Patents UK patent decisions had a big year in 2017, most notably with the Supreme Court decision Actavis v Eli Lilly ( UKSC 48). Since a doctrine of equivalents was established in the United Kingdom, its application in future cases has been highly anticipated. The end of 2017 and the first half of 2018 saw a number of subsequent decisions which give a better indication of how this new era in UK patent claim interpretation might unfold.
Generics v Yeda ( EWHC 2629) was the first decision since Actavis to consider its impact. Significantly, when considering the effect of equivalents on assessment of validity, it ruled that prior art equivalents can be taken into account only for inventive step, not for novelty. Following the European Patent Office (EPO) approach, it concluded that there cannot be anticipation by equivalence.
The court considered whether the patent would have lacked novelty on the basis of a doctrine of equivalents and decided that the claims would have been anticipated. Before Actavis the established law was that claim scope must be the same for invalidity and infringement. The court acknowledged that Actavis was restricted to assessment of infringement, and would therefore require another Supreme Court decision to determine whether the law of novelty had also changed.
The case also considered the issue of sufficiency of disclosure. While the patent included a clinical trial protocol, there were no specific results. The judgment confirmed the current UK approach which regards the plausibility threshold as low. The outcome of the February 2018 Supreme Court hearings in the Warner-Lambert v Generics saga