Europes courts converge on nonliteral infringement. Dec 07, 2017 the 2004 house of lords decision in kirin amgen was a pivotal one. Tkt has confirmed the correct approach of proper construction of patent claims, as interpreted in the full light of the invention, to assess infringement. Hoechst marion roussel limited and others appellants conjoined appeals back to preceding text. In kirin amgen the house of lords held that when determining the scope of protection afforded to a patent. Kirinamgen inc amgen, a californian pharmaceutical company, is the proprietor of. The judicial function of the house of lords was succeeded by the supreme court in. In kirin amgen, lord hoffmann said that there were good reasons why the german and english courts discouraged, if not actually prohibited, the use of patent office prosecution files in aid of the construction of claims. Since kirin amgen, the court of appeal has sought to organize the principles laid down by the house of lords in a list of eleven guidelines. Kirin amgen v tkt 2005 rpc 9 the house of lords explained that the determination of the extent of protection only involves asking what a person skilled in the art would have understood the patentee to have used the language of the claim to mean.
Hoffmann, now in the house of lords, repudiated as a mangle the questions he. We know that when dealing with ip issues, the two main barriers micro, small and medium sized enterprises. Gb vereinigtes konigreich gb united kingdom gb royaumeuni. Hoechst marion roussel ltd3 hereafter ka the house of lords exhibited a marked reluctance to jettison preepc uk jurisprudence and to embrace a new. According to the house of lords the first step in determining whether any infringement of the patent has occurred is to correctly construe the. Uk supreme court broadens scope of patent protection lexology. The judgment was issued on 21 october 2004 and relates to the scope to be accorded to patent claims, including the doctrine of equivalents. Kirin amgen v hoechst marion roussel, a uk patent case decided by the house of lords. Kirinamgen inc and others v hoechst marion roussel limited. Kirin amgen inc v hoechst marion roussel ltd, reports of patent, design and trade mark cases, volume 122, issue 6, 1 january 2005, pages 169207, we use cookies to enhance your experience on our website. Hoechst marion roussel limited and others respondents and kirin amgen inc and others respondents v. In the actavis decision lord neuberger states in the absence of good reason to the contrary, it would be wrong to depart from what was said by the house of lords in kirin amgen 2. Kirinamgen inc v hoechst marion roussel ltd reports of.
Harris, a united states supreme court case on employment law. The patenting of biological materials in the context of. Since the uk house of lords addressed the question in kirin amgen v hoechst marion roussel full judgment available here. The context of this comment is within a discussion of the reliance which could be placed on the contents of the patent office file.
Part iii then discusses some aspects of the kirin amgen decision. Asahi kasei kogyo kks application 1991 rpc 485 house of lords, uk, see also kirin amgen inc. Does the variant infringe any of the claims as a matter of normal interpretation. Hoechst marion roussel, a british patent case decided by the house of lords amgen s. The appellant, kirinamgen inc amgen, was the proprietor of european.
Specifically, the house of lords took a view that the use of a patent office file. Epo is a hormone made in the kidney which stimulates the production of red blood cells by the bone marrow. Does the variant nonetheless infringe because it varies. This requires that i interpret the claims in the light of the description and drawings, to decide what a person skilled in the art would have understood the patentee to have. Kirinamgen inc v hoechst marion roussel ltd wikipedia.
This is the first decision from the house of lords the uks highest court based on the current uk patent law. Article 69 says that the extent of protection is determined by the claims. Harris, a case of the united states supreme court on labor law. The issue was whether the claims of a european patent granted to kirin amgen, inc. Indeed, in kirin amgen the house of lords opined that article 69 fi rmly shuts the door on any doctrine which extends protection outside the claims.
