Inside IP Venner Shipley’s Intellectual Property Magazine Autumn/Winter 2012

The technical challenge facing inventions

Further developments on the law relating to SPCs

Broad terms and class headings - has “IP Translator” taken away trade mark protection? What’s inside?

The technical challenge facing software inventions – page 4 Pawel Piotrowicz brings some clarity to the issues surrounding defining technical character in patents for computer-implemented inventions. Further developments on the law relating to SPCs – page 7 Following on from our report in the Spring / Summer 2012 issue of Inside IP on decisions relating to the allowability of SPCs, Tim Russell details further recent developments on the same issue. Broad terms and class heading – has “IP Translator” taken away trade-mark protection? – page 9 Kate Szell indicates that it might be time for businesses to review European trade mark portfolios following a decision by the CJEU which could restrict the scope of existing trade mark registrations. A fashionable monopoly – Christian Louboutin v Yves Saint Laurent – page 11 Julia McFarlane details the US Court of Appeal’s decision on protecting single colours as trade marks by the fashion industry G1/10 – correcting errors in granted European patents – page 13 Sian Gill reports on how a recent decision of the Enlarged Board of Appeal of the EPO has altered options for correcting errors in granted patents. Feeling used? Genuine use of a European Community trade mark – page 14 The Advocat General has issued guidelines on what constitutes genuine use of a CTM ahead of a decision by the CJEU. David Birchall discusses the implications. Filing observations on PCT applictions – page 15 George Hudson details an announcement by the World Intellectual Property Office. The patent battle between and Apple, and what we can learn – page 17 The battle between these two giants rages on; Simon Taor takes a look at the story so far and gives an indication of how the outcome might affect other large businesses. The EPO gets personal on personalised medicine – page 18 Tanya Heare takes a look at the implications for pharmaceutical patents created by the ability to recognise specific variants in an individual’s genetic make-up. The R&D Relief Scheme – page 20 Steven Charlton explains, with guest author Laurence Bard of accountants Smith Williamson, tax relief on research and development spending. Relaxing the PCT (UK) Fast Track – page 21 Ruth Shelton details the relaxation in requirements for using the PCT (UK) Fast Track service. The evolution of technology – page 22 Matt Handley talks about how analysis of the US patent database might help predict the emergence of new technologies. Nespresso’s European patent causes a stir – page 23 Not exactly smooth blend; the dispute between Nestlé and its rivals over coffee capsules goes on. Pawel Piotrowicz reports on the latest element of this dispute. Using post-published evidence – Mylan v Yeda and Teva – page 24 Eimear Sampson summarises the UK High Court’s guidance on the use of post-published evidence. The Unitary Patent Proposal – The debate rolls on… – page 25 Ian Grey discusses the legal challenge now happening following the decision on the seat of the Central Division The patent wars continue: HTC v Apple in the UK – page 26 The UK Courts’ view of HTC v Apple; Alex Bruce gives an overview of the case and the ruling. Isolated genes: product of man or nature? – page 28 Dan Day reports on a decision by the US Court of Appeals for the Federal Circuit on whether genetic material satisfies criteria needed to be considered eligible for patent protection. Updated Guidelines for Examination in the EPO – page 30 David Taylor details the updated set of Guidelines entered into force in June this year.

2 www.vennershipley.co.uk

A word from the editor

What a time we have had since the last edition of Inside IP! Whilst the weather was ‘varied’ in accordance with British tradition, it managed to treat the Olympians and Paralympians pretty well. Team GB put in a fantastic performance to come in third in the official medal standings in both the Olympics and the Paralympics, a result that few would have been bold enough to predict. The achievements of all the athletes combined with an apparently flawless execution of the Olympic events made the UK, and particularly London, a very special place to be this summer.

The world of IP has not stood still in this time. Much has happened on the issue of the EU patent, although admittedly with little progress – see Ian Grey’s article on page 25 for details. The patenting of computer-implemented inventions in Europe still is a topic of interest and debate, and also of considerable misunderstanding. By breaking the subject down and by going through some examples of granted patents, Pawel Piotrowicz’s article overleaf makes it easy to see what is needed to get a patent granted by the EPO. His guide should be of help to business people and legal practitioners alike.

There is too much in these pages to mention it all here but we cover some very important issues, for instance in Kate Szell’s article on the IP Translator case and Tim Russell’s SPC update, through some very specialist subjects – see for instance Tanya Heare’s article on personalised medicines – to the well-known, including a trade mark case about Christian Louboutin’s red- soled shoes and the Apple v Samsung . There is something for everyone in this edition!

Venner Shipley news Meet the new starters at Venner Shipley – page 16 We’ll be speaking at a number of conferences over the coming months: • Cleantech Patenting Strategies Conference – 5 February 2013, London – page 10 • The Agrochemical Conference – 27, 28 November 2012, Newmarket Racecourse Conference Centre – page 27 • Rushlight Show 2013 – 31 January 2013, London – page 27

About Venner Shipley: Venner Shipley is one of the leading firms of European patent and trade mark attorneys, representing a broad range of clients including major domestic and international corporations, SMEs, universities and individual inventors.

We are ranked among the best firms in both patents and trade marks by the Legal 500 and Managing Intellectual Property Magazine and we pride ourselves on our high standards of service and quality. www.vennershipley.co.uk

3 The technical challenge facing software inventions

Although technical character is a fundamental and have to queue to get to their floor. Thus, there is an overcrowding problem. requirement for the grant of a European patent, How can this problem be solved? One its significance is often overlooked. However, solution is to draw up a timetable and stagger the arrival times for the office lack of technical character is perhaps the single workers. This is clearly a non-technical most important reason why many applications for solution to a non-technical problem. Another solution is to fit “better” computer-implemented inventions are refused at the electric motors to the escalators and/ European Patent Office. So what exactly is technical or elevators which allow them to work at higher speeds. This solution appears character and why is it so important? to be technical and it is possible to formulate a problem which is technical, namely how to increase speed of travel. Interestingly, the European Patent technical character since, if the Another solution involves placing a Convention does not explicitly application makes it clear what problem metal plate over the buttons in the state that an invention must have is being solved and that the problem is elevators for the lower floors (except the technical character. So where does technical in nature, then a significant ground floor) thereby preventing the lift the requirement come from? The hurdle to patentability is overcome. from being used to transport workers to requirement is inferred from Rules 42 Some applications may benefit from a the bottom few floors. Arguably this is a EPC and 43 EPC of the Implementing self-evident technical problem whereas technical solution, but what problem is Regulations, whose conditions are others may not. So, when judging being solved and is it technical? Could distilled into the requirement of whether or not an invention merits the it be argued, somewhat artificially, that technical character. To have technical grant of a European patent and deciding there is a technical problem, namely character the invention must relate to how to describe the invention, a good how to control access to a control panel? a technical field, it must be concerned starting point is to ask questions such with a technical problem and it must as “What is the technical problem being have technical features. solved?”, “Is the technical problem fundamentally technical?” and “Is When considering an invention which there anything which might cast doubt is implemented on a computer, it is on whether a problem is technical in arguable that the most important of nature?” these three aspects to consider is the technical problem. This is because if Problems, problems, a technical problem is solved, then, because a computer provides the problems technical means by which the solution So when is a problem a technical is provided, it follows that the invention problem? That is a good question and must lie in a technical field and that one which cannot be easily answered in technical features are inherently all cases, particularly if the application involved. So, if a technical problem was not drafted with it in mind. is solved, a computer-implemented invention is likely to exhibit technical The trouble with this question is that character. a technical problem can be hard to pin down for several reasons. This does not mean to say that only the technical problem need be considered. Firstly, a technical problem can have As will be seen in some of the examples non-technical origins. For example, below, the technical features are just consider a tall office building in which as important. However, it is perhaps the bottom few floors are served by true to say that identifying the technical escalators and all floors are served by a problem is a key factor or at least is handful of elevators. In the morning, the a good starting point for considering office workers arrive at the same time 4 www.vennershipley.co.uk

In this situation, insufficient capacity Boards of Appeal. Furthermore, even in non-technical features are always is the root cause of overcrowding. quite similar cases, it may be possible ignored. It is possible for non-technical Notwithstanding this, it is still possible to distinguish between cases based on features to interact with technical to identify a potential invention the facts. Thus, it is not uncommon for features so as to alter the functioning which solves a technical problem. an Examining Division to come to its of the technical features and, thus, This example also offers an insight own view on what is – and what is not contribute to the technical solution. into why care needs to be taken – technical. In fact, there are occasions This is important for many computer- when drafting a patent specification. when different Examining Divisions implemented inventions because what The invention that involves using can come to different conclusions on is usually different about a computer- “better” electric motors appears to whether or not a technical problem is implemented invention is a set of one or be technical in character. However, solved in very similar cases. more non-technical features, such as an if the problem is being expressed in algorithm or mathematical method. terms of simply overcrowding or the Thus, what is technical can be a matter solution is described at a high level of impression. This makes it more One important way to identify whether without actually explaining how or why important to ensure that the invention there is such an interaction is to the electric motor is “better”, then the is painted in the best possible light in consider whether a technical problem technical character of the invention the specification. is solved. As mentioned earlier, if a might be overlooked. technical problem is solved, then it usually follows that there is a technical The situation given above also hints at solution. In that case, assessment of another reason why it can be difficult to “ inventive step can proceed in the usual pin down a technical problem, namely it is important to way using a conventional approach. that a non-technical problem can see a claim not just However, if no technical problem is usually be expressed artificially as a deemed to be solved, then a rather technical problem. Particularly when a as a collection of different approach is taken which makes computer is involved, a non-technical features, but also to it virtually impossible to argue that the problem, such as how to sell a product, invention involves an inventive step. can usually be expressed in terms of consider the effect how to perform a task more quickly, more efficiently or in real time. While or advantage Examples this may sound technical, it is unlikely of the claimed It may help to look at some granted to be thought of as being a proper European patents to get a better idea technical problem. invention and to of the sorts of inventions which the European Patent Office can find to be Thirdly, computers can be used in a see it as a solution allowable. Some patents are granted in myriad of different ways and in a wide to a problem. areas which, on first sight, appear not range of applications. Therefore, it is to merit grant of a patent. However, perhaps unsurprising that there is a ” closer inspection of these applications wide, continuous “spectrum” of problems shows that the area of use is usually a ranging from the clearly technical to the Assessing inventive step minor consideration. Instead, what is clearly non-technical and that inevitably So why is the issue of technical problem important is the invention. there will be occasions when it is so important? In short, if an Examiner difficult to say whether or not there is a thinks that an invention does not solve Trading System technical problem. a technical problem, then it can have a EP 1 641 213 B1 concerns a trading profound effect on how the application system that includes an independent There is another issue with technical is processed and effectively place it on claim which reads: problems. What is meant by “technical”? the fast track to being refused. A trading system processing Once again, the term is not defined. When assessing inventive step, messages in at least one of a data- Examples of what the Boards of Appeal an Examiner follows the so-called and network, have considered to be technical include “problem-solution” approach. The characterized in that said system processing physical data, such as European Patent Office has, over comprises: a consolidation point data representing an image or data time, developed a methodology for said messages in a server representing parameters and control for assessing inventive step when layer, whereby said messages are values in an industrial process, and dealing with computer-implemented collected in multiple concatenated processing which affects the way in inventions which is now enshrined in predetermined hold-back time- which the computer operates, for the Guidelines. This approach involves frames; and a transmitter example, which changes the operating dividing a claim into technical and non- application, transmitting said system, changes the method of technical features. Features which do messages consolidated in said time- operating a graphical user interface, not contribute to the technical character frames as single transaction for saves memory, increases speed and of the claim or do not make any central matching processing when a improves security. contribution, either independently or in time-frame has lapsed in time, thus combination with other features, to the eliminating transactional overhead It should be noted that decisions of technical solution of a technical problem and achieving a substantial gain Boards of Appeal are not binding on are not relevant for assessing inventive in message processing throughput Examining Divisions, let alone on the step. This does not mean to say that time in said trading system.

