New Judgment: Human Genome Sciences Inc v Eli Lilly & Co  UKSC 51
02 Wednesday Nov 2011
On appeal from:  EWCA Civ 33
Art 52(1) of the European Patent Convention provides that, in order to obtain a European patent, an invention must be “susceptible of industrial application”. Art 57 states that an invention is susceptible of industrial application if it can be made or used in any kind of industry. The primary issue in this case was the way in which the requirement of industrial applicability extended to a patent for biological material.
Held: while the reasoning in decisions of the European Patent Board was not binding upon national courts, the courts should normally follow the jurisprudence of the EPO, particularly where the Board had adopted a consistent approach to an issue in a number of decisions, as was the case with regard to the application of art 57 to patents for biological material. The standard set by the High Court for susceptibility to industrial application was a more exacting one than that used by the Board. It was looking for a description that showed that a particular use for the product had actually been demonstrated, rather than that the product had plausibly been shown to be usable for the purposes of research work, which the Board must be taken to have regarded as an industrial activity in itself. Notwithstanding the importance of deference to the findings of fact and value judgments of a court of first instance, especially where that decision is confirmed on appeal, in this case it is evident that the Judge and Court of Appeal failed to follow the principles of law clearly set out by the Board in this and previous cases. The appeal must therefore be allowed.