The Risks of Not Registering Your Trade Mark

Almost all businesses have trade marks of some kind. Be these their company name, product name or logo, they are all valuable ways for companies to indicate the origin and/or quality of their goods and services to their consumers.

Read more

Significant Development with respect to Brexit Withdrawal Agreement – What Does This Mean for Owners of EU Trade Marks and Community Designs?

On 19 March 2018, the UK and EU Commission announced that agreement has been reached on the vast majority of the provisions dealing with trade marks and designs.

Read more

Dosage Regime Claims – Patentable in France?

The European consensus on the patentability of dosage regimes is not shared throughout the national laws of all of the individual member states. Thus, in some member states, it is unclear whether granted claims to dosage regimes can be enforced against infringers. This article sheds some light on the position in the UK and now also in France.

Read more

Check Your Dates! – Your SPC Could Be Extended…

The CJEU previously decided that the date of notification of first marketing authorisation to an applicant and not the date of the decision itself sets the duration of a supplementary protection certificate (SPC). Accordingly, the term of some SPCs is incorrect. However, in decision C 492/96 (Incyte) the CJEU found that the SPC holder can apply for correction of the SPC term as long as the SPC has not expired.

Read more

European Commission Draft Withdrawal Agreement Explicitly Addresses Intellectual Property Rights - What Does This Mean for Owners of EU Trade Marks and Community Designs?

On 28 February 2018, the European Commission published the draft Withdrawal Agreement between the European Union and the United Kingdom of Great Britain and Northern Ireland.

Read more

A New Claim Interpretation, Featured First in a Written Decision, Can Violate The Right to be Heard

In R 1/15, the Enlarged Board of Appeal found that the Patentee’s right to be heard had been violated and as a consequence the decision of the Technical Board of Appeal was annulled and the case was sent back to the Technical Board of Appeal to be reheard.

Read more

Status of the Unitary Patent Court

The UK will be in a position to ratify the UPC Agreement very soon but it appears likely that it will be at least another year before the UPC begins to hear cases.

Read more

EPO Enlarged Board of Appeal Provides Further Guidance on Undisclosed Disclaimers

The Enlarged Board of Appeal has clarified that the appropriate test for determining the allowability of undisclosed disclaimers is as set out in G 1/03. As well as endorsing this test, the Board also provided some further guidance in the area of disclaimers.

Read more

Broad Institute’s CRISPR/Cas9 Patent EP2771468 Revoked

The European Patent Office on 17th January 2018 revoked the first of the Broad Institute’s CRISPR/Cas9 patents, its validity having been challenged by 9 parties on multiple grounds.

Read more

Pemetrexed in the Court of Milan: Fresenius v Eli Lilly

Following the UK Supreme Court judgement in Actavis v Eli Lilly (commented on in our earlier article), the Court of Milan have also handed down a judgement concerning the scope of protection of Eli Lilly's patent relating to its pemetrexed product. The Court of Milan took an opposing view to the UK Supreme Court regarding whether alternative salts of pemetrexed disodium could be considered to fall within the scope of Lilly's patent claim.

Read more

The Requirement for Graphical Representation is Abolished

Following amendments of the European Union Trade Mark Regulation further changes came into force on 1 October 2017. Probably the most significant of these changes is the abolishment of the requirement for graphical representation of a trade mark. Other changes include the introduction of a Certification mark and various procedural changes.

Read more

More Guidance on Claiming Priority

A recent EPO Appeal Board decision has provided further guidance on the requirements for claiming priority, in particular with regards to the requirements for ownership.

Read more

Unjustified Threats: Changes to UK Intellectual Property Law

The planned changes to Section 70 of the UK Patents Act 1977 look to clarify the existing law surrounding threats, ensure adequate protection for more vulnerable businesses and end the tactic of suing legal representatives. Furthermore, the new law is set to bring consistency across many IP rights, including registered trade marks and registered designs.

Read more

Pitfalls associated with an Interim Injunction

It may be thought necessary, during the course of a legal dispute, for a claimant to seek interim relief by way of an injunction. This is usually the case when the claimant feels that the defendant’s actions may, if not stopped, cause irreparable damage to the commercial activities of the claimant. However, on the basis that interim injunctions severely curtail a defendant’s rights, and are usually granted before the merits of the respective parties’ arguments have been fully considered at full trial, the claimant is required to give a cross-undertaking in damages, which can be enforced against the claimant if at full trail the court finds that the injunction was incorrectly granted and as a consequence the defendant has incurred losses.

