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Regeneron v Kymab – Sufficiency explained through transgenic mice and teleporters


8th Jul 2020

On 24th June 2020 the UK Supreme Court handed down their judgement addressing the question of breadth of claim and sufficiency.  Although the decision is well written, its background is in biotechnology which is likely to dissuade a lot of people from reading it and/or understanding its broader implications.  So with this in mind, here’s my attempt to explain Regeneron v Kymab sufficiency using … TELEPORTATION.

Imagine scientists found a way to teleport an iron nail over a distance of 5 micrometres.  I think everyone would agree that this would be an amazing invention that would more than justify a patent.

So imagine that the scientists filed a patent, explaining exactly how they teleported the iron nail and claiming “a method for teleporting an object from a first location (A) to a second location (B)”.

There is no doubt that the patent discloses a way of performing the claimed invention, but is the patent sufficient with respect to the invention it is trying to protect?

The UK Court of Appeal (UKCoA) in Regeneron v Kymab would probably have concluded that the patent was sufficient because “the invention – teleportation – amounts to a principle of general application, which would yield the relevant increase in efficiency or usefulness across a range of potential objects – teleportation of aeroplanes; food; elephants – if they incorporated the invention, as and when they could be made, even if only a few [embodiments] – teleportation of nails could be [achieved] as at the priority date by using the teaching in the patent”.

In other words, because the invention is so incredible, it would be wrong to limit the patentee to a monopoly over only the teleportation of nails because this would deprive the patentee of any reward for the benefit which will be derived from the use of that same invention in the future.

Unfortunately for Regeneron – and the researchers who last year teleported the quantum state of one photon to another distant photon – the UK Supreme Court (UKSC) did not agree.

In the opinion of the UKSC – with one judge dissenting – the patent would not be sufficient because it only enables the teleportation of a non-complex, inanimate object, over a very short distance yet it claims a monopoly which includes teleportation of any object including, for example, complex organic matter, over thousands of miles.   In essence, because teleporting complex organic matter over thousands of miles is likely to require further development and multiple “inventive steps” before it works, the patent is insufficient with respect to the broad inventive principle it is trying to protect.

The UKSC (which went to great lengths to align itself with decisions of the EPO’s Technical Board of Appeal) took the view that the assessment of sufficiency and enablement should be assessed with respect to the scope of the claim, not the principle of general application that the claim represents.

This feels inequitable because it potentially limits the reward for developing a ground breaking technology but when looked at logically – no teleportation/Star Trek pun intended – it makes sense.  No matter how revolutionary or ground breaking an invention may be, how can one possibly know that its “principle of general application” will have a beneficial effect across a broader scope in the future.

For the avoidance of doubt, the UKSC decision does not say that a claim should be limited to the examples in the patent.  However, the examples should, together with the common general knowledge at the priority date, enable a person skilled in the art to perform the invention across the claimed scope.

A consequence of this decision is that the more revolutionary an invention is, the more difficult it is likely to be to get broader protection.  By definition, a revolutionary invention is unlikely to be surrounded by the wealth of teaching necessary to justify extensive extrapolation beyond the examples.    Although this would appear harsh, it is surely more favourable than assessing sufficiency based on an invention’s “future utility” as such a scenario would seem to require the use of an invention even more impressive than a teleportation device!

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Robin Ellis
Partner
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Would you like to know more? You can talk to Robin Ellis who will be able to help. Call + 49 (0) 89 206054 267

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