5 What is the problem being solved? handling validation information. The Thus it is important to see a claim not The application (and indeed the claim) complete claim is available in the full just as a collection of features, but also explains that the problem is how to version of this article on our website. to consider the effect or advantage of improve processing of messages in a the claimed invention and to see it as a trading system to reduce processing Once again, what is the problem being solution to a problem. Understand the throughput time. It is interesting to solved? The application explains the problem, be sure that it is technical and note that the problem is not just simply effect of the invention (which can ensure that the technical problem can presented as being faster processing simply be thought of as the inverse be easily identified from the application. which could be the result of mere of the problem) as providing a secure This applies not only to the main claim, automation, but rather reducing way of crediting an account. Again, the but also to dependent claims. throughput time which suggests that technical features which provide the the invention affects the way in which solution are plainly set out. Thought must be given to how the the computer operates. Furthermore, invention is described. the technical features which provide the Simulation method solution are plainly set out. It is clear EP 1 257 904 B1 relates to circuit Firstly, place the invention in a that the claim does not simply specify simulation. The patent includes two technical field. It is a requirement of a computer and leave it at that. The independent method claims, one of the European Patent Convention to claim goes into some detail about how which reads “[c]omputer-aided method cite relevant prior art. However, this messages are processed. It is interesting for numerical simulation of a circuit can be used to advantage. Cite prior art to note that little is said about trading with a step width d, and which is subject which firmly places the invention in a and that what is said, it can be argued, to 1/f noise influences ...” comprising technical domain and if possible cite merely provides context. a number of mathematical calculation European patent applications which steps. The complete claim and two have proceeded to grant. Turning next to how the invention is figures from the patent are available described, the specification contains in the full version of this article on our Secondly, do not rely on a boilerplate three figures, one of which is a figure of website. description of a computer system. a prior art system. The remaining two There are other ways of describing figures are as follows: The application described the problem a computer-implemented invention in terms of reducing the computation than in terms of a standard network outlay for a numerical simulation. The of computer systems, the structure of Time application was allowed on appeal (T a computer and a set of screen shots. 20 1227/05). It was noted in the decision Where possible, describe functional that the effect of the features of the blocks and ask whether each of the claims was to provide for a resource- functional blocks can be broken efficient computer simulation of a down into sub-blocks. Describe circuit under the influence of 1/f noise. data structures. Describe how data It is noted other European patents have is processed. Regardless, get across been granted in the area of simulating what technical features are involved in Size or modelling integrated circuits, tyres providing the solution to the technical and other systems. problem.

It is again noted that the application It is important to note that there is no 30 Matching contained no figures showing the single right way of drafting applications products 40 internal structure of a computer or even for prosecution at the European Patent a process flow diagram. The drawings Office. However, unquestionably, the 38 36 included a simple block diagram of chances of success are improved if effort Consolidation the system being simulated, and a is taken to properly convey the technical 34 point 34 structogram determining sequences character of the invention. 32 32 of random numbers of 1/f noise. The Consolidation Consolidation point point drawings also illustrated various This is an abbreviated version of the matrices and vectors. This shows article, the full version of which is again that a boilerplate description of available on our website at 14 14 computer systems is not required. http://www.vennershipley.co.uk /show-news-id-400&p=1.html There are no figures showing the Comments and internal structure of a computer or even a process flow diagram; if you conclusions have an inventive technical solution to So what can we learn from these and a technical problem, you may not need other European patents like them? much else. It is clear that Examining Divisions and Payment System Board of Appeals look for a technical EP 1 286 317 B1 concerns crediting problem. The problem may be not an account and includes a claim to a expressed in terms of a problem. It can “method of crediting an account ...” be presented, in inverted form, as an Pawel Piotrowicz including steps some of which relate to effect or advantage. [email protected]

6 www.vennershipley.co.uk Further developments on the law relating to SPCs In the Spring/Summer 2012 issue of Inside IP, we Sanofi are the owners of EP(UK) Patent No. 0 454 511 claiming both irbesartan reported on a number of decisions handed down (an angiotensin II receptor blocker by the Court of Justice of the European Union useful for treating hypertension) and a combination of irbesartan and a (CJEU) relating to the allowability of Supplementary diuretic. Sanofi was granted a first Protection Certificates (SPCs). In the short time since SPC for the single product irbesartan (Aprovel®) which has now expired and then, there have been further developments relating also a second SPC for a combination of to the allowability of SPCs and this is intended as irbesartan and hydrochloridethiazide sold as CoAprovel® which is a summary of these latest developments and the set to expire 14 October 2013. consequences of them. Hydrochloridethiazide (HCT) is not specifically mentioned anywhere in The Medeva reference – “The ambit of “specified” may range the patent but is a well known diuretic. from express naming, through Actavis challenged the validity of the final act description, necessary implication Sanofi’s second SPC for the combination One of the CJEU decisions reported to reasonable interpretation. Where product alleging (1) that the patent did previously concerned the Medeva on that scale the dividing line is to not specify/identify a combination of reference to the CJEU by the UK be drawn will necessitate further irbesartan and HCT; and (2) that only Court of Appeal. The case concerned references in due course in light of one SPC is allowed per patent. the granting of an SPC directed to a the facts of the cases in which the combination of active ingredients based issue arises.” The UK judge (Mr. Justice Arnold) on a patent that explicitly disclosed only agreed that the criteria for granting an one of those active ingredients. The However, the UK Court of Appeal SPC directed to combination products CJEU decided that an SPC may not be decided that in the present case the were unclear and decided to refer two granted “relating to active ingredients products to which the SPCs in question questions to the CJEU. which are not specified in the wording relate clearly fall on the wrong side of of the claims of the basic patent relied the dividing line. The first question to be referred is: on in support of the application for such a certificate”. The SPC application was therefore “What are the criteria for deciding refused. However, the Court confirmed whether ‘the product is protected In light of this, the UK Court of Appeal the widely held view that the CJEU’s by a basic patent in force’ in Article subsequently resumed the original decision did not provide complete 3(a) of the Regulation?” proceedings in order to arrive at a final clarity to the situation and further verdict. Given that the CJEU’s decision references to the CJEU were perhaps This is essentially asking for was based on the facts of this Medeva inevitable. clarification regarding how the phrase case, it was predicted that the UK “specified/identified in the wording Court of Appeal proceedings would be The inevitable further of the claims” should be interpreted. relatively straight-forward. In the opinion of Arnold J the CJEU referral “did not answer question 1 in the previous five references and the rulings Nevertheless, Medeva attempted to As it happens, we did not have to wait it did make do not provide a clear test convince the UK Court of Appeal that very long at all before further questions which can be applied to cases such as they should be granted their SPC despite were referred to the CJEU in an attempt the present”. A number of conflicting the CJEU’s decision. Their arguments to clarify under what conditions an SPC decisions arising from national courts in were based on the uncertainty raised may be granted based on a product France, Germany and the Netherlands by the CJEU’s decision reported in the containing a combination of active are cited as evidence that this is the Spring/Summer 2012 issue of Inside IP, ingredients. Both the UK and Dutch case. Interestingly, Arnold J offers a in particular what does “specified in the courts have announced their intention suggested answer to his own question wording of the claims” actually mean? to do just that. In the UK, the referral has arisen in the context of a High Court “(i)n the hope that it will assist the Ultimately, the UK Court of Appeal case involving Actavis v Sanofi. Court of Justice to provide a clear dealt with the issue quickly, stating in answer this time”. He suggests that its decision: an SPC may be based on a product if

7 it “contains an active ingredient, or market authorisation enabling it to “…the placement on the market combination of active ingredients, market that formulation (Circadin®). of a new medicinal product which embodies the inventive advance Based on the patent and the market commercially exploiting the new (or technical contribution) of the basic authorisation, Neurim applied for an therapeutic application of the same patent”. Only time will tell if the CJEU SPC at the UK Intellectual Property active ingredient, as protected by welcomes or adopts this suggestion. Office. However, melatonin had the new patent, may enable its In the meantime, it is certain to cause previously been the subject of an proprietor to obtain an SPC…” further debate. earlier market authorisation: for use in controlling the reproduction of sheep. The SPC would of course provide a The second question to be referred The rules concerning the granting of monopoly covering, not the active is provisionally worded in the same an SPC require that an SPC may only ingredient, but only the new use of that manner as a related question referred to be granted based on a first marketing product. the CJEU by the Dutch Court: authorisation. The question therefore arose: does the earlier marketing Although this decision will clearly have “Does [the Regulation], more authorisation relating to reproduction a liberalising effect on the granting specifically Article 3(c), in the in sheep prevent the granting to Neurim of SPCs, some issues do remain. For situation in which multiple products of an SPC based on the later marketing example, before the decision many are protected by (the claims) authorisation for treating insomnia in commentators raised concerns that such of a basic patent, preclude the humans? a decision would lead to an inevitable proprietor of the basic patent being increase in “ever-greening” practices; issued a certificate for each of the e.g. the decision now potentially permits products protected?” the same proprietor to obtain multiple “ SPCs for the same active ingredient. The precise wording of the questions Although the How effective such practices would may be challenged by either party required conditions be given the precise wording of the before being finalised. At the time of judgment and whether they would be writing, the wording of the questions are now a little allowed remain to be seen. To what had not been confirmed. clearer, complete extent the “new” therapeutic use must be different from the therapeutic SPCs for second clarity has not yet use referred to in the first marketing authorisation is also unclear. Further medical uses been achieved. case law will probably be required in In July, a decision by the CJEU again order to clarify these issues. brought into focus the significant role ” played by SPCs in the pharmaceutical Neurim’s application was refused and industry. The decision derives from the UK High Court agreed with the Summary Case C-130/11 Neurim Pharmaceuticals decision to refuse it. However, the The series of decisions handed down relating to the protection of second/ UK Court of Appeal, bearing in mind by the CJEU in late 2011 was expected further medical uses of known active the objectives of the SPC Regulation, to end a long period of speculation ingredients. seriously questioned the value of such a concerning in what circumstances decision, stating: SPCs directed to combination products Until this decision, it was thought may be granted. Although the required that SPC protection for second or “if Neurim are wrong, then the conditions are now a little clearer, further medical uses of known active [SPC] Regulation will not have complete clarity has not yet been ingredients was not allowed. However, achieved its key objects for large achieved. It is hoped that the recent it was often argued that this appeared areas of pharmaceutical research: referrals announced by the UK and to be contrary to the fundamental it will not be fit for purpose.” Dutch courts will help. At the same objectives of the SPC Regulation, time, the Neurim decision concerning namely to “ensure sufficient protection The UK Court of Appeal therefore SPC protection for further/second to encourage pharmaceutical submitted the case to the CJEU for medical uses appears to extend the research” by compensating innovators clarification of the law. possible circumstances in which SPC accordingly. protection is available. We wait for In what was good news for innovators, future developments with interest. The opportunity to challenge this long in particular those involved in the held perception arose from a dispute search for new uses of known active in the UK involving an application by ingredients, the CJEU decided that Neurim Pharmaceuticals for an SPC Neurim should be allowed an SPC relating to melatonin (a naturally based on their discovery of a new use occurring hormone). Neurim discovered (treating insomnia in humans) for that appropriate formulations of melatonin. The existence of an earlier melatonin could be used for treating marketing authorisation relating to insomnia (in humans). Neurim the use of melatonin for regulating subsequently obtained a patent directed sheep reproduction did not prohibit the to such use and in 2007 the European granting of this later SPC application. In Tim Russell Commission issued Neurim with a more general terms, the decision stated: [email protected] 8 www.vennershipley.co.uk Broad terms and class headings – has “IP Translator” taken away trade mark protection?

