Our news archive

The following are items which have appeared on our "What's new" page in the past.

Please note that whilst we do our best to ensure that the information in these news items 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.

Remember in particular that the information in some of these archived items may no longer be up to date.

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; archived 5/08)

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; archived 5/08)

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; archived 5/08)

"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; archived 5/08)

"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; archived 5/08)

Need a better view of the "prior art"?

The PCT authorities will soon be able to offer "supplementary" international searches if requested to do so by PCT patent applicants.  The supplementary searches can be carried out by an International Searching Authority (ISA) other than the one which carried out the "main" international search on the original PCT application.  Thus, an applicant should be able to obtain a more thorough overview of the prior art by seeking input from searching authorities in a number of different countries.

The changes which allow these new searches will come into force on 1 January 2009, but in practice the searches will only be available once one or more ISAs have indicated that they are able to offer them.
(Item added 12/07; archived 4/08)

Parallel UK & European patent litigation

A question often before the UK patent courts is whether, if a European patent is being opposed before the European Patent Office (EPO), the UK court should "stay" (i.e. temporarily suspend) litigation under the UK part of that patent, for instance in an action to revoke the patent or to enforce it against an infringer.  If the UK litigation were to be stayed until the EPO opposition had been decided, this might involve a delay of several months or even years before the situation in the UK could be resolved.

In recent cases, the UK courts have made it clear that they are reluctant to slow down patent litigation in this way.  The most recent example of this was a case involving Research in Motion and the well-known Blackberry® device.  Here the validity of a European patent was in dispute in the UK, but the patent was also the subject of an EPO opposition.  The UK litigation was fairly well advanced, with expert witnesses instructed and a trial date set for only a few months ahead.  The opposition, in contrast, was expected to take four to five years to resolve.

In this case, the judge refused a stay of the UK proceedings.  He believed there would be advantages to having the UK legal position resolved, and that a UK court decision might even be of use to the EPO in handling the co-pending opposition.  He did however emphasise that in situations like this, each case will need to be decided on its own merits, the key aim being to achieve a fair resolution of the dispute between the parties.
(Item added 12/07; archived 4/08)

Changes to UK patent rules

The UK Intellectual Property Office (IPO) introduced new Patents Rules on 17 December 2007.  The previous rules have been rewritten to increase their clarity and consolidate previous changes, and a number of procedures have been simplified, such as those to do with filing sequence listings, requesting corrections, seeking extensions of time, complying with formal requirements on divisional applications and bringing litigation proceedings (for example revocation actions) before the IPO.

Other important changes include:

• a six-month extension of patent term for medicinal products intended for paediatric use, similar to the current "supplementary protection certificates" which are available for pharmaceutical and plant protection products; and
• compulsory licensing of patented pharmaceuticals for export to under-developed countries.

The new rules also enable the IPO to accept patent applications and other documents filed in Welsh rather than English.
(Item updated 12/07; archived 4/08)

URGENT - Watch your marks!

As of 1 October, the UK Trade Marks Registry has now stopped refusing trade mark applications on the basis of earlier trade marks, no matter how similar, unless the owners of the earlier marks successfully oppose the applications.

This change has important implications for trade mark owners, who will no longer be able to rely on the Trade Marks Registry to "police" the Register.  Instead, trade mark owners will have to play an active role if they wish to prevent other people from registering trade marks which conflict with their own.

The Registry will still carry out a search against each new trade mark application, as part of the examination procedure.  The owners of trade marks cited in that search will then be notified when the application is published, so that they can oppose registration of the later mark if appropriate.  The Registry's new approach is therefore similar to that of the European Community Trade Marks Office ("OHIM").

It is important to note that these notifications of later marks will only be issued automatically to the owners of UK national trade marks and International trade marks designating the UK.  The owners of European Community trade marks, and of International trade marks designating the European Community, need to "opt in" to the system - and pay a £50 official fee - if they wish to receive the notifications.

