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Time to review your freedom-to-operate position?

Time to review your freedom-to-operate position?


On 12 July 2017, the UK Supreme Court handed down its judgment in the case of Eli Lilly v Actavis which has important consequences on how the scope of patent claims are determined before the UK courts.   

Eli Lilly’s patent has medical use claims to the combination of pemetrexed disodium and vitamin B12 in the treatment of cancer. Actavis’ products contained either the pemetrexed diacid or different pemetrexed salts.

Before the judgment, UK courts generally took a literal approach to determining the scope of such claims based on the particular compound specified in the claim. However, in this recent judgment the Court held that Actavis’s products directly infringe Eli Lilly’s patent even though the patent specifically recited only a disodium salt of pemetrexed.

The judgment appears to introduce into UK patent law a doctrine of equivalents, which was not previously applied by UK courts, possibly with the intention of harmonising claim interpretation with that of other European countries.  This allows the literal scope of protection afforded by a claim to cover equivalents that would otherwise not fall within the literal claim scope.  

In view of this significant change companies may wish to review infringement advice obtained under the previous law and their freedom-to-operate position. Please contact your usual WP Thompson attorney for more information.