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Merck and Co Inc v Generics UK Ltd, 2004 RPC 31, EWHC

Merck and Co Inc v Generics UK Ltd, 2004 RPC 31, EWHC


Citation: Merck and Co Inc v Generics UK Ltd, 2004 RPC 31, EWHC

Link to case on WorldLII.

Rule of thumb: If a person is granted a patent, how strictly is it interpreted? Not very – there is by & large a purposive approach in favour of the investor in the interpretation of it, but one which is not fanciful so that there is some certainty for third parties – it is difficult to prove a legitimate novel & unforeseeable development of an existing idea recognised by the intellectual community in that discipline.

Judgment:

‘... the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties.... The claims must be construed in a way which attempts, so far as possible in an imperfect world, not to disappoint the reasonable expectations of either side. What would give reasonable protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the skilled person in the art would think he was intending to claim. What would give a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed any other principle would be also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on the grounds of anticipation or insufficiency... whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled man to do. Then one can ask whether the specification enables him to do it’.

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Warning: This is not professional legal advice. This is not professional legal education advice. Please obtain professional guidance before embarking on any legal course of action. This is just an interpretation of a Judgment by persons of legal insight & varying levels of legal specialism, experience & expertise. Please read the Judgment yourself and form your own interpretation of it with professional assistance.