UK Court clarifies law on selection patents under the Patents Act 1977

Lawyers Matthew Royle

Dr Reddy's Laboratories v Eli Lilly [2008] EWHC 2345 (Pat)

Floyd J handed down judgment in Dr Reddy's -v- Eli Lilly on 13 October 2008.  Dr Reddy's challenged the validity of EP 0 454 436 (Eli Lilly's patent covering olanzapine, the successful anti-psychotic agent).  The challenge failed and the Patent was held to be valid.

The challenge raised interesting questions relating to 'selection inventions' as an earlier patent, also owned by Eli Lilly, had covered olanzapine within a general 'Markush' formula. Although this general formula covered a great number of different compounds, olanzapine was not specifically disclosed nor exemplified.  The question of selection inventions had not been addressed by the UK Courts under the Patents Act 1977, although the cases of Farbenindustrie (1930) 47 RPC 289 (Maugham J in the High Court) and Du Pont [1982] FSR 303 (House of Lords) had considered the law under the Patents Act 1949.  This decision was therefore, eagerly anticipated.

For the full text of the decision please click here