Read more

Why the First Filing Needs to be Right, and How to Achieve This

Patent rights are crucial value drivers for individuals and technology companies, large or small. This article presents a selection of best practice pointers under the law of the European Patent Office (EPO) on how to get the most out of patent applications, especially the “first filing” that establishes a priority date for and sets the framework for future patent rights.

Read more

An End To The Promise Doctrine in Canada

In accordance with Canadian patent law it was necessary to a patent to fulfil any promise set out in the specification, a Doctrine which came from an interpretation of the requirement for a patent to be “useful”. The Canadian Supreme Court have now held this Doctrine to be unsound – for a patent to be “useful” it must be capable of actual relevant use but does not have to demonstrate every promise contained in the specification.

Read more

Common Sense Confirmed

A Decision from the Supreme Court confirms the common sense interpretation of Section 92 of the Trade Marks Act 1994, and acknowledges that “grey goods” are caught by this provision.

Read more

A move towards a doctrine of equivalents? – Eli Lilly v Actavis

The Supreme Court has issued an important decision on whether literal infringement is required or whether an equivalent will infringe. The tests set down under the Improver case have been reconsidered and modified, with guidance given in particular to the proper application of the third question.

Read more

Cost Caps at IPEC – Access to Justice for SMEs

The cost of litigation is capped at the Intellectual Property Enterprise Court (IPEC) in order to ensure access to justice for smaller parties such as SMEs. However, proceedings can be transferred to the High Court where costs are much higher. In this case the IPEC decided that access to justice by the SME bringing the claim would be prejudiced by being transferred to the High Court largely because of the increased costs and decided that the case should be heard by the IPEC.

Read more

EPO Boards of Appeal Approach to Partial Priorities

Following the Decision of the Enlarged Board of Appeal at the EPO in G1/15 regarding partial priorities, the EPO Technical Boards of Appeal have started applying the principles from this decision when deciding whether claims should be entitled to partial priority. This case sets out a two-step test which we expect to be used by future Boards of Appeal when examining partial priorities.

Read more

Does your Docketing System meet the Standards Required by the EPO?

The European Patent Convention allows European patent applications to be re-established where they have been deemed withdrawn as a result of failing to meet a time limit set. In order for the request for re-establishment to be effective, the request must be filed in time and the time limit must have been missed despite all due care.

As renewal fees may be paid by anyone (not only professional representatives before the EPO), renewal fee deadlines may be missed as a result of a breakdown in communication between the European representative, the applicant and another third party who may be responsible for the payment of the renewal fee.

This case looks at the standards docketing systems used by applicants should meet to ensure that their application can be re-established in the case of a missed renewal fee.

Read more

T 1852/13 - An End to the ‘Essentiality Test’?

In T 1852/13, the so-called ‘essentiality test’ was analysed in detail. Questions were raised as to whether this test is in compliance with the Gold Standard for assessing added subject-matter following claim amendments.

Read more

Markush Formulae and SPCs

Having already made a referral to the CJEU in Teva v Gilead regarding the criteria for a combination product to be protected by a basic patent in force (according to Article 3(a) of the SPC Regulation) Arnold J was asked again to consider this question, but this time in relation to Markush structures encompassing a number of chemical species.

Read more

EPO Confirms Its Stricter Provisions for Transferring a Right of Priority to a Successor in Title

Entitlement to priority in an invention is a fundamental right in the patent system in the UK, Europe and globally.  It is therefore essential that the requirements for using an applicant's priority right are well understood that each of the jurisdiction in which they are applied.  In case T 577/11 the Technical Boards of Appeal (TBA) of the European Patent Office (EPO) have confirmed existing EPO practice regarding the transfer of priority rights to a successor in title.  These provisions are stricter than those in other jurisdictions, notably the USA, and we have seen priority rights lost as a result of the differing formal requirements.

Read more

Arrow Declarations - Part III

This article is the third in a series. The background to this article can therefore be found in Part I and Part II.

The High Court has now proceeded to full trial, following on from the guidance of the Court of Appeal that stated Arrow Declarations were to be issued only in exceptional circumstances and not merely as a means to determine whether it is likely that a pending application will lead to a valid, granted patent.