A recent decision of the European Union’s highest class heading is intended to cover all the goods and services included in court has potentially restricted the scope of existing that class or only some. However, the trade mark registrations. Trade mark proprietors court has not stated how such clarity must be given. To add to the confusion, should be reviewing their European trade mark the court referred to an application portfolios to see if there are now covering all the goods or services in the holes in their protection. alphabetical list of the class, rather than just all the goods or services in the class. Unfortunately, all goods in a class and all goods in that class’s alphabetical list The background are not always the same. As all trade mark practitioners know, goods and services are divided up into a Clearly in a mood to muddy the waters number of different “classes” and those even more, the Court went on to say classes have accepted headings. The that some of the terms used in class headings set out, in broad terms, which headings lack the necessary clarity and goods and services fall within that class. precision for registration purposes. Unhelpfully, it did not say which terms For some time, the Community trade were guilty of this particular trade mark marks office (OHIM) has said that, crime. Terms such as “office functions” where a trade mark registration or “paper, cardboard and goods made includes the exact wording from the or not a registration is infringed so from these materials not included in class heading, then that registration is could have serious consequences. A other classes” may be the types of terms deemed to cover every good or service UK trade mark case has tried to get that lack sufficient clarity and precision in that particular class, irrespective of clarification of this issue. for registration purposes but there are whether it is evident to the non-trade many other, frequently used, terms that mark practitioner that the particular could also be at risk. good or service would be covered by The case that description. For example, the The UK Chartered Institute of Patent To add yet more to the mud in the class heading for what is known as Attorneys (CIPA) applied to register the waters, whilst the CJEU stated that class 41 is “education; providing of mark IP TRANSLATOR in the UK for use of the class heading wording can training; entertainment; sporting and the class heading in class 41. The trade only cover all goods or services if cultural activities”. There are other mark examiner refused the application that intention is specified (without services, however, such as “translation on the grounds that the mark was explaining how it is specified), it went services” which fall within this class. descriptive of translation services and on to say that “an application for If the wording “education; providing that, following OHIM’s practice, the registration which does not make of training; entertainment; sporting use of the class heading meant that it possible to establish whether, by and cultural activities” appears in class all services in that class, including using a particular class heading of 41 in a trade mark registration, then translation services, were included. the Nice Classification, the applicant OHIM would interpret that to mean CIPA argued that that was not the intends to cover all or only some that all services falling within that case. The matter was appealed within of the goods in that class cannot be class, including translation services, the UK Intellectual Property Office, considered sufficiently clear and are covered by the registration. who then referred the question of the precise”. As a “sufficiently clear and Other intellectual property offices interpretation of class heading wording precise” description of the goods and within the European Union view the to the Court of Justice of the European services is a requirement of a valid matter differently and would say that Union (CJEU). registration, this statement opens up the “translation services” are not covered by possibility of registrations which cover such a registration. The CJEU gave its decision on 19 June class headings being open to attack 2012 but, unfortunately, did not give on the grounds of invalidity. (Given This clearly results in uncertainty. In a simple “yes” or “no” answer. What the number of potential registrations the example above, does the registration the decision appears to say is that involved, a court charged with cover translation services or not? In simply using the class heading is not interpreting this comment by the CJEU certain circumstances, the answer to enough and that additionally it must will hopefully not find that a registration that question could determine whether be made clear whether the use of the for a class heading is invalid!)

9 The fallout Where either a class heading is used in “ a trade mark registration’s specification if you think that you have your valuable or where parts of class heading wording trade mark registered for your goods, are used, there are potential problems. In some circumstances, such wording you do not want to find (when you are (either the whole class heading or the parts used) could be in effect removed contemplating suing an infringer or from the registration. In others, the opposing an application) that it is not. wording may turn out to be more limited in scope than thought. ” Now, this may all seem academic and goods or services which are not If class heading wording is used in a not worthy of much attention. But, obviously included in the description of trade mark specification, what goods unfortunately, that is not the case. a class heading will not be of concern. or services are covered? You may have Whether your trade mark registration In many cases, the additional goods thought that your goods or services covers a particular item determines its or services will be ones that are not were covered by your registration as scope and therefore its usefulness. And of any interest to the proprietor. a result of your use of class heading if you think that you have your valuable However, these proprietors should not wording. Now, however, it may be trade mark registered for your goods, be complacent. Given the potential that the coverage is for all items in the you do not want to find (when you are implications of this decision, trade alphabetical list of that class and that contemplating suing an infringer or mark proprietors should be reviewing may not include everything you want. opposing an application) that it is not. their European Union portfolios and The class in which “legal services” falls As this decision is of the CJEU it affects considering filing new applications is class 45. Whilst the class heading trade mark registrations throughout where protection is currently only given clearly uses the words “legal services” the EU, whether those registrations are by broad terms or by class headings. the more extensive alphabetical list of national or pan-EU Community trade services in that class does not. It covers mark registrations. certain legal services but not all.

If wording which appears in a class In brief heading is used, is it sufficiently clear So it seems that, where you have trade and precise and, if not, what happens mark registrations in the EU that use to that wording? OHIM has held in class headings, or broad and unspecific previous decisions that wording that is terms which feature in class headings, not sufficiently clear and precise cannot there is a risk that the specification will be considered similar to other goods not be as broad as previously thought. or services. Effectively such wording is For many trade mark proprietors, Kate Széll treated as if it does not exist. whether or not a registration covers [email protected]

Cleantech Patenting Strategies conference On 5 February 2013, we will be speaking at, and sponsoring, a conference on patenting strategies for the cleantech industry.

The conference, to be held in London and run by priority claim, choosing your country list and Haymarket publishing, is aimed at in-house patent protecting abroad: should you go PCT or direct? counsel. Other confirmed speakers include representatives from the EPO and the UK IPO, Isis Further details on the conference can be Innovation, Pelamis Wave and LM Windpower. found at http://www.haymarketevents.com/ conferenceDetail/681/cleantech-patenting-conference Paul Derry and Tim Russell from Venner Shipley will be speaking about “Protecting Your IP in Multiple Our clients and associates can benefit from a discount Jurisdictions” and will cover a number of items on the usual delegate fees, and please let Jo Hodson underneath that topic including securing a suitable know if you would like to use this discount.

10 www.vennershipley.co.uk

the“ “flash of red sole” is today instantly recognisable as Louboutin’s handiwork ”

A fashionable monopoly – Christian Louboutin v Yves Saint Laurent A recent decision of the US Court of Appeal has the fashion industry. It could therefore never acquire the necessary secondary removed the spectre of single colours not being meaning as a distinctive symbol for it protectable by trade mark registration for use in the to function as an identifier of source of origin. fashion industry. The Court of Appeal found that the YSL did not dispute that Louboutin had earlier decision of the District Court was wrong and invested massively in promoting and that such marks could acquire distinctiveness or a protecting the mark as its signature in women’s high fashion footwear “secondary meaning” in the specific context of the to the extent that the “flash of red fashion industry (the same as in any other industry) sole” is today instantly recognisable as Louboutin’s handiwork. What and therefore be enforceable. concerned the District Judge was that the importance of the use of colour in the fashion industry militated against Christian Louboutin is well known Louboutin for a preliminary injunction trade mark protection ever extending to for the bright red soles attached to its against Yves Saint Laurent in respect a single colour used in that industry: high heeled women’s shoes. In 2008 it of four different models of shoes, acquired a US trade mark registration all of which bore red soles as well “Because in the fashion industry for a red sole mark claiming use since as red uppers as part of an overall color serves ornamental and 1992. The trade mark registration monochromatic design. aesthetic functions vital to robust consisted of a claim to the colour red competition, the court finds that indicating placement on the sole of the In a decision which caused concern Louboutin is unlikely to be able to shoe and described as consisting of “a across the fashion industry the District prove that the red sole brand is lacquered red sole on footwear”. Judge found that Christian Louboutin’s entitled to trade mark protection, trade mark registration was likely not to even if it has gained enough public In 2011 a New York District Judge be enforceable because a single colour recognition in the market to have refused an action by Christian could never serve as a trade mark in acquired a secondary meaning” 11 on the basis of colour alone, it is only in shoe but also only as a contrast to the exceptional circumstances that single remainder of the shoe. This emphasises colours will be capable of denoting the importance of considering whether trade origin. Louboutin’s European the way that the colour is used forms Community trade mark application an essential part of the trade mark was initially refused on examination and including that in the description but evidence was accepted on appeal of the mark. If evidence of acquired that the particular red colour departed distinctiveness is likely to show trade The US Court of Appeal rejected that significantly from the norms or customs mark recognition only when used in a interpretation of the law and the fashion of the sector thus enabling the mark to particular manner, for example, on the industry breathed again. The Court be perceived as “imaginative, surprising sole of a shoe and where the upper is found that the Louboutin mark had and unexpected”. Usually single colour not of the same colour, it is advisable secondary meaning in relation to red marks will need to show distinctiveness to define the mark in this way from the soles with contrasting uppers but not acquired through use to be accepted outset. The US legislation under which in relation to red monochromatic for registration and the UK Registry’s the appeal decision was made allowed designs. As the YSL models were Examination Manual specifically states for Louboutin’s trade mark registration monochromatic, the Court did not need that the examination of single colour to be amended to take this further to go on to discuss the “likelihood of marks requires careful analysis “not restriction into account. However, UK confusion” between these two upmarket least because there is a public interest and European Community trade mark brands or the “functionality” of the in not unduly limiting the availability applications cannot be amended in colour. Both protagonists could claim of colours for other traders. Each ways that alter the mark’s identity and some victory and the fashion industry case must be assessed individually.” would in such circumstances have to be could again see the possibility of Louboutin’s UK trade mark registration refused and the application re-filed. establishing a colour monopoly through was accepted only on evidence of long term investment and use. acquired distinctiveness. The US decision brings to the fore the basis upon which single colour marks Colour protection is of great concern may be monopolised even in industries to the fashion industry and the original where use of such a mark could be District Court decision raised the If“ available, a interpreted as purely aesthetic. If possibility of a curtailment of trade available, a single colour trade mark mark protection for design elements single colour trade registration provides a hugely valuable and particularly colours used in specific design monopoly. However, to acquire high end branding. Tiffany, which has mark registration and maintain such a monopoly right trade mark registrations for its famous provides a hugely in any single colour is not easy. It blue coloured box, filed support for is important from the start of the Louboutin by way of an Amicus Curiae valuable design application process to define carefully brief in the Court of Appeal. Louboutin what the mark comprises, not only recently lost an appeal in France against monopoly. in specifying properly the colour the use by retailer Zara of red soles description but also in terms of the on red peep toe platform heeled shoes ” manner in which it is used and through finding no likelihood of confusion with Single colour marks also need to which it acquires its distinctiveness Louboutin’s nude peep toe platform be properly described (“graphically and trade mark character. Evidence design. Protection for colours in respect represented”) and this will almost of actual or acquired distinctiveness of the appearance of the whole or a part invariably require a word description will invariably be required and of a product is also available through supported by the relevant Pantone code consideration should be given from design registration but the term of (or other internationally recognised the outset as to what such evidence the protection is limited and does not colour identification system). In the case will comprise. As always, a strong provide the effective monopoly of a against Zara in France, the French court registration covering a well defined trade mark registration. found the description of the Louboutin mark and product areas will be better mark too vague without a Pantone and more valuable than one covering a The court ruling in the US is, of course, colour reference. The US District Judge less well defined mark and wider goods not binding in the UK or in Europe. considered “the colour red” without a which may give rise to uncertainty and However, similar general principles Pantone reference as “overly broad”. be refused or open to challenge at a later apply and could have affected the Louboutin has recently refiled its trade date. way that the courts in these and other mark in France specifying a Pantone jurisdictions view colour marks as used colour and its UK registration and in design led industries. The law on Community trade mark application both single colour trade mark protection specify the colour red together with a in the UK and Europe is based on the Pantone colour reference. decision in Libertel (C-104/01). In Libertel, the European Court of Justice, Louboutin’s registrations limit its red confirmed that colour per se could have colour mark to the sole of a shoe. The a distinctive character and function US Appeal Court decision, however, as an indicator of origin. However, limited the secondary meaning and as consumers are not in the habit of amended Louboutin’s registration to Julia McFarlane making assumptions as to trade origin use of the mark not just to the sole of a [email protected]

12 www.vennershipley.co.uk

type of error. For example, one party filing an amicus brief in connection G1/10 – correcting with this referral to the Enlarged Board mentioned a case where a priority claim was erroneously omitted in errors in granted connection with a divisional application and was then added post-grant as a result of a request under Rule 140 European patents EPC. Frustratingly, this scenario was covered by the questions referred to the Enlarged Board, but it is not clear whether it is covered by their decision - A recent decision of the Enlarged Board of Appeal of is the priority claim part of the “text of the European Patent Office has significantly restricted a patent”? the options available to a patent proprietor wishing to The reasons provided by the Enlarged correct an error in a granted patent. Board for their decision suggest that approval by the Applicant of the text and bibliographic details of the The opportunities for post-grant particular, should the absence of patent the EPO proposes to grant is amendment of a patent are limited. Rule a time limit in Rule 140 EPC be likely to make it more difficult to have 140 EPC states that interpreted such that a correction “In decisions of the any request for correction granted under Rule 140 EPC of errors in European Patent Office, only linguistic under Rule 140 EPC after grant of decisions can be made at any time? errors, errors of transcription and the patent. It is therefore clear that obvious mistakes may be corrected”. 2 If such a request is considered to the text proposed for grant (the According to Rule 139 EPC “Linguistic be admissible, does the Examining “Druckexemplar”) and any other details errors, errors of transcription and Division have to decide on this should be very carefully checked before mistakes in any document filed with request in ex parte proceedings they are approved by paying the grant the European Patent Office may be in a binding manner so that the fees and filing translations of the claims. corrected on request. However, if the Opposition Division is precluded request for such correction concerns from examining whether the Finally, the Enlarged Board does offer the description, claims or drawings, correction decision amounts to an patent proprietors a little comfort the correction must be obvious in the unallowable amendment of the by noting that obvious errors may sense that it is immediately evident that granted patent? be corrected under Rule 139 EPC in nothing else would have been intended than what is offered as the correction”.

