Generics (UK) Ltd v H Lundbeck A/S
A claim to a product is sufficiently enabled if the specification discloses one way of making it, because the product is the invention, unlike in Biogen.
Facts
Lundbeck held a patent for escitalopram, an anti depressant, which is one of the two enantiomers of citalopram. The patent disclosed one method of separating the enantiomers. Generics argued that the claim to escitalopram itself was invalid for insufficiency, because it covered the product however it was made, but the specification disclosed only one way of making it, so the claim was broader than the technical contribution.
Legal principle
The House of Lords held that the claim was valid. The House said that the principle in Biogen v Medeva, that a claim must not be broader than the technical contribution, did not mean that a claim to a new product was invalid merely because the specification described only one way of making it. The technical contribution was the product itself, which was new, and since the specification enabled the skilled person to make the product, the claim was sufficient. Biogen was concerned with a claim to a product defined by reference to a broad principle, which was different.
Related cases on patents: patentability and validity
- Aerotel Ltd v Telco Holdings Ltd; Macrossan's Application [2006] EWCA Civ 1371, [2007] RPC 7
- Biogen Inc v Medeva plc [1997] RPC 1
- Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49, [2008] RPC 28
- Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2024] EWCA Civ 825
- Human Genome Sciences Inc v Eli Lilly & Co [2011] UKSC 51, [2012] RPC 6
- Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1996] RPC 76
- Oliver Brüstle v Greenpeace eV Case C-34/10, [2011] ECR I-9821
- Pozzoli SpA v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37
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