Our news archive 2009
The following are items which have been archived from our "What's new" page during 2009.
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.
Does commercial success prove inventive step?
In the UK, evidence of commercial success can often help establish that an invention has the requisite "inventive step" to be patentable. However, the UK's Court of Appeal recently showed that such evidence is not always persuasive.
In the court case Aerotel v Wavecrest, the patentees Aerotel argued that their invention had seen significant success in the marketplace. The judges however were not sure about this. They believed, from Aerotel's evidence, that the company had made money out of the patent by threatening litigation and thereby coercing other companies into licensing deals, rather than by large volumes of sales to eager customers. The onus is on the patentee, in such a situation, to prove that commercial success is due to a genuine demand for the patented invention rather than to other factors such as intensive marketing, the regulatory landscape or – as in this case – aggressive patent tactics.
(Item added 7/09; archived 11/09)
Safeguard your secrets!
A recent European Patent Office (EPO) decision, T 1510/06, emphasised the importance of written confidentiality agreements for work done prior to filing a patent application.
If a product is publicly disclosed before a patent application is filed for it, the subsequent patent application is invalid for lack of novelty. Even showing the product to a small number of people can count as a "public disclosure", if those people are not bound by an express or implied obligation of confidentiality.
T 1510/06 concerned a patent for a throttle valve. The patentees had sold samples of the valve to a car manufacturer for evaluation, before their patent application was filed. They alleged that the manufacturer was bound to secrecy because of the circumstances of the sale, but there was no evidence of an express secrecy agreement and the EPO appeal board was not convinced. Had the manufacturer been in a "special relationship" with the valve supplier, then confidentiality could have been implied, but in this case the board felt that there was no such special relationship. The sale of the valves therefore counted as a public disclosure and could invalidate the patent.
The moral of this story is to make sure that all your transactions with third parties are covered by express confidentiality agreements, preferably in writing. If for example, before filing a patent application, you provide samples or information to potential buyers or distributors, or to consultants or contractors, get them to sign a confidentiality agreement beforehand.
(Item added 7/09; archived 11/09)
Human embryonic stem cells - new guidelines on patentability
There are constraints on what is considered to be suitable subject matter for patents in the field of human embryonic stem cells. Although a European directive (Directive 98/44/EC) states that "uses of human embryos for industrial or commercial purposes is unpatentable", it makes no explicit mention of human embryonic stem cell cultures. However a recent European Patent Office decision did provide some clarification on the issue.
As a result, the UK’s Intellectual Property Office (IPO) have modified their practice for dealing with inventions relating to human embryonic stem cells. In particular, they will now allow patents to human embryonic pluripotent stem cells, provided that, at the date of filing the patent application, the cells could be obtained by a method that did not involve the destruction of a human embryo. (Pluripotent cells can be grown in culture, have the ability to develop into a variety of tissues or organs and so may be useful in the delivery of new disease treatments.)
It is thus important, when preparing patent applications in this area, to identify an appropriate "non-embryo" source for any claimed cells. This could be done for example by referring to newer technologies such as Induced Pluripotent Stem Cells (iPSC). Other options may be available or appropriate depending on the circumstances of the case.
The IPO will continue to reject applications that claim processes for obtaining stem cells from human embryos. They will also reject applications that claim human totipotent cells, which, in contrast to pluripotent cells, have the potential to develop into an entire human being.
The earlier European Patent Office decision (G2/06) related to an application filed by the Wisconsin Alumni Research Foundation (WARF). See our news archive for more details.
(Item added 6/09; archived 10/09)
Keep an eye on your competitors!
Monitoring other people's "PCT" patent applications has never been easier. The World Intellectual Property Organization (WIPO) have announced two new extensions to their publicly available online database.
Firstly, status reports are now available for all published PCT applications which were filed from July 1998 onwards. In addition, the official files of published PCT applications filed on or after 1 January 2009 can now be viewed online. This gives access to documents such as official forms, search and exam reports, and correspondence between the applicant and WIPO.