As the requirements for correction are different for the two rules, there “ are circumstances where a request for Rule 140 EPC is not available to correct correction would be successful under the text of a patent, thus making a patent Rule 140 but not under Rule 139. This, proprietor’s request for such a correction combined with a decision which held that the specification and drawings of inadmissible whenever made, including after a patent form part of the decision to the initiation of opposition proceedings. grant, led to a significant increase in the number of requests for correction under ” Rule 140. Furthermore, the request In decision G1/10, the Enlarged Board post-grant opposition or limitation for correction under Rule 140 has to actually appear to have answered a proceedings. If the EPO makes a mistake be considered by the Division who slightly different question, finding following approval of the text and made the decision. Where correction that Rule 140 EPC is not available to bibliographic data by the Applicant, an of an error in a decision to grant a correct the text of a patent, thus making appeal against the erroneous decision patent is requested during opposition a patent proprietor’s request for such to grant may be filed within two months proceedings, this request must be a correction inadmissible whenever from the notification of the decision. considered by the Examining Division made, including after the initiation of and the Opponents are not party to the opposition proceedings. proceedings relating to the requested correction. Whilst this renders the situation clear in certain circumstances (such as those of The questions put to the Enlarged Board the case which gave rise to the referral, were as follows: where the term “position” in claim 1 had 1 Is a patent proprietor’s request for erroneously been changed to “portion” correction of the grant decision when amendments were filed during under Rule 140 EPC which was filed prosecution), it does not make it clear after the initiation of opposition what happens when a request under Siân Gill proceedings admissible? In Rule 140 is made to correct another [email protected]

13 Feeling used? Genuine use of a European Community trade mark We last reported on the question of whether use of a registered European Community trade mark (CTM) in just one single EC member state constituted “genuine use” within the meaning of Article 15(1) of the Community Trade Mark Regulation No 207/2009 of 26 February 2009 (CTMR) back in Summer 2010.

Background genuine use of a CTM. The opponent law from the Court of Justice of the had based its opposition on its five- European Union (CJEU), explanatory Under Article 15(1) of the CTMR, year old CTM and the applicant had notes such as these Joint Statements where a CTM has not been put to exercised its right to request proof of were not legally binding and that certain genuine use within five years of its genuine use of the opponent’s CTM. The points in the Joint Statements were at registration date or where genuine use opponent only showed use of its CTM variance with the CTMR. of a CTM has been suspended during in one EU member state, the Benelux any uninterrupted period of 5 years, a office did not consider this to constitute The case was then appealed to the Court third party can apply for that CTM to genuine use of the CTM and so, the of The Hague, which referred several be cancelled on the basis of non use. In basis of the opposition having therefore questions to the CJEU (Leno Merken addition, where a CTM owner opposes fallen away, the opposition failed. BV v Hagelkruis Beheer BV C-149/11). a TM application on the basis of its own These questions can be summarised as earlier CTM which is over five years follows: old, the applicant is entitled to require the opponent to prove genuine use of 1 If the owner of a CTM only uses that that CTM before its opposition can be it“ would be wise CTM in a single EU member state, considered further. In accordance with will that automatically constitute Article 42 CTMR, in the absence of for CTM owners to genuine use? proof of genuine use of the CTM relied assess, both now 2 If use in one EU member state does upon by the opponent, the opposition, not automatically constitute genuine to the extent that is based on the CTM, and regularly in use, could it ever constitute genuine will be rejected. the future, the use? Traditionally use in just one EU 3 If use in one EU member state will member state was considered sufficient extent to which never constitute genuine use, then to constitute genuine use but there were their CTMs are used what will? murmurings that this shouldn’t be taken across the EU for granted. Recent developments Back in Summer 2010, the Benelux ” Although the CJEU has not yet issued Trade Marks Office had ruled that use The Benelux Office’s finding was its judgment, the Advocate General of a CTM in the Netherlands alone was at odds with the Joint Statements to which it assigned this case issued not sufficient to constitute genuine use of the European Commission and her opinion on the answers to these under Article 15(1). That ruling was the European Council in relation to questions in July 2012. It is the role given in the context of an opposition the CTMR. Furthermore the CTM of the Advocates General to propose to an application to register a Benelux system had always been promoted as to the CJEU solutions to the cases for trade mark, which is now reported to a unitary system, so many users felt which they are responsible. Although have been filed purely for the purposes short changed. The Benelux Office often followed, the Advocate General’s of obtaining clarity on what constitutes ruled however that, according to case opinion is not binding on the CJEU. 14 www.vennershipley.co.uk

The salient points in the Advocate a commercially relevant presence standard will be higher than previously General’s opinion are that: of the goods and services in that understood. market” • use of a CTM within a single Member Following the Advocate General’s State is not, in itself, automatically The Advocate General’s opinion opinion, it would be wise for CTM sufficient to constitute genuine use of concurs, broadly speaking, with the owners to assess, both now and that CTM recommendations contained in the Max regularly in the future, the extent to • when account is taken of all relevant Planck Institute for Intellectual Property which their CTMs are used across the facts, use of a CTM within a single and Competition Law study of the CTM EU and to consider whether national Member State could constitute system, that genuine use be assessed TM registrations should be applied for genuine use of that CTM on a case-by-case basis. It remains to in addition. The opinion also underlines be seen whether the CJEU‘s judgment the wisdom of retaining any existing • the physical borders between the EU (expected in late 2012) will differ from national TM registrations in those EU member states are not relevant to the the Advocate General’s opinion, bearing member states where CTM owners use, question of genuine use in mind that the Advocate General’s or plan to use, their marks. • there is no quantitative threshold opinion is often followed. • there are a number of factors to consider when assessing use and Impact the place of use is “neither an If the CJEU judgment replicates the independent condition…nor is it the Advocate General’s opinion, then

sole or dominant factor” the issue of whether use of a CTM • the correct test is whether the use in one member state is sufficient is “sufficient to maintain or create for the purposes of defending non- market share in that market for the use applications and for supporting goods and services covered by the oppositions will be, by no means, clear David Birchall mark and whether it contributes to cut. What already seems clear is that the [email protected] Filing observations on PCT applications The World Intellectual Property Office (WIPO) has recently announced that third party observations may now be submitted on International (PCT) applications. The observations must be submitted using the ‘ePCT’ interface, which is accessible via the WIPO website.

Under the new initiative, relevant prior art that the As third party observations filed in the PCT phase examiner may not be aware of can be submitted are made available to examiners in any subsequent against PCT applications in an attempt to influence national or regional prosecution, they may prove an the result of the International Preliminary Report efficient and cost-effective means of preventing a on Patentability, which in turn can affect the scope competitor from receiving grant of a patent that has an of protection that may be granted in any subsequent unfairly broad scope of protection. national or regional phase. Each submitted prior art document must be accompanied by a brief description of why the document is relevant, and may be submitted up to 28 months from the priority date. A maximum of ten separate observations may be made against any one international application, each citing up to ten prior art documents. The applicant has the opportunity to respond to any third party observations, commenting on the relevance of any submitted prior art, up to 30 months from the George Hudson priority date. [email protected]

15 New starters

Simon Taor Yoann Fouquet Steven Charlton

Simon is a Chartered and European Yoann is a registered UK trade mark Steven is a part-qualified patent patent attorney specialising in the attorney. He spent several years as attorney specialising in the field electronics and engineering fields. in-house IP Counsel for a well known, of physics. He entered the patent Simon joined Venner Shipley as a pan-European, telecom retail company profession in 2007 and joined Venner Partner in May 2012, having previously before joining Venner Shipley in July. Shipley in August from another been a partner at the London office of London-based IP law firm. another large firm of patent and trade Yoann brings a practical approach to mark attorneys. trade mark protection and advises Steven’s experience to date extends over on all aspects of trade mark law and a wide range of technical disciplines. Simon brings to Venner Shipley a practice, including clearance for use and For example he has successfully dealt vast amount of experience in patent registration of new marks, prosecution with cases concerning medical matters, having advised a wide range of and enforcement of intellectual property imaging devices, telecommunication companies, from start-ups and SMEs to rights. He also advises on domain name networks, orthoses, artificial limbs, large multinationals. Simon’s practice disputes and has particular expertise sub-sea drilling products and household involves drafting and prosecuting UK in drafting and negotiating trade mark electrical equipment such as power tools and European patent applications licences and assignments. and electrical plugs. Many of these cases in a number of fields from general involved prosecuting the invention mechanical and electrical work through Yoann studied intellectual property in question before either the EPO or to related subject matter and Law in both France and the United the UKIPO, however Steven also has computer-implemented inventions. Kingdom. He holds a Master’s degree considerable experience drafting patent In particular, he has worked on patent in Litigation Law, which he obtained applications. applications related to with distinction, being placed First in devices, optical devices, display devices, the year. He also graduated from the In his previous role he worked closely energy storage devices, fault protection University of Paris 2 Panthéon-Assas with SMEs during their early stages to systems, data processing, electronic with a Master’s in Intellectual Property develop and expand patent portfolios payment methods, and mobile Law, before attending King’s College to protect their business assets. . London where he obtained a LL.M. in Furthermore, Steven has advised clients intellectual property Law. Yoann has on the registration of designs in the UK In addition, Simon is an expert on French as a native tongue and is fluent and throughout Europe. essentiality evaluations for patent also in English. Standards, and he has carried Steven can be contacted on: out essentiality evaluations in a Yoann can be contacted on: [email protected] number of fields, including mobile [email protected] telecommunications, mapping technologies and optical discs. Simon regularly presents at client seminars and networking events, both in the UK and abroad.

