Powell Gilbert beats Field Fisher Waterhouse in six-year biotech case

Boutique IP firm Powell Gilbert has secured patent validation for its client Human Genome Science (HGS) after six years of litigation.

Partner and founder Penny Gilbert was instructed after HGS discovered and registered a previously unidentified gene so that they could begin using it to develop a treatment for lupus.

Pharmaceutical company Eli Lilly sought legal action against HGS to revoke the patent, claiming it did not disclose anything useful to the industry.

In 2006 the Patents Court ruled the patent was invalid as it lacked industrial application. The Court of Appeal also upheld that judgment, but the landmark biotechnology patent case became the first of its kind to be heard in the UK Supreme Court, which overturned previous rulings and found in favour of HGS.

The Powell Gilbert team were able to show that the gene was an important therapeutic protein and key to the development of an antibody to treat debilitating auto-immune disease lupus – the first new development in treating the condition for 50 years.

Following that decision, the case was sent back to the Court of Appeal for consideration over further issues, mainly on the point of sufficiency which is whether enough information has been disclosed in the patent for a skilled person to be able to apply it.

Eli Lilly instructed Field Fisher Waterhouse IP partner Mark Hodgson, with Three New Square’s Andrew Waugh QC and Miles Copeland.

Gilbert instructed Three New Square’s Simon Thorley QC and Eight New Square’s Michael Tappin QC.

The CoA’s judgment today means a complete reversal of the original decision. It means that HGS’s lupus treatment, developed with GlaxoSmithKline (which is buying out HGS) has patent protection.

Eli Lilly’s lawyers have applied for leave to appeal to the Supreme Court.