DEVELOPMENTS IN IP
- New countries set to join the Madrid Protocol system
- Information disclosure requirements for European patent applications
- Proposals to replace the Patents County Court
- Patentability of stem cells
New countries set to join the Madrid Protocol system
Preparations are underway in Thailand, New Zealand, India and Colombia for these
countries to join the Madrid Protocol system. This system provides for International registration of a trade mark by virtue of a single application that designates those
countries party to the system where the applicant would like to try and obtain trade mark
protection. There are over eighty countries that are party to the Madrid Protocol system.
At present, there is not a confirmed date for the expansion of the system to cover any of
the four new countries, but once one is set this will be reported.
Information disclosure requirements
for European patent applications
The European Patent Office (EPO) will soon require certain information on prior art known to the applicant to be submitted as a matter of course. The provisions will apply for new applications filed in Europe, either as a direct filing or out of the PCT, from 1 January 2011. European law has always contained a provision that allows the Examiner to request prior art information to be submitted, but it has rarely been used.
The new rules will require that any search results received on patent applications from
which priority is claimed must be submitted on filing the application in Europe. If these
search results are received after filing the European patent application, they must be
provided to the EPO without delay.
If at the time examination commences no priority application search results have been submitted, the applicant will be specifically invited to file the search results within a period of two months, or confirm that there are no search results to make available. Failure to reply will lead to the European application being deemed withdrawn.
The possibility for the Examiner to request submission of details of any prior art information known to the applicant will still apply for all European patent applications. It remains to be seen whether this provision will be invoked more frequently.
Proposals to replace the Patents County Court
Lord Justice Jackson, of the Court of Appeal, has reviewed the costs incurred in civil
litigation in England and Wales. He has arrived at some specific recommendations for
intellectual property actions, aimed in particular at reducing the cost of access to justice
for small and medium-sized enterprises (SMEs). At present, there are two main fora in
England and Wales in which patent disputes can be litigated: the Patents Court, which is
part of the High Court, and the Patents County Court (PCC), both of which are based in
London. The PCC was created in 1988 in order to generate a lower cost alternative to
High Court proceedings, but the unification of court procedure brought in by the Wolff
reforms has meant there is little practical difference between the two courts, especially as
far as litigation costs are concerned.
As such, Lord Jackson has recognised that companies, and SMEs in particular, would appreciate a lower-cost route to resolving their disputes. Therefore he has proposed replacing the current PCC with a new Intellectual Property County Court (IPCC), in which parties would be obliged to set out their cases in much more detail early on in the proceedings, more of the procedure would be carried out on paper, and the length of oral hearings would be substantially reduced. Cross-examination would be eliminated, unless a party can convince the judge that the benefit of doing so exceeds the costs involved.
The costs recoverable by the winning party in the IPCC would be restricted to £50,000 for patent infringement and validity cases and £25,000 for other cases such as trade mark or copyright disputes. There would be also be a limit of £250,000 on the damages recoverable from an infringer, in line with the IPCC’s role as a lower-cost forum.
There are also proposals for an IP small claims track to be brought in within the IPCC, for very small claims (worth less than £5,000), with practically no costs recoverable.
Whether the reforms will be implemented remains to be seen, but Lord Jackson’s review made it clear that it has been appreciated that smaller companies feel the need to be able to resolve disputes in the courts at lower cost than at present, and with greater predictability of the costs for which they could be liable should they lose.
Patentability of stem cells
Following on from the European Patent Office’s Enlarged Board of Appeal decision in
G2/06 to revoke a patent for a method of obtaining embryonic stem cell cultures, which
necessarily involved the destruction of a human embryo, the question of patenting stem
cell technology has again been raised.
In this regard, the German Patent Court has now referred questions to the European Court
of Justice (ECJ) regarding the correct interpretation of Article 6 of Directive 98/44/EC on
the legal protection of biotechnological inventions. This Directive indicates subject matter
that shall be considered unpatentable, including the use of human embryos for industrial
or commercial purposes.
Greenpeace had brought a case to revoke Brüstle's German patent covering the use of
certain cells for the treatment of neural deficiencies, such as Parkinson’s disease or
multiple sclerosis. Greenpeace argued that a human embryo had been killed to harvest
the cells, because originally the stem cells were derived from blastocysts and human life
starts with the fusion of sperm and ovum, meaning blastocysts are embryos in the sense
of the law.
The patentee asserted that in the UK, France, Spain, Sweden and Denmark the term "embryo" refers to fertilized eggs 14 days after fertilization, whereas the patent claims the use of stem cell lines harvested from blastocysts 4 to 5 days after fertilization. Therefore the patent only utilises products that are not correctly viewed as embryos.
Following the referral, the ECJ will now have to rule on what is meant by "human embryo"
in the context of EU law. Further, if the blastocysts used are viewed as human embryos,
the ECJ will then need to decide whether the therapeutic applications covered by the
patent are correctly viewed as commercial or industrial purposes. It is to be hoped that
the ECJ will provide more general guidance on patentability in this field, as compared to
the EPO decision that was clearly limited to addressing the specific facts of the case.
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