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Written by Tim Mount on 31 January 2010

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Insufficiency of patents was covered in a key case of last year, Generics v H Lundbeck, a pharma case.

The patent was for the positive enantiomer (basically enantiomers are mirror image particles but not identical, say left and right feet) of an anti-depressant compound, citalopram. Prior to the Lundbeck patent, it was not known how to separate the (+) and (-) enantiomers of citalopram; however Lundbeck devised a means of separating the enantiomers.

The court of first instance, following on from Biogen v Medeva in 1997, highlights the interest of this case to patent litigators and owners.

The trial judge rejected an attack on the patent by Generics for lack of novelty and obviousness; but agreed with the attack based on insufficiency, reasoning that a patent that effectively covered all ways of making a product would be disproportionate

In doing so he followed the principle apparently laid down by Lord Hoffman in the House of Lords in Biogen, namely that:

the first person to find a way of achieving an obviously desirable goal in not permitted to monopoplise every other way of doing so

On appeal, the Court of Appeal held that the trial judge had misinterpreted the rule in Biogen.

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