You should also be aware that although the Registry will notify you if your trade mark is cited against a later application, we do not know how reliable these notifications will be or how quickly they will be issued.  We recommend therefore that you set up a watch of your own, to warn you if a trade mark which resembles yours is published for opposition purposes.  A trade mark watch is something we can organise and manage for you.

The Registry's change of approach also makes it more important than ever for you to tell us if you move, so that you do not miss their notifications.  You would only have three months, from the publication of a later application, in which to oppose it.

Please contact Michael Elliott if you want to know more about trade mark watches.
(Item updated 10/07; archived 3/08)

Prior art process invalidates a claim to its inevitable product

A recent UK High Court decision, Servier v Apotex, concerned a patent which claimed a particular polymorph of a perindopril salt.  The claim was held to lack novelty over a "prior art" (ie, earlier published) disclosure of a process which was shown inevitably to result in the claimed polymorph.  Thus, even if a compound is not specifically disclosed in the prior art, it may still be held to lack novelty if a prior art process can be shown to lead directly and inevitably to the same compound.
(Item added 8/07; archived 3/08)

Free IP newsletter

The UK Intellectual Property Office (formerly the Patent Office) now issue a free monthly e-newsletter, "IP Insight".  It includes news and views on intellectual property (IP) issues, as well as details of IP events and exhibitions and relevant media stories.

The newsletter is likely to be of interest to individuals and companies who are relatively new to IP yet recognise its importance to the growth of their business.

You can subscribe via the UKIPO web site.
(Item added 8/07; archived 3/08)

UK-to-Japan patent express

The UK Intellectual Property Office and the Japanese Patent Office have together launched a pilot scheme aimed at improving the quality and efficiency with which patent applications are processed in the two countries.

An applicant will be able to request accelerated examination of his UK patent application if he is able to submit copies of search and examination reports issued on a corresponding Japanese patent application.  Japanese applications can similarly be accelerated by submitting copies of reports issued on corresponding UK ones.  Each office should then be able to benefit from work already done by the other, to avoid duplication of effort and reduce delays.

It remains to be seen whether the outcome will be a greater convergence of the patentability criteria applied by the two offices, which should in theory be similar but often, in practice, result in very different claims being granted in the two jurisdictions.

The pilot scheme will initially run for a year, from July 2007.
(Item added 7/07; archived 12/07)

Synthetic bacterium enters the patent system

Craig Venter, the man who claims to have been first to sequence the genome of a living organism, has applied to patent a synthetic bacterium which he has been developing with his colleagues.  The main claim of his patent application lists 381 genes which Venter considers to be essential to keep an organism alive, his so-called "minimal bacterial genome".  These genes were identified from the organism which Venter first sequenced, Mycoplasma genitalium, by taking out each of its 470 genes in turn to see which it could survive without.

Venter's eventual aim, apparently, is to synthesise a DNA sequence containing these 381 genes, and by inserting this into a suitable "ghost cell" to create an artificial organism.  He had not achieved this goal, however, at the time he applied to patent his minimal bacterial genome.  Nevertheless his original claims were broad, including some directed to the potential uses of artificial organisms, for example in the synthesis of biofuels.

Inevitably, the recently published patent application has caused controversy.  A Canadian based bioethics organisation, the ETC Group, has already asked Venter to withdraw the application, and asked the US Patent and Trademark Office to reject it as unethical.  Doubtless many other objections, in various countries, will follow in due course.

Venter's patent application refers to the new genome as Mycoplasma laboratorium, but ETC have suggested it be nicknamed "Synthia", rather as the first cloned sheep had her own nickname "Dolly".  Synthia is likely to become something of a celebrity over the next few years, and it will be interesting to chart the progress of her patent applications through the various patent offices of the world.
(Item added 7/07; archived 12/07)

Patentability of stem cell cultures

The use of human embryos for industrial or commercial purposes is specifically excluded from patent protection in Europe, under Rule 23(d) of the European Patent Convention (EPC).

