Kate Széll has joined the London trade mark team as a partner, bringing with her Julia McFarlane, a qualified solicitor, as her assistant.
Kate brings with her a portfolio of clients which will, amongst other things, further strengthen Venner Shipley’s links with America. She leaves Lloyd Wise, where she was a partner and joins the Venner Shipley trade mark team alongside partners Alan Venner and Ed Harrison and associates Rachel Harrison and Ed Carstairs.
‘I am delighted to be joining a progressive, growing firm with a well-established trade mark practice where there are partners dedicated to trade mark work. I particularly like Venner Shipley’s simple attorney-based approach,’ she says, ‘which will allow me to focus on clients and be more responsive to their needs. Venner Shipley also handles trade mark renewals on behalf of its clients, which helps make the management of trade mark portfolios more effective. This is of enormous benefit to clients.’
The firm has also seen recent growth in other areas, with Matthew Handley joining us on the biotechnology side, Kenneth Huang and David Taylor, who specialise in IT and electronics and Paulette Lewis who joins us as renewals manager.
Venner Shipley: new faces
Venner Shipley’s teams in London and Cambridge have been further expanded in recent months:
Kate Széll
Kate Széll joins the London team on 1 November as a partner, specialising in trade marks, designs and copyright.
Kate obtained her MA in Natural Sciences at Cambridge, qualified as a solicitor and as a trade mark attorney, working for leading companies that included Linklaters, D. Young & Co and, latterly, Lloyd Wise, where she was a trade mark partner. In between times, Kate spent some time in France and Spain to perfect her French and Spanish.
Matthew Handley
Matthew Handley joins the London team as an Associate. He specialises in the filing and prosecution of patent applications in the field of pharmaceuticals and biotechnology.
Matthew graduated from Oxford University with a Masters degree in Molecular and Cellular Biochemistry. During his PhD at University College London, he investigated intracellular signalling pathways regulating the morphology and survival of dendritic cells, and developed a novel assay for the quantification of endocytic capacity. Matt subsequently worked as a postdoctoral scientist at the MRC's National Institute for Medical Research, investigating the Nf-kappaB signalling pathway in macrophages using transgenic models.
(Kenneth) Qing Huang
Kenneth joins Venner Shipley, London, as trainee Patent Attorney and is working towards qualification as a UK and European Patent Attorney.
He has a Bachelor’s Degree in Engineering from the University of Shanghai, China with the honour of Excellent Student Scholarship in 2001. He also obtained a Masters Degree in Mechatronics from the University of Bath in 2006.
Kenneth spent a number of years working in the R&D department of an IT conglomerate in China, where he was a senior software designer with responsibility for embedded system design, integration and project maintenance, such as Set-Top Box and multi-media systems.
Kenneth is fluent in Mandarin and English and also has a good understanding of German and Japanese.
David Taylor
David Taylor has joined the Cambridge team as an Associate and specialises in the filing and prosecuting patent applications in the field of electronics and computer software.
David graduated from Durham University with an honours degree in Natural Sciences. He has a PhD in Physics, also from Durham, which involved research into the physical properties of superconducting materials used for high magnetic field applications. He has worked as a postdoctoral fellow at research institutes in North America and Europe developing nano-engineered electrical materials.
Paulette Lewis
Paulette Lewis has recently joined the firm as renewals manager. She graduated from South Bank University London with an Honours Degree in Law, after which she completed a Post Graduate Diploma in Law at the College of Law in London before gaining many years experience in handling all UK and foreign patent, design and trade mark renewals. Many firms use external renewal request agencies, whereas we have our own in-house system which is integrated into our office computer network to provide a reliable, comprehensive system that handles renewals worldwide. The service is highly flexible and capable of responding to individual requirements.
Julia McFarlane
Julia graduated from Durham University with an honours degree in law. After qualification as a solicitor, Julia then worked for 3i plc advising on corporate transactions and investments, before moving to Freshfields where she provided professional support to the banking and finance teams. She has a Masters Degree in Research in Law from Birkbeck College, University of London and a Post Graduate Certificate in Intellectual Property Law from Brunel University. Julia specialises in the filing and prosecution of uk, ec and International trade mark applications.
