EditorsAbout the SiteComes vs. MicrosoftUsing This Web SiteSite ArchivesCredibility IndexOOXMLOpenDocumentPatentsNovellNews DigestSite NewsRSS

03.28.19

European Patents Found to be Invalid and Deemed Impotent in the Highest British Court (Again)

Posted in Courtroom, Europe, Patents at 12:42 pm by Dr. Roy Schestowitz

It’s about the tadalafil generic

Just gimme the hands

Summary: “Just gimme the patent,” says every greedy corporation looking to ban its competition (including generics) and facilitate monopoly pricing; the problem is, the EPO keeps granting invalid patents that take a lot of time and money to formally invalidate (in courts), as Actavis v ICOS has just shown

THE number of patents granted by the U.S. Patent and Trademark Office (USPTO) declined last year after certainty associated with these patents had declined and then number of patent lawsuits had totally collapsed. We now see something similar going on in Europe. Was it inevitable? Couldn’t we learn from the mistakes of American lawmakers and USPTO officials?

We are pleased to see that IP Kat (Rose Hughes) has recently been covering some cases that relate to the European Patent Office (EPO). Hughes is doing an OK job without coming across as a patent extremist like the Bristows staff at IP Kat and yesterday she wrote this article about a (British) Supreme Court outcome. Yet another EPO-granted patent has been found to be nonsense:

This morning, the UK Supreme Court delivered its decision in Actavis v ICOS [2019] USKC 15, upholding the Court of Appeal’s decision that ICOS’s dosage regimen patent was obvious. In doing so, the Supreme Court (in a welcome change…) has followed the previous approach of the lower courts to the question of inventive step in both the UK courts and in the jurisprudence of the EPO.

The patent in question related to tadalafil (branded as CIALIS). Tadalafil is an orally administered drug for treating sexual dysfunction. Tadalafil works in a similar way to Pfizer’s famous blockbuster drug Viagra, but with fewer side effects. The original first medical use patent for tadalafil (EP 0740668, “Daugan”) and its associated SPC have both expired. The latest decision related to ICOS’s patent (EP 1173181) which claimed a particular dosage regime of tadalafil. Lilly is the exclusive licensee of the patent.

In an attempt to clear the market for their own tadalafil generic, Actavis brought revocation proceedings against the ICOS/Lilly patent. Actavis argued that the claims lacked novelty and inventive step in view of the original tadalafil patent (“Daugan”). The contentious claims related to a dose regime of up to 5mg tadalafil per day. The Court of Appeal, in overturning Mr Justice Birss’ decision, found the patent invalid for lack of inventive step (Actavis v ICOS [2017] EWCA Civ 1671). Particularly, it was found that the claimed dose would have been obvious for the skilled person to try (IPKat post here).

Notice that first comment which asks: “Can every one of Lord Hodge’s 9 factors be accommodated within Lord Hodge’s exposition of the EPO’s Problem and Solution Approach? If not all, which ones not?”

“Can every one of Lord Hodge’s 9 factors be accommodated within Lord Hodge’s exposition of the EPO’s Problem and Solution Approach?”
      –Anonymous
Someone “from France” then added: “One important factor seems indeed to be missing, which is the “reasonable expectation of success”, even though certain of the listed factors are usually considered for applying this factor. The reasoning that the clinical trial is somewhat a “one way street” (to use EPO standards) is not completely out of scope, but the specific dosage finding that has been identified for optimal effect could, in my view, not have been necessarily derived from this approach (the dosage plateau could not have been expected, considering it seems to necessarily imply some hindsight). I’m not sure I agree with the comment in the post that such a decision is welcome…, I can hardly consider a diverging view between the EPO and national courts to be welcome.”

Another anonymous commenter quotes: “The original first medical use patent for tadalafil (EP 0740668, “Daugan”) and its associated SPC have both expired.”

Then comes the question (or questions): “Doesn’t this mean it has already passed through clinical trials? By the courts’ logic should a 5mg dose already be known? What have I missed?”

