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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.

What are you doing for World IP Day?

Monday 26 April is World IP Day.

Make that the day you look more closely at your intellectual assets. Do you have brand names that ought to be registered as trade marks? Or clever technology that could be protected by a patent? Or a design you don't want others to copy?

Or perhaps your competitors have patent and trade mark rights that you need to avoid?

We offer fixed price IP audits for all businesses, and for World IP Day we'll provide the first two hours' consultation free. That could be enough to tell you whether you have any protectable IP assets and if so, what's the best way to handle them.

Patentability of surgical methods in Europe

Methods of surgery are not patentable in Europe. The European Patent Office (EPO) have now issued a decision which clarifies what counts as a method of surgery, and the circumstances in which a patent claim that embraces such a method can be allowed. The official reference for the decision is G1/07.

Find out more in our analysis of the case.
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"Dosage regime" claims still patentable in Europe

Another recent decision from the European Patent Office (EPO) has confirmed that claims relating to the use of a known drug in a new and inventive dosage regime can be allowed in a European patent.

The official reference for this decision, which was given by the EPO's Enlarged Board of Appeal (EBA), is G2/08.

The case related to the patentability of new dosage regimes under a revised European patent law which came into force in December 2007. By "new dosage regime" we mean the use of a known drug, for a known therapeutic purpose, where the only novelty lies in the fact that the drug is administered using a different dosage regime to that used in the past.

The new law provides that medical treatment methods are not patentable in Europe. However, it does allow the grant of claims to a known drug for use in a new treatment method, ie to treat a disease it was not previously used to treat. Thus, for example, if drug X is known for treating disease Y, but not for treating disease Z, then a patent claim could be granted to "Drug X for use in the treatment of disease Z".

In G2/08, however, the only novelty in the invention was that drug X, when used to treat disease Y, was administered using a new dosage regime. The EBA confirmed that this type of invention is still patentable under the new law, provided that the new dosage regime is sufficiently "inventive" in view of the already known dosage regimes.

The EBA also indicated that this type of invention must be protected using a particular form of claim wording.

Note that claims of the type which the EBA have allowed may not be enforceable in all of the countries covered by the resulting European patent. In the UK the courts have recently indicated that dosage regime claims are valid here, although at the time they were considering a different form of claim wording to that required by the EBA. However a tribunal in Switzerland has refused this type of claim and a German court has also expressed doubts as to its validity. In the absence of a central European Patents Court, the claims of a European patent will always be vulnerable to potential differences in interpretation of the law in the countries where it is in force. That said, now that the EBA have confirmed that dosage regime claims are patentable and have set out their reasons for doing so, the national courts may be more inclined to come into line with the EPO approach.

Please contact us if you have any queries about patenting a known drug for use in a new way.
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Are your protein claims plausible?

In a recently decided case, Eli Lilly & Co v Human Genome Sciences Ltd, the UK's Court of Appeal revoked a patent for lack of industrial applicability. The patent related to a new protein, which was said to have a wide range of potential – though unproven – uses. Interestingly, the same patent had previously been approved by a European Patent Office board of appeal, during European opposition proceedings.

Our analysis of the case explains why the patent failed, and discusses the implications for those who wish to patent biological inventions such as proteins and gene sequences.
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Fee increases for UK patents

The UK Intellectual Property Office (IPO) are about to increase some of their fees.

The changes will come into force on 6 April 2010. As of that date:

the fee for a novelty search on a new UK patent application will increase from £100 to £150.
the fee for requesting "substantive examination" of an application will increase from £70 to £100.
the fees for "renewing" a granted patent, which currently range from £50 for the first renewal to £400 for the last, will range from £70 to £600.

If you are due to renew a UK patent within the next few months, it may be worth doing so early in order to benefit from the current lower fees.

The IPO will however increase the discounts they offer for online filings. As of 6 April, the discount for filing a search or examination request online will be £20, taking the real cost of a novelty search down to £130. We will continue to file documents electronically at the UK IPO, so that our clients can take advantage of these discounts.
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Fee increases for trade marks too

The fee changes to be introduced on 6 April 2010 include a new official fee for registering a licence against a UK trade mark. The fee will be £30, the same as that presently charged for registering a change of ownership.

If you are negotiating the grant of a licence under your trade mark and wish to register it without paying the new fee, please contact us as soon as you can.
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The fight against bogus IP registers

The World Intellectual Property Organization (WIPO), who administer the PCT patent application system, recently made the following announcement. It concerns a company which had attempted to deceive patent and trade mark applicants into paying for entry onto an unofficial register" of IP rights.

"A Florida-based company in the United States of America ('Federated Institute for Patent and Trademark Registry') was last month found by a Florida court to have violated the state's Deceptive and Unfair Trade Practices Act by sending misleading 'invoices' to patent and trademark applicants – including to PCT users.