Simon can be contacted on: [email protected]

16 www.vennershipley.co.uk The patent battle between Samsung and Apple, and what we can learn

On 24 August 2012, a US Court ruled that Samsung In Australia, Apple sought an injunction to prevent the sale of Samsung’s Galaxy infringed a number of Apple’s patent and design Tab. The Australian Federal Court ruled rights. Apple was awarded $1.05 billion dollars in in favour of Apple in autumn 2011, but this was overturned in the High Court of damages. Apple is seeking further damages, while Australia in 2012. Samsung is requesting a retrial. In South Korea, in August 2012, the Seoul Central District Court ruled that Samsung infringed one of Apple’s The US case is just one of a number of billion in damages. patents, while that Apple infringed similar disputes between Apple and two of Samsung’s patents. The Court Samsung in different countries. This This is not the end of the matter, and awarded small damages to each party. article summarises the main issues in Apple is seeking a further $707m in these cases. damages on the basis of the “wilful” In Japan, in August 2012, the Tokyo infringement, as well as an injunction to District Court ruled that Samsung did prevent the sale of some of Samsung’s The US case not infringe one of Apple’s patents. products that were found to be In April 2011, Apple sued Samsung in infringing. Samsung is seeking a retrial, California for infringement of three and has the option of filing an appeal. Conclusion of its patents and four of its design A hearing has been set for 6 December registrations. The patents related to user 2012 to hear both sides’ claims. Although this matter is far from over, interface elements of Apple’s iOS, and it shows the importance of large the designs related to the appearance of In addition, both Samsung and Apple companies protecting their IP in a Apple’s iPhone and iPad products. have filed other law suits in the US number of different territories. For large courts, relating to other IP rights. disputes, the ability to sue and counter- Apple alleged that 21 of Samsung’s sue in a number of different territories and tablets were is a powerful tool in a company’s infringing, including the Samsung Apple and Samsung armoury. This matter serves to illustrate , Galaxy s II, Galaxy disputes in other how important it is to seek protection in Tab, and Galaxy Tab 10.1. Samsung a number of key jurisdictions. counterclaimed for infringement of six countries of its patents. Similar court battles have been fought This set of ongoing disputes also between Apple and Samsung in a highlights the importance of design In the USA, unlike many other number of other countries. rights, as many of the disputes are jurisdictions, patent and design cases concerned with Apple’s allegation are decided by a jury. After three In Germany, in September 2012, that Samsung copied the design of weeks of complex legal and technical the Dusseldorf Higher Court upheld its products. In Europe, Community arguments, the jury took two days to an earlier ruling by finding that designs provide a cost effective and decide on the question of which of Samsung’s Galaxy Tab infringed Apple’s potentially powerful weapon, ideally in Samsung’s 21 products infringed and Community Registered design for the addition to patents, in areas where the how much damages to award. The iPad. appearance of the product is important. jury found entirely in favour of Apple, deciding that Samsung’s products This German decision contrasted with infringed Apple’s patents and designs, decisions in the UK and Holland. In and that Apple’s products did not July 2012, Judge Birss in the UK High infringe Samsung’s patents Court ruled that several of Samsung’s products (including the Galaxy Tab) The jury found that Samsung’s did not infringe Apple’s Community infringement was “wilful”, i.e. that Registered Design for the iPad. This Samsung knew or should have known decision was upheld by the Court of that its actions constituted infringement Appeal in October 2012. A similar of Apple’s patents, and on 24 August decision was reached in a Dutch Court Simon Taor 2012, the jury awarded Apple $1.05 in August 2012. [email protected]

17 The EPO gets personal on personalised medicines Personalised medicine is an emerging field that promises to bring radical changes in healthcare. In essence it is the tailoring of the right therapeutic strategy to the right person at the right time.

By way of brief explanation, it is and were being treated with the In distinguishing T1399/04 from now recognised that an individual’s indicated drug? In other words, can T233/96 on the facts of the case, the genetic makeup may contain specific the treatment of a known disease with Board reasoned that, in the patent in variants that correlate with observable a known drug be considered new, and suit, the data convincingly showed traits such as a predisposition to a therefore potentially patentable, by that it was exactly the patient group particular disease condition or the virtue only of the identification of the as recited in the claims of the patent likely response to a particular drug. biomarker and, therefore, a “new” (antiviral treatment naïve chronic By screening for the presence of the group of patients to be treated? HCV genotype 1 patients with a specific variant in genetic samples, specific virus load) that profited most individuals who are likely to develop In an early case in which the European from the recited treatment. Following the particular disease condition and/ Patent Office (EPO) had to consider the conclusion reached in T19/86 and or respond well to the particular drug this issue (T233/96), an EPO Appeal T898/90, namely that the treatment can be identified, and timely and Board decided that, in order to be or diagnosis of the same disease with targeted therapy can be delivered. patentable, the new patient group the same compound could represent Personalised medicine based on must be distinguished from the known a novel therapeutic or diagnostic non-genetic biomarkers, such as the patient group by its physiological or application provided it is carried out occurrence of a particular protein or pathological status. In the Board’s on a new group of subjects, the Board by metabolic profiling, is also known. view this meant that, firstly, the decided that the claimed medical use new patient group could not overlap was novel. The Board would appear However, while this new field of with the known patient group (e.g. to have considered the biomarker medicine is incredibly exciting and sero-positive vs. sero-negative or recited in the claims (the specific holds great potential for the future of non-haemophilic vs. haemophilic HCV genotype and associated virus healthcare, it poses some tricky issues subjects) and, secondly, the identified load) to be capable of distinguishing for the patent industry. biomarker (e.g. being sero-positive or the claimed subject matter from that being non-haemophilic) must have known in the art, even though a very As many readers will be aware, a real impact on the therapeutic or high percentage of all HCV infections patents are awarded for inventions pharmacological effect achieved. were genotype 1 infections, which that are new, amongst other things. were known to be associated with a What this means is that the invention However, the Boards in subsequent high virus load, and thus, in general, cannot have been disclosed to the cases have not adopted this two-part by following the teaching in the art public prior to the date on which an test. They have allowed claims relating to treat chronic HCV patients with application for a patent is filed. to the treatment of “new” patient the indicated active agents, patients groups that overlap with known with the indicated biomarker would Does a patentable invention, then, lie groups. automatically have been treated. in the treatment of a group of patients having a particular biomarker, In T1399/04, for example, the So where does this leave us? when the biomarker was previously Board could not see a basis for the unidentified, but nevertheless present, earlier Board’s interpretation of the At the EPO at least, it seems as though in at least some of the patients that earlier relevant case law that it had a definitive answer could now be had the associated disease condition considered (T19/86 and T898/90). on the horizon. In a recent meeting

18 www.vennershipley.co.uk

“ It is hoped that the decision makers at the EPO will see the vast potential that such medicines hold for our future. ”

between the EPO and the biotech been “made available to the public”. a previously undisclosed species committee of the European Patent Can it really be said that a previously within a previously disclosed genus is Institute (the professional institute for unidentified biomarker has already found to have a surprising advantage, European Patent Attorneys), the EPO been “made available”? After all, it a patent can be obtained for that essentially said that, where patent had not previously even been known species. Relating this back to the claims are based on a genetic marker to exist! field of personalised medicine, the to treat a disease, the claimed subject population of patients would be matter can lack novelty, as one patient Such a secret, inherent phenomenon the known ‘genus’ and the patients with the genetic marker will inevitably may nevertheless be novelty- having the biomarker the previously have been treated, even if the prior art destroying for a later claimed undisclosed ‘species’. As the latter does not explicitly say so. invention if it is inevitable that, by is associated with the surprising following the teaching in the prior advantage of being indicative of a This comment indicates that the art, the skilled person would arrive at predisposition to disease and/or EPO may be about to change the way the invention being claimed. Clearly therapeutic efficacy, the invention it assesses novelty when looking at it is not inevitable that a patient will could arguably be considered a medical use claims that involve the have a particular biomarker. Is there selection invention. treatment of a specific patient group. not an argument against the EPO’s Could we see a reversion to the strict recent comment, then, that the prior Quite how the EPO will resolve the stance taken in T233/96? Personally, art cannot be novelty-destroying for issue of novelty for inventions in the I hope not. the later claimed invention because area of personalised medicines is not it is not the case that, by following clear. It is hoped that the decision One view is that the EPO has a moral the teaching in the art to treat a makers at the EPO will see the vast duty to permit patents for these group of patients with a particular potential that such medicines hold ‘biomarker’ cases. Without being able drug, a patient having the biomarker for our future, and will decide on the to obtain patents for personalised would inevitably be treated? If only relevant points of law accordingly. medicine, there would be no reward sometimes were a patient with the for such innovation, which could biomarker treated per patient group, Naturally, we shall keep you informed negatively impact upon research and this would not be enough for a novelty- of any developments. development in this vitally important destroying disclosure. Theoretically area. this would depend upon the prevalence of the biomarker with the disease. There is also, arguably, potential legal basis in the European Patent Nevertheless, European patents Convention for finding the treatment are presently awarded for so- of a specific biomarker patient group called ‘selection inventions’. A novel. selection invention is essentially the identification of a sub-range of subject For example, an application for a matter from a larger known range, patent will not be granted by the EPO where the sub-range has an improved Tanya Heare if the claimed invention has previously technical effect. For instance, where [email protected]

19 The R&D Relief Scheme

Directors of UK based companies will be well aware of the issues surrounding corporation tax. Surprisingly however, many companies operating in the UK are unaware of the R&D Relief Scheme operated by HMRC under which UK companies undertaking research and development (R&D) may reduce their corporation tax burdens, or even obtain repayments where no corporation tax has hitherto been paid. The purpose of this article is to provide readers with a brief overview of the R&D Relief Scheme in order to increase general awareness and to hopefully increase the level of use of the scheme.

Even though free money is effectively up It will thus be appreciated that and communications spheres are for grabs, current figures show that only determining whether or not an R&D particularly good examples where R&D around 7,000 SME companies claim project qualifies for relief is something takes place in supporting functions. R&D tax relief each year. Reasons for which companies would be better off this may be a general lack of awareness discussing with a financial advisor. Positively, R&D projects are not of the R&D Relief Scheme or because of Nevertheless, there are professionals excluded from relief solely on the an expectation that R&D projects must who specialise in assisting companies ground that they were unsuccessful. comply with strict criteria in order to make claims under the R&D Relief The qualifying rules appreciate that qualify for relief. Scheme and company directors would when an R&D project with an uncertain do well to at least consider whether or outcome is commenced the company For instance, qualifying companies not the scheme would be useful to them. undertaking the project is exposed to may claim tax relief under the R&D a level of risk. As such, they reward Relief Scheme if they undertake companies taking these risks by an R&D project which “…seeks enabling them to claim relief under the to achieve an advance in overall R&D Relief Scheme even if the R&D is knowledge or capability in a field of ultimately unsuccessful (provided the science or technology through the company“ directors company in question and their R&D resolution of scientific or technological activities qualify). uncertainty…”. This can be an advance would do well to in such a qualifying company’s own So, how much relief may be claimed? state of knowledge or capability, at least consider The answer depends on whether a provided the company employs whether or not the company is determined to be an “SME” competent professionals working in the or a “Large Company” under the R&D field of research whose uncertainty is scheme would be Relief Scheme and also depends on based on publicly available knowledge. the tax year in which qualifying R&D useful to them costs were incurred. As a rough guide, Determining whether or not an R&D however, for SMEs the tax relief on project qualifies for relief is not ” allowable R&D costs is currently straightforward. This is because the 225%. In other words for each £100 of defining statutory guidelines, and It is worth saying that there are qualifying costs, the reduction applied HMRC’s interpretations, are complex innovative companies in almost every to the income on which a qualifying and contain definitions of various terms industry that make successful claims company pays corporation tax could be appearing in the above mentioned under the scheme. Successful claims uplifted by an additional £125 on top of qualifying criteria including “project”, are known to encompass a broad range the £100 spent. For “Large Companies” “advance in science or technology”, of innovations including products, the tax relief on allowable R&D costs “science”, “scientific or technological services and their associated support is currently 130% i.e. an uplift of 30% uncertainty” etc. functions. The software, internet applies.

20 www.vennershipley.co.uk Relaxing the

As regards the definition of SME, PCT(UK) Fast Track positively this is quite broad in that it includes companies with up to 500 The UK Intellectual Property Office employees and those with a turnover of (UKIPO) has announced a relaxation in the up to 100m Euros or assets up to 86m Euros. However this is not all and more requirements for using the PCT(UK) Fast complex definitions of ‘partner’ and Track service. ‘linked’ companies need also to be taken into account when determining whether Since its introduction on 28 May 2010, the PCT(UK) Fast Track a company can be considered an SME service has enabled applicants to request accelerated examination in under the scheme. the UK national phase provided their application fulfilled particular requirements. Specifically, the original scheme was only available if The most generous aspect of the R&D the derivative international (PCT) application had received a positive Relief Scheme applies to loss-making International Preliminary Report on Patentability (IPRP) or a positive or marginally taxpaying SMEs where Written Opinion of the International Searching Authority (WO-ISA) on the loss, as enhanced by the R&D all of the claims. The service was unavailable if any objections to novelty, uplift, may be surrendered for cash. For inventive step or industrial applicability had been raised against any of periods ending after 31 March 2012, the claims, even if these claims were deleted on entry to the UK national this is no longer restricted by the PAYE/ phase. NIC paid by the company. For example, a company whose unadjusted loss With effect from 8 June 2012, the requirements have been relaxed exceeds its qualifying R&D expenditure so that acceleration may be requested where all the claims on file in will qualify for a refund of 25% of that the UK national phase sufficiently correspond to one or more claims expenditure. indicated as allowable in the IPRP or WO-ISA. The claim correspondence requirements are the same as those applied by the UKIPO under the Finally, if you’re learning about the Patent Prosecution Highway (PPH) which is a similar scheme that R&D Relief Scheme for the first time allows an applicant to request accelerated examination if the claims of and are wondering if you can claim an application have been found to be acceptable by certain other foreign R&D relief for projects undertaken in intellectual property offices. the past you’ll be pleased to know the answer is yes. Retrospective claims It is now possible for applicants to use the PCT(UK) Fast Track service can go back two tax years, however for provided the unacceptable or non-examined claims are deleted on entry further details on this complex issue it is to the UK national phase or if the claims are amended to be of a narrower advisable to speak with an experienced scope than those found allowable in the IPRP or WO-ISA. financial advisor, for instance co-author Laurence Bard. A request for processing under the PCT(UK) Fast Track must be received before UK examination has commenced, indicating how the claims currently on file sufficiently correspond to one or more claims that were indicated as acceptable in the international phase in the IPRP or WO- ISA. The UKIPO requires no further reasons for accelerated examination to take place. If the request is allowed, accelerated examination will take place and the UKIPO aims to issue a substantive examination report within 2 months of receipt of the request in at least 90% of cases.

