What's new

From time to time we will update this page with news from the world of intellectual property.  This may include changes to the law or Intellectual Property Office procedures, new opportunities or risks for our 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 intellectual property rights, please contact us directly for advice.

*** Congratulations! ***

Congratulations to Rebecca Spence in our Records & Administration Department, who's just passed the Chartered Institute of Patent Attorneys' patent administrators' exams.  Well done Rebecca!
 

Stop press - US rule changes thrown out

The US Patent and Trademark Office's (USPTO's) proposed new rules have been rejected by the District Court of Eastern Virginia.  This follows a law suit brought against the changes by GlaxoSmithKline (GSK).

The Court found that the rule changes exceeded the USPTO's rule-making authority.

We have yet to hear whether the USPTO will appeal this decision.  But for the time being at least, the rule changes are not going to happen.
(Item updated 4/08)

Fee increases for European patent applications

1 April 2008 brought increases in many of the official fees payable on European patent applications.  The most significant changes were to so-called "excess claims fees" and to renewal fees.

Before 1 April, excess claims fees of €45 were payable, on filing a European patent application, for the 11th and each subsequent claim.  After 1 April, the first 15 claims are free but the fee payable for the 16th and each subsequent claim is €200.  Clearly this could substantially increase the cost of filing an application which contains a medium or high number of claims.  For example, an application containing 30 claims used to attract an excess claims fee of €900 (10 free claims + 20 at €45).  Now, the same application will attract an excess claims fee of €3,000 (15 free claims + 15 at €200).

We recommend that you review your claims with your European patent attorney before filing a new European application or converting a PCT application into a European one.  Wherever possible, less important sub-claims should be removed at this stage in order to reduce the official fees payable.  Such sub-claims can be reinstated during the examination procedure, once the scope of the main claims has been approved.

The annual renewal fees payable to keep a European patent application pending have also increased, by up to 55 % depending on the age of the application.  Perhaps more importantly, the surcharge for paying a renewal fee late, during the six month grace period, has increased to 50 % of the overdue renewal fee.  It used to be only 10 % of the overdue fee.

You may wish to take greater care from now on to ensure that your renewal fees are paid on time, to avoid the high penalties which late payment now attracts.

Other official European Patent Office fees also increased on 1 April, but to a lesser extent than the excess claims fees and renewal fees.  Further changes will be introduced on 1 April 2009, including a flat rate designation fee of €500 to cover all European Patent Convention states; a new excess claims fee of €500 for the 51st and each subsequent claim; and a further fee for each page of the application over 35, payable on filing the application instead of at grant as under the current rules.
(Item updated 4/08)

National searches now optional for Community trade mark (CTM) applications

A change of practice at the Community Trade Marks Office (OHIM) means that, from 10 March 2008, national search reports are no longer being issued on new CTM applications as a matter of course.  Instead, applicants who wish to receive national search reports now have to ask for them and pay a search fee when their applications are filed.  OHIM will however continue to issue Community search reports on all applications, regardless of whether or not national searches have been requested.

This change applies to all CTM applications filed from 10 March 2008.  National search reports will still be produced on applications filed before that date, without the need to pay an additional search fee.

For International trade mark applications designating the European Community, the change will apply to all cases received from the World Intellectual Property Organization (WIPO) after 10 March 2008, though applicants will have one month from receipt in which to request searches and pay the search fee.

If the search fee is paid, national searches will be carried out by Austria, Bulgaria, the Czech Republic, Denmark, Finland, Greece, Hungary, Ireland, Lithuania, Poland, Portugal, Romania, the Slovak Republic, Spain, Sweden and the United Kingdom.  Although this list does not include France, Germany, Italy or the Benelux countries, the national search reports may still provide a useful warning of potential pitfalls, particularly when no searches have been carried out before the CTM application was filed.

If you are intending to ask us to file a CTM application for you, please tell us whether or not you wish to opt for national searches because this must be done when the application is filed.

For more information or advice, please contact Michael Elliott .
(Item added 3/08)

At last - reduced translation costs for European patents!

Filing a so-called European patent application provides a very efficient route to patent protection across the continent.  However, once the European patent has been granted, it then has to be "validated" in each of the European countries where you want it to have an effect.  This process can be extremely costly, since the validation process involves preparing a full translation of the patent for each of the countries you proceed in, at a typical cost of several thousands of pounds each.  Often this discourages patentees from keeping their patent in force in any but a few key European territories.

