Novelty of overlapping ranges before the UK Courts - Jushi v OCV

Novelty of overlapping ranges before the UK Courts - Jushi v OCV

The use of numerical ranges in patent claims is common in many technological fields. The question of novelty of a numerical range over a range disclosed in the prior art is often faced and, in particular, the situation where ranges overlap. A recent decision handed down by the UK Court of Appeal highlights how the jurisprudence of the UK Courts and the Boards of Appeal of the European Patent Office have developed differently in this area.
The Technical Boards of Appeal have previously considered whether the skilled person would have “seriously contemplated” working within the area of overlap (see T 0026/85).  This approach requires a technical effect to be attributed to the claimed range, which arguably brings an element of the assessment of inventive step into the assessment of novelty. The EPO’s approach was criticised by Lord Justice Floyd in Lundbeck v Norpharma[1], but since these comments were given as obiter, it has never been completely clear whether the test of “serious contemplation” was applicable before the UK Courts.
In the present judgement of Jushi v OCV[2], Floyd LJ revisits his previous statements regarding the test of “serious contemplation”, which was used by His Honour Judge Hacon in the first instance decision at the Intellectual Property Enterprise Court (IPEC). [3]Floyd LJ clarified his earlier comments, noting that “[i]t is only if the serious contemplation test is intended to relax the rigor of the general law of novelty that I would take issue with the EPO.”
After considering the two approaches, Floyd LJ concedes that the EPO’s test “does not differ materially from the conventional approach to novelty expounded in Synthon and Dr Reddy’s[4] [5]. Nevertheless, the judge chose to apply the latter approach when assessing novelty stating that “…it is better to take these cases as the relevant yardstick.”. 
Despite this difference in approach, Floyd LJ ultimately reached the same conclusion as HHJ Hacon and the first instance decision was upheld. This is particularly interesting given the complexity of the case at hand: the claims defined a total of 13 interdependent ranges leading HHJ Hacon to describe the determination of overlap with the prior art as a “very complicated statistical problem”.
Although the EPO’s approach has not been rejected entirely, it now seems unlikely that the “serious contemplation” test will be applied to similar cases before the UK Courts. However, both the approach applied by the EPO and the UK Courts benefit from a clear understanding of the skilled person’s interpretation of the ranges being claimed. Applicants drafting new applications should therefore carefully consider the way in which ranges will be construed and include appropriate explanations if necessary.
For more information or advice, please contact Damian Barnard or Paul Briscoe, or your usual contact at Kilburn & Strode.

[1] H. Lundbeck A/S v Norpharma SpA [2011] EWHC 907 (Pat); [2011] R.P.C. 23

[2] Jushi Group Co., Ltd v OCV Intellectual Capital, LLC [2018] EWCA Civ 1416

[3] Jushi Group Co., Ltd v OCV Intellectual Capital, LLC [2017] EWHC 171 (IPEC)

[4] Synthon’s Patent [2006] R.P.C. 10

[5] Dr Reddy’s Laboratories (UK) Ltd v Eli Lilly and Co Ltd [2009] EWCA 1362; [2010] RPC 9

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