Journal Article

Trends in English patent litigation: are patents more likely to be upheld as valid now than 5 years ago?

Brian Whitehead

in Journal of Intellectual Property Law & Practice

Volume 5, issue 3, pages 158-162
Published in print March 2010 | ISSN: 1747-1532
Published online January 2010 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpp233
Trends in English patent litigation: are patents more likely to be upheld as valid now than 5 years ago?

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Legal context

In 2008, the validity of more than 25 patents was considered by the Patents County Court, Patents Court, Court of Appeal, and House of Lords. Unsurprisingly, given such activity, the law is constantly evolving and being refined; in the past 5 years, an unprecedented six patent cases have been considered by the House of Lords, four of which were concerned with validity. This article considers whether recent case law developments have led to the courts becoming more ‘patentee-friendly’, both by considering the case law itself and by an analysis of the outcome of patent cases over the past 5 years

Key points

There have been major developments in the law of novelty, inventive step, and sufficiency. In respect of novelty, the requirements of disclosure and enablement have been distinguished, meaning that attacks on novelty must be tightly focused and rely on prior art which ‘plants a flag’ on the invention disclosed by the patent. When considering inventive step, it is now clear that the issue of obviousness is to be assessed on the basis of what is claimed, rather than what is disclosed in the patent specification. Furthermore, if a revocation action is based on an ‘obvious to try’ argument, the court is required to decide, on the facts, what level of success the skilled person would need to foresee in order to render the patent in question invalid for obviousness. In some circumstances, the fact that a skilled person would consider the alleged invention ‘obvious to try with a reasonable expectation of a beneficial result’ (the old test) may no longer be sufficient to revoke the patent. Finally, the scope of ‘Biogen insufficiency’ has been circumscribed, and the doctrine is inapplicable to straightforward patent claims.

Practical significance

The above developments are all to the advantage of patentees. Over time, this ought to mean that a greater proportion of patents which are contested in the English courts will be upheld as valid.

Journal Article.  3671 words. 

Subjects: Arbitration ; Intellectual Property Law

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