Brett Trout
In a recent decision by the Court of Appeal of the Unified Patent Court (CoA) dated December 20, 2024, the court underscored the critical importance of precise patent drafting. The case involved Alexion Pharmaceuticals, Inc., which faced significant challenges to its patent due to inaccuracies in its patent claims. The patent claims covered a string of amino acids. The problem is that the first 22 amino acids in the string were erroneously added to the claimed string.
Initially, Alexion requested The Technical Board of Appeal (TBA) of the European Patent Office (EPO) simply removethe first 22 amino acids from the claims as being an obvious error. In declining Alexion’s requested injunctive relief, the TBA found the proposed change was not sufficiently “obvious” to permit correction.
In reviewing the TBA’s decision, the Court of First Instance (CoFI) disagreed with the TBA, finding instead that the first 22 amino acids were not meant to be included in the claimed string. The CoFI therefore held that the accused infringer (whose product did not include the first 22 amino acids), had made literal use of the claimed invention. Despite finding in Alexicon’s favor on the revised claim issue, however, the CoFI also rejected Alexion’s request for injunctive relief. The CoFI based its determination on the conclusion that the TBA would likely revoke the patent for failing to provide sufficient disclosure as required by the European Patent Convention.
In rejecting the CoFI’s decision, the CoA emphasized that a patent holder may only correct linguistic errors, spelling mistakes, or inaccuracies in a patent claim if the existence of an error and the precise way to correct it are sufficiently certain to the average skilled person, looking at the patent claim itself, description, drawings, and common general knowledge.
This ruling highlights the potential pitfalls of poor patent drafting. Ambiguities or inaccuracies in patent applications can result in rejected patents or increased prosecution costs. Even if the patent eventually issues, you may not be aware of these problems until you try to enforce the patent against an infringer. Even minor errors in the patent can lead to substantial legal challenges and even revocation or invalidity of the patent itself.
To mitigate these risks, it is imperative to engage a qualified patent attorney from the outset. An experienced patent professional will strive to ensure that your patent application is drafted with the precision, clarity, and thoroughness, necessary to minimize potential errors that could be exploited in legal disputes. They possess the expertise to navigate the complexities of patent law, draft robust claims, and provide detailed descriptions to reduce the likelihood your patent eventually gets thrown out of court for lack of adequate disclosure.
Legally, non-patent lawyers lack the skill required to draft patents and are therefore prohibited from drafting patents on behalf of clients. While the Patent Office does allow inventors to draft and file their own patents, if a regular lawyer is unqualified to draft a patent it is unlikely an untrained inventor would be any more qualified to draft a patent with the scope and disclosure necessary to adequately protect their invention. Investing in a registered patent attorney not only safeguards your innovations to the extent possible, but also will likely enhance the enforceability of your patents. This latest decision by the UPC’s serves as a stark reminder of the consequences of inadequate patent drafting and the essential role of qualified patent attorneys in securing and defending your innovations.
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