• Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

Critically analyse what makes for sufficient disclosure in the description of a patentable invention, focusing in particular on Biogen v Medeva and subsequent related cases. Is this a case of one rule for simple products and another for complex product-by-process claims?

Extracts from this document...

Introduction

The traditional law of insufficiency is derived from the conception of the disclosure in a patent specification as the patentee's consideration to provide to society at large as the quid pro quo for a patent monopoly in a contractual sense[1], and can be traced back to Liradet[2]. The general concept of disclosure in modern insufficiency established thereby was further developed and molded in UK statutory law[3] that most relevantly raises insufficiency as revocation ground[4]. The requirement set out thereby is that a patent specification shall constitute an enabling disclosure of the invention claimed in the claims[5], and thus, a specification is deemed insufficient if a person skilled in the art that follows the express teaching of the disclosure cannot perform the invention at all or without a prolonged, research, enquiry or experiment[6]. In addition, the common law doctrine of undue claim width comprises this insufficiency principle, in particular with regard to claim objections to an unduly breadth relative to the extent of disclosure, i.e. for covetous claiming[7]. The so-called Biogen insufficiency[8] goes further and hearkens back to the development of chemical product claims in the UK?s early 20th century when chemical inventions were limited to product-by-process claims[9]. At those times, any chemical product had to be defined by its distinct method of processing. This said, the development and shortcomings of this particular patent claim category were well known, but although the House of Lords (HoL) ...read more.

Middle

claims in which the technical contribution of the invention is the product itself[16], even when only one method to create it is disclosed in the patent specification[17]. Moreover, Lord Hoffmann clarified that with regard to the Biogen insufficiency, the respective statutory provisions and EPC statues as mentioned above do not lead inevitably to the conclusion that simple product claims must also support all methods of creating the product[18]. In conclusion, the marriage of ?sufficiency disclosure? concept to the invention itself as defined in the claims under the clarification in Lundbeck was confirmed in Conor Medsystems[19]. Hereby, it was established that when determining the inventive step, it is only necessary to consider the invention as defined by the claims, and not in the disclosure in the patent specification[20], and therefore, there is still room for debate in this issue, when the scope of invention is to be construed. [1] In other words, in the age of industrialization or in times of a technology leap of industrial or otherwise applicable development, such as nowadays biotech, the proposes of disclosure is, besides to limit the scope of monopoly right granted to the inventor by the claims of the patent, to facilitate technology transfer or diffusion of knowledge. Reference is made to David J. Brennan, ?The Evolution of English Patent Claims as Property Definers? (2005) 4 Intellectual Property Quarterly pp 362-363 [2] Liardet v Johnson Unreported 1778, per Lord Mansfield in ibid supra note 1 p 370 In the late ...read more.

Conclusion

Ltd v H Lundbeck A/S: In search of optimal patent protection: Biogen insufficiency and the chequered history of product claims' (2010) 32 4 E.I.P.R. p 3 [10] Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46 [11] Biogen v Medeva [1997] RPC 1 at 47-9 per Lord Hoffmann; contra Molynlcke AB v Proctor & Gamble Ltd [1994] R.P.C. 49; Chiron Corp v Organon Teknika Ltd (No.3) [1994] F.S.R. 202. [12] Tim Leung, 'Generics (UK) Ltd v H Lundbeck A/S: In search of optimal patent protection: Biogen insufficiency and the chequered history of product claims' (2010) 32 4 E.I.P.R. pp 2, 5 [13] Case T-409/91 Exxon/Fuel Oils [1994] E.P.O.R. 149; [1994] OJ EPO 653 at [3.3] which regard to Biogen v Medeva [1997] RPC 1 in Tim Leung, 'Generics (UK) Ltd v H Lundbeck A/S: In search of optimal patent protection: Biogen insufficiency and the chequered history of product claims' (2010) 32 4 E.I.P.R. p 5 [14] Biogen v. Medeva [1997] RPC 1 paras 51, 52 [15] Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12 [16] Generics (UK) Ltd v Lundbeck A/S [2008] EWCA Civ 311; [2008] R.P.C. 19 at [40]. [17] Generics (UK) Ltd v Lundbeck A/S [2008] EWCA Civ 311; [2008] R.P.C. 19 at [35]. [18] Eddy Ventose, 'The House of Lords Clarifies ?Biogen Insufficiency', (2009) 6 3 SCRIPTed <http://www.law.ed.ac.uk/ahrc/script-ed/vol6-3/ventose.asp>accessed on 21 September 2013 p [19] Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [20] Sebastian Moore and Duncan Ribbons, ?The Court of Appeal Clarifies the Law on Sufficiency? (2009) Journal of Intellectual Property Law & Practice p 352. ...read more.

The above preview is unformatted text

This student written piece of work is one of many that can be found in our University Degree Intellectual Property Law section.

Found what you're looking for?

  • Start learning 29% faster today
  • 150,000+ documents available
  • Just £6.99 a month

Not the one? Search for your essay title...
  • Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

See related essaysSee related essays

Related University Degree Intellectual Property Law essays

  1. Discuss using case law what changes the Land Registration Act 2002 has made to ...

    to a person in actual occupation of land at the time of disposition is protected as a overriding interest. The effect of LRA2002, s .29(1)and the sched 3 para 2 is to make it clear that such an interest must be proprietary , not a personal, nature.

  2. Creative Commons - Rebalancing the Copyright Bargain in the Digital Age

    creator plus 70 years.32 This extension was also adopted by Australia through the 2005 US-Australia Free Trade Agreement.33 However, the motivation behind the American Bill was seen by critics to be in response to corporate lobbyists, in this case Disney, seeking to protect royalties from copyright works nearing the end

  1. Contrary to popular belief, the law is reasonably well equipped to deal with computer ...

    data or even to use a telecommunications service with the intention not to pay for it.79 The enactment of the recent Fraud Act80 (hereinafter FA) provided an opportunity not only to modernise by including on-line frauds and other offences using technology, redress judicial trouble in applying existing law81 and of

  2. Intellectual Property Right

    'Standardized IP protection can produce more costs than benefits when applied in developing countries, which rely in large part on knowledge generated elsewhere to satisfy their basic needs and foster development.' (Commission on IPR, 2002) Undoubtedly, patents matter greatly to some industries, such as pharmaceuticals.

  1. property law

    therefore petitioned the King directly, on the basis that if the judges did not have the discretion to apply abstract equity, then the King must still retain it. Consideration of these petitions was also delegated by the King, to the Chancellor2.

  2. What might be the greatest strengths of the patent system in its modern form, ...

    off technological fields in favor of the incumbent global champions as well as malicious ligation attacks from private equity powered patent trolls to obtain their share of the cake[14] impose the greatest costs and are nowadays recognized as harmful[15].

  1. Trademarks &amp;amp; Intellectual Property Case. when PRU go to register the name Lancashire ...

    scarves without the words ?All Reds? on them would be deemed passing off, in comparison to the ones without the words on the scarves.

  2. Consider the idea of inventions the commercial exploitation of which would be contrary to ...

    with the Plant Variety Office of the EU, as well as 32% of the paprika (sweet pepper) varieties and 49% of the cauliflower varieties, it seems to be not sufficient to argue ordre public or immoral behavior. In addition, the fact that the second biggest applicant in this field, Syngenta,

  • Over 160,000 pieces
    of student written work
  • Annotated by
    experienced teachers
  • Ideas and feedback to
    improve your own work