"The company was requesting payment for a service which in fact had no value – listing PCT applications in its 'Register'. WIPO cooperated with the Florida authorities in this case. During the trial, a PCT expert from WIPO provided testimony about the misleading nature of the invitations and the harm suffered by PCT applicants. The judgment in this case is a promising step toward curbing this deceptive practice, and WIPO will continue to cooperate with law-enforcement authorities in states and countries which make efforts to curtail these practices."

WIPO have been warning IP owners for some time about these misleading types of invoice. At Greaves Brewster LLP we have also warned our clients to beware of official-looking communications which are mailed to them directly. Ordinarily, communications from patent offices should only come to you through your patent attorney.

Please contact us if you are in any doubt about an IP-related invoice you've received. Or you can check out the WIPO web site for examples of the documents that have been causing all the trouble.
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Fast track for US patent applications on green technology

The US Patent and Trademark Office (USPTO) have announced a special scheme for accelerating US patent applications which relate to environmentally friendly technology.

If your US application relates to a technology such as energy conservation, reducing greenhouse gas emissions or renewable energy, you can ask the USPTO to give the application "special status" and examine it ahead of its turn. The claims of your application must fulfil certain requirements, and the application must not yet have been issued with its first "office action". There is no fee for requesting special status.

This is a pilot scheme which remains open until 8 December 2010, although only for the first 3,000 requests which the USPTO receive. Please let us know if you are interested in requesting special status for one of your US patent applications.
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"Selection" inventions - a step closer to Europe

A "selection" invention arises when there is an earlier disclosure of a broad generic class (say, of chemical compounds) and someone chooses a smaller sub-class from within the generic one because the members of the sub-class have special properties. An example would be a disclosure of a broad class of chemical compounds, defined by a generic structure, and a selection invention covering just four of those compounds which had been found to have greater antimicrobial activity.

This type of invention has traditionally been patentable in the UK, and also via a European patent. However, there are conditions. Firstly, the selected items must not have been specifically mentioned in the earlier disclosure. Secondly, based on a court case decided back in 1930, UK patent law requires the selection to embody a "substantial advantage": this advantage has to be possessed by all of the items in the selected sub-class but not by the rest of the generic class. The European Patent Office (EPO) apply slightly less stringent criteria, requiring only that the selection provides a genuine technical advance, and that it does not represent a mere arbitrary choice from the possibilities disclosed before.

In a court case late last year, Dr Reddy's Laboratories (UK) Ltd v Eli Lilly & Co Ltd, the UK's Court of Appeal had to rule again on the patentability of selection inventions. Surprisingly, instead of relying on the old 1930 case law, they said that selection inventions should now be judged here in the same way as they are by the EPO.

The court confirmed that a broad generic disclosure does not constitute a disclosure of each individual member of the generic class. In the Dr Reddy's case, the earlier disclosure (the "prior art") covered a large class of thienobenzodiazepine compounds which were said to have activity on the central nervous system. Lilly had patented just one of those compounds, olanzapine, on the basis that it could be used to treat schizophrenia. The formula quoted in the prior art could theoretically have embraced over a thousand compounds, including olanzapine, but olanzapine was not specifically mentioned. Thus, the judges held that the prior art did not disclose olanzapine.

Using the EPO's approach, the judges then went on to consider whether the selection of olanzapine provided a technical advance. They emphasised that for a selection invention to be patentable, there must be evidence of a technical improvement, and it must also be credible that substantially all the selected items share that improvement. The judges held that Lilly's patent satisfied these criteria, and that the selection of olanzapine was both novel and "inventive" enough to be patentable.

The case is interesting for two reasons. Firstly, it may now be easier for patentees to protect selection inventions in the UK. Secondly, the case continues a trend in the UK courts for dispensing with established UK patent law in favour of approaches adopted by the EPO. In other recent cases, UK judges have followed the EPO on issues such as "product-by-process" claims and the patentability of new dosage regimes for known pharmaceuticals.

Also of interest is that the judges in the Dr Reddy's case took note of how other European countries dealt with selection inventions. This may indicate a general trend towards harmonisation of patent laws across Europe, something which will be welcomed by patentees and their competitors alike.
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EPO to require prior art details

The European Patent Office (EPO), like the US one, will soon start putting more of an onus on applicants to provide relevant prior art. "Prior art" is essentially any earlier public disclosure that could affect the novelty or inventiveness of an invention claimed in a patent.

Firstly, where a European patent application claims priority from an earlier one, the applicant will have to submit, to the EPO, the results of any earlier searches carried out on the priority application(s). For a direct European application, this will have to be done at the time the application is filed, or "without delay" after the search results become available. For a PCT-derived European patent application, it will have to be done at the time of converting the PCT application into a European one. In both cases the EPO will issue a reminder if the search results have not been submitted. Failure to respond to the reminder within two months will result in the application being deemed withdrawn.

Secondly, the EPO will be allowed to ask the applicant, at any time during the examination process, to submit details of prior art he's aware of from corresponding patent applications in other countries. Again, failure to respond to this request (within two months) will result in the application being deemed withdrawn.