French Senate approves London Agreement: European patent grant costs to plummet
The French Senate voted on 9 October 2007 by 280 votes to 33 in favour of the London Agreement. Consequently, all legal barriers have now been overcome and the London Agreement will come into effect four months after France deposits its instrument of ratification with the European Patent Office (EPO); implementation is expected in the first half of 2008.
Once implemented, it will no longer be necessary to file a translation of the specification when validating a European patent in many European countries. The Agreement will affect all patents granted after the date of enactment in the participating countries. The reduction in the cost of validating a European patent will be enormous.
As users of the European patent system will be aware, although patents are granted centrally by the EPO, for a granted European patent to have effect in a given country, the entire document needs to be translated into the official language of that country. To validate in all of the 32 available countries, the specification is needed to be translated into 22 different languages. Due to the high cost of translation, the average cost of a European patent is said currently to be three times the cost in the US and twice the cost in Japan.
In an attempt to reduce post-grant translation costs, the London Agreement was concluded in October 2000, proposing to remove the obligation of Article 65(1) EPC to file a translation of the text of the patent in each country. The Agreement needed to be ratified by the three main European countries, but France held out for many years. Once France ratifies, the Agreement will be in effect in France, Germany, UK, Netherlands, Switzerland, Liechtenstein, Monaco, Slovenia, Iceland and Latvia. The agreement has been approved by Denmark and Sweden, and these countries are expected to ratify shortly. The costs of validating a European patent in a country which has ratified the London Agreement will fall by around 60-80%, depending on the country and the length of the specification. Total grant costs are expected to fall by around 50-70% depending on the length of the specification and the countries in which validation occurs.
Applicants should consider taking steps to defer patent grant until after the agreement comes into force, wherever possible. Our attorneys can advise how this might be achieved.
In terms of the effect of the Agreement on UK validation proceedings, there will be no requirement for applications granted in French or German to be translated into English upon grant. However, during court proceedings, or in proceedings before the Comptroller of the Intellectual Property Office, an English translation may be required.
Matthew Handley
World’s most advanced Electron Beam Lithography System fully protected by Venner Shipley
An electron beam lithography system, designed in Cambridge by NanoBeam Ltd (NBL), offers a leap forward in performance, boosting throughput by up to 500%, cutting operating costs by half, whilst matching the resolution of the best on the market. Their nB3 system is about half the cost, and size, of most of the competition and offers a host of other features and advantages.
Not surprisingly, such a major advance needs to be fully protected by patents, worldwide, and the company turned to Venner Shipley’s local office for help.
Traditionally, electron beam lithography systems used in semi-conductor and nanotechnology industries are a significant investment, requiring large and costly clean rooms. The new nB3 system, by contrast, halves the size of clean room required, uses 90% less power and so needs less cooling, has excellent resistance to stray fields and, because of its all-metal construction, is more friendly to clean room conditions
The nB3 is a round-beam, vector-scan system with a unique auto-loading system, using a step-and-repeat method for nano-patterning and its innovative design of electron optics and automation can achieve up to five times the throughput compared with other machines, combined with outstanding reliability, low power consumption and an estimated 95% uptime in operation.
The short column of the nB3 is protected by four patent applications, covering the beam blanker electron gun, the substrate robot handler, the efficient mirror assembly interferometer laser system and the active tracking vibration compensation system. The nB3 guarantees metal-lift-off feature sizes of 20nm and can achieve 10nm scales, with a positioning accuracy of 1nm (about one thousandth of the width of a human hair!).
‘Dr Pawel Piotrowicz at Venner Shipley made the whole patent process very positive,’ says Chief Executive Officer Dr Tao Zhang, ‘because he is qualified in this field himself. Pav wrote all of the specifications and it went through very smoothly he was a tower of strength! As a start-up company, costs were a major consideration and he helped us to spread these through the process.’
‘There is increasing awareness of the importance of protecting intellectual property, particularly in the emerging new technologies and this is where we can help,’ says partner Pawel Piotrowicz.