This service is available in addition to the other types of fast track service provided by the UKIPO including accelerated search and examination, Steven Charlton which can only be requested if the applicant gives suitable reasons for [email protected] the request, and the Green Channel for patent applications relating to a ‘green’ or environmentally-friendly technology.

Laurence Bard Partner, Smith & Williamson LLP Ruth Shelton [email protected] [email protected]

21 clusters change and develop. For example, the clusters may grow, The evolution of contract, merge, or divide, depending on the underlying technologies.

Using the algorithm, the researchers technology “predict” evolution from the more distant past to the recent past. If found The first US patent (US 000,001) was granted in 1790 to be accurate, the same approach may then be then used to extrapolate into to Samuel Hopkins and was personally signed by the near future. The approach was George Washington. Since then, many millions of US tested using patents in the “agriculture, patent applications have been filed and more than 8 textiles, and food” category and found that it accurately predicted the million US patents have been granted. emergence of new technologies relating to non-woven textiles. One of the In the United States in particular, it is of natural selection. Inventions that authors of the study, Péter Érdi claims a requirement that applicants cite any spawn the largest numbers of offspring that “clusters can emerge from the grass previous patents that can be considered are those that drive the evolution of roots data before there is widespread to be relevant to determining whether technology. awareness that a new field is emerging.” the claimed invention is sufficiently novel and non-obvious to be patented. The genealogical analysis corresponds Clearly this approach is only as robust It is increasingly being recognised that, well with the known dynamics of as the US patent system, which is as a result of this citation requirement, technological progress. The work has known to have quirks which may skew the US patent database represents revealed that the range of subjects the findings. However, by providing an a valuable record of technological covered by patents is increasing at a accurate map of existing technologies, it evolution. Due to improvements in predictable rate. Interestingly, there are is hoped that this method may provide computing power and the digitisation some surprises. For example, several a useful tool to give companies an idea of patent databases, this enormous of the most successful patents are where demand in a particular field may treasure trove of information is now associated with inkjet printing. “It’s be headed. starting to be exploited. really a great technology for precisely positioning tiny bits of matter: skin, cells, DNA, metal, and so on” says Mark “ Bedau, one of the authors of the study. the US patent The study also reveals the popularity of traits over time, and identified the database represents internet and biotech booms of the a valuable record 1990s. It is thought that this type of analysis might help identify burgeoning of technological areas of technology. Matt Handley evolution [email protected] Indeed, other researchers are now ” specifically using the database of References US patents to attempt to predict [1] Chalmers et al “High-content words in patent the emergence of new technologies. records reflect key innovations in the evolution One recent study [1] is based on an of technology”, Proc. of the Alife XII Conference, analogy between technological and One recent study [2] applies the Odense, Denmark, 2010. biological evolution. Patents are mathematics of “predictive analytics”, [2] Péter Érdi et al “Prediction of Emerging which is a branch of data mining Technologies Based on Analysis of the U.S. Patent considered to be individual organisms, Citation Network”, arXiv:1206.3933v2 [cs.SI] 6 wherein citations link consecutive concerned with the prediction of Aug 2012. generations. The genetic traits of future trends, to analyse the US patent the organism are represented by the database. technical features of the invention, which may be inherited by subsequent The researchers have developed an generations of patents. In contrast algorithm which allows patents to be to biological systems, however, the clustered based on the frequency “fossil record” is essentially complete, at which new patents cite pre- accurate, and unambiguous, and existing patents. Over time, includes every organism (patent) in the as technology evolves, the population.

According to this model, different inventions compete for adoption by users in various niches, and the spread of technical features in niches is analogous to the Darwinian process

22 www.vennershipley.co.uk Nespresso’s European patent causes a stir The dispute between Nestlé and its rivals over coffee capsules grinds on.

As previously reported, Nestlé’s against the decision handed down by to the EPO complaining of the way research company, Nestec, was granted the Opposition Division at the April that Nestec “randomly slows down and a European patent (EP 2 103 236 B1) for hearing. Nestec has also appealed speeds up proceedings”. a capsule extraction device. The patent against the decision on the ground that was opposed by four parties: Sara Lee, the patent was not maintained in its The EPO file gave no clue about what Casino, Ethical Coffee Company and original form. was happening in Germany, although Beyers Koffie. this information is available through The appeal proceedings at the EPO are other sources. Since our previous report, it looks as if still ongoing and we will report further the proceedings before the Opposition developments. In August, a Düsseldorf court refused Division have proceeded far from to grant Nestec an injunction against smoothly. While proceedings at the EPO have been Ethical Coffee Company and another rumbling on, proceedings in European Swiss company, Betron AG, preventing A hearing at the European Patent Office national courts have been gently them from selling coffee capsules for (EPO) in 2011 unexpectedly overran the Nespresso machine. Nestec argued into a second day which meant that that both companies indirectly infringed representatives for Sara Lee and Ethical their European patent. However, the Coffee Company were unable to attend the“ interests of court found that Nestec had exhausted the whole hearing. On the second day, its rights by selling Nespresso coffee having found that the claim to priority the consumer to machines. The court also stated that was not valid for the characterising the unhindered the capsule represented no substantial portion of the main claim, the part of the invention. It concluded Opposition Division adjourned the use of the device that the interests of the consumer hearing and scheduled another hearing to the unhindered use of the device to examine the outstanding matters. outweighed the outweighed the interest of Nestec to interest of Nestec commercially exploit the invention. In January 2012, Sara Lee filed an appeal requesting that a new Opposition to commercially It is clear that the various legal disputes Division be appointed and that the between the parties are getting further whole hearing be conducted anew. exploit the heated and that there is still some way Sara Lee expected the appeal to cause invention to go before they are concluded. So the existing proceedings before the far there have been mixed results for Opposition Division to be suspended ” Nestec. Importantly, however, Nestec’s and so expected postponement of simmering. The EPO’s file on EP 2 103 European patent for the capsule the new hearing. But the Opposition 236 B1 provides tantalising insights into extraction device is still in force, at least Division had other ideas. The hearing what is going on. for now. still went ahead in April 2012 (the opponents now joined by an intervening Sara Lee initially sought a declaration party, the Italian coffee maker Casa del of non-infringement in a court in Caffè Vergnano) and the Opposition Belgium. In response, Nestec initiated Division maintained Nestec’s patent in infringement proceedings against Sara amended form. Lee. Nestec has also sued Sara Lee in the Netherlands, France and Spain, Sara Lee (now in the form of spin- and Casa del Caffè Vergnano in Italy. off company, DE Master Blender) Sara Lee has not been happy with the has withdrawn its original appeal, way that Nestec has conducted itself but together with Casa del Caffè in national proceedings and before the Pawel Piotrowicz Vergnano and Casino, has appealed EPO. Its legal representative has written [email protected]

23 conveys is that there must be some real reason for supposing that the statement Using post-published is true. The important point, however, is that the standard is not any higher evidence – Mylan v than that’. Finding this point adequately settled in law, Arnold J turned his attention Yeda and Teva to two related points raised by Mylan, which were not so clearly established. Firstly, Mylan submitted that, where it The UK High Court has recently given guidance on the was inherently unlikely that the claimed invention solved the technical problem use of post-published evidence, in Generics [UK] Ltd addressed by it, or where the opponent trading as Mylan v Yeda Research and Development adduced evidence which cast doubt on Co. Ltd and Teva Pharmaceutical Industries Ltd. this, the burden fell on the patentee to demonstrate on the balance of

This“ decision confirms that post-dated evidence can be relied upon only in limited circumstances ” Yeda’s patent EP(UK) 0 762 888 has Arbitrary selection probabilities that the claimed invention been found valid and infringed by did indeed solve the problem. Secondly, Mylan’s proposed glatiramer acetate In addition to conventional arguments Mylan contended that even if the patent product. In a lengthy decision of 11 July that the claimed inventions were did make the invention plausible, it 2012, Mr Justice Arnold considered obvious in view of the prior art, Mylan remained open to the other party to cast issues relating to entitlement to priority, contended that the product claims were doubt on this by post-dated evidence. obviousness, insufficiency and added- obvious since the molecular weight characteristics defined in the claims matter. Notably, in his decision Arnold Burden of proof J provided some clarification with represented an arbitrary selection with respect to the reliance on post-dated no technical merit. In alleging that the burden of proof evidence in proceedings to demonstrate should rest with the defendant, Mylan or to cast doubt upon the technical In considering the issue of obviousness referred to EPO Board of Appeal effect underlying the claimed invention. for lack of technical merit, Arnold decision T939/92 (Agrevo/Triazoles) J summarised the position adopted where it was held that ‘if it is evident by the UK Courts, as set out in detail that the number of compounds claimed Background in Sandvik Intellectual Property AB is such that it is inherently unlikely that Yeda is the proprietor of European v Kennametal UK Ltd. In this case all of them, or at least substantially patent 0 762 888, which is exclusively it was concluded that ‘where it is all of them, will possess the promised licensed to Teva in the UK. The patent suggested that a claimed invention activity, then the burden of proof of relates to glatiramer acetate (also is obvious as being an arbitrary that fact, namely the possession of known as copolymer-1) a synthetic selection, the key question is whether that activity, can indeed rest only on polypeptide, which is defined in the the specification ‘passes the threshold the shoulders of the person alleging claims in terms of molecular weight test of disclosing enough to make it’. Reference was also made to EPO fraction. In the UK, Teva markets the invention plausible’, or, as Lord Board of Appeal decision T1797/09, glatiramer acetate under the trade Hoffman put in Conor v Angiotech ‘to where it was found that ‘if the Opponent name Copaxone for the treatment of make it plausible that the selection has succeeds to cast reasonable doubt relapsing-remitting multiple sclerosis. the technical significance claimed for on the alleged effect, the burden to The Claimant, Mylan, sought revocation it’. Further guidance could be found, he prove its allegations is shifted to the of the UK patent and a declaration of determined, in Lord Hope’s statement Patent Proprietor’. On this basis Mylan non-infringement to pave the way for its in the decision of the Supreme Court contended that, where reasonable own generic glatiramer acetate product in Human Genome Sciences Inc. v Eli doubt existed, or could be instilled by to be launched in the UK. Lilly & Co. ‘that the sense [‘plausibly’] reference to post-dated evidence, the 24 www.vennershipley.co.uk