Read more

Arcadia triumphs over Apple - IWATCH not registerable as a trade mark for smartwatches

In a decision that explores the boundaries of the terms ‘descriptive’ and ‘acquired distinctiveness’, the High Court ruled that IWATCH cannot be registered for a smartwatch.

Read more

Unified Patent Court: Advice for Clients

With UK ratification of the UPC Agreement now in sight, it is important for proprietors of European patent applications and patents to prepare for the fast-approaching changes to European patent litigation. In other words, now is the time to start considering whether you want to opt out your European applications / patents from the jurisdiction of the UPC.

Read more

There is an Antidote for Poisonous Priority Claims – The EBA Says So

The EPO Enlarged Board of Appeal (EBA) have given their decision in case G 1/15 and have found that a first patent application that is published is not novelty destroying when cited against a further application that claims priority from the first application. In short, there is an antidote to ‘poisonous’ priority applications.

Read more

Domain Name Dispute Resolution at WIPO

Cybersquatters are individuals or companies who purchase domain names with the intention of selling them on to a party with an interest in the domain name at an extorted price. The World Intellectual Property Office (WIPO), along with other dispute resolution service providers, offers a system that allows complainants to have domain names cancelled or transferred from cybersquatters or other individuals/companies who have clearly purchased domain names for unjust reasons.

Read more

Punitive Damages: Not Contrary to the Enforcement Directive

The Court of Justice of the European Union (CJEU) has answered the question of whether the Enforcement Directive (2004/48) prevents Member States from providing in their national legislation the possibility of awarding punitive damages in IP cases.

Read more

The UPC looks set to open for business at Christmas

The Unified Patent Court (UPC) Preparatory Committee have issued a statement indicating that they are currently working under the assumption that the UPC will become operational in December 2017.

Read more

Arrow Declarations - Part II

In October 2016, we reported the decision Fujifilm Kyowa V Abbvie [2016] EWHC 2204 (Pat) where Arnold J refused to strike out Fujifilm’s claim for an Arrow declaration in the ongoing litigation between these two parties. Since then, this decision has been appealed to the Court of Appeal and AbbVie have taken further steps to try and avoid a full trial on the matter.

Read more

EPO Practice Update: Recording Assignments

The European Patent Office have recently updated their practice regarding the evidence required to successfully record a change of ownership on the European Patent Register. From now on, assignment documents will need to be signed by or on behalf of both the assignor and assignee.

Read more

Inventions Concerning Human Embryonic Stem Cells

The EPO have recently updated their Internal Guidance to Examiners regarding the patentability of inventions relating to the use of human embryonic stem cells. There has been and will be, however, no formal announcement. Subtle media releases are not new, of course. Tech giant Google® is well known for ‘soft’ launch of its products: there is no fanfare heralding release of its latest app, it just arrives and news gets around; you pick it up on social media or second hand from your 11-year old child.
Enlightened by this tech vernacular the EPO stem cell practice change has just happened and the news is gently disseminating: a new, morally acceptable source of human embryonic stem cells has now been identified, and can be referred to in patent applications relating to this subject matter with an effective filing date on or after 5 June 2003 to avoid an objection of lack of morality under Art 53(a) EPC.

Read more

Cancer Immunotherapy: Expediting Prosecution in the US

The recent ‘Cancer Immunotherapy Pilot Program’ initiated by the United States Patent and Trademark Office (USPTO) represents a way of expediting prosecution of patent applications relating to cancer immunotherapy.

Read more

Confidentiality of Complaints at the EPO

In Decision T 1691/15, the Board of Appeal admitted that it does not perform checks to ensure that, where necessary, non-public parts of the file are made public during Opposition Proceedings. It appears that such an exercise would help mitigate problems that may arise when exchanges with the EPO are withheld from the other parties in Opposition Proceedings.

Read more

Arrow Declarations

Arrow Declarations are declarations regarding the validity of subject-matter (rather than specific patents) and provide accused infringers of legal certainty that their proposed activities will not fall within the scope of any valid patent that may be granted in the future.
In Fujifilm Kyowa v AbbVie, Mr Justice Arnold refused to strike out Fujifilm’s request for an Arrow Declaration based on “bad faith” acts carried out by AbbVie in previous proceedings before the UK Court.

Read more

Changes to UK Patents Rules

The UKIPO has announced patents rule changes effective 1 October 2016 and 6 April 2017. These changes are intended to increase legal certainty and procedural flexibility and to reduce the administrative burden on patent applicants and owners.

