Actavis -and- Eli Lilly [2017] UKSC 48

12 July 2017

Daniel Alexander QC, Richard Meade QC and Isabel Jamal appeared for the Claimant/Respondent, Actavis, in this landmark case in which the Supreme Court changed the way in which UK courts consider patent infringement by ‘equivalents’. The Supreme Court, allowing the appeal and finding that Actavis’s product both directly and indirectly infringed, substantially re-cast the English courts’ approach to equivalents, pursuant to the Protocol on the Interpretation of Article 69 of the European Patent Convention providing a potentially much broader scope of claim.

Giving the judgment of the Court, Lord Neuberger said that, in considering infringement it was necessary to address two questions: first whether there was infringement of any claim as a matter of ordinary interpretation; if the answer to the first question was ‘no’, the court should then consider whether the alleged infringement nevertheless varied from the invention in a way or ways that were immaterial. He set out a re-formulated version of the so-called “Improver” or “protocol questions” which he said should act as guidelines for the court when considering the second question. It marks a move away from the widely-adopted approach in Amgen.

The judgment also addresses the circumstances in which the court may have regard to material in the patent prosecution history in determining the scope of claims.

The case is likely to be the leading case on scope of protection for some years and its application and impact is currently widely debated in the UK and internationally.”

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