UK widens the scope of patent protection

by DLA Piper

DLA Piper

On 12 July, the English Supreme Court introduced a major change to English patent law, extending the potential scope of protection of a patent beyond the interpretation of its claims to variants which achieve substantially the same result in substantially the same way as the invention of the patent.

The case (Actavis v Eli Lilly1) has serious implications for businesses in all industry sectors, not just the pharmaceutical sector. It will now be much easier to establish a variant of a product or process that directly infringes a patent. By making the courts more patent-friendly, this may well lead to an increase in patent litigation in the UK. Extending the scope of protection in this way also makes it more challenging for implementers to judge whether or not a particular product or process infringes a patent, and design around it.

We recommend clients look again at their freedom to operate assessments in the UK and re-evaluate the possibility of achieving their business goals by litigating in the UK.

The background

The essence of Eli Lilly's invention was the discovery that the damaging side effects of pemetrexed in treating cancer could largely be avoided by administering pemetrexed disodium together with vitamin B12. As a matter of ordinary language, the claims clearly only extended to the use of pemetrexed disodium (they specifically claimed its use). However, notwithstanding that, the Supreme Court held that Actavis's product, which contained pemetrexed diacid or a pemetrexed salt other than pemetrexed disodium (i.e. not pemetrexed disodium), directly infringed the patent.

The change

The extent of the protection conferred by a European patent is determined by its claims2. However, the Protocol on Interpretation provides "due account shall be taken of any element which is equivalent to an element specified in the claims"3.

Until this decision, the sole question under English law what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. The language chosen was usually of critical importance. The courts rejected applying a "doctrine of equivalence", being concerned that, "once the monopoly had been allowed to escape from the terms of the claims, it is not easy to know where its limits should be drawn"4.

However, the Supreme Court held that two questions had to be answered in order to give effect to the Protocol on Interpretation: (1) does the variant infringe a claim as a matter of normal interpretation; and, (2) does the variant nonetheless infringe a claim because it varies from the invention in an immaterial way? The latter extends the potential scope of protection of a claim, introducing a doctrine of equivalence test for the first time. It raises questions that the court will normally have to answer by reference to the facts and expert evidence.

What is an immaterial variant?

To answer question (2), the Supreme Court applied the following test (modifying the "Improver" questions):

  • Does the variant achieve substantially the same result in substantially the same way as the inventive concept revealed by the patent? If yes:
  • Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? If yes:
  • Would such a reader have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the claim of the patent was an essential requirement of the invention?

If the answer to the last question is "no", then non-literal infringement is found.

Application to this case

The Supreme Court held that the skilled addressee would understand that the reason why the claims were limited to the disodium salt was because it was the only pemetrexed salt on which the experiments described in the specification had been carried out. The court further held that, given the common general knowledge, it was highly unlikely that the addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium. Hence, the court found Actavis's product to be an immaterial variant and that it infringed the patent through the doctrine of equivalence under English, French, Italian and Spanish law.

1Actavis (UK) & Ors v Eli Lilly and Company [2017] UKSC 48
2 Article 69(1) of the European Patent Convention 2000
3 Article 2 of the Protocol on the Interpretation of Article 69
4 Lord Hoffmann in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© DLA Piper | Attorney Advertising

Written by:

DLA Piper

DLA Piper on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.