Williams Powell

British and European Patent and Trade Mark Attorneys

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Patents

Category contains 4 blog entries contributed to teamblogs

It was understood that UK Government had planned to ratify the UPC agreement in May 2017 so that the Unified Patents Court could open by the end of the year.  However, that timetable now looks likely to experience minor delays and could push opening of the Court into 2018.

A side-effect of the span election announced by UK Prime Minister, Theresa May, on 18 April 2017 is that Parliament will dissolve on 3 May 2017 and this will prevent changes to UK law (which includes approval of statutory instruments such as the one needed for the UK to ratify the UPC).  Parliament will reconvene in June but only for a short period before breaking up for summer vacation in July. The necessary legislation might be squeezed through in the short period between June and July 2017 but more than likely will slip until September 2017.

Once UK and Germany have ratified (other countries necessary to meet minimum requirements have already ratified), a provisional application procedure begins during which the court structures will be established. The UPC preparatory committee had previously estimated 7 months for this period before the Court opened in December 2017.  due to delays in UK ratification this timetable can be expected to slip unless the preparatory period is shortened.  As a result, the Court will now likely open in 2018.  A sunrise period during which European patents and patent applications can be opted out of the competence of the UPC will run for a minimum of 3 months prior to opening of the Court.

On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent Court.

The court will make it easier for businesses to protect their ideas and inventions from being illegally copied within Europe.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The UK government will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.  UK Law changes needed to give effect to the UPCA were passed by Parliament in March 2016. Ratification is handled by the UK Executive on behalf of the Crown.

The UPC is not an EU institution but an international patent court.  It is not, therefore, controlled by the EU institutions, save for its choice to have the European Court of Justice as the ultimate arbiter in disputes.  There is no reason why this choice could not be maintained even after the UK leaves the EU.

In this regard, the UPC has similarities with the European Patent Convention, which is also an institution set up under international law and is not an EU institution.  There are numerous member states of the EPC that are not EU member countries.

We welcome the UK government’s move to become one of the first European countries to press ahead with implementing the UPC, which is likely to become a very valuable tool for businesses across the world.

Should you like any preliminary advice on the UPC please do not hesitate to contact us.

Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict.  The commonly applied test has been to require the amendments to be supported word for word in the original specification and ascribed directly to the subject matter being claimed, that is not to any one specific embodiment only.  This often led to an applicant or patentee being prevented from amending the application or claims beyond the very strict wording of the written description as filed, irrespective of what the application actually taught the skilled person.  While such a stance can be mitigated with very careful drafting of the specification in the first instance, it has led in our experience to many applicants being denied the opportunity to make the most of their patent applications.

The EPO has finally relented on this test, we believe following the realisation that some applicants were being denied protection for patentable subject matter which the skilled reader would have been able to gather from the disclosure in the application.  The EPO is changing the threshold for determining added subject matter from a strict forensic legal examination to seeking to understand what the skilled person would have made of the original disclosure and therefore the extent of the original teaching.  The change in the EPO’s approach began formally with the decision of the Enlarged Board of Appeal of the EPO, which is equivalent to the Supreme Court,  in its decision G2/10.  The Enlarged Board of Appeal held that an amendment should be regarded as introducing subject-matter if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art.  In other words, when assessing an amendment for added subject matter, the focus should be on what was really disclosed to the skilled person in the application as filed.  In particular, the Examiner should avoid disproportionally focusing on the structure of the claims or the literal wording of the original text, to the detriment of what the skilled person would have directly and unambiguously derived from the application as a whole.

This is a welcome change in practice but we expect will take some time to become habitual in the practice of the Examining and Opposition Divisions of the EPO.