Cambridge One year on
It is now over 12 months since Venner Shipley Cambridge first opened its doors on the Cambridge Business Park. And what an eventful year it has been!
From the big opening celebration held at the Fitzwilliam Museum last November, with guest speaker Sir Hugh Laddie, the signing up of new clients, the sponsorships of local events and the expansion of the team, this last year has been a busy one for the Cambridge team, headed up by Dr Pawel Piotrowicz.
‘If we had any doubts about the need for a Cambridge office, these were soon dispelled,’ he says. ‘Our existing clients really appreciate our greater accessibility and now we have many more clients who look to us for local support.’
Venner Shipley Cambridge has attracted many new clients from start-ups to multi-million pound companies. The expanding client base has resulted in the recruitment of David Taylor, who joined in August as an Associate and who specialises in filing and prosecuting patent applications in the field of electronics and computer software.
The team, including Dr Allie Elend and Dr Isla Furlong, has been hard at work ‘networking’ with the local industrial and academic community, through the sponsorship of events and by providing support in the most practical way by running workshops and giving free IP advice and consultancy. Venner Shipley was a ‘silver sponsor’ of the recent Cambridge Enterprise’s Celebration of Biotechnology, presented workshops at the University’s Centre for Entrepreneurial Learning Summer School (Ignite) and has supported two Eastern Region Biotech Initiative functions.
And then, of course, there’s Pawel Piotrowicz’s radio career! Pav was interviewed on BBC Radio Cambridge at the time of the opening, last autumn, so when it came to World Intellectual Property Day in April, he was asked to appear as a guest on Sue Dougan’s afternoon radio show, where he fielded questions from listeners interested in all aspects of patent protection and copyright.
Phoney pharmaceuticals
A review of the trade in counterfeit medicines, and some associated Intellectual Property enforcement issues.
‘A counterfeit medicine is one which is deliberately and fraudulently mislabeled with respect to identity and/or source. Counterfeiting can apply to both branded and generic products and counterfeit products may include products with the correct ingredients or with the wrong ingredients, without active ingredients, with insufficient active ingredients or with fake packaging.’
World Health Organisation definition.
Scale of the Problem
Counterfeit medicines are big business, both within the UK and on a worldwide basis. As with any black market activity, it is impossible to produce an accurate picture of the problem, but the numbers that are being suggested are terrifying. A recent estimate by the US Centre for Medicines in the Public Interest calculated that the value of worldwide sales in counterfeit drugs will reach US$ 75 billion by 2010, if the trade continues to expand at current rates.
The World Health Organisation (who) has historically reckoned that globally around 10% of all medicines are counterfeit. However, who has recently moved to a more geographically focused approach which suggests that in the more developed countries, the amount is more likely to be around 1% of the total market in medicines. However, the new approach highlights the fact that in less developed countries, the amount of counterfeit medicines is as high as 30% of the countries’ entire trade in medicines. In relation to internet sales of drugs worldwide, the proportion of counterfeit products could be as high as 50%.
Human and Social Costs
The potential for damage to the individual is obvious. One of the worst counterfeit medicine cases encountered so far resulted in the deaths of around 2500 people in Niger in 1995, where around 50,000 people were inoculated with fake vaccines to treat meningitis. The vaccines had been supplied in good faith, but were sophisticated fakes.
Between 1995 and 1998 it is estimated that 119 children and infants died in Haiti and India after being treated with a cough syrup that contained diethylene glycol (a toxin also present in antifreeze).
On a larger scale, these individual cases can bring about a general distrust in drug based medicine. This is especially likely in less developed countries, where the potential for benefit to human health through use of such medicines is proportionately greater.
The nature of the counterfeit business (in whatever area) means that it is also commonly used by criminal gangs as a means of producing income, and also laundering money from other activities. A report from Interpol in 2003 also claimed that counterfeiting was becoming the preferred method of fundraising for terrorist groups and it is reckoned that a large percentage of the economy of North Korea is based on the export of counterfeit products (of all types).
