The IPKat’s 20th Birthday Conference Reports – Part 4

Following the other reports on The IPKat’s 20th Birthday Conference held earlier this week in London (Part 1, Part 2, Part 3), here's the final report, covering the panel session.

Perceived dullness of patent cases there was none in the third panel discussion of the day on the best and the worst ones in the last 20 years, which had entirely opposite views peppered with anecdotes.

 

The third panel (photo: Neil Graveney)

Trevor Cook (photo: Neil Graveney)

Trevor Cook recalled that 20 years ago his team appealed to the House of Lords in Kirin-Amgen. Although his team won in both the Court of Appeal and the House of Lords, he thought that the Court of Appeal judgment was the best in terms of complying with the expectations, while the worst was the House of Lords’, where Lord Hoffmann tore up settled law and interpreted it himself. He noted that afterwards the courts were reluctant to apply the questions in the House of Lords decision.

Darren Smyth (photo: Neil Graveney)

The equivalents were a terrible idea, said Darren Smyth commenting on Actavis v Eli Lilly from the UK Supreme Court, which established that an infringed claim could be wider than the claim wording. Although there is the doctrine of equivalents in the US, the prosecution history which is the safeguard there was ignored in the UK Supreme Court. One argument in favour of the UK doctrine of equivalents is that it achieves a fair outcome for what is invented despite what is claimed, but Darren pointed out that the patentee is responsible for patent drafting, and adopting the UK doctrine of equivalents puts a price on the third party.

David Pearce (photo: Neil Graveney)

G 3/08 of the Enlarged Board of Appeal of the European Patent Office is the best case in David Pearce’s view. The Enlarged Board initially thought that the referral was not admissible – the T decisions contradict each other. David disagreed, and Tufty the Cat (see here) filed an amicus curiae brief. But he was told that it could not be accepted because it was not signed. A paw print was added. The submission was refiled. And it was accepted!

Then David received an email from a Sydney source saying that Lord Hoffmann put pictures of his cat during a speech and cited his submission on what should and should not be patentable (here) – another reason to make the case memorable for David.

On the merit, David reckoned that the appeal was about settled law: the law is consistent in this area.

With Sir Robin sitting by his side David said his decision in Aerotel/Macrossan [2006] EWCA Civ 1371 was the worst case in his view in the past 20 years which established a four-step test on whether a claim has subject-matter excluded from patentability. Following the judgment there was confusion at the Patent Office.

Rose Hughes (photo: Neil Graveney)

Rose Hughes focused on plausibility. The G2/21 from the Enlarged Board was a good one, said Rose. The technical effect is not necessarily in the claim, and one question is how much evidence is needed for plausibility and the inventive step. The Enlarged Board held that the status quo applies: what the skilled person would understand in the application as filed. This approach is consistent with existing case law.

Rose mentioned that the recent US Supreme Court decision Amgen v Sanofi (No. 21-757) was also a good decision. One of the questions in this judgment is how much information is needed to support a broad functional claim. This judgment is consistent with case law and has not changed it. The US Supreme Court was against it if too much work is required to reproduce what is in the claim.

But now the landscape is changing. Previously a laboratorist needed to check which molecule in the claim works and which does not. Now they may put everything into an AI machine. Would finding the molecules that work still be undue burden? Perhaps no longer so.

 

Sir Robin Jacob (photo: Neil Graveney)

Everything you said about Amgen is completely wrong was Sir Robin’s opening comment to Trevor. Sir Robin remembered that when he sat in the High Court the Hoffmann test was straightforward to apply. Well, that was the case until the Supreme Court introduced the doctrine of equivalents.

Sir Robin then turned his attention to another Supreme Court judgment: Regeneron v Kymab. He said that if a patent applicant says that something works, the Patent Office or a court needs to be very careful to hold that they could not have a patent on it. In Regeneron, the applicant had a good idea. But Lord Briggs, delivering the judgment of the majority of the court, considered that it is not enough if the skilled person can only make a part of all the types of mice within the claim. Sir Robin said that the patent system encourages innovation, and it would not if one could only obtain a patent when he is able to make all embodiments within the claim scope. He suggested that the right test should be if the application says that it would work and later one proves that it does, the patent should be upheld. This approach is consistent with the law, with support for example from a 1969 decision Smith Kline.

Sir Robin finally remarked that there is no evidence that patents prevent innovation. Instead, there are lots of innovations in the related field after a big patent.

The event ended with a discussion on the present and future of The IPKat. Best wishes have been expressed. The thirty-year anniversary event was already looked forward to. But to this Kat what stood out was when Lord Justice Arnold commented that there are nowadays fewer reports on the UK judgments, even if they are from the Court of Appeal. Rose replied that Sir Richard should make them shorter!...

Final group picture: all current and past Kats in attendance!