Notwithstanding this change, we expect that the EPO will maintain a relatively strict approach to the assessment of added subject matter introduced by amendments made to an application or patent.  Careful drafting of the original application therefore remains of paramount importance.  In this regard is it critical to keep in mind that the EPO will be looking for technical pointers to the skilled person in the original disclosure, which is likely to put legalese often introduced into patent specifications into the spotlight.  That is, we expect the EPO to continue to view evidently legal phraseology with scepticism.  Examples include numerous long lists of options for certain elements of a device or method, generalised broadening passages relating to alternatives and so on.  Additionally, we do not expect the EPO to relent in its assessment of new claim combinations not originally covered in the application, making it important to ensure that multiple dependencies are included in PCT and European applications at the time of filing, that all alternatives are carefully tied to all of the embodiments to which they are intended to apply and that they are clearly distinguished from other features not essential with those alternatives.  We would be happy to advise on specific cases or in connection with specific issues.

 

Tagged in: EPO patents

There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of a patent are heard together in front of the same judge or judges, and 2) the bifurcated system followed for example by the German Courts, where validity and infringement are decided in separate proceedings that are heard in different Courts at different times.  There are, of course, competing views as to which system is ultimately better and in fact both routes are made available in the Rules of Procedure of the forthcoming Unitary Patent Court.  Given that the UK and Germany handle the majority of patent litigation in Europe, this is not surprising.

Leaving aside the question as to which system is ultimately best, problems can arise with bifurcated proceedings in that a trial on validity of a patent can often occur after the trial on infringement.  The unfortunate result is that a decision may be reached on infringement of a patent which is subsequently revoked or materially limited in scope.  Until a decision on validity is reached, the alleged infringer is put in a very difficult position, both legally and commercially.

The German infringement Courts, though, are known to stay infringement proceedings where it can be demonstrated that there is little chance the patent will survive the validity attack.  It is here that UK procedures are able to assist and we have been successful in doing so for clients of ours.  The UK Intellectual Property Office (UKIPO) offers a Patent Opinion service, which provides a non-binding opinion on the validity of a patent effective in the UK (of which the vast majority of European patents are).  The procedure is simple and quick, leading to a decision within three  months of filing the Request for Opinion at the UKIPO.  The procedure is entirely written with no hearing.  The requester must set out its case fully at the start and the patent proprietor is given the opportunity to respond, to which the requester can then reply.  As the procedure is straightforward, costs are only a small fraction of full litigation proceedings, in total generally between $10,000 to $20,000.

A word of caution, though, is that the UKIPO is generally conservative in its decision, so a good case must be made out from the start.  It must be borne in mind that the UKIPO may unilaterally revoke the patent following a negative opinion on validity, which is a significant sanction on the patentee.

We have been successful in stalling German patent infringement proceedings off the back on a UKIPO Patent Opinion deeming the patent to be invalid, causing the trial on infringement to be postponed until after the German Patent Court has determined the issue of validity.  This can be a very significant tactical advantage in litigation proceedings, and has the added bonus of creating official file wrapper records having statements from the patentee and the UKIPO as to the intended or appropriate scope of the claims.

As an Opinion can be requested by anyone, it is not mandatory for a litigant to make itself known to the UKIPO when requesting an Opinion.  We can be the official Requester.

In cases where a binding decision on validity is more appropriate, a formal revocation action before the UKIPO or our Courts can be expected to reach trial within 12 to 18 moths of commencement of proceedings.  We would be happy to provide you with more information of UK litigation.

A UKIPO Patent Opinion is not only potentially relevant in the course of litigation but can also be a very useful route for dealing with any question of validity of a patent.  An Opinion can also be requested on the question of infringement of a patent, for instance in connection with a prospective or theoretical product or process.

We would be very happy to discuss the UKIPO Opinion service and litigation in general should you have any questions.

 

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

Tagged in: Patent Box patents UK

A validation agreement has been reached between the European Patent Office and the Republic of Moldova.  The entry into force of the validation agreement with Moldova means that, as of 1 November 2015, a European Patent can offer protection in up to 42 countries including the 38 EPO member states, Bosnia-Herzegovina, Montenegro, Morocco and Moldova.