If we also consider the more general social costs, the business of the medicine manufacturer is also being affected. Not only is the manufacturer losing out on income, but the reputation of the manufacturer and of the affected trade marks, is being severely damaged. Ultimately, this can result in economic damage that impairs continued investment in the development of new medicines and, in extreme cases, in the loss of jobs.
The Remedies
Technological Advances
Manufacturers continue to innovate in making it harder to copy genuine medicines. Technology is now being used to insert rfid devices into medicines, enabling them to be tracked and authenticated at any point. The longstanding concept of a watermark is evolving into the form of medicine ‘dna’, where lasers are used to pick up a unique infrared radiation emitted from the genuine medicines. The unique nature of the infrared frequencies can be used to distinguish genuine products from fakes.
However, such technological solutions only assist in countries where the technology exists and is affordable.
Distributorship Improvements
In the uk, following a recall of 120,000 packs of suspect Lipitor (used for lowering cholesterol) Pfizer Inc has taken the decision to transfer the distribution of their medicines to one company, in an attempt to cut out the number of companies involved in the movement of their medicines. Pfizer’s own research estimated that as many as 20 to 30 different companies or individuals could be involved in handling the medicines between them leaving the manufacturing plant and being dispensed to the patient. Pfizer claims that the change was made to tighten the distribution chain and thereby reduce the chances of counterfeit products being able to enter the cycle.
Legal Enforcement
In most developed (and many undeveloped) countries, the legal tools exist that give the relevant authorities and the manufacturers the ability to take criminal legal action against not just those involved in producing counterfeit medicines, but also those who knowingly import, distribute, store or sell such products.
Many of the legal tools exist not as a result of general consumer protection laws, but increasingly because of the laws that protect Intellectual Property, and in particular Trade Marks
Within Europe there is a generally harmonised approach to enforcement of registered trade marks, and legal changes over the last 10 to 15 years have produced an effective range of monitoring enforcement actions including:
1. An EU wide monitoring service provided by customs authorities that watches for counterfeit products, following notification from the trade mark owner. There are also similar national monitoring schemes.
2. National authorities responsible for general consumer protection have the power to bring criminal proceedings on the basis of trade mark laws. In the uk, the Trading Standards Office (TSO) has this function.
3. National authorities responsible for regulating medicines also have the ability to bring criminal proceedings under trade mark laws. In the uk, the Medicines and Healthcare products Regulatory Agency (MHRA) has responsibility for this.
The legal backbone of this body of enforcement is found within the harmonised trade mark laws that apply around the eu. The laws all contain fairly strict sections which state that counterfeiting (and dealing in counterfeit products) is a criminal offence and which also specify that the local authorities have the power to enforce those sections of the laws. In the uk the relevant section in the Act actually obliges the authorities to act if counterfeiting is discovered.
The TSO has significant powers to deal with counterfeiters, and in many cases their authority to enter, search and seize property is similar to that of the police. In some more extreme counterfeiting cases, the police will also be directly involved in a raid on a suspected counterfeiter.
Manufacturers also have additional civil legal rights through the enforcement of Intellectual Property and in particular the infringement of registered trade marks. However in counterfeit cases such civil action is rarely appropriate, as it too slow to be effective in stopping most counterfeit activities quickly, and is expensive. However, manufacturers should, and do, actively assist the tso and mhra in taking criminal action.
Inherent within all of these legal systems is the fact that to take advantage of the majority of both civil and criminal legal actions, the trade mark for the counterfeited product must be a registered trade mark.
Most manufacturers of medicines have a sophisticated and active programme of trade mark registration, but it is important that this is maintained and kept up to date.
In a recent development, Interpol have announced that they are establishing a global database of ip crime, which would be available to law enforcement authorities, and which would feature information provided by other law enforcement authorities as well as manufacturers. It is intended to give an international framework to allow a swift and standardised means of reporting and dispersal of information relating to ip crime. In relation to counterfeit medicines, this resource may be particularly useful in identifying trends in the types of medicines being copied, and perhaps enabling the geographical source of the products to be discovered.