Read more

Broccoli II and Tomatoes II: An Unexpected Threat to Plant Breeders? Not Really.

G 2/12 and G 2/13 confirm that the rights of the traditional plant breeder may, in some cases, be diminished as a result of a valid plant patent being in force, but were these decisions really unexpected?

Read more

Market Traders are ‘Intermediaries’ in Commerce in the Same Sense as Online Seller

The CJEU has ruled that market holders may be forced to stop allowing market traders who infringe trade marks from renting pitches in their markets.

Read more

Stay of EPO Proceedings Pending Decision on Partial Priorities

In a notice on 2 October 2015 the President of the EPO announced that all proceedings before the EPO Examining and Opposition Divisions in which the decision depends entirely on the outcome of G1/15 would be stayed until the decision in G1/15 is issued.

Read more

UK exit from the EU

The UK voted on 23 June 2016 to leave the EU. In the short term at least there will be no change with regards to any IP practice within Europe.

Read more

Streamlined Opposition Proceedings at the EPO

With the average duration of opposition proceedings in 2015 being 26.1 months, the EPO has announced its new streamlined opposition proceedings. The aim is to reduce the duration of opposition proceedings in straight-forward cases to 15 months. These changes take effect on all pending and new oppositions from 1 July 2016 onwards.

Read more

The End of Disclosure Orders for Obviousness Cases?

The question as to whether disclosure orders should be given in cases where inventive step of a patent is challenged is notorious. Disclosure is often of little assistance but presents a great burden for the patentee. Will the judgement in Positec v Husqvarna however be a turning point for disclosure orders and result in such orders being given in fewer obviousness cases?

Read more

Cadbury's Purple Reined In

The purple colour (Pantone 2685C) may be associated with Cadbury’s confectionary, but are there ‘signs’ of invalidity in their trade mark registrations?

Read more

Inquiries as to Damages: A New Commonplace

Inquiries as to damages are on the rise but how easy is it for infringers to be granted deductions?

Read more

Patent Pending – How Long Is Too Long to Be Kept Waiting by the EPO?

Patent prosecution takes a long time, but how long is just too long for an applicant to reasonably bear? The EPO Technical Boards of Appeal recently decided that for one case the answer was 12 years.

Read more

Drawings Define the Protection of a CRD – PMS vs Magmatic (Trunki)

The Supreme Court has now published its Judgement in the case of PMS International Group v Magmatic Limited ([2016] UKSC 12), better known as the “Trunki” case after the well-known children’s ride-on suitcase manufactured by the appellant. The Supreme Court upheld the Court of Appeals decision that PMS’s “Kiddee case” product did not infringe the Community Registered Design (CRD) owned by Magmatic. This Judgement highlights the importance of the drawings of a CRD in defining the precise scope of protection that the applicant seeks. In this article we consider some practical advice for applicants preparing drawings for a CRD.

Read more

New European Trade Mark Regulations – All Change Ahead.

A new amended trade mark Regulation brings substantial changes to trade marks in Europe. The most obvious change will to the name of the Office which becomes the European Union Intellectual Property Office, and the mark, which now becomes the European Union Trade Mark. Other significant changes are to the fee structure and the interpretation of the specifications of goods and services.

Read more

Is that Sufficient? – Plausibility, Expert Witness Testimony and Hindsight

In a recent article on this website we examined the case of Actavis vs Lilly and the “plausibility” test for sufficiency of disclosure used in that case. We noted that that this was a departure from the test for sufficiency that has been used previously and that this case is likely to be appealed. A recent decision that uses a more usual test for sufficiency, and which does not refer to Actavis vs Lilly, has now been published – Regeneron vs Kymab ([2016] EWHC 87 (Pat)). In this article, we consider the differing effects of these two approaches to sufficiency.

Read more

Petitions for Review by the Enlarged Board of Appeal

Under Article 112a EPC a party to appeal proceedings may file a petition for review of the decision by the Enlarged Board of Appeal. One instance is where a fundamental procedural defect occurred during the appeal proceedings and the petitioning party was adversely affected as a result of the decision.

Read more

Japanese Supreme Court Expands Eligibility for Patent Term Extension

The Japanese Supreme Court has decided that a Patent Term Extension may be allowed based on any substantially new marketing authorization for a product covered by that patent. This is a significant broadening of the range of medical patents eligible for extensions of term.

Read more

Do Patent Assignments Require Consideration?