Tagged in: EPO patents

When the EU parliament approved the Unitary Patent legislation in December 2012, some (including ourselves) optimistically said we may see Unitary Patents granted as early as the middle of 2014.  While implementation still appears to be well on track, we are still some way off - because of politics.

For the Unitary Patent system to come into force, the legislation must be ratified by thirteen member states (which must include UK, France and Germany).  As at February 2015, France, Austria, Belgium, Denmark and Sweden have ratified the legislation.  It is highly unlikely that the UK will ratify the legislation in 2015 as it is to hold a general election in May. 

More formal issues also still remain undecided - how much will the renewal fees be?  The aim for the Unitary Patent is for a single annual renewal to be payable covering all states.  In order to be attractive to SME's, the EU want the single renewal fee to be relatively low.  However, this will likely reduce the income of many member states and has therefore been a point of much debate. We understand discussions on this point continue between the European Patent Office, EPO, and member state governments.

We will keep you appraised of developments as they occur and would be happy to answer any questions.  Ultimately, when the Unitary Patent system finally comes into force any pending European patent application should be able to be converted into a Unitary Patent at grant so there is no reason or benefit in delaying filing. For pending European patent applications that are approaching grant, filing a divisional application would keep them pending and therefore leave open the opportunity of conversion to a Unitary Patent when the option finally becomes available.

 

From 1 March 2015, anyone filing a European patent application will be able to request validation for Morocco. European applications and patents validated for Morocco will have the same legal effect as Moroccan patents and will be subject to Moroccan patent law.

 

On 17 December 2010, the President of the European Patent Office and Morocco's Minister for Industry signed an agreement on the validation of European patents (validation agreement).

 

The agreement enters into force on 1 March 2015. European patent applications or International patent applications filed from that date will have the option to be validated in Morocco.

 

Unlike validations of designated states that are required at the grant of a European patent to bring it into force in that designated state, "validation" here refers to the payment of a fee to the EPO.  This is due within six months of the date of publication of the European search report. In the case of European patent applications based on an international application (PCT), the fee is due on entry into the European phase.

Tagged in: EPO patents

On 26 September 2014, Norway acceded to the London Agreement, waiving the requirement for a full translation of a European patent on grant as long as the patent is granted in English.  A Norwegian translation of the claims must still be supplied for the patent to have effect in Norway.

The Agreement on the application of Article 65 EPC, also known as the London Agreement, is an optional agreement that aims to reduce the costs relating to the translation of European patents.  It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549) and since then 21 contracting states of the European Patent Convention (EPC) have ratified or acceded. The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. 

For European patents granted with effect for Norway on or after 1 January 2015, no Norwegian translation of the European patent specification need be supplied if the patent is granted in English or if an English translation of the patent is supplied. A Norwegian translation of the claims must still be filed. Where a European patent is granted in a langauge other than English, an English or Norweigian translation of the entire patent must be filed for the patent to have effect in Norway.  We provide English language translations of patents which are both competitively priced and checked for technical langauge accuracy - please contact us for more details.

All European patents with a filing date on or after 1 April 2009 will automatically designate Norway and would therefore benefit from this arrangement if granted on or after 1 January 2015.

The new rules do not apply to European patents amended in opposition, appeal or limitation proceedings which were granted before 1 January 2015 and amended on or after that date.

Tagged in: EPO patents

When EU member countries decided to work together to create the EU Unitary Patent, Spain refused to take part and subsequently filed various challenges against the proposals with the Courts of Justice of the EU (CJEU).  

On 18 November 2014, the Advocate General published an opinion suggesting the CJEU should dismiss the challenges.

We now await the CJEU's decision.  While the CJEU is not obliged to follow the Advocate General's opinion, it often does so and this would result in one more hurdle in the way of implementing the Unitary Patent being overcome.

