The UK IPO comments on pre-Actavis infringement opinions

The ripples of the Actavis Lilly Supreme Court decision are slowly spreading throughout the UK IP ecosystem. Shortly before Arnold J gave his thoughts on claim construction in the new post-Actavis era in Mylan v Yeda and Teva [2017] EWHC 2629 (Pat), the UK IPO had to wrestle with how their earlier decisions should be interpreted in light of the new test.

In Ninefields Holding Ltd, O/500/17, the proprietor sought a review of a declaration of non-infringement given by the UK IPO. The examiner’s opinion was that the ‘Octiknob’ product did not infringe the UK patent held by Ninefield. There are some interesting points here.

The first is that the UK IPO took it upon themselves to write to the proprietor “drawing their attention to the recent judgment of the Supreme Court in Actavis v Eli Lilly, which has significantly changed the way in which infringement is now decided in the UK.” The office went on to say that “it appeared to the Office that an opinion on infringement based on the old law may now be of little or no assistance to the parties — regardless of whether or not the opinion was consistent with the law as it applied at the time the opinion was issued.” To us this statement seems highly significant. It indicates that the UK IPO itself believes that the landscape in the UK has fundamentally shifted and that all pre-Actavis infringement opinions could be doubted even if there is no question of equivalents.

The second interesting point is the outcome of the review. Despite this advice to the proprietor the UK IPO declined to consider the Actavis test. The role of a review of this type is only to consider if the primary examiner had made an error. The hearing officer based the opinion on the law at the time only and did not consider the implications of Actavis. It is interesting that that the UK IPO has adopted this approach. Although correct, it is unfortunate as the proprietor and potential infringers are now left in doubt as to whether or not the product infringes — the issue the opinion was supposed to resolve.

The hearing officer finishes his opinion with a pointed indication of how the UK IPO thinks the landscape has changed: “To the extent that this argument was made in the original request, the examiner dismissed it by pointing out (correctly in my view) that there was no “doctrine of equivalents” in UK patent law [at that time].” (emphasis added).