One of the cornerstones of contract law in the UK is that for a contract to be valid, there must be sufficient consideration. Whilst it has generally been held that for a valid assignment of a patent or patent application consideration is also necessary, the judgement in Wright Hassall LLP v Horton Jr has seemingly removed this requirement

Read more

Actavis v Lilly – Obviousness/Sufficiency squeeze

An attempted squeeze argument based on the plausibility test in obviousness and sufficiency has led to a decision that these tests are not the same. For obviousness the test is whether something is obvious to try with a fair expectation of success. For a patent to be sufficient it simply has to be credible.

Read more

Strategies for Stem Cell Patent Applications in the Light of Recent Court Cases

Patenting of stem cell technologies has been dogged by their controversial origin but technological developments and guidance from recent judicial decisions have answered and overcome many of these difficulties. In particular the European Patent Office, United States Patent and Trademark Office, Japan Patent Office and State Intellectual Property Office of China have published guidelines covering patenting of stem cell technologies in the light of recent decisions. We now see a patent landscape where stem cell technologies and related therapies can, with very few exceptions, be protected via patents, provided the appropriate form of claim wording is used.

Read more

Second Medical Use Claims - Generics (UK) Limited and Actavis v Warner-Lambert

The long awaited Decision of the Actavis v Warner-Lambert trial was published on 10th September 2015, following various hearings regarding interim injunctions including one appeal to the Court of Appeal. This decision is critical to interpretation of second medical use claims in the UK courts, though it seems inevitable that this Decision will be further appealed.

Read more

Current European Disclaimer Practice

Disclaimers are negative claim features that exclude specific subject matter from the scope of a claim. It is rare that a patent specification will contain specific support for omitting a feature, and hence there are generally two types of disclaimer in European practice...

Read more

Warner Lambert v Actavis – UK Court of Appeal

Following two UK High Court cases relating to infringement of Swiss-form medical use claims, the UK Court of Appeal have given their interpretation of these claims. If this interpretation is followed in the full trial scheduled for later this year, this could see manufacturers of treatments for non-patented indications having to enter into strict agreements with pharmacists regarding the dispensing of their products.

Read more

UK Supreme Court: Reputation and Goodwill in Passing Off

The Supreme Court has considered, and reaffirmed, current UK law and practice concerning goodwill in a trade mark despite developments in other common-law jurisdictions.

Read more

Unitary Patent Court – Fee Proposal

The Preparatory Committee of the Unified Patent Court have released a Consultation Document regarding Court fees as well as proposed schemes to offer fee reductions to small and medium-sized businesses and non-profit organisations.

Read more

Patenting of Plants at the EPO

ARE PLANTS MADE BY ESSENTIALLY BIOLOGICAL PROCESSES PATENTABLE? New and inventive plants may be patented at the EPO, but there are exceptions. Two recent EPO decisions, “Tomatoes II” and “Broccoli II” complete a series of referrals that seek to clarify what the statutory exceptions mean …

Read more

PCT Direct at the European Patent Office

A NEW PROSECUTION OPTION FOR PCT APPLICATIONS AT THE EPO. Until recently, the only option for filing argumentation on a PCT application was to enter the application into International Preliminary Examination. It is now possible to file argumentation in response to a search report issued on an earlier European patent application when filing a new PCT application at the EPO that claims priority from the earlier application. This gives potential for significant acceleration to grant…

Read more

New CTM Guidelines from OHIM

An updated set of Guidelines has been issued by OHIM, with the main amendments being to include the new change in practice on black and white marks, and the new indication that additional evidence of use submitted after the deadline may in certain circumstances be accepted.

Read more

Japan and the USA Join International Design Registration System as of 13 May 2015

The “Hague System” allows many national and regional design registries to cooperate to register and protect industrial designs in their territories. The EC has long been a member. The USA and Japan were, however, most notable non-member countries. Their accession to the Hague Union widens and strengthens the Hague System as a route for efficient International registration of Industrial designs.

Read more

Join a discussion on The Patentability of Human Embryonic Stem Cells in Europe

JOIN US ON WEDNESDAY 25 MARCH 2015 FROM 5.15PM IN LONDON, WC1R 4PJ. You are invited to join an open discussion on The Patentability of Human Embryonic Stem Cells in Europe with leading patent attorney experts. This discussion will be chaired jointly by Nick Bassil of Kilburn & Strode, George Schlich of Schlich Ltd and Dan Wise of Carpmaels & Ransford.