All of this is set to change during 2008.  A new pan-European agreement, known as the "London Agreement", will remove the need for a full translation in the countries which are party to it.  These currently include the UK, France, Germany, Croatia, Denmark, Latvia, Liechtenstein, Luxembourg, Monaco, the Netherlands, Slovenia, Sweden and Switzerland.  In order to validate a European patent in these countries, you will only need to supply a translation of its claims, and not of the whole document, in the relevant language.

London Agreement countries can still require the full text of the patent to be translated into one of the three official languages of the European Patent Office – English, French and German – but not into any other language.  Thus a patentee will need to obtain at most two translations (for instance into French and German, if he has filed his original patent application in English) in order for his granted patent to have effect in all of the London Agreement countries.

The London Agreement will come into force on 1 May 2008.  Importantly, this means that for any European patent granted on or after 1 February 2008, the necessary translations could be filed under the new regime (since they are required within three months of the grant date).  Patentees will therefore be able to take advantage of the less stringent translation requirements in such cases by delaying submitting translations until after 1 May.

Even after 1 May, there will still be many European Patent Convention countries which have not yet ratified the London Agreement, and for which full translations will therefore still be necessary.  However, the new system should mean significantly lower costs for obtaining patent protection across Europe, and as more countries sign up to the Agreement, translation costs will be yet further reduced.  This can only be a good thing for small and medium sized businesses who make use of the European patent system.
(Item updated 2/08)

"Fast-track" to a UK trade mark registration

The UK's Intellectual Property Office is to introduce a new procedure for "fast-tracking" trade mark applications through the examination process.

Fast-track examination will be available for new applications filed electronically on or after 7 April 2008.  It will cost an additional £300 and will have to be specifically requested at the time of filing; it will not therefore be available for already filed applications.  Nor will it be an option for applications containing series of trade marks.

A fast-tracked trade mark application will be examined within 11 business days (Mondays to Fridays, excluding public holidays) of its filing.  The examination report will usually be sent by fax or e-mail during this period.  If the IP Office fails to meet this target, the fast-track fee will be refunded.  The Office will also do its best to process any correspondence on the application (for instance, responses to objections raised in the examination report) as quickly as possible.

A regular trade mark application is usually examined about 4 to 6 weeks after its filing date.  If you need to achieve trade mark protection more quickly, for instance to protect an imminent product launch, the new fast-track system may therefore provide you with a useful head-start to the process.

You should bear in mind, however, that even a fast-tracked application will still need to be published in the Trade Marks Journal and subjected to a three month wait, before registration, to allow third parties to oppose your mark if they wish.

The new procedure is to be accompanied by a revised online application form.  The previous version of the form has been significantly altered to take account of customer feedback, and should be simpler and safer to prepare.

If you want to know more, please contact our trade mark attorney Michael Elliott .
(Item added 2/08)

Abuse of patent rights by pharmaceutical giants?

In January 2008 a number of large pharmaceutical companies, including GlaxoSmithKline, AstraZeneca, Pfizer and Sanofi-Aventis, received surprise visits from European Commission officials.  The raids were part of an enquiry into whether the companies had conspired to keep up the prices of their drug products beyond expiry of the relevant patents, and/or to delay the introduction of lower cost generic alternatives.  Teva, a large generic drugs company, is also believed to be included in the enquiry.

The ownership and enforcement of a patent is not itself contrary to European competition laws, but where the patentee is in a strong position in the market place, the way that he exercises his patent rights can constitute an illegal "abuse".  Agreements between two or more patentees which restrict movement of goods between EU member states, or which otherwise distort competition within the EU (for example by price fixing, or by dealing with only one "favoured" competitor to the exclusion of others, or by forcing a competitor to agree not to challenge the validity of a patent), can also be illegal.  The European regulators are keen to prevent such practices and tend to clamp down heavily on the companies found to be involved.

However, the use of unannounced dawn raids marks an increase in the level of aggression involved in the regulators' investigations; previous such enquiries have begun with questionnaires being sent out to the companies under scrutiny.

The European Commission has promised a broad enquiry into practices within the pharmaceutical industry.  It is expected to issue interim findings in the autumn of this year.  Its investigations may well cover the practices of building up so-called patent "thickets" surrounding valuable patented drugs, or of "ever-greening" important patents, by filing large numbers of additional patent applications covering minor changes to the original drug or drug formulation so as to prevent others from developing the drug after its patent expires.