Both services can be accessed through WIPO's PATENTSCOPE® database. Both are free of charge.
A "PCT" application provides a route to obtaining international-scale patent protection. Most patent applicants use the PCT system, so better access to information about third party PCT applications will make it easier to monitor your competitors' patenting activities.
(Item added 6/09; archived 10/09)
Fast track for "green" inventions
Obtaining a patent can be a slow process, often taking several years. However, there is good news for anyone involved in environmentally friendly technology as the UK's Intellectual Property Office have announced that "green" inventions qualify for a new accelerated procedure.
Under the "Green Channel" scheme, applicants with environmentally friendly technology can request accelerated processing of their patent applications. This could result in a patent being granted in as little as nine months, which is a vast improvement compared with the current average time of two to three years. There is no charge for this fast track service and no additional reasons are needed.
At Greaves Brewster LLP we have experience of handling green technologies, and we work in partnership with the government's Waste & Resources Action Programme (WRAP) to patent developments in recycling processes. For further information about protecting green technology and accelerating the patent process, please contact Emma Leland .
(Item added 6/09; archived 10/09)
Fee cut for UK trade mark applications
From 1 October 2009, there will be a £30 discount on the official application fees for trade mark applications which are filed online. Most of our clients will be able to benefit from this reduction, as we already file the majority of our trade mark applications online.
The discount is the headline item in a package of changes affecting UK trade marks. The IPO are also introducing the option of a staggered application fee, with half of the fee being paid upfront to obtain an examination report and the other half being paid only if you then decide to proceed with the application. This allows you to gauge the likely success of the application before paying the full fee for it. To benefit from this option, your trade mark application must be filed online, and unfortunately it will not then qualify for the £30 discount.
(Item added 7/09; archived 10/09)
US rule changes on hold
A US appeal court has decided that most of the patent rule changes proposed by the US Patent and Trademark Office (USPTO) are valid.
We first reported on the proposed changes in early 2007. They had the potential to significantly affect the way that US patent applications have to be handled, and to reduce the options available to an applicant if his claims get into difficulty during the examination phase. Many patent applicants, and their patent attorneys, were extremely worried about the impact of the changes.
However, just before they were due to come into effect, the rule changes were rejected by a district court. This followed a legal suit brought by the pharmaceutical company GlaxoSmithKline. The USPTO appealed that district court decision, and as a result many of their proposals have been found to be valid after all. However, at least one of the changes was held to conflict with the US Patent Act, and others were referred back to the lower court to decide whether they are impermissible for other reasons.
The USPTO have announced that none of the original rules will be implemented for the time being. In the longer term, they may choose to reinstate those rules that the appeal court found acceptable. In the short term however, they may well prefer the old rules: the new ones had the potential to reduce the Office's revenue on so-called "continuation" applications, and in these difficult financial times no one likes to see an income cut.
We will continue to update this page as we hear more on the subject from the USA.
(Item updated 6/09; archived 9/09)
"Third party observations" on PCT applications?
The PCT authorities have been discussing developments to the PCT patent filing system. One of the proposals which found support was to allow the filing of "third party observations" on a PCT application before its conversion into separate "national phase" patent applications.
You can file third party observations against someone else's UK or European patent application if you believe it ought not to be granted for some reason. The observations can contain reasoned arguments, and/or copies of earlier published documents which you believe affect the validity of the contested application. They are taken into account when the application is officially examined, and have the potential to affect its progress, perhaps even to cause its rejection. They can therefore be a useful way of attacking someone's patent position, at relatively low cost. Importantly, they can be filed anonymously.
At the moment, you cannot file such observations against someone's PCT application. Instead, you have to wait until they convert it into separate national patent applications and then attack each of those applications individually. The chance to file a single set of observations against the PCT application before it's split up could prove to be a valuable weapon, if the authorities ultimately decide to introduce this change.
(Item added 6/09; archived 9/09)
Higher fees for European patent applications
As of 1 April 2009 some major new fees are payable on European patent applications. These will significantly increase costs for longer applications.