Unlike in the US system, there is not yet any sanction for omitting a relevant document from a list of prior art submitted to the EPO. However, in theory the more prior art that is put on record during examination, the stronger the resultant patent. Also, during subsequent litigation, a court might look more favourably on a patentee who has acted in good faith before the EPO, and this could affect the remedies available against infringers or the ability to amend the patent claims if the patentee needs to.

These changes will apply to all European and PCT applications filed on or after 1 January 2011.
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Supplementary protection for combination products

In the European Union, a so-called "supplementary protection certificate" (SPC) can provide an extra period of protection for a patented pharmaceutical or plant protection product, after the basic patent for the product has expired. However, to be eligible for an SPC, the product must have been granted a marketing authorisation somewhere in the EU.

But what happens when the "product" is itself a combination of two or more active ingredients? Two recent legal decisions have helped to shed some light on this type of situation.

The first was a case before the UK Intellectual Property Office (IPO). Medeva BV had a European patent on a combination of two active agents X and Y, which they used in several of their vaccine products. They also had UK product licences for four of their vaccines, all of which contained X and Y but with other active agents as well. The IPO allowed Medeva an SPC for the binary combination X + Y, because that was protected by the patent. They refused however to grant SPCs for ternary combinations containing X and Y along with additional actives.

The second case (Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd) was in the UK Court of Appeal. It related to an antimicrobial compound, ofloxacin, which is a racemic mixture of two isomers. Daiichi had a patent to ofloxacin itself, but later discovered that one of the two isomers – which they called levofloxacin – was more active and less toxic than the other. They therefore obtained a separate patent for levofloxacin. They also obtained marketing authorisations firstly for the original product ofloxacin, and later for the isolated isomer levofloxacin.

In an argument about the validity of Daiichi's SPC for levofloxacin, the appeal court judges held that the marketing authorisation for ofloxacin (the racemic mixture) was not equivalent to a marketing authorisation for levofloxacin alone. In other words, a marketing authorisation which covers a combination of active ingredients (in this case the two isomers) is not the same as an authorisation for either of the ingredients individually. The combination is, in effect, an active agent in its own right.

Daiichi's SPC for levofloxacin was found to have been correctly based on the later marketing authorisation for levofloxacin alone.

For advice on SPCs, please contact either Carol Greaves or Jacqui Evans .
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EPO express disapproval of "reach-through" claims

A "reach-through" claim attempts to cover all new chemicals which could be obtained using a particular research tool such as an assay or screening method. Patent offices have typically been reluctant to grant such claims, even where the research tool itself is patentable.

A European Patent Office (EPO) appeal board last year refused reach-through claims in a patent application filed by Bayer Schering Pharma AG. In Bayer's claims, chemical compounds were defined functionally, with reference to their ability to pass an enzymatic screening test.

The appeal board's view was that an applicant is entitled to claim patent protection only for his actual contribution to the art, ie for the factual results of his research and for the concrete technical results he has made available to the public. The European patent system is not designed for reserving an unexplored field of research for a particular applicant, or for protecting potential future inventions.

The board also commented on functional definitions generally in claims to chemical compounds. Functional claims often require the reader to resort to trial-and-error research to identify compounds that possess the relevant functionality; this was said to represent "an invitation to perform a research programme and thus an undue burden". What this means is that claims which define chemical entities in functional terms – for instance with reference to their activity against a certain pathogen – are best written narrowly. They should also be accompanied by clear guidance, in the description, as to how to select classes of compounds which are likely to fulfil the functional requirement(s).

The EPO reference for this case is T 1063/06.
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PATENTSCOPE® extends access to international patent data

A new enhanced version of WIPO's PATENTSCOPE® database should improve public access to data on patents and patent applications around the world.

WIPO (the World Intellectual Property Organization) administer the "PCT" system for so-called international patent applications. Their PATENTSCOPE® service holds data on over 1.6 million PCT applications, and has now been extended to include information on patents and patent applications filed with the Cuban, Israeli, Korean, Mexican, Singapore, South African and Vietnamese patent offices, as well as applications filed through the African Regional Intellectual Property Organization (ARIPO). The added data collections are said to be fully searchable.

For more details, visit PATENTSCOPE® on the WIPO web site.
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Thailand joins the Patent Co-operation Treaty (PCT)

The number of countries covered by a "PCT" (International) patent application has grown to 142. Thailand became a member of the Patent Co-operation Treaty on 24 December 2009. All PCT applications filed from now on will automatically extend to Thailand.

The PCT system includes most of the major industrial countries of the world. If you file a PCT patent application, it gives you the option of going on to seek international-scale protection for your invention. Importantly, the PCT system allows you to delay for a while the costly decision about exactly which countries to proceed in.

With the accession of Thailand, the most notable country which remains outside the PCT system is Taiwan. Others not yet included are some African territories, some Middle East and Gulf states and some South American countries. However, the PCT system still represents a cost-effective route to international patent protection.

If you have any questions about patent protection in Thailand, or about the PCT system, please contact any of us at Greaves Brewster LLP .
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