What about public interests as well? Either way, the court has trashed yet another European Patent. Will António Campinos get the message or just keep on lying about quality?

“I can hardly consider a diverging view between the EPO and national courts to be welcome.”
      –Anonymous
Freshfields Bruckhaus Deringer LLP’s Laura Whiting and Paul Abbott wrote about it this morning (publication time), calling it “its second patent decision in 6 months” (so rarely do we get to see, at least at this level, just how awful the quality of patents has become).

We’ll probably hear a lot more about it in days if not weeks to come.

Share this post: These icons link to social bookmarking sites where readers can share and discover new web pages.
  • Digg
  • del.icio.us
  • Reddit
  • co.mments
  • DZone
  • email
  • Google Bookmarks
  • LinkedIn
  • NewsVine
  • Print
  • Technorati
  • TwitThis
  • Facebook

If you liked this post, consider subscribing to the RSS feed or join us now at the IRC channels.

Pages that cross-reference this one

What Else is New


  1. Links 25/6/2019: Mesa Releases, Less Microsoft in Apache

    Links for the day



  2. The European Patent Office Remains a Crooked Patent Office That Harms Staff and Abolishes the Rule of Law

    The EPO remains a sordid mess, but those who follow mainstream media might not know anything about it because it's not covered anywhere in 2019



  3. USPTO and EPO Faking Growth by Granting Patents on Everything in Nature, But Campaigners Strike Back

    The patent microcosm is eating the world; everything under the Sun must be patented, they insist, even life itself (so they can 'pirate' the Commons and then charge us a tax for 'access' or 'license' to it)



  4. IBM Happy That Patent Quality at EPO Collapsed and It's Easy to Get Software Patents

    The EPO keeps granting illegal European Patents and the media almost never mentions this illegality because it's in too amicable a relationship (typically financial) with the EPO



  5. The Linux Foundation's Staff Uses Windows and Microsoft. Now the Foundation Outsources the Coding and Hosting, Too (to Microsoft of Course).

    The disturbing turns of the self-described "Linux" Foundation, which seems to be promoting proprietary software and even Microsoft rather than Linux and Free/Open Source software while the role or capacity of Torvalds is being gradually diminished



  6. Links 25/6/2019: Raspberry Pi 4, Ubuntu's Change of Mind, Wayland’s Weston 6.0.1

    Links for the day



  7. Patent Extremism: Stacking the Panels, the Surveys, the Hearings, the Debates

    Projection tactics would have the public believe that those who oppose corruption are simply radicals; patent polarity has come to the point where if one isn't a "true believer" in blackmail (patent trolls) or opposes bribery, then one is simply a "fringe" and akin to terrorists



  8. Links 24/6/2019: Linux 5.2 RC6, Skrooge 2.20.0, ZFS vs. OpenZFS

    Links for the day



  9. The EPO Needs a President Who Obeys the Law, Not One Who Obeys Battistelli

    Succession based on nepotism at Europe's second-largest institution served to shown how inherently broken things had become and why cover-up of injustices is nowadays paramount (not fixing the flaws/ills but merely perpetuating them)



  10. With Water (Treatment) Already Patented It Won't Take Long for Patents (and Patent Royalties) on Air

    A 'paper economy' is what Europe turns into if the current trajectory is followed (led by lawyers, not producers)



  11. Bill Gates Said He Was on a “Jihad” Against GNU/Linux, But GNU/Linux Users/Developers Engaged in Self-Defense Are Foul-Mouthed 'Microsoft Haters'?

