European IP news

From time to time we will update this page with news of developments in European IP law.  This may include changes to the law or Intellectual Property Office procedures, new opportunities or risks for your clients or important decisions handed down by the intellectual property courts.

Please note that whilst we do our best to ensure that this information is accurate, it does not constitute legal advice.  We cannot accept liability for any consequence of your relying on it.  Instead, if you have a specific query about your clients' European intellectual property rights, please contact us directly for advice.

Accelerated examination for PCT(GB) applications

The UK IP Office (IPO) have announced that they will accelerate examination of a PCT-derived UK patent application, if the application received a positive International Preliminary Report on Patentability (IPRP) during the international phase.  To qualify, the IPRP must have judged all the claims of the application to be novel, inventive and industrially applicable.

The applicant must specifically request accelerated examination.  If the request is accepted, the IPO aim to issue the first examination report within two months.

This scheme is separate to the "Patent Prosecution Highway" which exists between the IPO and various other countries' patent offices.  It is available no matter which office drew up the IPRP.
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SPC must be based on first ever medicinal product (even a veterinary product!)

A "supplementary protection certificate" (SPC) may be used to extend the lifetime of a UK or European patent for a pharmaceutical or plant protection product.  The purpose of the SPC is to compensate for delays in obtaining regulatory approval  to market the product.  The SPC must be based on the first marketing authorisation obtained for the product in the EU.

In a recent case before the UK Patents Court, Neurim Pharmaceuticals had applied for an SPC for their melatonin tablets, which they sold for the treatment of insomnia in human patients.  Neurim had been granted marketing authorisation for this product in 2007.  However, back in 2001 they had also obtained an authorisation to market melatonin as a veterinary product, for improving the reproductive performance of sheep.

The judge decided that Neurim's SPC application was invalid because it had been based on the later, 2007 marketing authorisation.  He ruled that an SPC must be based on the first authorisation to place a product on the market as any medicinal product:  in this case the authorisation for veterinary use.
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Reconditioning: patent infringement or not?

In these days of reusing and recycling, it will be important for businesses to know whether reconditioning an old product can infringe a patent on that product.  A case in the UK Patents Court, Schütz (UK) Ltd v Werit UK Ltd & Another, has helped to shed some light on this issue.

Schütz have a patent for their intermediate bulk containers (IBCs), which consist of large plastic liquid storage bottles held in protective cages.  Another party, Delta Containers Ltd, recondition second-hand Schütz cages, and Werit supply new plastic bottles to go into the cages.  Schütz had sued both Delta and Werit, Delta for "primary infringement" of the patent (ie making the patented IBC) and Werit for so-called "contributory infringement" (supplying an essential part to allow the patented product to be made).

The judge decided in favour of Werit and Delta.  He said that replacing the inner containers of a Schütz IBC with Werit bottles did not amount to "making" a new IBC and so could not infringe the patent for the IBC.

It is important to note that cases like this have to be decided on their own facts.  The Schütz patent focused heavily on modifications to the cage, so that the judge felt able to view the plastic bottles as secondary to the patented invention.  Thus, to infringe the patent Delta would have had to construct an entirely new cage, not simply repair a cage which Schütz had already put on the market.  Other cases of product reconditioning will have to be judged on their own facts, and we recommend that if one of your clients intends to recondition a product which was originally sold under a UK or European patent, they seek advice from a UK or European patent attorney first.
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"Patent Prosecution Highway" update – US, Japanese & European Patent Offices

The "Patent Prosecution Highway" (PPH) was an initiative launched between a number of patent offices during 2008 and 2009.  Its aim was to speed up prosecution of patent applications, by allowing participating patent offices to take advantage of searches and examinations carried out by other offices.

The European and US Patent Offices launched their PPH scheme as a pilot programme in September 2008.  They have now announced that the programme will continue to run until at least 30 September 2010.  Using the PPH, a European application can be accelerated if a corresponding US application has already been examined and found in order for grant, so long as the claims of the European application are brought into line with those allowed by the US Patent and Trademark Office (USPTO).  This applies to both PCT-derived and direct European applications, and also to European divisional applications.  Similarly, the USPTO will accelerate US patent applications which have claims corresponding to those in an already-allowed European application.

The European and Japanese Patent Offices have launched a similar PPH pilot programme, which will run for two years from 29 January 2010.

Please ask us if you would like more information on the PPH programmes, or the requirements for taking part in them.
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Getting your priority claims right

In order to claim priority from an earlier application, the rights in that earlier application must belong to the entity making the priority claim, at the time of filing the later application.  Since the rights in an invention often belong initially to individual inventors, each of those inventors' rights must have passed to the applicant before the later application is filed.  An "obligation to assign", for example in a contract of employment, is not sufficient to effect the transfer of rights in the invention: an actual assignment must have taken place.

Developments in case law in the UK courts, the European Patent Office and the US Federal Circuit suggest that the right to claim priority from an application filed in inventors' names may not be passed to a company until a specific assignment agreement has been completed, even if the company employs the inventors.  Such an agreement should identify the priority filing number, country and date, and specify that the right to claim priority is included in the transfer.  All parties to the agreement (inventors and assignee company) should sign.

We have provided a more detailed discussion of these issues and the surrounding case law, but please contact any of us at Greaves Brewster LLP if you have further questions.
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