Summary

Does the EPO consider your ex-PCT application to cover more than one invention?  Has that additional invention not yet been searched? Up to now, if you have wanted that additional invention searched by the EPO, it has been necessary to file a divisional application.  From 1 November 2014, this will change – the EPO will (for a fee) search the additional invention without having to file a divisional application.  

The changes to the rule in question (Rule 164 EPC) are set out in the EPO's administrative council decision linked to here.

Practice tips

When filing a Euro-PCT application when the EPO was not the ISA, it is still important to think about the order of the claims in the EP application, as the EP supplementary search will be carried out on the first-mentioned invention.  However, under the new procedure, it will at least be possible to have additional inventions searched, if desired.

It is important to note that the EPO has not changed its practice on unity of invention.  Art. 82 (EPC) still states that “the European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept”.  However, under the new procedure, it will at least be possible to get an idea of the prior art for an additional invention, without having to incur the cost of an EP divisional application.

New procedure as from 1 November 2014

This applies to:

- any Euro-PCT applications for which the ISA was not the EPO where the EPO has not as of 1 November 2014 drawn up an EP supplementary search; or

- any Euro-PCT applications for which the ISA was the EPO where the EPO Examining Division has not as of 1 November 2014 issued a first office action.

The new procedure is the same as the previous procedure (see below) for (1) and (2) but changes for (3):b2ap3_thumbnail_epo-r164-procedure.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention or group of inventions first mentioned in the claims on filing the EP ex-PCT.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on the International search.
  3. In the case of (1), if the EPO considers that the Euro-PCT application covers an additional invention lacking unity with the main invention, then it will issue a partial supplementary search in respect of the main invention only.  It will however then give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).
  4. In the case of (2), if the EPO considers that the Euro-PCT application includes an additional invention lacking unity with the main invention, which additional invention was not searched by the ISA, then the EPO will now give the applicant a chance to have the additional invention searched, if the applicant pays a fee within 2 months (non-extendable).  The additional search will not however include a search opinion (quasi examination report).
  5. In either case, if the EPO considers that the inventions which have been searched lack unity, then it will ask the applicant to limit the application to a single invention (or group of inventions which are unified).  If however the applicant manages to persuade the EPO that its decision was wrong, then the EPO will refund the additional search fee.

 

Prior Procedure

Up to 1 November 2014: b2ap3_thumbnail_epo-r164-procedure-pre-1-november-2014.png

  1. If the International Searching Authority (ISA) was not the EPO, then after the Euro-PCT application is filed, the EPO will carry out a supplementary search on the invention first mentioned in the EP claims.
  2. If the ISA was the EPO, no supplementary search is carried out on filing the Euro-PCT.  Instead, the EPO relies on its own International search.
  3. In either case, if the PCT application includes an additional invention which is considered by the EPO to lack unity with the main invention, and if this additional invention has not been searched by the ISA or in the EPO supplementary search, then the only way to have this additional invention searched by the EPO is by filing an EP divisional application.
  4. The EPO will not examine a Euro-PCT application if it has not itself performed a search in respect of the invention for which protection is sought.  In other words, the invention must either have been searched in the EPO’s supplementary search or by the EPO acting as ISA.

 

 

The European Patent Office, EPO, has announced that as of 1 November 2014, it is relaxing rule R164 EPC on how lack of unity is dealt with.  Currently, on European applications that are filed from an International application (PCT), it is not possible to have further inventions searched if claims are found to be directed to more than one invention.  The only "fix" for this was to file a divisional application and as a result end up with two or more applications, even if only the later unsearched claims were wanted.  Following the changes to R164 EPC details linked here, it will be possible in all cases to pay an additional search fee to have further inventions searched.

