Journal of Intellectual Property Law & Practice Advance Access originally published online on March 18, 2009
Journal of Intellectual Property Law & Practice 2009 4(5):347-352; doi:10.1093/jiplp/jpp023
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© The Authors (2009). Published by Oxford University Press. All rights reserved.
The Court of Appeal clarifies the law on sufficiency
Legal context: The case clarifies the law on sufficiency and restricts the scope for attacking the validity of a patent based on excessive claim breadth (sometimes known as Biogen insufficiency after the House of Lords decision in Biogen v Medeva [1997] RPC 1).
Key points: It is now clear that a claim to a product which was known to exist and whose properties could have been reasonably predicted (the inventive step being in finding a way to make the product for the first time) should be treated in the same way as any other product claim. The test of sufficiency is whether the invention as claimed is fully enabled and, for a claim to a new product, this means disclosing one way of making the product is enough.
Practical significance: Patentees who have claimed product protection following success in devising an inventive way of making an obviously desirable but previously unattainable product can breathe a sigh of relief. The decision also has particular significance for enantiomer patents and confirms that the UK law is in line with the EPO jurisprudence: a claim to a single enantiomer will generally not be anticipated by the racemate and may be patentable so long as its resolution involved an inventive step. However, for the purposes of infringement, what constitutes a single enantiomer rather than an enriched racemate remains an open issue.
Correspondence: * Herbert Smith LLP. Email: sebastian.moore{at}herbertsmith.com