See also portal california gate companies kirin amgen v. What would the person skilled in the art have understood the patentee to be using the language of. Jul, 2017 for the last decade, the most influential decision has been that of the house of lords in kirin amgen, in which lord hoffmann said, essentially, that all issues of infringement could be resolved by adopting a purposive construction to the language of the patent claim, so giving effect to what the person skilled in the art would have. Epo decision of the house of lords of 21 october 2004. Hoescht marion roussel6 where it held that the fundamental question was. The aldous faction won the day with the definitive house of lords judgment by lord hoffmann in kirin amgen 2.
Part ii first provides a general overview of the law governing patent claim interpretation in the uk, up until kirin amgen. The patenting of biological materials in the context of the. It also doubted the utility of the protocol questions, despite their regular application by the uk courts and the adoption of similar questions in other eu. International following their general approval by the house of lords in kirin amgen v hoechst marion roussel. Kirin amgen inc amgen, a californian pharmaceutical company, is the proprietor of a european patent ep 0148605b2 relating to the production of erythropoietin epo by recombinant dna technology. Kirin amgen inc v hoechst marion roussel ltd neuberger j 118 kirin amgen inc. Kirinamgen inc v hoechst marion roussel ltd reports. Oct 28, 2004 after a 10 year drought of cases from the english house of lords on patent issues, there have been two important cases. The first overarching principle is that contained in article 69 of the european patent convention. Sabaf warns that if known integers are put together without some synergistic advantage, the patent is. Regardless of the size of your business, the nature of the goods it supplies or the services it provides, your business will create and as a consequence, it will own some forms of intellectual property ip. After construing claim 1 and claim 19 the house of lords found that none of these claims were infringed.
In a wideranging judgment which set out a clear guide to patent construction, lord hoffmann said 41. A patent claim must be construed by asking what the skilled person would have understood a patentee to mean by the language of the. After looking at the comments of lord hoffmann in kirin amgen about the undesirable consequences of permitting reference to prosecution history, and at the approach of courts in other epc states, the court concluded that it was appropriate to take a sceptical, but not absolutist, attitude to reference to the prosecution file along substantially the same lines as the german and dutch courts. In the case of virgin atlantic v premier aircraft, the court of appeal, summarising kirin amgen, explicitly stated it follows there. Its use was described in the standard work in the field, the socalled maniatis manual molecular cloning, a laboratory manual. On december 20 2005, justice hughes, who recently rose to the bench of the federal court after a distinguished career as an ip. Hoechst marion roussel limited and others respondents kirin amgen inc and others respondents v. The law of patent construction in the uk has been largely settled since the 2004 house of lords decision in kirin amgen which, in confirming purposive construction as the correct approach, ruled out any usstyle doctrine of equivalence.
Oct 21, 2004 house of lords, bailii protocol on the interpretation of article 69 of the european patent convention, patents act 1977 england and wales citing. The case and subsequent judgment affirmed principles from a prior case, catnic components ltd. Adrift on a sea of uncertainty conclusion 11 a summary. The appellant, kirin amgen inc amgen, was the proprietor of european. And for this purpose, the language he has chosen is usually of critical importance. Hoffmann in the earlier house of lords decision kirin amgen. In his 2001 judgment he explained that as a matter of principle, questions of construction of a claim in a patent. This test is commonly known as the functionwayresult test.
Appeal from kirin amgen inc and others v hoechst marion roussel ltd and others ca 31jul2002 the claimants sought damages for infringement of their patent. The requester further asserts that neither kirin amgen, nor any of the other cited decisions before it. Genzyme files suit against tkt for glucocerebrosidase. The uk supreme court or house of lords as it then was comprehensively restated the correct approach to claim interpretation and infringement in 2005 in kirin amgen v. Life still too short to look at the prosecution history. The reasons included the consideration that the meaning of a patent does not change depending on whether a party has access to. Get free access to the complete judgment in kirin amgen inc and ors v. By continuing to use our website, you are agreeing to our use of cookies. Amgen s thousand oaks staff in 2017 numbered 5,125 7. That is what the house of lords did in the catnic case, where lord diplock said at 1982 rpc 183, 242. There is often discussion about whether we have a european doctrine of equivalents and, if not, whether we should. Last year, in kirin amgen v hoechst marion roussel ltd, the house of lords also ironed out some misconceptions that had developed in the application of the purposive construction rule in the uk. In kirin amgen, there was only one compulsory question. Ipportal ippt20041021, ukhl, kirin amgen v hoechst.