The Wisconsin Alumni Research Foundation filed a European patent application which claimed a stem cell culture.  At the time of filing, the only way that the culture could be prepared necessarily involved the destruction of human embryos, and the application stated as much.  However, more recently it has become possible to obtain the claimed product without necessarily having to destroy embryos, by making use instead of already available human embryonic cell lines.

The European Patent Office's Examining Division rejected Wisconsin's claims under Rule 23(d) and Wisconsin then appealed against the rejection.  As a result, the Appeal Board has referred a number of questions to the Enlarged Board of Appeal, including:

• whether or not Rule 23(d) invalidates a patent claim to a product which can only be made by destroying human embryos, even if (as in Wisconsin's case) the method of production is not actually part of the claim; and
• whether it is relevant that a production method which does not require embryo destruction subsequently becomes available.

The Enlarged Board's opinion has also been sought as to whether Rule 23(d) EPC, which first came into force on 1 September 1999, should apply retroactively to European patent applications filed before that date.  Another question posed was whether, even if Rule 23(d) does not prevent the patenting of the Wisconsin product, would it nevertheless be excluded from patent protection by the more broadly worded Article 53(a) EPC, which states that patents must not be granted for inventions "the commercial exploitation of which would be contrary to 'ordre public' or morality".
(Item added 8/07; archived 12/07)

Selective cross-breeding: potentially patentable?

"Essentially biological processes" for the production of plants or animals, for example selective cross-breeding, are excluded from patentability in Europe under Article 53 of the European Patent Convention (EPC).  However if such a method also involves a technical step, requiring human intervention rather than purely natural, biological effects (for example an element of genetic engineering), can it then be patentable?  To what extent does this depend on the nature of the technical step, when in the process it occurs and what it contributes to the end result?

These questions have been referred to the European Patent Office's Enlarged Board of Appeal.  The case concerned related to a method for increasing levels of anti-carcinogenic glucosinolates in Brassica plants such as broccoli.  The referral is now pending under the number G2/07.  The Enlarged Board is unlikely to issue a decision, however, until some time in 2008.

In the meantime, note that the exclusion from patentability does not apply to microbiological processes and their products; this is very clearly set out in Article 53 of the EPC.
(Item added 8/07; archived 12/07)

Validity of "dosage regime" claims

In Europe, a method of medical treatment cannot be patented.  However, specific forms of claim wording may be used to obtain what is in effect a very similar scope of protection.  In particular, when a drug is already known for use in one type of therapy, its use for a further medical indication can be claimed using a so-called "second medical use" or "Swiss" form of claim, which reads "Use of [compound X] in the manufacture of a medicament for the treatment of [new condition Y]".  Such a claim focuses on the industrial manufacture of the drug rather than its use to treat patients.

Such claims have also been used to attempt protection for a known drug, for use to treat a known condition, where the only novelty is in the dosage regime, that is to say, the level or frequency of the dose administered.  They have been deemed acceptable by the European Patent Office (EPO) and have been included in granted European patents.

The UK courts, however, have made it clear that this form of claim is not valid in the UK.  Germany's highest court, the Bundesgerichtshof, may now be taking a similar line.  It ruled in the Carvedilol II case that in a claim containing instructions regarding the pattern of administration of a drug, the instructions could not contribute anything in the way of novelty or inventive step to the claim as a whole as they constituted an unpatentable method of medical treatment.

In a more recent UK case, Actavis v Merck, the Patents Court has again concluded that a novel dosage regime cannot be patented if the drug and its medical indication are already known.  This decision was reached despite the divergence from EPO practice.
(Item updated 6/07; archived 9/07)

Copyright in computer software

In the case Nova Productions v Mazooma Games & Others, the UK Court of Appeal has confirmed some of the basic principles underlying copyright protection for computer programs.

