Lord Hoffmann's sea of interpretive uncertainty in Kirin-Amgen

Although there has been discussion of the rejection of the American doctrine of equivalents in the British Kirin-Amgen case, British discussion mentions the rejection by Lord Hoffman in Kirin-Amgen of Lord Hoffmann's earlier Protocol test. In Kirin-Amgen, Lord Hoffmann wrote: "No doubt there will be patent lawyers who are dismayed at the notion that the Protocol questions do not provide an answer in every case. They may feel cast adrift on a sea of interpretative uncertainty."

from thelawyer.com:

-->The man at the centre of this upheaval is Lord Hoff-mann, possibly the most influential person working in IP law in the UK. In 1989, Lord Hoffmann, then Mr Justice Hoffmann, set the standard that all patent lawyers have since followed – the Improver or Protocol test. Last week he disowned it in Kirin-Amgen v Aventis & Transkaryotic
Therapies (TKT).

In doing so, he brought UK patent law into line with our Continental cousins and, as he saw it, risked throwing lawyers into “a sea of interpretative uncertainty”.

While Lord Hoffmann was referring to the interpretation of particular patents, every patent lawyer in the land has a copy of his judgment on their desk, and it is their interpretations of this landmark decision that seem to be causing the most uncertainty.

Taylor Wessing partner Gary Moss advised Kirin-Amgen. Although he is obviously disappointed to have lost the case, he is really angry about the EU law principles underlying the judgment.

“What I found particularly disappointing is that the House found the claims invalid and in particular Claim 26 invalid,” says Moss. “They did so by adopting the jurisprudence of the European Patent Office without a great deal of further explanation. In doing so they appear to have set aside many years of jurisprudence of UK patents.

“Both Mr Justice Neuberger at first instance and Lord Justice Aldous in the Court of Appeal rejected the logic of the European Patent Office’s reasoning most strongly. The House of Lords appears to have now simply shrugged and said that we should follow Europe on this particular issue. I personally think that’s an enormous pity.”

Field Fisher Waterhouse partner Jonathan Radcliffe advised Sabaf on the previous week’s groundbreaking judgment in Sabaf v MFI & Ors. He agrees, but is less concerned. “What I think the House of Lords has done in Kirin-Amgen is firmly align UK law with the European Patent Office and European practice generally… There’s also a trend towards align-ment in the rejection of the product by process claim.”

For the uninitiated, the product by process claim is the argument which says that although the final product
is not new, the process of making it was new. In Europe you must have a new product.

“This has been a difference between the UK and the rest of Europe, which has been troubling some people for some time. We’re now in step with Europe, so that’s good,” says Bird & Bird partner David Wilson, who was representing Aventis and TKT.

(...)

The full text of Lord Hoffmann’s ‘sea of uncertainty’ quote in the Kirin-Amgen judgment reads: “No doubt there will be patent lawyers who are dismayed at the notion that the Protocol questions do not provide an answer in every case. They may feel cast adrift on a sea of interpretative uncertainty. But that is the fate of all who have to understand what people mean by using language. The Protocol questions are useful in many cases, but they are not a substitute for trying to understand what the person skilled in the art would have understood the patentee to mean by the language of the claim.”

Moss welcomes the death of the Protocol questions, but is concerned about the uncertainty. “The Protocol questions weren’t so highly regarded in the last few years anyway,” he says. “In some cases, they created as many problems as they were destined to solve. There was a tendency to elevate them to the level of statutes.”<--