Revoking a patent

Revoking a patent

The issue

Our client, C, was a chemicals manufacturer which supplied precursors and APIs to a wide range of pharmaceutical companies, both major R&D based and generic manufacturers. C had a successful process for manufacturing an API that was the basis of a major blockbuster product, and a plant where it was scheduled to occupy a large proportion of manufacturing capacity. A number of generic manufacturers had marketing authorisations for products based upon C’s API in the process of being granted in the UK and other countries in Europe. However, the particular form of the API was subject to a patent owned by the original approval holder. C’s objectives were:

  • to be able to assure its generics customers that they would not be prevented from launching products by the imposition of an interim injunction;
  • to ensure that it was not itself prevented from manufacturing by the imposition of an interim injunction; and
  • to obtain a judgment that would be highly persuasive in all jurisdictions.

How we helped achieve our client’s goals

Although C was a German company, we were able to bring proceedings in the English Patents Court in accordance with its wishes, based on the English Patents Court being one of the quickest in the world to achieve a first instance decision, and because its decisions, recognised as being the result of particularly thorough investigations, are highly persuasive in actions brought subsequently in other jurisdictions.

We had advised C that launching a product without first clearing the undergrowth of UK patents that might be infringed, would result in a high probability of an interim injunction being granted in the UK, particularly for the launch of a first generic product.

Some months before the expected grant of the first marketing authorisation in the UK, we commenced proceedings for revocation of the UK patent. We succeeded in arranging for the action to be heard as an expedited action, with a trial fixed for three and a half months’ time. We needed to generate a substantial amount of evidence within that short time, including significant experimental evidence backed up by reports from suitable experts in the fields of synthetic organic chemistry and x-ray crystallography who we were able to identify quickly through the chemists in our team.

All of the claims relevant to our client were revoked following the trial. C was delighted that it achieved its objective of clearing the UK undergrowth, leaving it free to manufacture the API and for customers to sell products based upon it. This had been achieved within a remarkably short time, the resulting judgment would help persuade other courts and a substantial proportion of its costs were recovered from the patent owner.