCA Civ 410 (26 April 2016) - also published on World IP Day.  There are a few striking things about the judgment.  Leading judgment was delivered by Sir Robin Jacob, who announces at the beginning that this will be his last foray into the Court of Appeal, beginning:
... but we say goodbye to Sir Robin Jacob

For the last time, with some sadness, I have pressed the "Start New Civil Appeals Judgment" button of the judgment template.

In a short concurring judgment, Lord Justice Floyd concluded with tribute to Sir Robin:

I hope I will be permitted to add, given what he says in the first paragraph of his judgment, that all those who have practised in this field of law are very greatly indebted to him for sharing with us, in the vast number of so clearly expressed judgments which he has drafted on that template, his great depth of learning in this subject.

Merpel is excitedly informing the IPKat that Arnold J's contribution to the judgment sets a record, probably never to be surpassed, of Arnoldian brevity, consisting of the mere phrase "I agree".

Turning to the substance of the judgment, this is rather less striking.  The judgment under appeal, reported by IPKat here, was given by one of the judges less commonly seen in the Patents Court, Mr Justice (now Lord Justice) Sales.  He found a patent directed towards a dosage regime for use of levonorgestrel as a method of emergency contraception to be obvious.  Permission to appeal was given only in relation to one specific point, that actually turned out to be two specific points, but still resulted in a strikingly brief decision.

The "permanent form" point.

Here the appellant argued that if material that is an important part of prior art is not anywhere written down, then it can be said that it is not sufficient for the purpose of the application of an obviousness test.  Sir Robin had no trouble in dismissing such a suggesion.

The illegitimate to ask point

The prior art relied on to invalidate the patent was a report (the Killick article) of a presentation at a conference in which the work of the World Health Organisation on emergency contraception was described by some researchers. The report contained an error, referring to a dose of 1.5g instead of 1.5mg.  The first instance judge had held:

It would have been obvious that the dose amount was suspect, and a clinician wishing to understand what was being reported in the Killick article would have thought that the obviously sensible course would be to get in touch with him (or with those identified as having made the presentation in September 2000) to check on the true amount. Had anyone done this, there is little doubt that he (or they) would have checked with Dr von Hertzen and would have reverted with a correction and the information that the true dose amount for the single dose regimen which was the subject of the research was 1.5 mg of levonorgestrel.

The appellant argued that this confused the skilled person, who is a notional legal construct, with a real-life person, and thereby extended the common general knowledge to include the knowledge of a third person.

Sir Robin had no difficulty in rejecting this argument either, and so the appeal was dismissed.

Arnold J at appellate level - EPO news and a timely decision for World IP Day Arnold J at appellate level - EPO news and a timely decision for World IP Day Reviewed by Darren Smyth on Wednesday, April 27, 2016 Rating: 5


  1. "Mr Justice Arnold has been appointed to the Enlarged Board of Appeal of the European Patent Office"

    Justice is done.

  2. External members may also be selected to sit in review cases (not common so far, but who knows whether that might change) and there are always two of them in Art. 23 (disciplinary) cases.


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