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.

Reconditioning: patent infringement or not?

In these days of reusing and recycling, it will be important 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, however, 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 you intend to recondition a product which was originally sold under a patent, you seek advice from a patent attorney or patent solicitor first.
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Our friends across the Atlantic

Will we soon see a more European-style patent system in the USA?  Two major changes to US patent law are currently being debated, and may well be implemented in the next few years.

• first-to-file – in the USA, the person who was first to create an invention is entitled to the patent for that invention. Everywhere else, the patent goes to the first person to file a patent application, regardless of whether he was first to invent. Often this means that, to prove entitlement to a US patent, you need to produce large amounts of evidence (for example lab notebooks, drawings, project plans and internal reports) to show when you carried out your research or devised your new product or process. The USA may soon change to the much simpler "first-to-file" system used in other countries.
• post-grant opposition – a European patent can be "opposed", within nine months of its grant, by anyone who believes it to be invalid. The opposition procedure is relatively straightforward, and much less expensive than litigation. It is not currently so easy, however, to attack a US patent. A new post-grant opposition system is now being considered in the USA, which may provide an easier way of attacking a US patent that you believe should not have been granted.

These are major changes and are unlikely to be implemented rapidly.  However, it is encouraging that the changes are being discussed, and takes us a step closer towards the much-needed harmonisation of international patent laws.  We will report again once we have more concrete information.
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WIPO launches new "GOLD" resource

The World Intellectual Property Organization (WIPO) have launched a new online resource which provides "a one-stop gateway" to their searchable IP data.

WIPO GOLD is a free service, and gives access to a global collection of patent publications and related information.

One of WIPO's nine strategic goals is to serve as a world reference for IP information and analysis.  The new GOLD resource, which they intend to update and improve on an ongoing basis, is part of their drive to achieve that goal.
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Multilingual searching through PATENTSCOPE®

Meanwhile, WIPO have also updated their PATENTSCOPE® database to allow cross-lingual information searching.  Using software which is based on statistical analyses of the terminology found in patent applications, a search query in one language is translated into other languages.  The search is then performed using the multilingual query, leading hopefully to more comprehensive results.

Cross-language searching is currently available for public testing in English, French, German, Japanese and Spanish.  For more information, visit the PATENTSCOPE® website.
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Fast-track available for certain UK patent applications

The UK IP Office (IPO) have announced that they will accelerate examination of a PCT-derived UK patent application, if it received a positive "international preliminary report on patentability" (IPRP) from the PCT authorities.  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.
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Take the "Patent Prosecution Highway" – to the USA or Japan

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 offices in other countries.

The European and US Patent Offices launched their PPH scheme as a pilot 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 patent 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).    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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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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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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