Lilly v Actavis – Supreme Court Introduces a Doctrine of Equivalents in the UK

We recently reported the handing down of an important judgment from the UK Supreme Court on the scope of protection provided by UK patent claims. The judgment holds that the scope of protection can extend beyond the meaning of the language used in the claims, and embrace variants not covered by the claims on any normal interpretation. On the facts of the case, a claim explicitly directed only to a disodium salt of pemetrexed was held directly infringed by products based on different salt forms of pemetrexed. The shift away from the normal meaning of the language of the claims changes previous UK infringement practice significantly, adopting a doctrine of equivalents used in other European countries but not previously applied by the UK Courts. The judgment may thus be viewed as an attempt to harmonise UK law with that of other European countries in the context of the forthcoming unitary patent system.

Given this substantial development in the law in the UK, it may be necessary to review advice previously received on infringement based on the earlier law.

To read more about the recent decision and its impact, please see our briefing on the subject here. For more information please contact Ravi Srinivasan or your usual J A Kemp contact.

To read more about the unitary patent system, please click here.