Uk supreme court house of lords print this page ippt20170712, uksc, actavis v eli lilly. House of lords kirin amgen inc and others appellants v. Lord hoffmann held that claim scope should be assessed solely on the basis of a purposive construction. Eli lilly in which lord neuberger delivered the judgment of. National approaches supplementary reading the uk approach. The claims must be construed purposively following the well known house of lords authority on claim construction kirin amgen v hoechst marion roussel and others2. Essentially, on the evidence presented before it, the house of lords found that a reasonable person skilled in the art would have understood the claims to be concerned with the protection of amgen s method of producing epo. One of the worlds largest independent biotechnology companies, amgen was established in thousand oaks, california, in 1980. Legal problems raised by patents on human stem cellbased.
House of lords session 200304 2004 ukhl 46 on appeal from. Indeed, in kirin amgen the house of lords opined that article 69 firmly shuts the door on any doctrine which extends protection outside the claims. The house of lords wakes up intellectual property uk. The courts of the united kingdom, the netherlands and germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. The 2004 house of lords decision in kirin amgen was a pivotal one. There is no doctrine of equivalence under english law. House of lords kirinamgen inc and others appellants v. Uk supreme court broadens scope of patent protection. The judgment comes as a surprise, as the previously established uk case law had over time firmly done away with the idea of pith and marrow infringement, culminating in the seminal house of lords judgment in kirin amgen v hoechst marion roussel 2004 ukhl 46.
Kirin amgen inc amgen, a californian pharmaceutical company, is the proprietor of. Hoechst marion roussel limited and others appellants thursday 21 october 2004 lord hoffmann lord hope of craighead. Rebellion quashed improver begets the protocol questions systemic change kirin amgen to the court of appeal conclusion 10 kirin amgen and beyondcast adrift on a sea of uncertainty. Hoechst marion roussel limited and others respondents.
Lords in kirin amgen relate to whether terms of a claim can be construed to have a broader scope than they might appear to have at face value having regard to whether the description permits such a broader construction. As famously explained by lord hoffmann in the seminal decision of the house of lords in kirin amgen v hoechst marion roussel 2005 rpc 9 the crux of purposive. The socalled protocol questions, which had been devised as an aid to deciding claim scope, were stated to be useful in many cases but not a substitute for trying to. Pdf the biopharmaceutical industry is characterized by the cumulative innovation paradigm, wherein the discovery of a gene sequence is only the. That is what the house of lords did in the catnic case, where lord diplock said at. Interestingly, neuberger js judgment addressed validity and then infringement. One is to adhere to literalism in construing the claims and evolve a doctrine which supplements the claims by extending protection to equivalents. Kingdom, the netherlands and germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. Neuberger js kirin amgen v roche decision was the first instance judgment in the case that eventually reached the house of lords, leading to lord hoffmanns 2004 judgment in kirin amgen v hoechst16. Although lord neuberger did not cite his own 2001 first instance judgment in the kirin amgen case kirin amgen v roche 2001 ewhc 518 pat, which was overturned by the house of lords, it seems he drew heavily upon its reasoning. Kirin amgen v hoechst marion roussel, a uk patent case decided by the house of lords amgen inc. The judgment comes as a surprise, as the previously established uk case law had over time firmly done away with the idea of pith and marrow infringement, culminating in the seminal house of lords judgment in kirin amgen where lord hoffmann had explained that the correct approach to claim construction was to abandon literalism in favour of. Uk supreme court broadens scope of patent protection law360. Kirinamgen inc and others v hoechst marion roussel.
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