Education
There has been a recent flurry of schemes intended to promote awareness of the problem, and to educate those involved in how to deal with it. This ranges from advice to pharmacists provided by the mhra, advice to wholesalers provided by the British Association of Pharmaceutical Wholesalers (BAPW), through to international advice to national authorities by the International Medical Products Anti-counterfeiting Taskforce (IMPACT), which has recently been established by the who.
This need to educate has to be balanced with the need to avoid an unnecessary public distrust in the safety of all medicines. Indeed, it has been claimed, probably unfairly, that large pharmaceutical companies have purposefully not adopted a policy of publicising the problem precisely to avoid the negative implications of such an admission. However it is undeniable that education and public awareness will be a major factor in minimising the damage caused by counterfeit medicines.
The Future
Counterfeit medicines exist in a slightly separate sphere from other counterfeit products such as the entertainment and fashion industries, in that the reasons for stopping the counterfeiting are not simply legal or economic.
From a public health perspective the implications of failure to deal with the problem are obviously significantly more profound, not purely the death or damage to the health of an individual, but also the prospect of a general breakdown in trust between the ultimate consumer and those who work within the pharmaceutical industry and those who dispense and recommend those pharmaceutical treatments.
The pressure to get it right is great, and the onus lies firmly on the manufacturers and government bodies to make it as difficult as possible for counterfeiters to produce their goods in the first place and even more difficult to get those goods into the distribution and sales channels. It is perhaps unexpected to many that in most cases the legal tools for dealing with the problem stem from the seemingly obscure laws dealing with trade marks, but this is merely a return to the basic principle that a trade mark’s main purpose is to guarantee a known quality and indicate a known origin. Whilst the trade mark laws have developed in sophistication to deal with an ever changing market, the fundamental principle of consumer protection remains constant.
Ed Harrison
Wife’s back-breaking work with a shovel was an inspiration to lifting-device inventor
When retired engineer Graham Renny decided that his invention had international market potential, he succeeded in getting it pushed through the patent system in less than a year. It’s now selling well and, armed with his patents, he can see off any copycat products that may appear.
Inspiration came to Graham Renny when he noticed how hard his wife, Susan, was having to work to shovel up horse manure in the paddock. “Clearing up after horses can be back-breaking work” he says “so I set my mind to thinking about what I could do to make the job easier. After a few hours with some bits of wood and metal in the workshop, I came up with a working prototype of a device that can pick up and lift anything like manure, leaves or general garden rubbish, without the user having to bend down. It will make life easier for millions of people who enjoy gardening or keeping animals, but who want to avoid getting backache.”
As most inventors will confirm, the initial idea was the easy bit. The real challenges lie in coming up with a detailed design that can be economically manufactured, finding the funds to take it through the prototype stage, marketing the product and, if it is successful, fending off the copycats.
Graham and Susan Rennys’ sons, Bruce and Alex, saw the invention’s market potential and sought the services of a patent attorney in the person of Paul Derry at Venner Shipley, who had previously acted for the electronics company for which they both work.
“Although I’ve got an engineering background,” says Graham Renny, “I had never patented anything before, and the world of marketing and product development was completely new to me. Paul Derry was very helpful in explaining online patent databases and guided us through the complexities of the different systems in the UK, Europe and the USA.”
Graham and Susan presented Paul Derry with market research that showed huge international market potential for the Grab-O-Saurus®. Paul prepared a full patent specification and submitted it to the UK Intellectual Property Office (IPO) with a special request for the application to be given accelerated status.
Venner Shipley submitted the full UK patent specification in April 2006 and the patent was granted just 11 months later.
According to Paul Derry, Graham Renny’s status as a non-corporate applicant/inventor was an important factor in getting the patent application through the system so quickly. “Small companies and individuals can be more vulnerable than big companies when it comes to possible illicit copying of their inventions,” Paul Derry explains. “The UK IPO will take this into account and accelerate applications that meet certain criteria. What was particularly satisfying in the case of the Grab-O-Saurus® was that the IPO examiners came up with some examples of superficially similar prior inventions, but we were able to demonstrate that the Grab-O-Saurus® was sufficiently different and innovative to warrant a patent in its own right. Without that protection, it would be very difficult indeed to fend off any copycat imitations.”
