BDI’s case
54.Mr Davis’ argument was more developed. It is enough for me to consider the argument as directed to claim 1. Mr Davis submitted that the skilled person reading the Application would realise that the composition of claim 1 could not be an inventive concept because, self-evidently, it was not inventive. It was no more than the obvious idea of a biodiesel fuel composition with arbitrary ranges of two C18 esters, esters which were known to be common constituents of such fuels. 55.In a reference under s.12 of the 1977 Act the tribunal has no power to reject a claim as invalid. Consequently, the argument continued, the skilled person must be taken to have assumed that claim 1 is valid. He would perforce seek an inventive concept other than the composition of claim 1, one which nonetheless supported a valid invention as claimed. 56.A credible inventive concept lay in paragraphs [0031] to [0033] (quoted above). The skilled reader would realise that the inventive concept was a process, being three preparatory steps before the main stage of esterification followed by transesterification. These three preliminary steps are (here I quote from Mr Davis’ skeleton argument): “(1) Filtering to remove debris (although the precise form of filtering is unimportant); (2)phase separating; (3)high pressure esterification.” 57.Pausing there, Mr Davis in effect amended his pleaded inventive concept, adopting instead this much shorter version. No objection to the change was taken by Mr Johnson. 58.I return to Mr Davis’ contention. An inventive concept which takes the form of a new process will support a claim to a product, even if it was obvious to make the product at the priority date and the product’s properties could have been identified (so the product itself could not be the inventive concept), provided the product is new and the process was not obvious. Mr Davis referred me to the judgment of Lord Hoffmann (with whom Smith and Jacob LJJ agreed) in the Court of Appeal in H. Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311; [2008] RPC 19. The central issue was insufficiency and the correct application of the law as stated in Biogen Inc v Medeva plc [1997] RPC 1. Lord Hoffmann said this (at [40]): “Biogen should therefore not be read as casting any doubt upon the proposition that an inventor who finds a way to make a new product is entitled to make a product claim, even if its properties could have been fully specified in advance and the desirability of making it was obvious.” 59.There was an appeal to the House of Lords. Their Lordships did not direct their attention to Lord Hoffmann’s point just quoted, but the judgment of the Court of Appeal was unanimously upheld: [2009] UKHL 12; [2009] RPC 13. 60.Mr Davis submitted that the skilled person, having rejected the claim 1 composition as the putative inventive concept, would draw on Lundbeck and realise that the inventive concept could take the form of a process. The answer was the three-step process set out above. This had been devised by BDI which was therefore solely entitled to the ownership of the Application.