AstraZeneca have already been fined €60 million by the European Commission, in 2005, for various "abusive" practices relating to their patented anti-ulcer drug Losec™.
(Item added 2/08)

Entitlement to UK patents

A decision handed down in mid-2007 by the UK Court of Appeal threw considerable doubt over the laws governing entitlement to UK patents.

The case concerned, Markem v Zipher, related to the treatment of cancer, and an invention which had been developed following the exchange of information between research institutions in the USA and Israel.  It determined that in order for a first party A to prove his entitlement to a patent granted to another party B, A must not only prove that he has derived title from the relevant inventor or inventors, but also be able to invoke some other rule of law (for example, breach of confidence) to establish that B should not have been granted the patent.  This did not sit easily with the provisions of the UK Patents Act, and concerned many UK patent attorneys.

The House of Lords, fortunately, overturned the Court of Appeal's decision in late 2007.  They confirmed that entitlement to a UK patent is governed only by the terms of the UK Patents Act 1977 and thus requires only that title be derived from each of the inventors, for instance via a contract of employment or a legally binding agreement.

In the same case, the Lords also confirmed that the UK Intellectual Property Office (IPO) has wide discretionary powers when handling entitlement disputes.  The IPO has considerable experience in deciding the ownership of UK patents and patent applications, and is regarded by many here as the best forum in which to debate such issues.  The House of Lords appeared happy to endorse that view.
(Item added 2/08)

"Novelty of purpose" claims in Europe

In a recent decision T0684/02, a European Patent Office (EPO) Board of Appeal expressed the view that a claim to the use of a known process for a new purpose was not patentable.

It has long been established that in a European patent, a claim can validly be directed to the use of a known product for a new purpose, so long as the new purpose involves some new and previously unrecognised technical effect.  In this more recent case, however, the Appeal Board seemed reluctant to extend that principle to process- as opposed to product-based claims.

It is likely that others in the future will attempt to have similar types of claim considered by EPO Appeal Boards, in the hope of achieving a different outcome.  Each EPO appeal is decided on its own merits and individual appeal boards need not necessarily heed the earlier decisions of other boards; a more lenient decision could therefore result from a future case on similar issues.

Meanwhile the UK IP Office will still reject all claims based purely on novelty of purpose, except those directed to new medical uses.
(Item added 2/08)

UK IP Office opinions

The UK Intellectual Property Office (IPO) continues to offer its "opinions" service, providing relatively quick and low cost – although non-binding – decisions on infringement and validity of UK patents.

In a recent request for an opinion on the validity of a European (UK) patent, however, an IPO hearing officer has made clear that if the only prior art raised in the request has already been considered in depth during the pre-grant examination of the patent, this is unlikely to be sufficient to constitute a "new question or argument" and the request is likely to be refused.  In the case in question, the prior art documents referred to in the request had already been listed as particularly relevant in the official search report for the original patent application.

Thus, if you wish to question the validity of a granted UK patent using an IPO "opinion", you will typically need to find some new prior art, or at least a very new take on the previously considered prior art, for your attack to be deemed worthy of consideration.
(Item added 2/08)

Norway & Croatia now in the European patent system

As of 1 January 2008, both Norway and Croatia are now full members of the European Patent Convention.

This means that a European patent application can now include up to 34 European countries, and the resultant granted patent could, if the patentee wished, take effect in all 34 of those countries.  The European patent system thus provides a highly efficient route to pan-European patent protection, a route which, in view of the translation changes highlighted above, will soon become extremely cost effective.

It is worth noting that the countries included in the European patent system are not exactly the same as those which belong to the European Union.  A European patent can, for example, include Switzerland.
(Item updated 2/08)

EU joins international design system

The European Union is now linked to the so-called Hague Agreement system for obtaining "international" designs.  As of 1 January 2008, it became possible to designate the EU in an international design application, and as a result to obtain a registered European Community design via the Hague system.  Nationals and residents of the EU can also now file international design applications, and thereby obtain design protection in other countries which are party to the Hague system.

At present there are relatively few non-EU countries in the Hague system, but as more countries join in the future, international design applications are likely to become increasingly popular.  Applicants need to take care, however, as the Hague system does not harmonise design laws, and a design which meets the requirements of the Hague Agreement, or of one of the countries which is party to the Agreement, may nevertheless be invalid in another member country.  Local advice will still need to be sought regarding the best way of protecting a design in any given country.
(Item updated 2/08)