    Microsoft, which routinely commits very serious crimes, tries to come across as some sort of philanthropy whereas those who share their work with the public (for greater good) are described as erratic, rude and unworthy of respect from corporations (outcasts basically, deprived of income source)



  12. What Patents the EPO Has Just Awarded (With a Special Reward), Not Just Granted

    The EPO's practice of elevating some patents over the other patents (European Patents) is perhaps more of a societal liability than the EPO cares to realise



  13. Required Reading: Mental State of Team Battistelli/Campinos

    On the heels of yesterday's article about Team Battistelli/Campinos, here are some recommended/required papers on the problem which likely plagues the Office



  14. Links 23/6/2019: Wine 4.11, FreeBSD 11.3 RC2

    Links for the day



  15. Microsoft Apparently Did a Patrick Durusau on Wim Coekaerts to Broaden Its Control Over GNU/Linux

    Microsoft tactics for defection and takeover of the competition (without coming across as hostile) aren't new tactics; internal documents from Microsoft explain how to achieve this



  16. EPO Directors Would be Wise to Rebel Against Team Campinos While They Still Have the Job

    As the EPO continues its bold journey towards dictatorship (where presidencies are passed between friends and ‘circles’ are former colleagues or close confidants) Techrights urges those who have power to speak out — e.g. EPO judges and Directors — to do something before it’s too late



  17. American Front Group Open Invention Network (Riding the Linux Brand) is a Proponent of Software Patents in Europe

    The impact of American multinationals in Europe is difficult to deny; in fact, we're observing the same old lobbying/lobbies still working hard albeit more covertly (typically using front groups)



  18. Say 'Hey Hi' to Software Patents

    Using the “AI” (“HEY HI”) hype the ‘community’ of patent maximalists hopes that every little (and possibly very old) algorithm will suddenly sound amazing and innovative — to the point where it becomes unthinkable to deny a patent monopoly on it



  19. A Personal Note From Ted MacReilly (How Microsoft Works Against GNU/Linux)

    A tongue-in-cheek write-up highlighting the ways Microsoft insiders think and how they strategise against GNU/Linux and Free/libre software



  20. The Linux Foundation's New Vice Chair, Wim Coekaerts, Worked for Microsoft

    The Linux Foundation is boosting the Microsoft boosters and calls that "community"



  21. Links 21/6/2019: GNOME 3.33.3, 32-Bit Support Further Neglected, DragonFlyBSD 5.6.1 Released

    Links for the day



  22. Leaked: Harassment of EPO Directors by Team Campinos

    “New BIT organisation and staff changes,” a novel kind of newspeak, means that Directors are being severely punished without due process at all (“hidden disciplinary measure without disciplinary proceedings”)



  23. Patent Professionals in Europe Have Devolved Into a Marketing Industry

    Lies, buzzwords and hype waves is all that the patent bubble in Europe boils down to these days; loads of bogus patents get granted only for European judges to smack these down (if one can afford the court battle)



  24. Almost Six Months After Iancu Said He Would Make Software Patents Great Again Nothing Has Actually Changed

    We're just a fortnight away from the ludicrous plan of Iancu celebrating 6 months (without accomplishing anything)



  25. Links 20/6/2019: Kubernetes 1.15, Alpine 3.10.0 and Librem 5 June Software Update

    Links for the day



  26. Ignore the EPO's Dumb Festival and Focus on the Abuses Against the Workforce and Its Quality of Work

    Don’t lose sight of the appalling behaviour of the management of the EPO; the last thing it wants is press coverage about its gross abuses and corruption — an aspect it spent literally millions of euros to bury (gaming the news cycle)



  27. Microsoft Attempting to Destroy the Careers of Its Critics, Including Free Software Proponents

    Microsoft isn't changing and has not changed; the tactics described above are still being used, even by its "Open Source" (or "Open at Microsoft") people, who did this to me



  28. Links 19/6/2019: Linux Mint Vs Vista 10, Qt 5.13 Released

    Links for the day



  29. The Linux Foundation's Business Model

    The Linux Foundation's plan, illustrated



  30. Links 18/6/2019: i386 Abandoned by Canonical and a New osquery 'Community'

    Links for the day


RSS 64x64RSS Feed: subscribe to the RSS feed for regular updates

Home iconSite Wiki: You can improve this site by helping the extension of the site's content

Home iconSite Home: Background about the site and some key features in the front page

Chat iconIRC Channel: Come and chat with us in real time

Recent Posts