The main changes are:
1. a new €500 fee for each claim after the first 50. (There is also a fee of €200 for claims 16-50.)
2. a new fee of €12 for the 36th and each subsequent page of the patent specification (not including pages making up a sequence listing).
These changes apply not only to European applications filed on or after 1 April but also to PCT ("international") applications which are converted into European ones on or after that date.
If you're converting a PCT application into a European one, you can lower fees by filing a reduced set of claims at the time of conversion. The new claims can be deemed to replace the original set, and excess claims and excess page fees will then depend on the length of the new claim set not the original. Your patent attorney should discuss this with you before the conversion deadline.
Another change which took effect on 1 April is that the country designation fee for a European application became a single fee of €500 for one or more states. The previous fee was €85 per state, with the total being capped at €595 for 7 states or more. Since most applicants designate all 34 European Patent Convention countries, this fee change represents a small reduction in the total fees payable.
If you have any queries concerning the 2009 fee changes, please contact us for more information.
(Item updated 4/09; archived 8/09)
PCT-to-EP conversion: about to get harder
An early warning for PCT patent applicants: the European Patent Office (EPO) are introducing changes in April 2010, which will mean you need to respond earlier to objections raised during the so-called "international phase".
At the moment, a PCT application gets issued with an "international search report" which lists any problems that the search examiner has identified in the application. You can also ask for your PCT application to undergo "international preliminary examination", which again results in a list of deficiencies which you will eventually have to put right before you can be granted a patent. However, you are not obliged to respond to either of these assessments, and most applicants choose to delay doing so until much later on in the patenting process.
Under the new rules, as soon as you convert your PCT application into a European one, you will have to respond to any objections raised in the international search report or during the international preliminary examination. If you don't, your European application will be treated as having been withdrawn.
What this means is that if you're thinking about converting your PCT application into a European, you and your patent attorney will need to consider well in advance how to address any objections raised against it. And this could apply even to PCT applications which you've already filed, not just to those from April 2010 onwards.
Unfortunately the changes will increase the cost of converting a PCT application into a European one, and force many applicants to commit to claim amendments earlier than they would have done under the old rules. You will also have to decide early whether or not to proceed in Europe, to allow time to address any relevant objections. We will try to make the new process as painless as possible for our PCT clients, but please don't hesitate to contact us if you've any concerns about specific patent applications.
(Item added 4/09; archived 8/09)
Restrictions on European "divisional" patent applications
So-called "divisional" patent applications can be useful to keep options open when you're trying to get a European patent application granted.
However, the European Patent Office (EPO) will be changing the rules about divisional applications in April 2010. The new rules will set time limits during which divisional applications must be filed. This could in turn restrict an applicant's tactics for handling his European patent application.
The changes will apply to applications which are already pending by April 2010. We will of course review all of our clients' existing European patent applications and advise on the impact of the changes well before they come into force. If in the meantime you have any queries about your European applications, please don't hesitate to contact us for advice.
(Item updated 4/09; archived 8/09)
Trade mark fee cuts
The cost of trade mark protection in the UK and Europe is falling.
1 May 2009 saw a 40% cut in the official fees for obtaining a Community trade mark registration. The Community Trade Marks Office have achieved this reduction by doing away with the registration fee which previously had to be paid to complete the application process.
Meanwhile the UK Intellectual Property Office (IPO) have started consultations on a package of changes which should see the official fee for an online UK trade mark application being cut by 15%. The opposition fee should be reduced by 50%, making it easier for businesses to defend their trade marks against confusingly similar competitor marks.
Other changes planned by the IPO include the option of a staggered application fee, with half being paid up front and the other half after the application has been examined. This would allow you for instance not to put any further resources into an application if it looked likely to be difficult to get registered.
We'll post more news about the UK fee changes when it comes in but, if you have any queries in the meantime, please contact our trade mark attorney Michael Elliott .
(Item updated 5/09; archived 7/09)
New databases help access available technology
Need to know if you're free to use a patented technology?