The Court emphasised that copyright protects only the exact form of the code used in a program, and not the ideas which underlie it.  Thus, for example, it is not an infringement of copyright to make a program which simply emulates another (for instance, one performing the same function, or even having the same "look and feel"), unless the other program's code or graphics are slavishly copied.  Simply being "inspired by" someone else's software, and producing your own software to achieve a similar effect, is not enough to infringe the other person's copyright.

Software writers may wish to consider including some form of "trap" in their works, for example a section of code which is meaningless or which has no function in the overall program, to facilitate identification of direct copies and thus of copyright infringements.
(Item added 5/07; archived 9/07)

The EPO's influence on UK patent litigation

The UK Court of Appeal has recently ruled that where a European patent is found to be valid and infringed in the UK, and damages are therefore payable to the patentee, this will not be affected by a subsequent European Patent Office (EPO) decision – in opposition proceedings – that the patent is invalid.  In the case in question, the Court also refused a request to "stay" the UK court proceedings pending the EPO's decision on a parallel opposition against the same patent.

Overall, this bodes well for UK patentees, who can now expect greater certainty when they litigate under a European-derived UK patent.  Even if the patent has been opposed at the EPO, the UK court proceedings are likely to press ahead regardless, and their outcome to be unaffected by that of the European opposition.
(Item added 5/07; archived 9/07)

Norway to join the European patent system

As of 1 January 2008, Norway will become a party to the European Patent Convention.  As of that date, it will be possible to include Norway in all European patent applications.

Where a European patent application derives from an earlier PCT ("international") application, it will only be possible to include Norway in the European application if the PCT one was itself filed on or after 1 January 2008.
(Item added 6/07; archived 9/07)

UK Patent Office name change

Please note that the UK Patent Office is now known as the UK Intellectual Property Office.  Its new web site address is www.ipo.gov.uk.
(Item added 5/07; archived 9/07)

Patentability of diagnostic imaging methods

A European Patent Office Board of Appeal has referred three questions to the Enlarged Board of Appeal, to do with the patentability of diagnostic methods which involve surgical intervention.  Specifically, the questions concern a diagnostic imaging method which can involve injecting a contrast agent into the heart in order to assist both diagnosis and a subsequent related surgical operation.  The Board of Appeal has asked whether such an imaging method must be excluded from patentability as a method of surgical treatment, and if so, how a claim to the method might be framed so as to avoid the exclusion.  The Enlarged Board is likely to take several months to reach a decision.
(Item added 5/07; archived 8/07)

Protection of salts & derivatives in Pakistan

We have been warned by patent attorneys based in Pakistan that it has become very difficult in that country to protect salts and other derivatives of new chemical entities covered by a patent application.  The derivatives will generally be viewed as patentably distinct entities, and will need to be protected via separate patent applications.  They will also need their own supporting data.

This is likely to impact upon companies wishing to patent for example pharmaceutical or agrochemical actives, where it is often desirable to protect not only the originally developed compound but also salt forms which might prove to be useful in the future.  Please seek our advice on suitable strategies for protecting new chemicals and their derivatives if you wish to include Pakistan in your patent filing programme.
(Item added 5/07; archived 8/07)

Trends in biotech patenting

A recent study by a UK-based intellectual property firm, Marks & Clerk, has revealed some interesting statistics to do with the ownership and content of biotech patents between 2002 and 2006.  The study found that, contrary to popular belief, the majority of biotech patents are owned not by large corporations but by universities and public research institutes.

It was also found that far more of these patents originate in Japan and the USA than in Europe.  Within the EU, Denmark emerged as the country showing the largest growth in biotech patenting activity, whilst England's Oxford University was the best performing European university, although it still holds far fewer biotech patents than the major academic centres in the USA.

As to the content and scope of these patents, Marks & Clerk observed a trend towards a less speculative approach by patent applicants.  In 2002 a significant number of patent applications included relatively speculative, sequence-based claims relating to genetic engineering.  By 2006 these types of application had apparently declined in favour of more focused applications directed towards specific, and at least partially proven, medical applications.  The topics featured most often in today's biotech patents are gene therapy, stem cells and antibodies.

