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July 23, 2017

Comments

J A Kemp,

I do not think your lead in statement of:

The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim.

is correct.

The notion rests on what a "reasonable person skilled in the art, reading the claims in context, would think he was intending to claim."

That part, when combined with "enjoy the full extent" STILL yields "but no more than the full extent."

That's the point, after all, of the doctrine itself.

I have a question for J A Kemp.

Looking at the patent application as filed at the EPO, was there a claim directed to the inventive concept, namely, the use of the combination of pemetrexed + Vitamin B12?

If I understand the case aright, there was no such claim (or statement of invention). There were wider generalisations (antifolate + B12) and a narrower one (pemetrexed disodium + B12) but pemetrexed + B12 was what the EPO calls an "undisclosed intermediate generalisation, and therefore "added matter".

It's a case of less than perfect patent application drafting resulting in a trip to the Supreme Court, isn't it?

To answer the second question - the original claim was for antifolates generally. The EPO complained, and Lilly tried to claim pemetrexed (in any salt form), but they did not have basis for such an amendment. So yes, you are correct in saying that in essence this application could have been better drafted!

As regards the first point, the supreme court drew a clear distinction between the previous test - based on what a reasonable person would have understood the language of the claim to mean, and the new test, which permits the claim to extend to embodiments which are not covered on any sensible reading of the claims.

The comments to this entry are closed.

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