Williams Powell

British and European Patent and Trade Mark Attorneys

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Katherine Ellis

Katherine is a British and European Patent Attorney. She obtained a BSc in Molecular Biology with French from the University of Manchester. Katherine works on, amongst other things, the patenting of nucleic acid arrays and their use in hybridisation assays, methods of oligonucleotide synthesis, diagnostic tests and treatments for several important diseases, and medical devices.

In the wake of the UK Supreme Court's Trunki decision, designers may now be questioning the value of registered designs to protect their products in the UK.  However, during a panel discussion at the ITMA designs seminar on 27 April 2016, Mark Vanhegan QC and Michael Hicks (who represented the parties in the case), and Nathan Abraham of the IPO pointed out that design registration still represents good value for money and gave the audience some practical tips on how to secure valid protection.

Advantages of design registration:

•Relatively cheap

•2D designs can be protected 

•Provides an absolute monopoly (there is no need to prove copying)

•There is a grace period, which could be useful if there has been accidental disclosure before registering

One point to note is that many registered design cases are settled before ever making it to court so we do not hear about them.  This demonstrates that registered designs can still be useful in providing protection.

Practical Tips:

Different types of representation provide different scopes of protection and therefore cover different designs.  Each design can include several representations, but these should therefore all be of the same type.  We would recommend, for each product, filing at least three sets of representation: line drawings (to provide broad protection for the overall shape), black and white photos or CAD designs (not limited to particular colours, but protects different tones to the product), and full colour photographs (to protect the specific product itself).  By filing a series of different representations with a range of level of detail, one would hope that at least one would be both valid and infringed if tested.  An example of what might have helped in the Trunki case can be found below:

b2ap3_thumbnail_recommended-reps.png

 

Uses of human embryos for industrial or commercial purposes are excluded from patentability in Europe and the UK.  In Decision G2/06 of the Enlarged Board of Appeal of the European Patent Office, it was held that human stem cell cultures that can only be obtained by destroying human embryos are not patentable.  But what is a human embryo?

In October 2011, in the Brüstle case (Case C-34/10), the Court of Justice of the European Union (CJEU) considered whether an unfertilised human oocyte parthenogenetically activated to divide falls under the term “human embryo”.  The CJEU controversially held that a “human embryo” is any unit capable of commencing the process of development of a human being, even if that unit could never have completed development into a human. 

It was further held that an invention is excluded from patentability if prior destruction of a human embryo is required at any stage, even if that destruction occurred long before implementation of the invention or if the description of the technical teaching claimed does not refer to the use of human embryos. 

Although not legally bound to do so, the European Patent Office follows this decision, and the Guidelines for Examination have been updated accordingly:
http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_5_3.htm

The UK Intellectual Property Office has considered whether it able to depart from the Brüstle decision of the CJEU.  Whilst it concluded that it was permitted to do so, it decided that extreme caution must be exercised in departing from any aspect of the CJEU’s decision.  It should therefore be anticipated that the UK IPO will follow the EPO in applying the Brüstle decision when examining UK patent applications.

Tagged in: biotech EPO EU patents

Claims to antibodies without disclosure of a practical use may be sufficient in the UK

In the case of Eli Lilly v Human Genome Sciences, the UK Supreme Court found on 2 November 2011 that the claims were industrially applicable and the case was to be returned to the Court of Appeal for the determination of sufficiency. The Court of Appeal has now decided upon the issue of sufficiency and somewhat surprisingly, the Court of Appeal found claims 13, 18 and 19 all to be sufficiently disclosed.

Claim 13 related to any antibody that binds specifically to Neutrokine-α.  No practical use for these antibodies was disclosed, nor was any single example of such an antibody structurally described.  The Court of Appeal decided that the claim is sufficient as the skilled person can make and identify such an antibody without undue effort, despite the fact that there are “millions” of possible antibodies, not all of which would be “useful”.  That the patent does not enable one to identify a particular disease for which such an antibody might be useful in treating was considered irrelevant to the issue of sufficiency of this claim, because the claim was not limited to “useful” antibodies.

Claims 18 and 19 relating respectively to a pharmaceutical and a diagnostic composition comprising the polypeptide/antibody of the earlier claims were also held to be sufficient, again despite the fact that no specific practical use had been disclosed.  The reasoning given, again, was that the skilled person had the ability to make such compositions.

We wait to see whether this decision will be appealed at the Supreme Court.

Link to decision:
http://www.bailii.org/ew/cases/EWCA/Civ/2012/1185.html

Tagged in: biotech patents

Supreme Court decides that plausible use of a gene sequence meets UK patent law crietria.

The Court delivered its judgement in Eli Lilly v. Human Genome Sciences on gene sequence patenting on 2 November 2011 and has reversed the decisions of the lower courts regarding industrial applicability of a gene sequence.  The decision appears to have been essentially a political one, with a submission by the BioIndustry Association having been influential.

The disputed patent relates to a novel protein, neutrokine-α, identified through the generation of human genome sequence data.  Putative functions for neutrokine-α were ascribed on the basis of its similarity to members of the tumour necrosis factor family of proteins.  However, the members of this family have diverse functions, although they are all involved in the immune system.  The original patent application therefore could not assign a specific function to the protein, and much work was required after filing to determine its precise role.

It was decided that a plausible claimed use, later confirmed by evidence, was enough for industial applicability to be acknowledged in this case.  The decision of the Supreme Court is therefore in line with the earlier findings of the Boards of Appeal at the European Patent Office.  The case is likely now to return to the Court of Appeal for consideration of obviousness and insufficiency.

 
Tagged in: biotech