The UK Intellectual Property Office has launched two new databases on its website. The first database is for patents which are endorsed for "licences of right", which means that whilst these patents are in force, licences are available to anyone on the technology they cover. The second database covers patents which are no longer in force in the UK and are therefore no longer protected here.
These two databases provide a useful tool for businesses, enabling them to access available technology more easily.
You can access both the "licences of right" and the "patents not in force" databases from here.
(Item added 2/09; archived 6/09)
2M patent applications, & still going strong
The two millionth European patent application has recently been published. It relates to microbial fuel cells that generate electricity from waste water, and was filed by The Technical University of Denmark.
The European patent system provides a route to protecting an invention across all of the major European territories, starting with a single patent application. It first came into being in 1978 and has since enjoyed increasing support from businesses the world over. During 2007 for example, 141,000 European patent applications were filed, 25% of them by US applicants.
(Item added 3/09; archived 6/09)
Intellectual Property Office launches "IP Healthcheck"
The Intellectual Property Office has launched a new online diagnostic tool to help individuals and small and medium sized businesses to identify, protect and commercially exploit their intellectual property.
This free tool takes you through a series of questions and provides a report with recommended action points. It is particularly useful in highlighting issues for which professional advice should be sought.
IP Healthcheck can be found at www.ipo.gov.uk/iphealthcheck.
(Item added 2/09; archived 6/09)
Take the patent highway!
Due to agreements reached between several of the world's patent offices, it should now be possible to speed up the process of getting a patent application examined in certain countries. If your US patent has already been granted for instance, the European Patent Office (EPO) will in certain circumstances "fast-track" your corresponding European patent application so long as you are prepared to bring your European claims into line with your granted US ones. Similarly, the US Patent Office will accelerate processing of your US application (provided they have not already started to examine it) if its claims are in line with those you've already had granted by the EPO. The same applies if you amend your US claims in line with claims already granted in a corresponding UK patent.
This scheme, known as the "patent prosecution highway", is still in its trial phase and we do not yet know how well it will work or what advantages (or indeed disadvantages) it might bring in practice. However, if you have a family of patent applications in several countries, and would like to get them granted quickly, the patent highway is certainly worth considering. Please ask us for more information.
Meanwhile, taking inspiration from the patent prosecution highway, the Taiwanese Patent Office has also now announced that it will accelerate prosecution of a Taiwanese patent application if a corresponding application has been allowed in any other country.
(Item updated 1/09; archived 5/09)
New PCT publication codes
If you do your own patent searching, you will probably be familiar with the "WO" publications which emerge from the World Intellectual Property Organization (WIPO). These are published "PCT" patent applications, used by many applicants as a route to international-scale patent protection.
On 1 January 2009 WIPO started using a new set of publication codes to help distinguish between different types of patent publication. In particular, where a PCT application is re-published after an amendment or correction, or with supplementary material, it will now receive one of the new publication codes so as to help searchers identify the documents they find.
For more information about the new codes, visit the WIPO web site.
(Item updated 1/09; archived 5/09)
Stopping biopiracy
The European Patent Office (EPO) has announced that it has been granted access to the "Traditional Knowledge Digital Library" by the Indian government. This online database contains information on traditional knowledge, for example ayurvedic cures and herbal remedies.
This traditional knowledge can be relevant to patentability, and EPO examiners will now have access to this resource when assessing European patent applications. The aim of this project is to prevent "biopiracy" resulting from unjustified patents being granted on traditional knowledge. The EPO already has access to the Chinese Patent Office's database on traditional Chinese medicines.
(Item added 2/09; archived 5/09)
UK comes seventh for 2008 PCT filings
The World Intellectual Property Organization has released statistics for PCT (international) patent filings in 2008. The UK comes seventh in the ranking of countries filing PCT patent applications, following the USA, Japan, Germany, South Korea, France and China. Despite the global economic slowdown, there was a 2.4% increase in PCT patent filings compared with 2007.
