Lord Hoffman – informative and instructive as always!

  

The June 2009 meeting of TIPLO was a time for contemplation and reflection as the Honorary President Lord Hoffman delivered an address to coincide with his retirement from the House of Lords. It was no surprise therefore that so many attendees packed into Gray’s Inn to hear the words of a man who has contributed so much to the field of Intellectual Property.

Lord Hoffman’s address began by recounting the early days of his legal career. One of his first encounters with IP was whilst acting for the claimant in an interlocutory motion to stop the filming of an Oscar Wilde production. The motion was ultimately unsuccessful but it sparked an interest in IP which was to continue over the next 40 years. He described with some regret that even whilst sitting as a Judge he did not have as much time as he would have liked to contemplate the wider policy issues of the subject - this is something with which busy practitioners can often identify! There were however certain cases which could focus one’s mind. As an example of this Lord Hoffman cited the cases of Biogen and Lunbeck and how deliberating on the extent to which patent claims should relate to the inventive concept made one consider what the patent system is all about and the extent of the monopoly it should offer the patentee.

 

In Biogen, as readers will know Sir Kenneth Murray discovered a way to make artificial molecules of DNA to induce production of hepatitis B antigens as a tool to investigate vaccines and assist in the diagnosis of the disease. The House of Lords (in Lord Hoffman’s leading judgement) held that the process claim was too broad and the patentee should not be entitled to a monopoly in the whole field of producing such DNA molecules as this would stifle further research and healthy competition. In other words, one should not eat what one does not kill.

His Lordship then made a comparison with the case of Lundbeck. At first instance, Kitchin J following the Biogen principle, held that the patent (a pure product patent for the (+) enantiomer of the anti depressant drug citalopram) was invalid as, having regard to the technical contribution, it would be disproportionate to allow Lunbeck a monopoly on all the methods of producing the (+) enantiomer. However, the Court of Appeal (on which Lord Hoffman unusually sat) and the House of Lords took a different view and distinguished the Biogen principle on the grounds that Lundbeck’s patent was for a product rather than a process. Provided that the patent disclosure is enabling (and is new and not obvious), the issue of whether the scope of the product claims are commensurate to the technical contribution or inventive concept may not be of such great significance.

 

It therefore seemed that there was something special about product claims. In a product claim the primary concern is what has been invented, whereas in a process claim it is the manner in which the invention has been achieved. Thus, on the Lundbeck principle, the potential scope of a product patent’s monopoly is much wider than would be afforded to a process claim.

 

Lord Hoffman also drew some interesting contrasts between the Lundbeck cases in the UK and Dutch courts. Whereas the House of Lords held the patent was valid, the Hague District Court held that the equivalent patent was invalid for lack of inventive step. So, two different systems and each provides different answers.In concluding his address His Lordship left the audience with some thought provoking questions regarding the scope of protection which the IP system should offer: should the patent system offer protection to products which have no more than a placebo effect on the patient? Is it enough that people are willing to buy the product? Similar principles can be applied to the fields of copyright and trade marks. Should one be entitled to trade mark protection simply because the mark is not misleading? His Lordship conceded that there was no way to establish definitively whether a narrower or a broader approach was better.

 

There then followed a question and answer session which picked up on various threads of Lord Hoffman’s address. In particular there was a lively discussion on the use of documents in UK patent litigation and how that compared to other European countries such as Germany and the Netherlands. The view was expressed that, in the UK at least, most judges would have an instinctive feel of what the prospects of success in a case are likely to be and that disclosure will not make a difference. This led on to the issue of whether the amount of money spent on patent litigation was justifiable and whether it increased a party’s prospects of success. It was put forward that in certain narrow cases it might have a positive effect but as a whole the benefit was questionable.

 

The evening was chaired by Lord Scott who entertained the audience with a mix of good humour and considered contributions. As ever, Lord Hoffman was informative and instructive. TIPLO is very grateful to him and Lord Scott for a thoroughly enjoyable evening.