Graham Renny’s US patent application went through the system at a similarly high speed, and was allowed in March 2007, “the fastest US patent I’ve ever handled”, says Paul Derry. “There is no urgent need for granted patent protection in continental Europe, so the European patent application is progressing conventionally, allowing examination and grant costs to be deferred.” Paul’s colleague Ed Harrison, a registered trade mark attorney, managed to get Grab-O-Saurus® registered as a European Community Trade Mark in just over 12 months, and the equivalent US trade mark is expected to be registered in the near future.
Graham and Susan also approached their regional development agency, Advantage West Midlands, who put them in touch with Innovations Network, an organisation set up to support and encourage innovation, who encouraged them to apply for grants and support available to inventors and small businesses. As a result, they have had about £5,000 worth of computer-aided design services from Wolverhampton University, a grant of £15,000 from Innovations Network and a further £14,000 from the Prograta fund.
“It has cost around £50,000 to improve the design, get patent protection and build prototypes”, Susan Renny explains. “As we are both retired, we would have found it difficult to raise that sort of money without grants and help in kind. I think it was a combination of the market research showing the product’s big potential market, and the fact that we had patent protection, that persuaded the University and the RDA to support us.”
Advantage West Midlands also helped Graham and Susan to find a UK-based plastics company to develop the prototype and manufacture it: MPC Plastics, of Redditch.
The Grab-O-Saurus® works on the same principle as eagles’ claws, with opposing paddles on long handles. One handle has a row of stub-ended teeth which target the waste matter for collection as the sister paddle clamps it into position. It can then easily be lifted and released wherever the user wishes, in one easy movement without having to bend. The finished device is made from lightweight, durable polypropylene, which is easy to wipe clean.
The ‘Hard Sell’ Domain Name Scams
A new variation of a domain name scam has appeared in the UK, and which is proving to be extremely convincing. Ed Harrison, a trade mark attorney at Venner Shipley LLP, has some advice and comments that may be helpful in avoiding panic and possibly paying out money unnecessarily.
The scam takes the following form:
1) A company (the ‘owner’) will be contacted by telephone, by a caller claiming to be to be from a firm of domain name registration agents.
2) The caller will state they have had a ‘client’ instruct them to register a series of domain names that are identical or very similar to the owner’s name or trade mark.
3) The caller will say that they had concerns about this instruction, as they have made some enquires, and they feel that the client is not the rightful owner of the domain names, and that the owners should be given first refusal on the domain names
4) The caller will state that there is only a limited period of time before they must release the domain names to their client. They will generally offer to register the domain names for the owner at an inflated price.
The reason that this whole thing is a scam (and not just a very commendable service), is that, in reality, no one has actually instructed the caller to register the domain names. The caller is using the threat of possibly losing a domain name to a competitor or a cyber squatter, in order to generate money.
There is the added possibility that the caller is not even a genuine registration agent, in which case any money given to them may simply disappear, and the owner will not even have any domain names as some consolation.
Ed Harrison comments that: ‘the caller is truly convincing, and has a smooth response to every question or doubt that may be raised.’ He continues, ‘For example, when I questioned a caller from one company, who had a known history of this sort of scam, it was claimed that I had mistaken them for another company of the same name, and that legal action was being taken against the other company.’ As a trade mark attorney, Ed was able to find out very quickly that no court proceedings had been issued, and the whole story quickly collapsed.
In a recent case for a US corporation, Ed was contacted urgently to advise on such a situation. Within 24 hours, he was able to confirm that the approach was a scam, and had also co-ordinated with both the Office of Fair Trading and Trading Standards to see if action could be taken against the company. The offending company, Profile Business Services, is now under investigation by Trading Standards.
A spokesman for the US company commented, ‘We take the protection of our trade mark very seriously. When we received a phone call advising us that a number of similar domain names were being registered in the UK, which has potentially serious implications for us, we immediately contacted Ed Harrison at Venner Shipley LLP to advise. Fortunately he was able to swiftly confirm that there was no need to panic, and we hope that the UK authorities will act as quickly in taking action to stop this scam.’