(Item added 2/09; archived 5/09)
Stem cell claim rejected by European Patent Office
The European Patent Office (EPO) has rejected a patent application relating to the use of human embryonic stem cells, although this does not mean that stem cells per se must inevitably be unpatentable.
After a long wait, the EPO's Enlarged Board of Appeal (EBA) finally issued its decision G2/06 in late 2008. This decision followed a refusal of an application filed in 1996 by the Wisconsin Alumni Research Foundation (WARF).
According to Article 53(a) of the European Patent Convention, an invention is excluded from patentability if its commercial exploitation "would be contrary to 'ordre public' or morality". This is further clarified in Rule 28 to include inventions which concern "uses of human embryos for industrial or commercial purposes".
The main claim of WARF's application related to a cell culture "comprising primate embryonic stem cells", the cells having certain characteristics. At the time of filing the application, the only way to obtain such cells required the use and destruction of an embryo. Since the claim encompassed human embryonic stem cells, carrying out the invention could have involved the destruction of a human embryo.
The EBA therefore decided that, in this case, the cell culture itself must be excluded from patentability. The Board held that it made no difference that, after the filing date of WARF's patent application, other means of obtaining such cells had become available. In arriving at this conclusion, the Board took the view that the "inventions" referred to in Article 53(a) and Rule 28 are not restricted to what is claimed, but rather, require consideration of the "technical teaching of the application as a whole as to how the invention is to be performed."
The EBA has made it clear that its decision is restricted to the particular facts of the case and is not, therefore, an indication that stem cells per se are unpatentable under the European Patent Convention.
If you have any queries regarding this decision and its implications, please contact Rhiannon Turner .
(Item added 12/08; archived 4/09)
New "supplementary" international searches
As of 1 January 2009, you can now request "supplementary international searches" on your international ("PCT") patent applications. These 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 relevant PCT application. Their purpose is to extend the main search to cover literature in different languages. Thus, whilst the European Patent Office (EPO) for example can provide an excellent search covering documents in French, German and English, their coverage of documents printed only in Russian or Japanese may be less comprehensive, and a supplementary international search could be used to enhance an EPO search.
The cost and scope of a supplementary international search will vary depending on the searching authority which carries it out. You can request more than one if you wish, but you have to do so fairly early in the PCT procedure, within 19 months of your earliest priority date. However, if you are aware that there is a lot of "prior art" in your field in a particular country, it may be worthwhile considering one or more additional searches, in particular for important cases, to avoid the risk of relevant documents being missed or being found only later in the patenting procedure.
So far, the Russian and Swedish Patent Offices and the Nordic Patent Institute are offering supplementary international searches. The searches are therefore likely to be worthwhile if you suspect that there are relevant publications in Russian, Swedish, Norwegian, Danish, Finnish or Icelandic. Further searching authorities are expected to be able to offer the service by 2010. Please ask your attorney if you think that it may be appropriate for any of your patent applications.
(Item added 12/08; archived 4/09)
Burden of proof in a European patent opposition
When a European patent is opposed, it is the opponents' responsibility to prove their grounds of attack. For example, if they oppose on the ground that the patented invention is disclosed in insufficient detail, they must provide evidence to show that the invention cannot be reproduced. If they cite new "prior art", they must establish conclusively that it was publicly available at the relevant time, as well as its exact content.
Two recent European Patent Office appeal decisions confirm this point. In T980/03, the opponents alleged that carrying out the teachings of a prior art document would necessarily yield the claimed product. However the Appeal Board refused to accept this argument because the opponents had not supplied experimental evidence to confirm their allegation.
In T1011/04, the opponents submitted a test report which purported to show that repeating the examples in the patent did not lead to the claimed technical effect. In this case, the Appeal Board held that the opponents' tests had not fairly replicated the patent examples and had used atypical operating conditions. Again the opponents' arguments were rejected, in this case on the basis of inadequate evidence as opposed to no evidence at all.
