"Simply put, a gene that specifies the structure of a desired polypeptide product is either isolated from a 'donor' organism or chemically synthesised and then stably introduced into another organism which is preferably a self-replicating unicellular organism such as bacteria, yeast or mammalian cells in culture. Once this is done, the existing machinery for gene expression in the 'transformed' or 'transfected' microbial host cells operates to construct the desired product, using the exogenous DNA as a template for transcription of mRNA which is then translated into a continuous sequence of amino acid residues."
"The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."
"The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims."
"The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere."
"Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."
"(1) For the purpose of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly. (3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."
"If the Claims have a plain meaning in themselves [emphasis supplied], then advantage cannot be taken of the language used in the body of the Specification to make them mean something different."
"A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge."
"I take this opportunity of re-stating that if detailed semantic and syntactical analysis of words in a commercial contract is going to lead to a conclusion that flouts business commonsense, it must be made to yield to business commonsense."
"The only settled expectation currently existing is the expectation that clever attorneys can argue infringement outside the scope of the claims all the way through this Court of Appeals."
"Both parties to this appeal have tended to treat 'textual infringement' and infringement of the 'pith and marrow' of an invention as if they were separate causes of action, the existence of the former to be determined as a matter of construction only and of the latter upon some broader principle of colourable evasion. There is, in my view, no such dichotomy; there is but a single cause of action and to treat it otherwise…is liable to lead to confusion."
"Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down by the Protocol. If the two approaches are the same, reference to Lord Diplock's formulation is unnecessary, while if they are different it is dangerous."
"For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."
"The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked. The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked."
"If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim ("a variant") was nevertheless within its language as properly interpreted, the court should ask itself the following three questions: (1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no? (2) Would this (ie that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes? (3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which include the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class."
"I am of the view that a cell is not a 'host cell' unless it is host to exogenous DNA encoding for EPO or its analogue. Such a conclusion is based in part on the teaching of the [patent in suit]. The terms 'host' and 'host cell' are used consistently to describe cells which have been transfected with exogenous or foreign DNA (ie DNA from outside that particular cell) which encodes EPO, with a view to securing expression of EPO in those host cells. That was accepted by [Amgen's expert] Dr Brenner. The examples contained in the [patent in suit] are all concerned with EPO-encoding DNA which has been isolated outside the cell and inserted into the cell to which it is foreign. Indeed, at the relevant time, the routine method of production of a recombinant protein was by cloning the gene encoding the protein and the introduction of that clone into a self-replicating organism by transfection or transformation. There was no knowledge of the technique of 'switching on' an endogenous encoding sequence by transfecting the cell with exogenous DNA sequences as including an artificial promoter."
"It will be understood that expression of, eg, monkey origin DNA in monkey host cells in culture and human host cells in culture, actually constitute instances of 'exogenous' DNA expression inasmuch as the EPO DNA whose high level expression is sought would not have its origins in the genome of the host."
"It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view would be the case, even though once you have made the discovery, the way in which it can be usefully employed is obvious enough."
"If the subject-matter of the European patent is a process, the protection conferred by the patent shall extend to the products directly obtained by such process."
"This may well be the only way to define certain natural products or macromolecular materials of unidentified or complex composition which have not yet been defined structurally."
"The Board is on the evidence prepared to presume that the limitation to the polypeptide being a product makeable using the DNA of Claim 1 is a technical feature which ensures that it has a glycosylation pattern different from the known uEPO."
"The [Technical] Board [of the EPO] accepted that it is permissible to have a claim to a product defined in terms of a process of manufacture, but state that such claims should only be granted in cases when the product cannot be satisfactorily defined by reference to its composition, structure or other testable parameter. That is a rule of practice which is not the concern of the national courts."
"The law contemplates that patents will not lack sufficiency even though the claims cover inventive improvements. If the law was otherwise there would be no room for patents which disclosed a principle of general application unless the specification described how to carry out later inventions using the principle."
"If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms … [I]f the patentee … has disclosed a beneficial property which is common to [a class of products] he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them."
"A process for production of [EPO], which process is characterised by culturing under suitable nutrient conditions a … host cell transformed or transfected with a DNA sequence according to … claim 1 in a manner allowing the host cell to express said [EPO]"
"First, some rEPOs have a higher apparent molecular weight by SDS-PAGE than some uEPOs; secondly, some rEPOs have the same apparent molecular weight as some uEPOs; thirdly, no rEPOs have a lower apparent molecular weight than any uEPOs."
"It appears to me that the variations in apparent molecular weight between different batches of urinary EPO, coupled with the fact that it is clear that many recombinant EPOs do not satisfy the test, would put the skilled addressee seeking to discover whether his product was within claim 19, and seeking to discover this in a reasonable way, in an unsatisfactory, indeed, an impossible position."
"The onus is upon TKT to establish that the test is insufficient; secondly, that the question of insufficiency has to be judged as of 1984; thirdly, it has to be decided by the court through the eyes of the skilled person; fourthly, the skilled person is deemed to be seeking success rather than failure; fifthly, lawyers can often think up puzzles at the edge of a claim, but skilled persons are concerned with practicalities not puzzles."
Showing the 50 most senior of 221.