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What is the nature of our relationship with legal decisions from Europe?  How much scope do national courts within a European framework have the capacity to differ?  Can our courts, with their different procedural law relating to evidence, discovery, experts, and cross-examination, reasonably differ from those following a “continental” procedural approach to investigate the same facts?  Is it desirable that they should?

No: not the ECHR again.  Not even the CJEU.  This time it’s the European Patent Office (EPO).  In Human Genome Sciences Inc v Eli Lilly and Company [2010] EWCA Civ 33, all of these questions had to be considered before evaluating the validity of a patent owned by Human Genome Sciences (“HGS”).

In a judgment written by Lord Justice Jacob, the Court of Appeal held that it was reasonable – and in this case, right – that the national courts might differ from each other, and from organs of the EPO itself.  Jacob LJ (joined, with the traditional brevity of intellectual property concurrences, by Hallett LJ and Lewison J) declined to adopt the exact approach taken by a Technical Board of Appeal (TBA) of the EPO in considering the requirement for industrial applicability; as a result, he found HGS’s patent to be invalid.  This week, HGS will seek to persuade the justices that Lord Justice Jacob – now in happy exile at University College, London – is merely a bad European, and should have followed the TBA’s approach more faithfully.

HGS’s patent disclosed a protein important in inter-cellular communication, which they called Neutrokine-a; the associated antibodies and polynucleotide coding sequence were also disclosed.  It was found by Kitchin J at first instance to be invalid; each and all of its claims lacked industrial applicability; was insufficient (i.e. the patent did not disclose the invention in enough detail that someone skilled in that field could reproduce it); and was obvious over the prior art for lack of any technical contribution.  Following the first instance decision, the TBA, acting on its expedited procedure, accepted an amendment of the claims of the patent to render it valid in their eyes.  It is that amended patent that forms the basis of the appeal in the Court of Appeal (and indeed, before the Supreme Court shortly).

In the Court of Appeal judgment, following a short eulogy to English civil procedure (at [15]—[27]), Jacob LJ goes on to consider the relationship between decisions of the TBAs and the national courts.  In so doing, he drew a distinction between principles of law laid down by the TBAs, and their determinations on issues of fact or degree.  The former were held to demand the national courts’ considerable respect: “We follow any principle of law clearly laid down by them, only reserving the right to differ if we are sure that the commodore is steering the fleet on to the rocks.”

Lilly, through Henry Carr QC, argued that where the TBA laid down a standard by which a principle of law was to be applied, that should be treated as part of the case law of the TBA, and accorded the same respect.  This argument was rejected by the Court of Appeal, Jacob LJ saying that “once one departs from a principle of law and starts trying to consider how a particular TBA applied the legal principles to various sets of facts in different cases, one is inevitably involved in assessing the facts of those cases or what are said to be those facts.”  In light of the careful and considered nature of the treatment of evidence by the English courts, the Court of Appeal held that there is no justification for deference to fact-specific findings of the TBAs.  This logic was extended to considerations of obviousness, of sufficiency, and of industrial applicability.

Mr Carr QC had made a particular attack on the judge’s treatment of the plausibility of a patentee’s proffered industrial application for his invention, as against its treatment by the TBAs.  Again, the Court of Appeal upheld the trial judge, holding in that round that his finding the patent not to be capable of industrial application within Art 57 EPC was not to be reversed.

The justices this week will have to decide whether the English courts have the scope to differ from the EPO Technical Boards of Appeal to this extent; finding that they do not could drastically alter the nature of our courts’ relationship with the European Patent Office in patent disputes.

ManagingIP has a useful summary of the each day of the hearing, which can be accessed here.

Dr. Stuart Baran is a BPTC student at BPP Law School. He is the chairman of the Oxford International Intellectual Property Moot.