This is a welcome change to practice before the EPO. It is not uncommon for new prior art to be found by an EPO Examiner at the search stage that results in a lack of unity objection arising.  In such situations, not all claims may be searched and this can have complications during examination.  Under current practice, applicants face the tough choice of sticking with the claims the Examiner has searched, or paying the high costs associated with a divisional application. Under the new rules, this situation can be avoided.

The European Patent Office has announced changes to R36 EPC with effect from 1 April 2014 such that a divisional application may be filed for any pending European patent application.  The wording of the changed rule appears to include those cases for which the current divisional deadline (2 years from issue of the first examination report) has expired but which are still pending as of 1 April 2014.

An additional fee (amount not yet announced) will be introduced as part of the filing fee for certain divisional applications. The amount of this fee will grow progressively with each subsequent generation of divisional applications up to a certain level, becoming then a flat fee.

The current rule was brought into effect in 2010 by the European Patent Office in an attempt to prevent “abuse” of the divisional system by the filing of one or more divisional applications shortly before the parent case was to be considered (and potentially rejected) at oral proceedings. However, the number of divisional applications in fact increased.  The effect of the current rules were further reduced by the decision of the Enlarged Board of Appeal on G 1/09 in which it was decided that a European patent application that was refused could still be used as the basis for filing a divisional application until expiry of the appeal deadline.

The announcement of the European Patent Office doesn’t quite admit the current version of Rule 36 EPC rule was a mistake but the practical effect cannot be denied. The change is welcomed and will lead to a return to a more reasonable approach to the filing of divisional patent applications.  We will be happy to provide specific advice should you have any query.

On 16 Apr 2013, the Court of Justice of the European Union (CJEU) rejected challenges by Spain and Italy to the legislative process used to establish the unitary patent framework. 

Spain and Italy had attempted to block the creating of the unitary patent agreement, both by non-participation and legal challenge to the process used (typically EU law requires all member states to agree to legislation).  The argued among other things that the unitary patent agreement would undermine the internal market and that it would create a barrier to trade and distort competition to the detriment of businesses in their countries. 

Rejecting their challenges, the CJEU said that it cannot validly be maintained that the unitary patent agreement would damage the internal market or the economic, social and territorial cohesion of the Union. 

While there is significant political pressure to conclude the unitary patent agreement and the EU is unlikely to allow the process to be blocked, this is not the end of the line for the challenges. Two further actions for annulment have been lodged by Spain before the CJEU.

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

By a large majority, the EU Parliament today (11 December 2012) voted to approve legislation that enables implementation of the Unitary Patent and the Unified Patent Court.

Only in the EU could the legislation that finally brought to a conclusion some 40 years of debate, negotiation and compromise on the Unitary Patent be immediately followed in the same document by the “Implementation of the bilateral safeguard clause and the stabilisation mechanism for bananas of the EU-Central America association agreement”.

While not an absolute certainty (the legal challenges by Spain and Italy are still be to decided and additionally member states must ratify the legislation), EU politicians have now had their say and have cast their final votes.  In all likelihood we will be seeing Unitary Patents relatively soon.

Many have commented that the legislation has been rushed and is flawed.  There are certainly many areas that will require clarification in years to come.  The provisions on jurisdiction clearly open up a new era on forum shopping and could result in validity being heard in a court in a different country to that of infringement.  However, there are many positives, particularly to the SME and its budget:

  • Translations will (eventually) be no-more
  • Annual maintenance fees will be less than those that would currently be paid if all EP member states were validated
  • Infringement decisions will be enforceable in all member states without further activity
  • SMEs to benefit from reduced annual maintenance fees

The Unitary Patent System will be administered by the European Patent Office.  Examination will be subject to the same EPC provisions as currently apply.  However, at grant a European Patent can be registered as a “Patent with Unitary Effect” instead of being validated in national member states (the legislation explicitly state that a Unitary and a national patent should not be allowed).  It appears that existing European Patent applications that grant after the implementation date of the Unitary Patent may be registered on grant as Patents with Unitary effect. Therefore we could be seeing Patents with Unitary Effect being granted (and therefore available for use in commencing an infringement action) as soon as early 2014.

