Patent decision

BL number

O/144/15

Concerning rights in

EP(UK) 1482046 B1 and EP(UK) 2345724 B1

Hearing Officer

Mr A C Howard

Decision date

2 April 2015

Person(s) or Company(s) involved

Teva Pharma B.V. v Amgen Inc Amgen Manufacturing Ltd

Provisions discussed

Patents Act 1977 Section 13, Section 37; Article 68 EPC

Keywords

Abuse of process, Decline to deal, Entitlement, Inventorship, Striking out

Related Decisions

None

Summary

EP(UK) 1482046 (“the 046 patent”) and EP(UK) 2345724 (“the 724 patent”) are from the same patent family and relate to pharmacologically active substances. The 046 patent was allowed to lapse through non-payment of renewal fees in early 2013, while the 724 patent expired at the end of its term in early 2014 and was subsequently revoked centrally in separate proceedings at the EPO with the agreement of both parties to these proceedings.

Entitlement to both patents was claimed via assignment from a researcher in the University of California who was alleged to be the, or a, true inventor. The claimant further requested that the comptroller decline to deal with the entitlement question on the grounds that it would more properly be dealt with by the court, while the inventorship question should be stayed pending resolution in that forum. The defendant resisted the application to decline to deal with the matter, and further requested striking out of the claim and/or summary judgment in their favour, on grounds, inter alia, that as neither patent is any longer in force these proceedings are an abuse of process.

The Hearing Officer, considering that revocation has the consequence that a patent is deemed from the outset not to have had legal effect, agreed to strike out the claim under section 37 in relation to the 724 patent but allowed the section 13 claim to stand on the grounds that the right to be named as inventor is not affected by the retrospective extinction of the rights conferred by the patent. Since the lapsed 046 patent entailed enforceable rights up to the point of its cessation, the request to strike out the claims in relation to this patent was refused.

Having reviewed all the circumstances and, in particular, the need to investigate foreign non-patent law issues concerning US employment law and US contract law, the likelihood of a requirement for disclosure, and the expected duration of the substantive hearing, the hearing officer found that the claim under section 37 with regard to the 046 patent would more properly be determined by the court and exercised his discretion to decline to deal with this part of the reference. Proceedings under section 13 in relation to both patents were stayed.