Overview

The UK Court of Appeal has recently reached a different conclusion to a decision of the Technical Board of Appeal (TBA) of the European Patent Office (EPO) in the case of Eli Lilly and Company v Human Genome Sciences Inc, even though both courts cooperated together during proceedings.

This case has also confirmed the approach taken by the first instance judge, Mr Justice Kitchin, in the application of the law relating to industrial applicability.

This case centred on the patentability by Human Genome Sciences (HGS) of the nucleotide and amino acid sequence of a novel member of the anti-tumour ligand superfamily which it called Neutrokine-α.

HGS did not use traditional "wet laboratory" techniques and instead, used bioinformatics to isolate Neutrokine-α. The patent, granted on 17 August 2005, included a long description of Neutrokine-α's activities and its uses, but that description was not supported by any data obtained by in vitro or in vivo studies: it was essentially a prediction based upon what was known about other members of the superfamily.

Just before the end of the opposition period, Eli Lilly and Company filed opposition proceedings before the Opposition Division of the EPO. Eli Lilly also commenced invalidity proceedings against HGS in the UK.
Although the Opposition Division revoked the Patent in June 2008 on the basis of added matter and obviousness, this decision was suspended pending an appeal by HGS. In the meantime, the High Court of Justice held in July 2008 that all of the claims in the Patent were invalid on three grounds: industrial applicability, insufficiency and obviousness.

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