Overall, the authors of the study concluded that there has been a decline in biotech patenting since 2002.  Meanwhile another study, conducted in 2006 by David E Adelman of the James E Rogers College of Law and Kathryn L Deanglis of the US law firm Piper Marbury Rudnick & Wolfe LLP, found little evidence to support the popular myth that biotech patents are stifling innovation.  Adelman and Deanglis reported a continuing influx of new entrants engaged in patentable biotech R&D.
(Item added 5/07; archived 8/07)

Proposed changes to US patent law

***Note: this item has since been updated on our What's new page.***

The US Patent and Trademark Office is proposing to make extensive changes to US patent procedures.  These changes could be adopted soon, and may apply to existing as well as future patent applications.

If adopted in their current form, the changes could significantly affect the way that US patent applications have to be handled, and reduce the options available to an applicant if his claims get into difficulty during the examination phase.

We will keep our clients advised as more information becomes available about the exact scope of, and implementation date for, the new proposals.  In the meantime, you can visit our special page on the proposed US changes for more detailed information and advice.
(Item updated 1/07; archived 7/07)

Community designs via "international" applications

The European Union is shortly to join the so-called "international" design registration system.  It will then be possible to obtain a Community design registration via an international design application.  This also means that, although the UK itself has not yet signed up, UK applicants will nevertheless be able to use the international system via the Community design system.

A single international design application can cover up to 100 different designs, and provides a route to design protection in over 40 different countries, including many European, Eastern European and African nations.
(Item added 3/07; archived 6/07)

New measures for faster European patents

There have been backlogs at the European Patent Office (EPO) for some time now, resulting in substantial delays in the processing of new European patent applications.

However, as of 1 April 2007, a new pilot project should make accelerated processing possible in certain cases.

The so-called "Utilization Pilot Project" (UPP) is the result of co-operation between the European, Austrian, Danish, German and UK Patent Offices, and is expected to run for around 12 months.  During this time, any European patent application which claims priority from an already searched UK patent application will be eligible, at the applicant's request, for accelerated processing.  The EPO will then issue its "Extended European Search Report" (which provides an opinion on patentability in addition to the novelty search results) within 3 to 6 months of the request.

If even faster processing is needed, applicants will still be able to follow the EPO's existing "PACE" procedures during the subsequent examination phase.
(Item added 3/07; archived 6/07)

Bogus patent & trade mark registers

Beware – UK applicants are being sent bogus invitations to have their patent or trade mark applications entered onto an unofficial register.  The invitations can easily be mistaken for official Patent Office or Trade Marks Registry communications, and include an invoice for several hundreds of pounds.  They tend to be sent out shortly after a UK, European or PCT patent application, or a UK or Community trade mark application, has been officially published.

Entry onto the unofficial register, if it takes place at all, does not give the applicant any legal rights.

We would therefore advise you not to respond to any such invitations without first checking with your patent or trade mark attorney.  Patent offices and trade marks registries (including overseas offices) will only communicate with you via your attorney and will not send invoices to you directly.

You can also query any suspect notices that you receive by contacting the UK Intellectual Property Office (formerly the Patent Office) on 01633 814557 (patents) or 01633 811195 (trade marks), or by email at UnofficialRegistrationServices@patent.gov.uk .
(Item added 1/07; archived 5/07)

Gene patents under attack

Michael Crichton's latest science fiction book "Next" focuses on the genetic engineering business, which the author clearly regards as unethical.  At the end of the book, he calls for an end to the patenting of human genes.

Hot on the heels of this, US Democrat House Representative Xavier Becerra has introduced a bill calling for the banning of gene patents in the US, not just for naturally occurring genes but also for modified versions.  Becerra says, of America's current gene patenting practice: "We have overstepped our bounds.  We have made a regulatory mistake.  We have allowed the patenting of a product of nature."  His bill was introduced on 9 February; its progress will no doubt be monitored with interest.

