Chiron Corporation v Evans Medical Ltd & Ors [1997] EWHC 359 (Patent) (03 November 1997)

Chiron Corporation v Evans Medical Ltd & Ors [1997] EWHC 359 (Patent) (03 November 1997)

The patent is not entitled to the claimed priority date because the priority document does not enable the skilled addressee to obtain pertactin, but rather describes adenylate cyclase. The patent claims are construed such that 'purified' means subject to a process of purification, not requiring high purity, and 'substantially free from intracellular material' means practical absence of such material. The evidential burden for enablement rests on the patentee, but in this case, the priority document fails to provide adequate instructions to obtain the claimed invention without undue burden. Therefore, the patent is invalid for lack of entitlement to priority and lack of enablement.

Citation
[1997] EWHC 359 (Patent)
Parties
Claimant: Evans Medical Limited; Exclusive Licensee: Smithkline Beecham Biologicals SA; Defendant/counterclaimant: Chiron Corporation
Jurisdiction
England and Wales
Judgment Date
03 November 1997
Procedural Posture
Patent Infringement and Revocation / High Court Trial, Judgment
Outcome
Patent held invalid for lack of entitlement to priority and lack of enablement; no finding of infringement as patent is invalid.
Legal Topics
Patent Validity, Patent Infringement, Priority Entitlement, Enablement, Construction of Claims
Intellectual Property Patent Law Patent Validity Patent Infringement Priority Entitlement Enablement Construction of Claims

Case Brief

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Parties

Evans Medical Limited

Claimant

Smithkline Beecham Biologicals SA

Exclusive Licensee

Chiron Corporation

Defendant/counterclaimant

Procedural Posture

Patent Infringement and Revocation / High Court Trial, Judgment

Legal Issues

  1. 1 Whether European Patent 0 162 639 is valid and infringed
  2. 2 Whether the patent is entitled to priority from the earlier application
  3. 3 Whether the patent is sufficiently enabled

Ratio Decidendi

The patent is not entitled to the claimed priority date because the priority document does not enable the skilled addressee to obtain pertactin, but rather describes adenylate cyclase. The patent claims are construed such that 'purified' means subject to a process of purification, not requiring high purity, and 'substantially free from intracellular material' means practical absence of such material. The evidential burden for enablement rests on the patentee, but in this case, the priority document fails to provide adequate instructions to obtain the claimed invention without undue burden. Therefore, the patent is invalid for lack of entitlement to priority and lack of enablement.

Court Disposition

Patent held invalid for lack of entitlement to priority and lack of enablement; no finding of infringement as patent is invalid.