Lord Hoffmann brings Europe into the UK patent equation

Protocol test U-turn sparks ‘sea of interpretative uncertainty’ for IP players. By Steve Hoare

You may not believe this, but patent law just got sexy. The House of Lords has delivered two judgments in two weeks that have totally reshaped UK patent law.

The man at the centre of this upheaval is Lord Hoff-mann, possibly the most influential person working in IP law in the UK. In 1989, Lord Hoffmann, then Mr Justice Hoffmann, set the standard that all patent lawyers have since followed – the Improver or Protocol test. Last week he disowned it in Kirin-Amgen v Aventis & Transkaryotic

In doing so, he brought UK patent law into line with our Continental cousins and, as he saw it, risked throwing lawyers into “a sea of interpretative uncertainty”.

While Lord Hoffmann was referring to the interpretation of particular patents, every patent lawyer in the land has a copy of his judgment on their desk, and it is their interpretations of this landmark decision that seem to be causing the most uncertainty.

Taylor Wessing partner Gary Moss advised Kirin-Amgen. Although he is obviously disappointed to have lost the case, he is really angry about the EU law principles underlying the judgment.

“What I found particularly disappointing is that the House found the claims invalid and in particular Claim 26 invalid,” says Moss. “They did so by adopting the jurisprudence of the European Patent Office without a great deal of further explanation. In doing so they appear to have set aside many years of jurisprudence of UK patents.

“Both Mr Justice Neuberger at first instance and Lord Justice Aldous in the Court of Appeal rejected the logic of the European Patent Office’s reasoning most strongly. The House of Lords appears to have now simply shrugged and said that we should follow Europe on this particular issue. I personally think that’s an enormous pity.”

Field Fisher Waterhouse partner Jonathan Radcliffe advised Sabaf on the previous week’s groundbreaking judgment in Sabaf v MFI & Ors. He agrees, but is less concerned. “What I think the House of Lords has done in Kirin-Amgen is firmly align UK law with the European Patent Office and European practice generally… There’s also a trend towards align-ment in the rejection of the product by process claim.”

For the uninitiated, the product by process claim is the argument which says that although the final product
is not new, the process of making it was new. In Europe you must have a new product.

“This has been a difference between the UK and the rest of Europe, which has been troubling some people for some time. We’re now in step with Europe, so that’s good,” says Bird & Bird partner David Wilson, who was representing Aventis and TKT.

That Moss and Wilson should beg to differ is unsurprising considering they have spent five years arguing this case with one another.

However, the EU law issue is quite separate from Lord Hoffmann’s ‘sea of uncertainty’ point, and many lawyers approve of the changes.

Lord Hoffmann’s 1989 Protocol was a three-stage test that many patent lawyers have been slavishly following; but recent judgments by Mr Justice Laddie and Lord Justice Jacob have questioned the validity of the Protocol. Lord Hoffmann has now laid it to rest, albeit in a manner that some find difficult.

The full text of Lord Hoffmann’s ‘sea of uncertainty’ quote in the Kirin-Amgen judgment reads: “No doubt there will be patent lawyers who are dismayed at the notion that the Protocol questions do not provide an answer in every case. They may feel cast adrift on a sea of interpretative uncertainty. But that is the fate of all who have to understand what people mean by using language. The Protocol questions are useful in many cases, but they are not a substitute for trying to understand what the person skilled in the art would have understood the patentee to mean by the language of the claim.”

Moss welcomes the death of the Protocol questions, but is concerned about the uncertainty. “The Protocol questions weren’t so highly regarded in the last few years anyway,” he says. “In some cases, they created as many problems as they were destined to solve. There was a tendency to elevate them to the level of statutes.”

Radcliffe is more convinced, saying: “He’s made this crystal clear to practitioners and essentially freed UK lawyers from what could often be the artificial and expensive exercise of considering the Protocol questions.”

Bristows senior partner David Brown agrees. “I practised for a long time in this game before the Protocol questions were devised,” he explains. “I personally never found them particularly helpful, so am pleased they’re no longer obligatory.”

So, that’s okay then. Despite all the arguments, we can be quite certain that the last two weeks have seen Lord Hoffmann totally revamp UK patent law. We will have to see how these changes take effect when they are applied to cases, but we have a corker coming up.

Cambridge Antibody Technology (Cat) v Abbott Biotechnology has had litigators of all stripes licking their lips for months. The mighty clash between Geoffrey Vos QC and IP silk David Kitchen QC for Cat, and Lord Grabiner QC and Simon Thorley QC for Abbott, promises much.

Blood has already been spilt after Slaughter and May was dumped by Abbott in favour of Freshfields Bruckhaus Deringer. Abbott suggested that Freshfields provided more muscle. Herbert Smith is acting for Cat. With Herbert Smith claiming that the case revolves around the wording of a contract rather than the patent, this promises to be a humdinger. Following Lord Hoffmann’s recent judgments, all will be dusting down their arguments.

“By September next year, you’ll see every single patent textbook rewritten in new editions,” promises Radcliffe.

But will the authors agree on what to write?