Meanwhile a study into the patenting of gene sequences, conducted by the University of Sussex, has concluded that the rush to patent genes in the 1990s has actually produced relatively few granted patents.  The University's findings might suggest, contrary to Crichton's fears, that gene patents are not set hugely to inhibit the development of new drugs.  Nevertheless it is still the US Patent Office, according to the University's study, which is granting the most gene patents, compared for instance to the European and Japanese Patent Offices.
(Item added 3/07; archived 5/07)

Have you joined the European Community yet?

A Community trade mark (CTM) registration provides protection for a trade mark throughout the European Union.  An application for a CTM registration can be made in English and may go through to registration for no more than about £2000 + VAT in a straightforward case.

This represents extremely good value for money when you remember that there are now twenty-seven countries in the EU, Bulgaria and Romania being the latest to join at the start of 2007.

It may well be time for you to join the European Community!

If you're interested, please contact Mike Elliott for more information.
(Item updated 1/07; archived 4/07)

Gowers Review finally published

Andrew Gowers' long-awaited review of intellectual property (IP) laws in the UK, commissioned by the Chancellor of the Exchequer in 2005, was finally published on 6 December 2006.  Gowers analysed all forms of IP rights and the laws that protect them, with the ultimate goal of an IP system fit for the needs of all its business users in the digital age.

The review emphasises the importance of IP now that "knowledge capital" and other intangible assets (ideas, know-how, goodwill and reputation for example) exert a stronger driving force on the UK economy than more conventional tangible assets.  Gowers puts forward 54 specific recommendations, broadly focused on stronger enforcement of IP rights (in particular against piracy), lowering the cost and complexity of securing IP protection, reform of in particular copyright law to keep up with developments in digital technology and better access to relevant information and advice (suggesting, for instance, that IP advice be provided not only through the Patent Office but also Business Link schemes and even Companies House).

The full report can be viewed online via HM Treasury's website.  The Government's response, in terms of concrete law changes, remains to be seen.
(Item added 12/06; archived 4/07)

Convergence of European, US & Japanese patents?

In an exciting new development, the European, US and Japanese Patent Offices are to begin talks in March 2007 aimed at establishing a system for mutual recognition of one another's patents.  Under the proposed system, a patent granted in any one of the three countries could then be automatically granted by the other two.  As a result, a single patent application could effectively give rise to patents in all three jurisdictions, saving the applicant a significant amount of time and money.

The implementation process is likely to begin with the introduction of a standardised application form, recognised by all three Patent Offices.
(Item added 11/06; archived 3/07)

Pan-European patent court postponed

European Commissioner Charlie McCreevy has announced a delay before publishing the Commission's proposals for a pan-European patent court.  He has indicated that more time is needed for consultations and to "explore all options".  The single European court was eagerly awaited by those who hold European patents, who currently need to litigate separately in each country of commercial interest.  This further delay is likely to cause widespread disappointment.
(Item added 1/07; archived 3/07)

New Science Minister

Following his resignation in early November, the previous Science Minister Lord Sainsbury has been replaced by Malcolm Wicks.  Amongst other things, the Science Minister is responsible for the UK Patent Office and for encouraging and supporting innovation in the UK.  Lord Sainsbury took a keen interest in intellectual property and it is to be hoped that his successor will continue to lobby for efficient, cost-effective and user-friendly IP protection systems.
(Item added 11/06; archived 2/07)

Japanese employee reaps rewards for his patents

The Japanese Supreme Court has ordered Hitachi to pay 163m yen to a former employee who, whilst working for the company, devised the technology for reading CDs and DVDs.  His work resulted in several patents for Hitachi, and the Court's decision appears to recognise employee inventors' entitlement to a share in the financial rewards from important patented technology.
(Item added 11/06; archived 2/07)

Beware threats!!

