Human Genome Sciences Inc v Eli Lilly & Co
A patent for a newly identified protein was capable of industrial application, because its likely uses were plausible on the basis of the patent and the common general knowledge.
Facts
Human Genome Sciences held a patent for a nucleotide sequence encoding a newly discovered protein, Neutrokine-α, which belonged to a family of proteins known to have roles in the immune system. The patent described possible uses of the protein, which were based on its likely biological function. Eli Lilly argued that the patent was invalid because the invention was not susceptible of industrial application, since its uses were speculative.
Legal principle
The Supreme Court held that the patent was valid. Lord Neuberger said that the court should follow the approach of the Technical Board of Appeal of the European Patent Office, under which the patent must disclose a practical application and some profitable use for the claimed substance, so that the ensuing monopoly can be expected to lead to some practical benefit. A plausible or reasonably credible claimed use, or even an educated guess, can suffice. Given the known functions of the family of proteins to which the new protein belonged, its likely uses were plausible.
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
- Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13
- 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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