House of Lords Upholds Validity of Lundbeck's Escitalopram Patent

In a unanimous decision, the Appellate Committee of the English House of Lords has upheld the validity of Lundbeck's patent for escitalopram. (Escitalopram, an antidepressant drug marketed as Cipralex, Lexapro and other brand names, is an enantiomer of the drug citalopram). At issue was whether the patent's product claims were sufficiently supported by the patent description, which disclosed only one method of making the product. At first instance, Justice Kitchin ruled that the patent was invalid due to insufficiency but rejected claims of invalidity based on lack of novelty and obviousness. Since the patent specification only disclosed one method of making the product, Justice Kitchin concluded that the product claims were too broad because they would result in a disproportionate monopoly over every other way of making the product that exceeded the technical contribution. On appeal, the English Court of Appeal upheld the lower court's ruling that the patent was novel and not obvious, but overturned the finding of insufficiency and concluded that the patent was valid. The Court of Appeal ruling as to insufficiency was appealed to the House of Lords. In dismissing the appeal, a five-Justice panel of the Appellate Committee unanimously upheld the Court of Appeal's ruling that a patent claim to a single novel product includes all methods of making that product, even if the description and specifications cover only one method and other methods later emerge. Several concurring sets of reasons were delivered, containing a number of observations on other leading UK patent cases. For the full text of the decision in Generics (UK) Limited and others v H Lundbeck A/S, [2009] UKHL 12, see: http://tinyurl.com/cpgxv8 Summary by: Lauren Lodenquai