When approaching a potential infringer, the owner of an intellectual property right (IPR) must always take care not to fall foul of the "threats" provisions of UK patent, trade mark and designs laws.  These provide that in certain circumstances, a person threatened with IPR infringement litigation can himself sue the IPR owner for issuing "unjustified threats", thus effectively turning the proceedings back against the person who instigated them.

For this reason it is advisable, if you wish to approach someone you believe to be infringing your IPRs, to do so through a qualified patent or trade mark attorney or IP solicitor.

In a recent court case concerning design rights, a UK judge decided that even eBay's "Verified Rights Owner" (VeRO) procedures could in some cases fall foul of the "threats" provisions.  By asking eBay to remove products from their listings because you believe that those products infringe your IPRs, you could be seen to be threatening the product vendor, or indeed eBay themselves, with infringement litigation.

This latest case takes an extremely broad view of what constitutes a threat of litigation, and may not be followed in other situations.  Nevertheless it is unfortunate because the eBay VeRO system was implemented in order to protect IPR owners rather than to impede enforcement of their rights.  And it underlines the need for caution when contemplating IP litigation (whether for patent, trade mark or design right infringement), and the importance of seeking specialist advice before taking any action.
(Item added 11/06; archived 2/07)

London 2012

Billed as "The world's biggest peacetime project", preparations are already well under way for the 2012 Olympic Games in London.

One of the less well known aspects of these preparations is a new trade mark law introduced to control use of the Olympic logo and (in Sebastian Coe's words) to "preserve the value and exclusivity of a bona fide association with London 2012".

The new law, which is part of the London Olympic Games and Paralympic Games Act 2006, prevents anyone who is not genuinely licensed to do so from using certain logos, words and combinations of words in a way that might suggest an association with London 2012.  For example, the number 2012 cannot be used in conjunction with the word London, or with any of the words gold, silver or bronze, in a way that could imply a commercial link with the genuine Games.

It appears that the organisers of London 2012 have recognised the value of a commercially attractive brand, and the need for tight controls over its use by others, so as to preserve the quality and exclusivity associated with it.  This applies of course not just to the Olympic torch but to any other trade marks and brand names that a business wishes to keep for itself.
(Item added 11/06; archived 2/07)

Changes to UK design law

Some important changes to UK design law came into force on 1 October 2006, with the introduction of the new Registered Designs Rules 2006.  Their purpose is to harmonise UK design protection more closely with systems in the rest of the EU, and to simplify – and hence encourage – the  protection of designs here in the UK.

The changes include the following.

• The Designs Registry will no longer examine design applications to see whether they are sufficiently novel, over prior published designs, to be registrable. Registration has therefore become more or less a formality. Once granted, however, a design registration will still be open to challenge by any third party on the ground that the same or a similar design was already in the public domain.
• "Multiple" design applications are now possible, allowing two or more designs to be protected at the same time.
• All applicants can now request that their new design registration remains unpublished for up to 12 months from its filing date. This allows a design to be brought to market at its owner's convenience, without the risk of competitors finding out about it – and potentially copying it – in advance.
• It has become easier to restore a design registration which has lapsed due to an unintentional failure to pay a renewal fee.

(Item updated 10/06; archived 1/07)

UK Patent Office offers innovation support services

The UK Patent Office is re-launching its "Search and Advisory Service" (SAS).  This offers a range of innovation support services to the general public.

On the patent side, these services include patentability searches, freedom to operate searches (to check for patent infringement risks) and validity searches (useful if you want to attack someone else's patent).  On the trade mark side, the Patent Office can carry out registrability and freedom to use searches, and advise as to whether a trade mark meets the requirements for registration here in the UK.

Other services offered by the Patent Office include its relatively new opinions on validity or infringement of a UK patent, and mediation support (both the provision of accredited mediators and access to "neutral" meeting rooms where you can meet with externally appointed mediators).  Both of these could be of value to smaller businesses in the early stages of IP-related disputes.

