Williams Powell

British and European Patent and Trade Mark Attorneys

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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 recent decision of the Court of Justice of the European Union (CJEU) raises questions in connection with a fundamental aspect of trade mark registration.

Trade marks are registered in relation to specific goods and services which are arranged into forty-five “classes”, principally for the sake of administrative convenience.  These classes are given “class headings” as a broad indication of the range of goods or services they cover.  Some of these class headings are comprehensive and self-explanatory, whereas others (mainly those classes which draw together a disparate collection of goods or services) make no attempt at providing even a general indication of some of the goods or services included in the class.  For example, the class 25 heading is “clothing, footwear and headgear”, whereas the class 41 heading – “education; providing of training; entertainment; sporting and cultural activities” also includes, for example, translation services. 

The referral of the IP Translator case to the CJEU was aimed at achieving clarification of the scope of protection for trade marks claiming the “class heading”: are the headings effectively magic words which confer protection for all goods or services in the class, even those which are not mentioned and do not fall within the normal meaning of the words, or should they be construed more narrowly?  The question is important both for owners of registered trade marks and traders wishing to adopt a new trade mark, because, generally speaking, identical or similar trade marks may co-exist in relation to dissimilar goods or services, but not identical or similar goods or services.  The accurate assessment of a potentially conflicting mark can determine whether a new mark is available for use, or would infringe the registered mark.


Prior to this summer’s CJEU decision, Community Trade Mark Office practice was that the class heading conferred protection for all goods or services in the class.  The CJEU decision emphasises the importance of clarity and precision when describing the goods and/or services claimed in a trade mark application, from which it is to be inferred that the class heading “clothing, footwear and headgear” will continue to confer protection for all goods which fall within the natural definitions of these words, but, as translation services do not fall within the everyday meaning of the class heading terms “education; providing of training; entertainment; sporting and cultural activities” an applicant relying on these words to claim protection for all goods and services in the class, including translation services, must make an express statement to this effect.

This new guidance is not to be applied retrospectively.  Trade marks employing the class headings filed with the Community Trade Mark Office before the entry into force of the new practice, on 21 June 2012, will be treated as conferring protection for the full alphabetical list of goods or services in the class.   

How much does this matter?  The scope of protection for a class heading can make the difference between infringement or non-infringement.  It is accordingly highly important in the context of a trade mark search which finds potentially conflicting third party rights.

In more general terms, some will find it strange – and justifiably so – that any company should consider that it has a legitimate need to register its trade mark for all goods or services in certain classes.  Class 9, for example, includes goods which range from computer software (for all conceivable purposes) to safety footwear, via cash registers.  From this point of view, whilst legal certainty is necessary when interpreting the protection enjoyed by registered marks, and whilst the class headings are a useful short-hand for use when filing new applications in a hurry, the practice is essentially lazy, and there is no substitute for a proper analysis of a company’s individual need for trade mark protection, by reference to its actual products.

Tagged in: class trade mark

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

Planning to trade in China? If so, register your mark early to beat Trade Mark Squatters.

If you are trading, planning to trade in, or exporting to China, have you registered your trade mark there yet?  If not, be warned: bad faith applicants are filing Chinese applications for the trade marks of established overseas companies and then blackmailing the companies into buying back the rights to their own name.  

Unfortunately, Chinese trade mark law has very weak provisions outlawing this practice, and unless you can demonstrate substantial use of your mark in China before the filing date of the bad faith application it is almost impossible to have it cancelled.

The most effective way to avoid this trap is to register your own mark in China before the squatters do.  The good news is that the filing of a UK trade mark application gives you a six month grace period for filing in China, so that your Chinese application will have priority over any bad faith applications filed after your UK application.

Contact John Reddington or Ian Tollett for more details.

Tagged in: trade mark

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.

Can copyright cover software functionality in Europe? EU Advocate General thinks not.

The boundary between types of Intellectual Property is not always clear. Occasionally, different Intellectual Property types may provide overlapping protection.  For example, a widget may be protectable by both patents and registered designs.

One argument that is raised by opponents of patents for computer implemented inventions is that copyright already provides more suitable protection. However, the extent to which copyright protection extends beyond the code into the "look and feel" or functionality of software has, at least in the UK, never been clear. Copyright infringement generally requires copying of the copyright material to be proven.  Computer software is protected in Europe as a written work and therefore a logical (although narrow) construction would be that copying must be of the written work - the software code, object code, binaries etc. However, UK Courts have reached different conclusions in the past, providing at least some protection under copyright to look and feel.