Read more

The Unitary Patent System

Following our article on the Unitary Patent System (UPS) and whether to opt in or out, we have received a number of enquiries from our client in this regard. Although some critical details of the new system are still yet to be decided we have put together some of these queries together with our answers.

Read more

The London Agreement

TRANSLATION REGIME REDUCES COST OF POST-GRANT VALIDATION OF EUROPEAN PATENTS. Following the ratification by France of the London Agreement on the application of Article 65 EPC, a new era of reduced translation costs for European patents entered into force on 1 May 2008.

Read more

Parthenotes are an acceptable source of human embryonic stem cells

In case C-364/13 the CJEU have decided that human parthenotes are not “human embryos” because they are incapable of commencing the process of development into a human being. Therefore parthenotes are a legitimate source of human embryonic stem cells for use in patentable technologies.

Read more

Stem Cell Patenting in Europe

MORALLY ACCEPTABLE SOURCES OF HUMAN EMBRYONIC STEM CELLS (hESCs): EMBRYOS THAT NEVER WERE, OR COULD NEVER BE. The Advocate General’s Opinion in C 364/13, if followed, improves the position for pioneering inventions based on hESCs in Europe...

Read more

The Bolar Exemption in the UK

NEW “SAFE HARBOUR” LEGISLATION. In order to market a generic version of a medicinal product, after the expiry of any patent protection on the original product, its manufacturer needs to obtain regulatory approval. For a generic product...

Read more

Entry Into Force of the Nagoya Protocol

NO MORE BIOPIRACY = NO MORE PLANT BREEDERS? The Nagoya protocol is an international agreement aimed at protecting against "biopiracy". Biopiracy is the evil sibling of bioprospecting. Bioprospecting is the search for existing genetic resources ...

Read more

The Road to Ratification of the Unitary Patent System

A SINGLE PATENT RIGHT ENFORCEABLE THROUGHOUT THE EU. Currently a European patent application is searched and examined centrally by the European Patent Office (EPO). However, once the application is allowed the granted European patent does not automatically come into force in all of the EPO member states...

Read more

Update on Chinese Trade Mark Law

CHINA'S NEW TRADE MARK LAW WILL COME INTO EFFECT ON 1 MAY 2014. There are several points of interest...

Read more

Update on New Zealand Intellectual Property Law

CHANGES TO FEE STRUCTURES. The proposed change in fee structure will add increased costs for patent applicants filing and processing new applications in New Zealand after 12 September 2014...

Read more

Unitary Patent System

WHETHER TO OPT OUT? The “European Patent with Unitary Effect”, otherwise known as the “Unitary Patent”, is a single patent that will cover all participating Member States of the European Union. We provide below some pointers as to whether patent owners should opt in or out of the new system...

Read more

Sheep to Sleep

SUPPLEMENTARY PATENT PROTECTION IS EXTENDED. A recent decision by the Courts of Justice of the EU (CJEU) has expanded the scope for granting supplementary protection certificates for patented products. The court's interpretation of the term 'product' in the SPC regulation opens the door for SPCs to be granted to second medical uses of...

Read more

Stem Cell Patents In Europe

NO END TO THE WAITING? On 11th April 2013 the European Brüstle patent (EP 1040185) was revoked, but the EPO did so without considering morality issues; sadly, therefore, we are no closer to resolving the patentability of human stem cell inventions in Europe. As the EPO has not gone beyond...

Read more

US goes "first to file", and more!

NEW FEATURES OF THE AMERICA INVENTS ACT. The Leahy-Smith America Invents Act (AIA) was passed 16 September 2011 and is now coming into force. The intention of the AIA is to streamline the patenting process and to reduce legal costs. In addition the US Congress has taken this opportunity to bring US patent law into closer conformity with patent...

Read more

The CJEU decision in Brüstle v Greenpeace e.V. (C-34/10)

THE DEATH OF STEM CELL PATENTS? The Court of Justice of the European Union (CJEU) has issued its much anticipated ruling in the case of Brüstle v. Greenpeace e.V. (C-34/10). Ever since, a rash of hastily written stories has appeared in the news trumpeting the death of stem cell patents, lamenting their passing and predicting the destruction...