You can find out more about the SAS from its website.  Its advisors can be contacted by phone on 01633 811010, by fax on 01633 811020 and by email at sas@patent.gov.uk .
(Item added 10/06; archived 1/07)

Patentability of genes & proteins

In order to be granted a European patent, an invention has to be judged capable of being exploited in industry.  In the case of a gene or its protein product, this requirement may not be met unless the patent applicant can identify a specific end use (typically pharmaceutical) for the gene or gene product.

However, a European Patent Office Technical Board of Appeal has recently issued a decision on this point, which may provide some encouragement for those trying to patent genes and their products.  The decision, T898/05, ruled that the requirement for industrial applicability could be met if an applicant has correctly speculated in a patent application the biological function and hence medico-pharmaceutical application of an isolated gene or its putative protein product, based on credible evidence derived from computer-assisted methods. This evidence may, for example, be information obtained from a sequence alignment with other genes or proteins of known function.

What this decision means is that the pharmaceutical utility of a gene or gene product does not necessarily have to be proven at the date of filing a European patent application, so long as there is good reason to believe that it could be used for a particular biological purpose.
(Item added 10/06; archived 12/06)

Ten years of "international" trade mark registrations

It is now more than ten years since the United Kingdom joined the Madrid Protocol, enabling UK-based trade mark owners to obtain International registrations of their trade marks. When the Madrid Protocol started in 1996 there were only 9 members, but there are now nearly 70. These range from Australia, the USA and the European Union to Russia, China and Japan, making an International registration an increasingly cost-effective way of protecting a trade mark in most of the main world markets.  You only need to file a single application and it can be in English!

All you need to take advantage of this is a UK trade mark application or registration to provide the basis for your International registration.  You must also be a UK national, a UK resident or a UK company.  If you're interested, please contact Mike Elliott for more information.
(Item added 9/06; archived 12/06)

Easier access to UK Patent Office files

The UK Patent Office has recently launched a new electronic document handling system.  All new patent applications, even if filed in paper form, will be scanned into the new database for electronic processing.  Existing paper files will also, eventually, be converted into electronic form.

This means that the official files of UK patents and patent applications should soon become accessible online, allowing you to investigate third party patent rights much more easily than before.  Remember, however, that a qualified patent attorney's advice may still be valuable in helping to interpret what you find in a Patent Office file for a competitor's patent or patent application.
(Item added 9/06; archived 12/06)

New life sciences search tool

A recently introduced patent search tool may be of considerable interest to those searching for information in the life sciences sector.  The new database can be accessed at www.bios.net/patentlens/simple.cgi, and provides free access to pdf copies of patent publications.  Usefully, the full text of the patent specification appears to be searchable.  The database currently covers US, European, PCT and Australian patent publications.
(Item added 9/06; archived 12/06)

Good news for Welsh speakers?

Some draft new Patents Rules contain provisions which would allow patent applications to be filed in Welsh.  The Patent Office in Newport have no shortage of staff competent to examine such applications and presumably to correspond with the applicants in Welsh.

The draft rules are not likely to come into force for some time yet, but they provide perhaps a glimmer of light for Welsh-speaking inventors and entrepreneurs!
(Item added 10/06; archived 12/06)

Trade marks - make the right choice

You know how important a trade mark can be when it comes to advertising or promoting the image of your business.  You know how important it is for identifying your products or services in the marketplace.  But do you also know how important it is to choose the correct trade mark?

Turn the page for more information.
(Item added 9/06; archived 12/06)

IP newsletter for SMEs

The World Intellectual Property Organization (WIPO), which is responsible for so-called "PCT" ("international") patent applications, publishes a monthly newsletter online which is aimed specifically at SMEs and provides useful information about intellectual property laws and practices.  You can access past issues at www.wipo.int/sme.
(Item added 4/06; archived 11/06)