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Two new Patents Court judgments

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat has been notified of two recent judgments coming out of the Patents Court of the High Court for England and Wales. The first of these, Edwards Lifesciences AG v Cook Biotech Incorporated, issued last Friday by the Honourable Mr Justice Kitchin, is a rather more weighty one than the second, Kapur v Comptroller General of Patents, which issued a while ago but has only just appeared on BAILII.

The case in Edwards v Cook related to EP(UK) patent 1255510 granted to Cook Biotech. Edwards applied to have the patent revoked, and Cook counterclaimed for infringement. Attentive readers may recall that Edwards have recently been on the other end of a claim for revocation, in Corevalve v Edwards Lifesciences (reported by the IPKat here). The issues this time round also involved implantable valves in the form of collapsible stents for delivery via a catheter (pictured above right). The issues for the judge to decide were (apart from a couple of minor feeble arguments about insufficiency and added matter) whether the patent was novel and inventive over a succession of cited documents.

Kitchin J arrived at the conclusion that the patent as a whole was obvious in light of one of these documents, which had been published before the priority date of the patent. The matter need not have then gone any further, but for good measure the judge also considered the effect of another document in the form of a scientific paper published between the claimed priority date and the application date of the patent. The paper was therefore only relevant if the priority claim was invalid. The priority application, a US provisional, was filed in the names of three inventors, only one of which was employed by Cook Biotech at the time. A PCT application was then filed one year later, in the name of Cook Biotech. Crucially, the other two inventors' rights were not assigned to Cook until much later, and not until after the application entered the European regional phase. Edwards' argument was that Cook had not derived the right to claim priority because, at the time the application was made, the right had not been assigned and they were only successor in title for one inventor, via a contract of employment.

Referring to sections 5 and 7 of the UK Patents Act, Article 8 of the PCT and, most importantly, Article 4 of the Paris Convention (which section 5 is intended to put into effect in the UK), Kitchin J came to the logical conclusion that the effect was clear:

"A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of Article 87 EPC in two cases: J 0019/87 and T 0062/05."(paragraph 95)

The scientific paper was therefore prior art, and had the effect of some of the claims being found invalid for lacking an inventive step over this document. too Although the patent was found invalid anyway, this case does raise the issue that priority claims do need to be carefully considered. It is not enough just to have a connection with the priority application; a common applicant or a definite chain of title is really needed, which must be sorted out in advance of the claim being made.

Full post as published by IPKat on June 17, 2009 (boomark / email).