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Skating on Thin Ice: The Court of Appeal Expands on the Circumstances when an Immaterial Variant may Amount to Patent Infringement

Date: 19 December 2018

In its decision in Icescape Ltd v Ice-World International BV, the Court of Appeal has considered for the first time the effect of the Supreme Court’s decision in Actavis UK Ltd v Eli Lilly & Co on how patent claims should be construed in the context of infringement allegations. With this judgment, the Court of Appeal recognises expressly that the previous “Protocol Questions” should be abandoned and that from now on the “Actavis Questions” will be applied in order to establish infringement in a case where a variant from the claim achieves substantially the same effect in substantially the same way.


On an appeal from a decision of Mr John Baldwin QC (sitting as a deputy judge in the Patents Court), the Court of Appeal had to decide whether the deputy judge had been correct to revoke a European patent for a cooling system for a mobile ice rink, on the basis that it was not entitled to priority and that, had the patent been valid, it would not have been infringed. Lord Kitchin, who gave the lead judgment, held that the deputy judge had been correct to revoke the patent for lacking priority over the claimed priority document. However, the case is of particular importance for Lord Kitchin’s application of the three “Actavis” questions in determining that, had the patent been valid, the variant would have infringed because it varied from the invention in ways which were immaterial.


Read our full article in the upcoming (2019) 41 E.I.P.R., Issue 2.


Read the decision in full here