Ed’s final tip is, ‘Be sceptical of someone you don’t know, offering to do something beyond the call of duty, and wanting money for doing it. Do some investigating! Sometimes just a quick search of the internet will reveal that the company that has contacted you has a history of this sort of thing.’
In essence, in the murky world of domain name registrations, be very alert, and if you have doubts or questions, contact your existing ISP or your trade mark attorney.
Ed Harrison
The EC joins International Design System
It has recently been announced that the European Community has acceded to the Geneva Act of the Hague Agreement. The Hague Agreement permits design protection to be obtained in participating countries through a single application, at a relatively low cost. Moreover, such design protection can then be maintained through a central renewal system administered by the World Intellectual Property Organisation (WIPO).
From 1 January 2008, it will be possible to obtain a Registered Community Design using this system, which would be effective in the twenty-seven countries of the European Union. In addition, EU nationals and residents will have the option of filing an International Design application in order to obtain protection in non-EU countries that are party to the Hague Agreement.
The European Community is the 47th member of the Geneva Act of the Hague Agreement. As many of the members are other EU states, the option of filing an International design application may be of limited use at the present time. Furthermore, as the requirements for Industrial Designs may vary between countries, there may be instances where it is preferable to maintain the flexibility of individual applications that can be tailored according to local practice.
However, the benefits of using the international route will become more apparent as more countries and regions join the Hague System.
Website news
The divisionals saga the long-awaited result!
In our Newsletter 20, published in October 2006, we reported on some potentially worrying European Patent Office (EPO) Board of Appeal decisions regarding divisional applications. As reported, those decisions led to questions being referred to the Enlarged Board of Appeal (EBoA) for guidance on the correct interpretation of the provisions governing divisional applications, namely Article 76 and Rule 25 EPC.
Since the outcome of the referrals had the potential to affect many applications and granted patents, as well as having an affect on the IP strategy of many companies, it was eagerly awaited by applicants and European Patent Attorneys alike. The wait came to an end on 28 June 2007 when the EBoA gave its answers to the referred questions, along with background analysis of the development of the relevant provisions and some detail as to how divisional applications should be regarded by EPO examiners.
See Isobel Raynes’ analysis on the Venner Shipley website in the ‘News’ section.
Two Tribes Go to War
The Liverpool based 1980s pop group Frankie Goes to Hollywood Trade have recently been embroiled in another legal dispute. The latest round in the fight over the Frankie Goes to Hollywood Trade mark has been won by the four remaining members of the group, Peter Gill, Mark O'Toole, Paul Rutherford and Brain Nash against former singer Holly Johnson.
Read Ed Harrison’s full article on the Venner Shipley ‘News’ page on the website.
Dispute over patent for broccoli with improved anti-cancer properti
In another referral to the EPO's Enlarged Board of Appeal, questions have been posed to establish what is meant by an ‘essentially biological process’ for producing plants.
The European patent in question (EP 1069819) was granted to Plant Bioscience Ltd. back in 2002 and claims methods for producing broccoli plants that have an increased level of an anti-cancer compound, glucosinolate, as well as seeds and plants obtained by these methods.
Want to know more? See Isla Furlong’s article in the ‘News’ section of our website.
Celltech: A Trade Mark that is more than the sum of its parts
The European Court of Justice (ECJ) has upheld a decision of the Court of First Instance (CFI) that a Trade Mark made up of descriptive words could be registered. The CELLTECH Trade Mark covers a number of goods including 'surgical, medical, dental and veterinary apparatus and instruments', as well as several services relating to 'biological, medical and chemical sciences.’ The ECJ found that although the Trade Mark could be understood as meaning 'cell technology', it was not descriptive in relation to the goods and services, and therefore could be registered.
Edmund Harrison & Edward Carstairs provide a detailed analysis on Venner Shipley’s website see the ‘News’ section.