This issue is the subject of the case SAS Institute Inc v World Programming Ltd that is being considered by the UK High Court.  There appears to be no dispute over copying of actual code - SAS's complaint is that World Programming Ltd copied functionality of the SAS system and its language. As UK law in thsi area is set at the EU level, there is only limited discretion for the Courts to interpret issues it may consider to be unclear.  In the present case, the Judge has referred several questions to the European Court of Justice on interpretation of the law.

As part of the referral process, the EU Advocate General has issued an opinion suggesting that the narrow construction set out above is correct.  He suggests that the Court of Justice should hold that copying of functionality is not an infringement of copyright provided that a substantial part of the original program (code) is not reproduced in the process of copying that functionality.

Guidance on proper interpretation of the law in this area can be expected from the Court of Justice in due course.  The Court of Justice is not bound by the Advocate General's opinion and does sometimes reach different conclusions/interpretation of the issues.  Nevertheless, the scope of copyright protection of computer programs in Europe could well be clarified (and narrowed) shortly.

My personal opinion is that the Advocate General's opinion is correct -  Protection of functionality should be left to the patent system, copyright is about protection of the expression not the idea. 

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

The UKIPO has launched an online document inspection service for its recent patent files.

The service, called Ipsum, allows anyone to view documents sent by the UKIPO (such as search reports and examination reports), as well as documents received by the UKIPO (such as the responses filed to examination reports).

Some documents are not available online, although they can still be cheaply obtained via an official file inspection request. The database gives some status and bibliographic information, although it is not as comprehensive as the online register which is still the best source of status information.

 

A disclaimer is an exclusion, in negative terms, of subject matter from the scope of a claim.  Disclaimers are generally used to carve out from the claim scope something that is co-incidentally covered by prior art but which is not relevant to overall novelty/inventive step of an invention. In its decision of G2/10, the Enlarged Board of Appeal at the European Patent Office has considered whether and when it is allowable to amend a claim to disclaim subject matter which was disclosed as an embodiment of the invention in the original application.

In G1/03, the Enlarged Board laid out strict rules governing when it is allowable to use a disclaimer which was not disclosed in the application as filed.  Subsequent case law at the EPO generally adopted the approach that even if the subject matter excluded by the disclaimer was disclosed in the application as filed, the disclaimer would count as an undisclosed disclaimer if the subject matter had been originally disclosed as part of the invention.  The reasoning behind this was that to avoid the rules of G1/03, the disclaimer itself needed to be disclosed, not just the subject matter excluded by the disclaimer.  However, in G2/10, the Enlarged Board found this approach to be incorrect.  It found that the rules laid out in G1/03 only apply to situations where neither a disclaimer nor the subject matter excluded by the disclaimer was disclosed in the application as filed. 

In the present decision, the present Enlarged Board decided that the criteria of G1/03 only applies to disclaimers where both the negative limitation and the excluded subject-matter were not disclosed in the application as filed. In contrast, the Enlarged Board decided that disclaimers which exclude subject-matter disclosed as part of the invention in the original application do not necessarily add subject-matter. Whether such a disclaimer would be allowable is dependent on normal added subject-matter tests (whether it is directly and unambiguously disclosed in the application as filed).

In reaching its decision, the Enlarged Board of Appeal also rejected the argument that the disclosure of a generic claim and a specific embodiment necessarily discloses all of the other embodiments of the generic claim as the logical complement of the specific disclosed embodiments and such a disclaimer cannot therefore add subject matter.

The Enlarged Board found that the question to be asked was whether there is basis in the application as filed for the subject matter remaining in the claim, and that determining whether or not that is the case “requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment”. 

In particular, the Enlarged Board suggested that where, in the application as filed, “an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these later excluded from the requested protection by the disclaimer, the remaining subject matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer”.  However, the Enlarged Board contrasted this with the situation in which “the disclaimer would have the effect of confining the subject matter remaining the claim to a sub-group of the originally claimed subject matter, which sub-group could not be regarded as disclosed in the application as filed”.  It considered that such a disclaimer would impermissibly add subject-matter and would therefore not be allowable.

Tagged in: disclaimers EPO patents