If you are considering opposing a European patent, we recommend that you consider well in advance whether any of your opposition grounds need to be substantiated with experimental evidence. When conducting comparative experiments, or experiments to do with the reproducibility of a patented invention, take care to follow as closely as possible the examples in the patent and/or the relevant prior art. We can advise as to what might be suitable evidence in any given case.
(Item added 11/08; archived 3/09)
Changes to UK Trade Mark Rules
On 1 October 2008, a number of changes were made to the UK Trade Marks Rules. These are the regulations which govern how UK trade mark applications and registrations are processed.
Many of these changes will only be relevant if you are involved in the procedures concerned, but two of them have the potential to affect all trade mark owners.
The key change is that the fixed period for opposing a UK trade mark application has been reduced from three months to two. A further month is available on request, free of charge, for anyone considering lodging an opposition. However, you have to be aware that a trade mark application exists before you can consider opposing it. This reduction in the time allowed for registering your opposition – or your intention to oppose – thus makes it more important than ever to set up a trade mark watch, to alert you to third party applications for potentially conflicting trade marks.
Please contact us if you would like to set up a watch on your trade mark(s).
Another change is that it is now possible to have a legal decision about your UK trade mark set aside, if you can show that you were unaware of an attack on the trade mark because the necessary documents failed to reach you. This is unlikely to apply however in cases of carelessness, and it will still be important for trade mark owners to ensure that their contact details are kept up-to-date at the Trade Marks Registry. It is often wise to appoint a trade mark attorney as an official "address for service" for all trade mark-related correspondence, to ensure that relevant documents reach you promptly.
Please remember to tell us of any changes of name, address or ownership affecting your trade marks. If you would like us to become your official address for service, please also let us know.
For more information about the changes referred to here, or about the other changes which came into effect on 1 October, please contact Michael Elliott .
(Item updated 11/08; archived 3/09)
Register my trade mark? Why bother?
Why go to the effort and expense of registering your trade mark? Why not rely on the "unregistered" rights which you can build up simply by using the mark?
Here's a quick reminder of the advantages of trade mark registration.
1. A trade mark registration is the surest and quickest way to protect a trade mark. You can obtain a registration even if you have not started using your trade mark (though you will have to use the mark to keep the registration valid) and the registration will give you protection throughout the country right from the start.
2. A trade mark registration gives you an exclusive right to use your trade mark and gives you the right to take action against anyone who tries to cash in on your good reputation by using your trade mark without permission. Unregistered rights built up through use of a trade mark can be difficult and expensive to prove and may be quite localised.
3. Trade marks can be registered in most countries around the world but many of those countries give little or no recognition to unregistered trade marks, granting rights only on a first-to-register basis.
4. A trade mark registration gives you the means to prevent someone else from registering an identical or similar trade mark. A registration is proof in itself that you own the trade mark but you would have to go to the expense of proving your rights if you relied on an unregistered trade mark.
A trade mark can be a valuable asset. If you have not yet taken the precaution of registering yours, or if you have a new trade mark which you need to protect, now is the time to take action. Please contact Michael Elliott for more information.
(Item added 11/08; archived 3/09)
Avoid fee increases - file your European applications early!
Several major changes to the fees payable on European patent applications came into effect in April 2008. We now face some further changes, which will apply to European applications filed on or after 1 April 2009 and also to PCT ("international") applications which are converted into European ones on or after that date.
The main changes are:
1. a new €500 fee for each claim after the first 50. (The current fee of €200 for claims 16-50 will continue to apply.)
2. a new fee of €12 for the 36th and each subsequent page of the patent specification (not including pages making up a sequence listing).
If you have a PCT application which is still in the international phase, particularly if it has a large specification or a high number of claims, you may wish to consider converting it into a European application before 1 April 2009 in order to avoid these new charges.
Even after 1 April, you will be able to lower fees by filing a reduced set of claims when you convert your PCT application into a European one. The new claims can be deemed to replace the original set, and excess claims and excess page fees will then depend on the length of the new claim set not the original.