Read more

Omnipharm Limited v Merial [2011] EWHC 3393 (Pat)

OBVIOUS TO TRY ATTACK REQUIRES A REASONABLE EXPECTATION OF SUCCESS. In the UK Patents Court on 21 December 2011, J Floyd held that Merial's patent EP (UK) 0 881 881 was inventive despite the claimed invention being obvious to try and there being no evidence that the technical effect was difficult to achieve. The case hinged on whether the skilled team would have a basis for predicting...

Read more

Human stem cell inventions

UPDATE ON ACCEPTABLE CLAIM LANGUAGE IN EUROPE. If the filing date of your application falls after human ES cell lines are accepted as being publicly available then there seems no need to disclaim any subject matter in claims directed at or using human ES cells or human pluripotent stem cells. Any reference in the description to use of human embryos must...

Read more

The (European) WARF Decision

THE WARF DECISION - THERE IS MORE TO AN IMMORAL INVENTION THAN ITS CLAIMS. G02/06 - the decision re patentablity of human embryonic stem cells in Europe (the WARF decision) is out: the Enlarged Board of Appeal (EBA) has held that the WARF invention required, at the time of filing, destruction of an embryo. Whatever the claims covered, this inevitable embryo destruction meant the application had to be refused...

Read more

The Sanctity of the Embryo

COMMENT ON AND PREDICTION OF THE DECISION RE PATENTABLITY OF HUMAN EMBRYONIC STEM CELLS IN EUROPE. Following the EPO hearing on 24th June 2008, we now wait for the key biotech patentability decision in case G 02/06 before the EPO’s Enlarged Board of Appeal (EBA). It’s an important one. And it’s about time. The decision is said to be due out before the EPO summer holidays...

Read more

Medical Dosage Regimes Not Patentable in the UK (but OK at the EPO)

UK PATENTS COURT REJECTED CLAIM DIVERGES FROM EPO APPROACH. A recent decision from the UK Patents Court appears to have the closed the door on second medical use claims for known therapeutic applications where novelty hinges on a dosage regime. The decision was handed down by Mr Justice Warren in Actavis UK Ltd v Merck & Co Inc [2007] EWHC 1311 (Ch) and shows a divergence...

Read more

Determination of Obviousness in the US

RARE DECISION ON OBVIOUSNESS REFLECTS A MORE BALANCED APPROACH. The US Supreme Court has recently issued its first decision in respect of the issue of obviousness for many years (KSR Int’l Co. v. Teleflex Inc., No. 04-1350 (April 30, 2007)). Although the effect of this decision is yet to be seen in the lower US courts and in the practice of the USPTO, the KSR decision...

Read more

The First Glimmers after the Doom of the Brüstle Decision

EXAMINATION OF HUMAN EMBRYONIC STEM CELL INVENTIONS IN EUROPE. It is now a little over a year since the decision of the CJEU was handed down in the case of Brüstle v. Greenpeace e.V. (C-34/10)1. This decision was a disappointment to many in the legal and scientific communities because of its apparent restriction on the scope of patentable inventions in the human ...

Read more

The Advocate General's Opinion in Case C-34/10 Prof. Dr. Oliver Brüstle v Greenpeace e.V.

A PLEA TO THE CJ NOT TO FOLLOW THE OPINION (article as originally published in in the April 2011 issue of the CIPA Journal) | The background and the Opinion explained ...

Read more

EPO Rule Changes Update April 2011

GOOD NEWS - NO SIGNIFICANT ADDITIONAL BURDENS. A number of rule changes affecting patent practice before the European Patent Office (EPO) have been introduced or are shortly to be introduced with implementation dates falling between October 2010 and April 2012. The rule changes appear not to impose any significant additional burdens on the applicant...

Read more

Edinburgh Patent Appeal Withdrawn

THE SO-CALLED "EDINBURGH PATENT" HAS BEEN MAINTAINED IN AMENDED FORM. The Appeal Proceedings are over, and the patent has been maintained in amended form - in the same form as approved during the opposition proceedings in 2003. The patent was granted in 2001 and alleged by many to relate, intentionally or otherwise, to human cloning. This latter concern was rapidly...

Read more

Is there a future for 'speculative' gene patents in Europe?

GENE PATENTS ARTICLE FROM NATURE REVIEWS. "ICOS" and "Agrevo" are well-known decisions from the European Patent Office relating to patentability, inter alia, of gene sequences, especially in cases where at the time of filing there is incomplete information about the function of the sequence or of polypeptides encoded thereby. In 2002, it was felt that the...

Read more