Boehringer: Parallel Imports and the Repackaging of Pharmaceuticals
The ECJ has taken the opportunity to re-examine the conditions that parallel importers must abide by when importing and repackaging the products of other manufacturers.
Swingward Ltd and Doewelhurst Ltd are parallel importers of pharmaceuticals manufactured by Boehringer Ingelheim and others. The pharmaceuticals are imported to the UK where the packaging and information leaflets are altered. Boehringer Ingelheim and others objected to this practice.
Edmund Harrison & Edward Carstairs examine the facts in a detailed article on the website ‘News’ page.
Obviousness in the US and EPO following the Supreme Court opinion in KSR v Teleflex
In its opinion in KSR v Teleflex given on 30 April 2007, the United States Supreme Court has lowered the barrier for challenging a US patent on the grounds of obviousness, which will inevitably have repercussions in the way US patent applications are drafted. In doing so, the US test for obviousness has been brought much closer to the test employed by the EPO.
Read Jan Walaski’s article in our ‘News’ section on the website.
A UK view on technical contribution, post-Aerotel/Macrossan
The recent months have seen the first applications of the most recent test for excluded subject matter, proposed in the Aerotel Ltd. v Telco Holdings Ltd. and others/Macrossan’s application [2006] EWHC Civ 1371. In particular, the first court decision based on this approach has been issued, providing further examples of the application of the test and interesting comments regarding the form and substance of claims to potentially excluded subject matter.
Following the Aerotel/Macrossan decision by the Court of Appeal last October, the UK Intellectual Property Office issued a Practice Notice on the Patentability of Computer Programs and Business Methods.
The Practice Notice stated that the four-step test proposed by the Court of Appeal was to be treated as a definitive statement of how the law is to be applied and that it should rarely be necessary to refer to previous UK case law or Decisions of the European Patent Office Boards of Appeal.
The test can be summarised as follows:
step 1 construe the claim;
step 2 identify the actual contribution;
step 3 ask whether the contribution falls solely within the excluded subject matter; and step 4 check whether the actual or alleged contribution is technical in nature.
The recent months have seen the first applications of the new test by hearing officers in the UKIPO and in court. In the first court decision utilising the new test, Pumfrey J considered a method of distributing and processing data in order to improve inter-operability (Cappellini’s application & Bloomberg LP’s application [2007] EWHC 476 (Pat)). The claims of Bloomberg’s application related to the distribution of financial data records to a plurality of recipients, in which the transmitted data is put into a form (‘mapped’) that can be accessed via an application used on the computer terminals of the individual recipients.
In the Decision, Pumfrey J found the contribution to lie in the treatment of data to match the requirements of a particular end-user to improve co-operation between software at a server and a client (step (ii) of the test). He took the view that the relevant treatment was performed by a computer program and the result achieved was entirely specified by that computer program, concluding that the advance made by the invention was a computer program as such. The rejection of the application was upheld.
Interestingly, Pumfrey J compared Bloomberg’s application to the patent in RIM v Inpro [2006] EWHC 70 (Pat). The RIM patent dealt with the treatment of data, prior to transmission, to reduce its information content, in order to allow more rapid transmission over reduced bandwidth channels. Crucially, the RIM claims were limited to systems in which the information density of the data was reduced and the receiving device was a ‘field computer’, which was taken to mean a device having reduced bandwidth capabilities. Pumfrey J maintained that the subject matter claimed by RIM provided a technical effect but noted that the position may have been different, had these limitations not been included.
This line of thought was expanded in Pumfrey J’s remarks regarding Cappellini’s application, which was rejected in the same judgement. Pumfrey J commented that the question of patentable subject matter relates to the form of the claims and that it would be possible to draft claims that do, or do not, relate to excluded subject matter, based on the same disclosure. He ventured that objections regarding excluded subject matter were primarily objections to the width of a claim.
This latest Decision suggests that, in at least some cases, the inclusion in a claim of limitations relating to the context of the invention may prove crucial for providing technical character to its contribution and avoiding exclusion under Section 1(2) of the UK Patents Act 1977.
Diana Pisani
