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The dust has started to settle following the Supreme Court decision in Warner-Lambert v Actavis   [2018] UKSC 56  handed down recently (IPKat post   here ). Much of the commentary has focused on the infringement aspect of the decision. In this first of IPKat's follow-up posts, this Kat delves deeper into the court's take on the issue of plausibility. The plausibility of second medical use inventions - why is it necessary? In the Supreme Court decision, Lord Sumption began his discussion of plausibility by considering the problem raised by determining the sufficiency of Swiss-style second medical use claims. " Section 14 of the Patents Act and the corresponding provisions of the EPC assume that an invention will be sufficiently disclosed if the specification enables it to be “performed”. In the case of a patent for a new product or process, that assumption is almost always correct. But the assumption is not correct in the case of a second use patent. The invention is not t...

In his pre-dinner speech at the CIPA life Sciences conference last week, Lord Neuberger wistfully commented that, if there was one case that he would like to have come back to the Supreme Court bench for, it was Warner-Lambert vs Actavis. Following the Supreme Court hearing of this case in February, IPKat has spent the summer on tenterhooks waiting for the decision to be handed down. The decision was handed down this morning, and can be read here . In summary, the Supreme Court dismissed Warner-Lambert's appeal that the patent was sufficiently disclosed, and upheld Actavis and Mylan's appeal that the disputed claims were not even partially sufficient. The Supreme Court also unanimously held that, if the claims had been found valid, they would not have infringed.  The Supreme Court was also unanimous on construction and found that the post-trial amendment sought by Warner-Lambert was an abuse of process. IPKat's full analysis of the decision will follow shortly. Whilst we di...