burden of establishing that the technical With respect to Mylan’s contention followed that it could not be used to shift effect was achievable for the claimed that even if the patent did make the the evidential burden to the patentee invention was shifted to the patentee. invention plausible, it remained open to demonstrate that the invention does to the Claimant to cast doubt on this solve the technical problem. plausibility by reference to post-dated Post-dated evidence evidence, Arnold J considered that This decision confirms that post-dated Neither party disputed that if the patent, the question to be addressed was ‘If a evidence can be relied upon only in when read with the skilled person’s patent does disclose enough to make limited circumstances, to confirm that common general knowledge, did not the invention plausible at the priority the disclosure in the patent either does disclose enough to make it plausible or filing date, can an opposing party or does not make it plausible that the that the invention solved the technical come along 20 years later and say that, invention solves the technical problem. problem, it was not permissible for in the light of subsequently acquired The finding that post-dated evidence the patentee to rely on post-dated knowledge, in fact the invention does cannot subsequently be used to cast evidence to demonstrate the technical not have the technical benefit that it doubt upon this premise should come effect. Arnold J referred to a number appeared to have?’ as some relief to patentees, who will of decisions supporting this premise, not face revocation, or bear the burden including Justice Kitchin’s statement in On this point Arnold J ruled against of proof to rebut allegations, on the Generics (UK) Ltd v H Lundbeck A/S the Claimant, finding that post-dated basis of subsequent evidence which that ‘a patentee cannot seek to bolster evidence may not be relied upon ‘to undermines the plausibility of the the inventive nature of his monopoly contradict a technical effect made granted patent. by relying on a discovery which he had plausible by the specification’. In his not made at the time of the patent’. view it would be ‘bizarre’ if a patent Where the technical effect was plausible which at the time it was applied for on the basis of the patent specification, disclosed what everyone thought was however, Arnold J did acknowledge a good invention ‘could be revoked that post-dated evidence supporting the 20 years later because subsequent disclosure, could, and has been taken advances in science had revealed that into account, referring to established in fact the invention did not solve the Board of Appeal decisions T1336/04, technical problem’. Having found that T433/05 and T898/05, where the initial post-dated evidence could not be used disclosure ‘was plausible and confirmed to cast doubt on the plausibility of the Eimear Sampson by the later evidence’. technical effect, Arnold J’s decision [email protected] The Unitary Patent Proposal – the debate rolls on… On 29th June 2012, the EU finally decided that the seat of the Central Division of the Unified Patent Court will be in Paris and that sections of the Central Division will be established in London and Munich with each of them dealing with specialised subject matter. As previously reported, the Unitary Patent proposal is being considered this to be unlawful and consequently cancelled pursued under the “enhanced cooperation” scheme as the the final reading and vote on the unitary patent package. Italian and Spanish delegations opted out and continue to The matter has now been referred back to the Legal Affairs object to the proposed language regime. On 25th September Committee of the European Parliament for further debate 2012, Italy and Spain began their legal challenge with the under the new Cypriot Presidency. Court of Justice of the European Union (CJEU) in which they have sought annulment of the Council’s Decision authorising The latest draft of the Unified Patent Court Agreement was enhanced cooperation on the grounds that the Council has published by the Cypriot Presidency on 28th September 2012 “failed to respect the judicial system of the European Union”. and incorporates the agreed location of the Central Division but still includes the controversial Articles 6 to 8. Following the Decision on the seat of the Central Division, a vote on the Unitary Patent due to take place in July 2012 was On 11th October 2012, the Legal Affairs Committee of the postponed due to the continued controversy surrounding the European Parliament held an exchange inclusion of Articles 6-8 of the Draft Regulation, which obliges of views regarding the Unitary Patent a unified court to refer questions relating to infringement of a from which it is clear that the European Unitary Patent to the CJEU. Many people remain concerned Parliament has not backed down on their that this will lead to substantial delay and uncertainty, with objection to the deletion of Articles 6 to 8 questions of complex patent law being presided over by a and so the debate is clearly set to continue. non-specialist judiciary. In their Decision of 29th June 2012, the EU Council had suggested the deletion of Articles 6 to 8 Ian Grey of the Draft Regulation. However, the European Parliament [email protected] 25 The smartphone patent wars continue: HTC v Apple in the UK

The “smartphone wars” continued in the UK between Apple Inc. and HTC Europe Co. Ltd, with a High Court decision issued recently. Four patents of Apple were at issue, including the famous “slide-to-unlock” patent. Apple claimed infringement of the patents, HTC having initiated the proceedings by applying for their revocation. After 14 days of hearing, HTC will have been pleased with the result for all four of the patents – three held invalid, and the fourth held not to be infringed.

Multi-touch inputs Europe, since it has an effect on the In the “arc unlock”, it was held that functioning of the device as a whole. the arc was not considered to be a EP 2098948 relates to how a device free moving object, its path being handles multi-touch inputs. Multi-touch Apple’s patent EP 1964022 on slide- determined by the software. Chevrons inputs can be a useful part of a user to-unlock specifies in claim 1 “moving displayed on the screen indicated a interface, for example the “pinch-to- an unlock image along a predefined path. Therefore, there was movement zoom” feature. However, an application displayed path”. This feature is clearly of an unlock image ‘the arc’ along a considering multiple inputs might seen on the familiar Apple iPhone. The predetermined displayed path, and so require more complex programming. drawing in the patent is similar, albeit was held to infringe. To simplify the recognition of single less refined. HTC uses several different and multiple touch events, the patent unlock features, “ring unlock”, “icon The judge noted that decisions had describes that each view within a mechanism”) and “arc unlock”. been issued in corresponding European particular window can be configured as either a multi-touch view or a single touch view. The patent specifies that a flag is set to determine how the multiple touches should be handled, i.e. ignored Given“ the fierce competition between the or recognised. major manufacturers at the moment, it The judge, Mr. Justice Floyd, held that looks like the smartphone patent wars will claim 1 was invalid as obvious over common general knowledge alone. continue for the time being It was considered obvious that when designing an operating system for a ” multi-touch device, a skilled person would use flags as a routine application In the “ring unlock”, a ring is moved patents in Germany, in proceedings of common general knowledge design by a swiping gesture broadly upwards. involving other Android manufacturers, principles. This is unusual since prior Although the start point is defined, and namely Samsung and Motorola art is normally relied upon when finding an endpoint is very broadly defined, the Mobility. The judge considered that his claims lacking inventive step, but here device does not require a particular path interpretation was broadly in line with only common general knowledge was between the two. In particular, there is the published decisions available to used. not a predefined path. Therefore, the him. “ring unlock” was held not to infringe. HTC challenged the validity of the Slide-to-unlock The “icon mechanism” operates by patent based on a prior art document A “slide-to-unlock” feature, of one type dragging an application icon into the in the name of Hyppönen. Hyppönen or another, will be familiar to anyone ring to activate that application. The provides for the selection of an initial who has used a smartphone. Briefly, icon can be moved along any path password using several sliders to a swiping input gesture unlocks the between its starting and finishing unlock the device. In particular, the phone, allowing full functionality. points, and there is no predefined path last movement of the slider can be The unlocking can be considered as or any displayed path. This embodiment considered to be along a predefined technical, and hence patentable in also was held not to infringe. displayed path to unlock the device. 26 www.vennershipley.co.uk

Although this interface looks very the invention was made when mobile Summary different to the Apple “slide-to-unlock” phones were much cruder and heavier concept, the judge held the patent than those with which we are familiar This decision is only one of several lacked novelty over Hyppönen. today. The patent relates to sending ongoing patent disputes between many messages, i.e. SMS text messages, in of the major telecoms companies. At The patent was also considered to different languages. The patent specified least some of these patents have also lack an inventive step over an earlier different memory sections storing been considered in the Netherlands launched by Neonode in the different alphabets. This was held and Germany, and proceedings are Sweden in July 2004. The phone had to have a broad interpretation, and still ongoing in those jurisdictions. a touchscreen, and was unlocked by a mean merely that the characters which Although this English decision is swiping gesture. The difference was that differed were stored, rather than a not binding on other jurisdictions in there was no image which was moved separate and distinct set of characters Europe, the decision is likely to be by the swiping gesture. The judge held for each language. On this broad read and considered in future court it would have been obvious to improve interpretation the patent was held to proceedings. The recent billion dollar the design by providing feedback of the be obvious over a proposal to change ($1,049,393,540) damages award swipe, for example by providing a well the GSM standard to include Arabic given to Apple against Samsung in known slider image. characters (Arabic TDoc). In the light of California, the fourth highest patent this proposal, it was held that a skilled damages in history, illustrates how The judge also considered whether the person would contemplate including much is potentially at stake. Given the invention related to excluded subject the ability to receive messages in both fierce competition between the major matter. Following the Aerotel and Arabic and Western characters. manufacturers at the moment, it looks cases, the judge considered like the smartphone patent wars will if there was a contribution which went The patent was also held to be obvious continue for the time being. beyond a computer program or the mere in view of an earlier mobile phone, presentation of information. He held the Hagenuk phone, which allowed the invention provides a technical effect selection of languages for the menu “outside of the computer, namely an and to store names in the Phone Book. improved switch”. Therefore, although However, this Hagenuk phone did the subject matter of the invention is not have any messaging capability. obvious, the patent does not relate to Nevertheless, the judge held that if excluded subject matter. the Hagenuk was adapted for SMS messaging, the existing method of Photo gallery character and language selection would be retained. Alex Bruce EP 2059868 relates to a user interface [email protected] for a photo gallery. Claim 1 was the subject of some interpretation, not least because only a relatively small part of the patent specification related to the claimed invention. The decision held that claim 1 related to two commands (e.g. swipe commands) when viewing a Come and meet zoomed-in image. The first command translates the image and displays an area beyond the edge of the image, but “bounces back” to the original image. Venner Shipley A second command translates the image and displays a further image, Members of Venner Shipley are speaking for example, a further image in a photo at two conferences in the near future: gallery (Fig. 7). This interpretation followed HTC’s submissions, and We will be speaking at The Agrochemical Conference on 27 and is relatively narrow. HTC’s photo 28 November at Newmarket Racecourse Conference Centre where application, Gallery, was held not to we’ll be discussing the role that patents play in this sector. infringe. However, claim 1 was also considered to be valid – novel, non- For further information go to http://www.avakado.eu/dev/ obvious and not excluded subject Events/Agro-Chemical-Conference-2012. matter. Although HTC did not succeed in having the patent revoked, the We’ll also be speaking at the Rushlight Show 2013 on 31 January finding of non-infringement can be at the Royal College of Surgeons in London. The show is aimed considered a success. in the main at companies that are developing and deploying clean technologies. SMS in different For further information, go to http://www.eventuremedia.co.uk/ languages index.php/em/event/action/view/frmEventID/18/ EP 1168859 is an old patent, dating from 1994. As the decision states,

27 Isolated genes: product of man or nature?

In general, two criteria must be satisfied for a patent to be granted for an invention: first, the subject matter of the invention must be considered eligible for patent protection; and second, the subject matter of the invention must be considered novel, inventive, and capable of industrial application. Whether or not, and in which form, genetic material satisfies the first criterion is a question which continues to be asked in many jurisdictions, and a ruling at the US Court of Appeals for the Federal Circuit (CAFC) on 16 August 2012 in a case between Myriad Genetics (the Defendant) and numerous other parties (the Plaintiffs) marks the latest significant development in answer to this question in the United States.

Since the case before the CAFC concerned the first criterion which must be satisfied for patent protection, it thus whether“ or not the patent-eligibility of centred on how Section 101 of Title 35 of the United States Code (35 U.S.C. isolated genes should be considered a §101) — the Section of US Law directed special case, and judged according to a to the patent-eligibility of subject matter — should be interpreted. This Section different set of conditions, remains open states that: to debate “Whoever invents or discovers any new and useful process, machine, ” manufacture, or composition of decision to remand the case following The composition claims challenged matter, or any new and useful another important case in March 2012, by the Plaintiffs were directed to the improvement thereof, may obtain in which §101 had to be interpreted isolated genes, BRCA1 and BRCA2, a patent therefore, subject to the in order to resolve a separate dispute which are genes that are known to conditions and requirements of this between Prometheus Laboratories and increase the probability of a carrier title. “ Mayo Medical Laboratories. developing breast and ovarian cancers. It is already established in the US However, some judicial exceptions to In the most recent hearing before the that a patent cannot be granted for an patent-eligible subject matter have been CAFC, the Plaintiffs challenged the unisolated gene — that is, a gene in made explicit under the Section, the patent-eligibility of fifteen claims from a living organism. The reasoning for most relevant of these being that: seven of Myriad’s patents. There were this is that a gene in a living organism three types of claim to be considered: is a product of nature and therefore “Laws of nature, natural composition claims directed to isolated patent-ineligible according to §101. phenomena, and abstract ideas are genes, method claims directed to The Plaintiffs protested that this not patentable.” comparing or analysing gene sequences, same reasoning should apply for an and method claims directed to the isolated gene, and that the isolated The dispute between Myriad Genetics screening of cancer therapeutics. genes claimed in Myriad’s patents, and and the Plaintiffs has a relatively long The most important of these were indeed any isolated genes in general, are history: it had been before a Federal the composition claims, and this was products of nature and therefore patent- District Court in March 2010 and because resolving whether or not they ineligible according to §101. the CAFC in July 2011, before being constituted patent-eligible subject remanded to the CAFC by the US matter would require the CAFC to It therefore followed that, in order to Supreme Court for this most recent provide an opinion on the patent- determine whether or not the isolated hearing. The Supreme Court made the eligibility of isolated genes in general. genes of BRCA1 and BRCA2 should 28 www.vennershipley.co.uk