Another change taking effect on 1 April is that the country designation fee for a European application will become a single fee of €500 for one or more states. The current fee is €85 per state, with the total being capped at €595 for 7 states or more. Since most applicants designate all 34 European Patent Convention countries, this fee change represents a small reduction in the total fees payable.
If you have any queries concerning the 2009 fee changes, please contact us for more information.
(Item updated 2/09; archived 4/09)
Speculative medical uses not patentable
A European patent relating to a family of novel proteins has been revoked by the UK Patents Court because it disclosed only speculative uses for the proteins and no data to prove their efficacy for specific medical purposes.
The proteins had been discovered using bioinformatics techniques, ie, by interrogating the genome database to identify proteins which are "similar" to those having a known function. They had subsequently been found to be good therapeutic targets and were already being sold as research tools, but this was held to be irrelevant because at the date the patent was applied for, its claims were purely speculative and made "no contribution to the art".
The case concerned was Eli Lilly & Co v Human Genome Sciences Inc. It confirms again that if a novel biomolecule is to be patented for pharmaceutical use, data are needed to prove its utility for specific therapeutic or diagnostic purposes.
(Item added 11/08; archived 2/09)
UK courts more lenient on "obvious to try"
The UK's highest court, the House of Lords, has recently shown reluctance to rule that an invention is unpatentable on the ground that it would have been "obvious to try". In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc the judges pointed out that an invention can only be obvious to try if there was at the time a "fair expectation of success". In this case, the known toxicity of the drug taxol was deemed likely to have discouraged people from attempting to load it into a stent, as claimed in Angiotech's patent, and the patent was therefore upheld. This overturned a previous Court of Appeal decision to the contrary.
The House of Lords also took the view that the in vitro assay data in the patent were sufficient to establish the utility of taxol-loaded stents as "plausible". They did not believe that further evidence, for example data showing in vivo efficacy, was necessary to establish patentability.
(Item added 11/08; archived 2/09)
European patent protection for "prodrugs"
A "prodrug" is a chemically protected form of a pharmaceutical active, which after administration breaks down to form the active itself. A drug may be used in the form of a prodrug to reduce its toxicity or other undesired side effects, or to delay or extend or target its release in the body.
Because the preparation and use of prodrugs is fairly common within the pharmaceutical industry, the European Patent Office (EPO) will often regard claims to prodrugs as lacking the necessary "inventive step" to be patentable.
In a recent case T49/06, the Research Triangle Institute attempted to protect a prodrug-based invention by claiming "a method for reducing the toxicity" of a drug, and "a method for extending the in vivo systemic lifetime" of a drug. Both these claims were refused by the EPO Appeal Board, on the ground that they effectively embraced methods of medical treatment which are excluded from patent protection under the European Patent Convention.
It appears that pharmaceutical companies could still face problems trying to obtain European patent protection for prodrugs.
(Item added 11/08; archived 2/09)
Designs go international
When the European Union joined the Hague Agreement at the beginning of 2008, UK-based designers gained access to the "International" design registration system for the first time. The UK itself has never signed up to the agreement.
The "International" system allows designs to be protected in a number of countries by means of a single application filed at the World Intellectual Property Organization (WIPO) in Geneva. The application can be filed in English, and requires only one set of filing fees. Subsequent registration renewal fees can also be paid centrally at WIPO.
It is probably fair to say that International design registrations have relatively limited appeal because, apart from certain individual EU countries and the EU itself (which can in any case be covered by a "Community Design"), the list of countries available to a UK-based applicant has up to now been quite sparse. However, the list of available countries is growing and now includes Croatia, Iceland, Switzerland and Turkey (which are not yet members of the EU); several Eastern European countries including Albania, Macedonia and the Ukraine; Singapore; Syria; and a number of African countries including Egypt, Ghana and a bloc of sixteen French-speaking states.
The time is coming when, depending on your target markets or intended manufacturing sites, an International design registration may be worth thinking about as a cost-effective alternative to separate national design applications.
Please contact Michael Elliott or Rhiannon Turner if you would like more information about International design registrations.
(Item added 10/08; archived 1/09)