There are of course many questions:

  • Will Spain and Italy give up their objections and challenges and join the Unitary Patent System now the Advocate General has issued his opinion suggesting their legal challenges be rejected (and the likelihood of the Court of Justice of the EU agreeing))
  • Will the UKIPO and UK courts finally have to shift towards EPO practice on matters such as patentability of software related inventions?
  • Will the UK courts have to abandon their system of following precedent decisions or will the codified legal systems of France and Germany have to be compromised?
  • Will the EPO now have to take notice of decisions from a body (the Unified Patent Court) outside of the EPO (something it has traditionally been reluctant to do)?

As infringement actions must be brought before local courts or courts in the country in which the patentee has its place of business, will business in countries with lesser developed local court systems be disadvantaged?

One politician commented that the time has come for the politicians to hand over to those responsible for implementing the new systems.  More details will follow here as the implementation detail is released and flaws and issues become clear.

The EU's Advocate General Bot proposes today (11 December 2012) that the Court should dismiss actions brought by Spain and Italy against the Council’s decision authorising enhanced cooperation in the area of the unitary patent

In 2011, agreement could not be reached over the languages to be used for the unitary patent (also known as the community patent).  Spain and Italy were unable to reach a compromise with other states (who had agreed on English, French or German). The Council authorised enhanced cooperation between 25 of the 27 EU Member States – Spain and Italy having refused to participate – with a view to creating unitary patent protection. The aim of that cooperation is to set up centralised EU-wide authorisation, coordination and supervision arrangements.

Spain and Italy have asked the Court of Justice to annul the Council’s decision, maintaining that it is invalid for a number of reasons.

In his Opinion delivered today, Advocate General Bot replies to the arguments put forward by Spain and Italy, suggesting to the Court that they reject the requests on all points.

The Courts decision is not expected until 2013.  The Advocate General's opinion will give some comfort to the European Parliament who are today voting on the text to implement the Unified Patent Court which would decide on validity and infringement issues on unified patents.

The press release and the Advocate General's opinion can be found at Press release and Opinion

Tagged in: community patent EU

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

A compromise agreement means that the court hearing cases concerning the EU will be split between Paris, Munich and London.  

What has been referred to as the final issue blocking implementation of the EU patent has now been resolved.  

After what appears to have been significant negotiation, agreement over the location of the EU patent court (called the Unified Patent Court) has been reached.  The court will be shared between Paris, London and Munich. The court's central division will be in the French capital, Munich will deal with applications relating to mechanical engineeering, and the UK end of the operation will be responsible for patents concerned with pharmaceuticals and chemistry.

Changes to the regulation meant that the Court of Justice of the EU (CJEU) will not have final jurisdiction in the unified patent regime.

The European Parliament must now approve the agreements on the court and the EU patent system before implementation can take place, although there is reported to be concern in the parliament over removal of the CJEU's jurisdiction.

Tagged in: community patent EU

The EU committee on Legal Affairs optimistically delclares "Done Deal on the EU Patent!".  We're not there yet but we do appear to be moving forward after more than 30 years negotiation.

In a press release issued 2 December 2012, the EU Parliament's rapporteurs declared that a political agreement had been reached on the proposals for an EU unitary patent and language regime.  A proposal for a unified patent court is still the subject of discussion with two (yet to be named) states disagreeing about where the court should be situated (it is believed that it is between London and Germany).

The agreements have a long way to go before coming into effect - they will have to be confirmed by both the EU Parliament and the Council and at least some aspects at national level. The press release stated that a regulation should enter into force in 2014, although we think this is likely to slip.

The proposed regime for translating EU patents would make them available in English, German and French, although applications could be submitted in any EU language. The press release said that translation costs from a language other than the three official ones would be compensated.

Details on the full agreement are not yet public.