be considered eligible for patent unisolated equivalent does not add of §101 and constitutes patent- protection, it had to first be determined “enough” to the underlying genetic eligible subject matter. In addition, it whether an isolated gene should be sequence to be considered patent- thus followed that Myriad Genetics’ considered a product of Man or a eligible under §101. composition claims directed to the product of nature. isolated genes, BRCA1 and BRCA2, were The Court agreed with Myriad Genetics, valid in the opinion of the CAFC. Myriad Genetics argued that an isolated deciding that an isolated gene is not gene should be considered a product of a product of nature and does not, Finally, it is important to note that Man, reasoning that the isolated DNA therefore, constitute patent-ineligible although the CAFC came to this claimed in the disputed patents is “a subject matter according to §101. In decision, the Court went to great effort nonnaturally occurring manufacture short, the Court reached this decision by to emphasise that the only question put or composition of matter” with “a focussing on how the kinetically-stable before the Court was the question of distinctive name, character, and use”. In arrangement of atoms in an isolated patent-eligibility in view of §101, and addition, they highlighted that isolated gene is different to the kinetically-stable that it was therefore this question, and DNAs do not exist in nature and that, arrangement of atoms in an unisolated this question only, which was answered. unlike naturally-occuring DNA, isolated gene, rather than how the sequence The question, therefore, as to whether DNAs can be used as molecular probes of nucleotides in an isolated gene is or not the patent-eligibility of isolated or primers for DNA synthesis. the same as the evolutionarily-stable genes should be considered a special sequence of nucleotides in an unisolated case, and judged according to a different Contrary to this, the Plaintiffs gene: set of conditions, remains open to argued that an isolated gene should debate. be considered a product of nature, “The claimed isolated DNA reasoning that isolated DNA carries molecules are distinct from their the same informational properties as natural existence as portions unisolated DNA. More specifically, of larger entities, and their they appealed to the fact that, since an informational content is irrelevant isolated gene has the same sequence to that fact.” of phosphate-linked nucleosides as an unisolated gene, it carries the same In conclusion, therefore, it was decided genetic information and is therefore not at the CAFC that an isolated gene is a “markedly different”. In addition, they product of Man rather than a product argued that any chemical differences of nature, and that, for this reason, an Dan Day an isolated DNA has compared to its isolated gene satisfies the conditions [email protected]

29 also discuss various different types of background art (documents relating to Updated Guidelines for standard technical knowledge, prior art relevant to the dependent claims only, Examination in the EPO “in-house state of the art”). The Guidelines for Examinations in the European There are also new paragraphs on the formatting of background art citations Patent Office (EPO) have recently been updated. This (paras. 4.3.1, 4.3.1.1. and 4.3.1.2). article takes a look at some of the changes and how Finally, the chapter includes a new they reflect trends in European patent law and practice. section on sequence listings (sec. 6) and, in particular, on references to sequences The Guidelines for Examinations in corrections (part H). Part D still relates disclosed in a (publicly available) the EPO give instructions about the to opposition and limitation/revocation database. practice and procedure to be followed in procedures and part E still relates to Chapter III relates to sufficiency of the various aspects of the examination general procedural matters. However, disclosure. There are several changes in of patent applications and patents. some of the material in the old part D this chapter. EPO examiners may depart from has been moved to the new parts G and the Guidelines in exceptional cases. H. For example, in the first section (sec. However, as a general rule, parties can 1), there is a new sentence explaining expect the EPO to act in accordance Thus, a lot of material has been moved that the “whole area claimed” (which with the Guidelines. Thus, they are and many chapters, sections and must be sufficiently disclosed) is to an important, everyday reference for paragraphs have been renumbered. be understood as substantially any European patent practitioners. Fortunately, the EPO have provided embodiment falling within the ambit of tables showing the correspondence a claim, even though a limited amount The Guidelines are updated at between the old and new versions of the of trial and error may be permissible. regular intervals to take account of Guidelines. developments in law and practice. The chapter now includes a section Updates can be dictated by events One of the results of these changes is on the burden of proof as regards the such as changes to the implementing that procedural matters and substantive possibility of performing and repeating regulations, new decisions of the EPO’s requirements are now dealt with in the invention (sec. 4), which, in the old enlarged board of appeal and, to some separate parts. This makes sense, not Guidelines, was in part D (opposition). degree, by technical board of appeal least because some of the substantive requirements are relevant to several decisions (of which there are ~1,000 per There are also new paragraphs relating of the procedural stages, for example year). Moreover, updates can also reveal to the deposit of biological material in search and examination or examination aspects of law and practice on which the case of applications which claim and opposition. the EPO considers it possible, desirable priority from previous applications or necessary to provide guidance. In (para. 6.4) and Euro-PCT applications other words, they are a good indicator of (para. 6.5). current issues at the EPO. Part F (The European Patent Application) The chapter also includes a new section An updated set of Guidelines entered Part F of the new Guidelines includes on “reach-through” claims (sec. 9). into force in June 2012 (see www.epo. a lot of material which will be familiar Amongst other things, it is said that org/law-practice/legal-texts/guidelines. from the old Guidelines. However, there claims directed to merely functionally html). This article provide an overview have also been some significant and/or defined chemical compounds that are of the changes and looks in more detail interesting changes. to be found by means of a new kind at some of the changes relating to the of research tool are directed to future substantive requirements to be met by a Chapter II relates to the content of inventions for which patent protection European patent application. a European patent application other under the EPC is not designed. than the claims. Compared to the Overall changes to the corresponding sections of the old There is also a new section on Guidelines, this chapter includes just a sufficiency of disclosure and Rule Guidelines few changes. 56 EPC (withdrawing missing parts) The most striking difference between (sec. 10). the old and new Guidelines is that there For example, the chapter now includes a are now eight main parts rather than section relating to the abstract (sec. 2), Finally, there is a new section on five. Parts A and B still relate to the which, in the old Guidelines, was in part sufficiency of disclosure and clarity (sec. formalities examination and search B (search). 11), explaining, amongst other things, respectively. However, the old part C that an ambiguity in a claim will lead to (substantive examination) has been The paragraph relating to background an objection under Art. 83 EPC only if split into four different parts relating art (para. 4.3) includes several new the whole scope of the claim is affected. to procedural aspects of substantive sentences. These state that, in principle, examination (part C), the European when filing an application, the applicant Chapter IV relates to the claims (Art. patent application (part F), patentability should cite in the description the 84 EPC and formal requirements) and (part G) and amendments and closest prior art known to him. They includes quite a few changes.

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For example, there are several new field. It is confirmed that they should be of lack of unity should be set out sentences in the paragraph relating to interpreted as means adapted to carry (para. 8.1) and a new paragraph on the when an application may contain more out the relevant steps/functions, rather determination of the invention first than one claim in the same category than merely means suitable for carrying mentioned in the claims (para. 8.2). (para. 3.2). These relate to interpreting them out (so that novelty is conferred some of the wording of the relevant over an unprogrammed apparatus). Finally, the paragraph relating to rule, Rule 43(2) EPC, specifically The other new sentences relate to an general principles (para. 11.1) includes “interrelated products” and “alternative exception to the rule that “Method for” a new sentence about further prior art solutions”. They also provide a couple claims should be understood such that becoming available and a lack of unity of examples of allowable sets of claims, the feature following the word “for” is of invention arising during substantive such as, for example, a claim to a part of the method. examination. It is said that the examiner certain circuit and a claim to apparatus should raise an objection only in comprising that circuit. Because Rule The paragraph relating to use claims clear cases, particularly if substantive 43(2) EPC is now also considered (para. 4.16) includes new sentences on examination is at an advanced stage. during the search stage, it can be an claims which combine (a) a screening important issue and so any clarification step (i.e. using a specified test material Chapter VI relates to priority. Although is to be welcomed. to select a compound having a given this is a relatively mature area of patent property) with (b) further production law, there are also a few changes in this The paragraph relating to independent steps. Claims of this type are said to be chapter. and dependent claims (para. 3.4) unclear. includes new sentences on certain types For example, the paragraph relating to of dependent claims, namely claims to The paragraph relating to disclaimers when a subsequent application can be alternatives referred to in independent (para. 4.20) includes new sentences considered as a first application (para. claims and claims dependent upon stating that a claim containing one or 1.4.1) includes various new examples. independent claims in two different more disclaimers must fully comply Amongst other things, it is confirmed categories. It is said that both types of with Art. 84 EPC, and that excluded that an application filed by reference claims should only be objected to if they prior art should be indicated in the to a previously filed application is not lead to a lack of clarity. description and the relation between the automatically excluded from being prior art and the disclaimer shown. considered as a first application. In the paragraph relating to independent claims containing a reference to another The chapter also includes a new The paragraph relating to the meaning claim of another category (para. 3.8), paragraph on broad claims (para. of the wording “the same invention” in several new sentences discuss claims of 4.23), which explains that objections to Art. 87 EPC (para. 2.2) includes several the form “Apparatus for carrying out the claims of this type may arise for various new sentences. These confirm that when process of Claim 1”. These claims are reasons (support/sufficiency, novelty, the claim and the priority document said to be unclear because they fail to inventive step). relate to different numerical ranges of state the (essential) technical features of values, the subject-matter is not directly the apparatus. There is also a new paragraph on the and unambiguously derivable from the order of claims (para. 4.24). Amongst priority document. The chapter also includes several new other things, this paragraph states that paragraphs on essential features. This when the broadest of a large number Summary seems to be a hot topic at the EPO. One of claims is a long way down so that it of these paragraphs explains the basis could easily be overlooked, the applicant The changes described in this article in Art. 84 EPC for objections arising should be required either to re-arrange are varied. In some cases, the wording from missing essential features (see the claims or to direct attention to the will be familiar from EPO board of para. 4.5.1). Another paragraph defines broadest claim in the description. appeal decisions that have now been essential features as those necessary for incorporated into the Guidelines. Many achieving a technical effect underlying Finally, the paragraph relating to lack of the changes can also be traced back to the solution of the technical problem of support vs. insufficient disclosure the EPO’s vision of “setting worldwide with which the application is concerned (para. 6.5) includes several new standards in quality and efficiency”. (see para. 4.5.2). Others explain to sentences discussing the similarities In any case, from the point-of-view of what extent essential features can be and differences between Articles. 83 applicants, it is clearly important to generalised (see para. 4.5.3) or can be and 84 EPC. keep up to date with the changes in law considered as implied by other terms in and practice as reflected by changes to the claim (see para. 4.5.4). Chapter V relates to unity of invention the Guidelines. and includes just a few changes. There is also a new annex with several different examples of where certain For example, in the section relating to features were or were not considered to lack of unity “a priori” or “a posteriori” be essential. (sec. 7), a new sentence confirms that documents cited under Art. 54(3) EPC Several new sentences have been added (novelty-only prior art) should be to the paragraph relating to “Apparatus disregarded in the evaluation of unity of for…”, “Method for…”, etc. (para. 4.13). invention. One of these relates to the interpretation of means-plus-function type features in The chapter also includes a new David Taylor the data-processing/computer program paragraph explaining how an objection [email protected]

31 Help or Advice Venner Shipley LLP If you would like more information or advice on any of 200 Aldersgate the topics covered in this issue please feel free to contact London EC1A 4HD us. We will be happy to answer any of your questions. Tel: +44 (0) 20 7600 4212 : +44 (0) 20 7600 4188 How to Subscribe or Unsubscribe: If you would like to subscribe or unsubscribe from Inside IP call Jo Hodson on +44 (0) 20 7600 4212 or email Venner Shipley LLP [email protected]. Byron House Cambridge Business Park Cowley Road This publication is printed on paper that is Cambridge, CB4 0WZ 75% recycled and 25% from sustainable wood sources. Tel: +44 (0) 1223 437979 Fax: +44 (0) 1223 437980 This newsletter is for general information for our clients. Its contents are not a complete statement of Email: [email protected] the law on any subject. Professional advice should be sought before any course of action is pursued. www.vennershipley.co.uk

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