Inside IP Venner Shipley’s Intellectual Property Magazine Autumn/Winter 2015

A green driver of innovation in the automotive industry PAGE 8

The on-going saga of Wearable tech: Veterinary patents – Warner-Lambert v Actavis an IP perspective barking up the right tree PAGE 6 PAGE 16 PAGE 28

European Patent & Trade Mark Attorneys What’s inside? and – the wait is almost over – Page 4 Jan Walaski examines the recent developments which are bringing the Unitary Patent (UP) and Unified Patent Court (UPC) ever closer to implementation.

The on-going saga of Warner-Lambert v Actavis – Page 6 Some light has been shed on the protection afforded by so called “Swiss-type” second medical use claims. Kate McNamara discusses.

A green driver of innovation in the automotive industry – Page 8 Alex Brown discusses how the strict emission targets being imposed upon the industry are one of the toughest drivers on innovation in the automotive sector.

What constitutes use in the European Union? – The European Trade Mark Registries’ contradictory decisions – Page 12 David Birchall discusses what constitutes genuine use in the EU of a CTM which is more than five years old.

Mind the gap…in – Page 14 Nora Fowler explains the new “Swissness” legislation that has been passed in Switzerland which will come into force on 1 January 2017.

Wearable tech: an IP perspective – Page 16 Rob Cork explores the IP challenges and opportunities presented by the recent advances in wearable devices.

Top German Court rules against Apple “slide-to-unlock” patent protection – Page 18 Apple’s method for unlocking the iPhone did not reach a high enough level of sophistication needed to be award patent protection, Kirwin Lee looks at the implications for obtaining EP patents on products containing a graphical user interface in light of this ruling.

Venner Shipley News – Page 19

Case law update – Page 20 Siân Gill summarises recent noteworthy English court and EPO decisions.

Patent Prosecution Highway – Page 22 Katherine Dainty explains how the Patent Prosecution Highway (PPH) can be an effective means of achieving a quick grant of applications.

Patents: Helping your agrochemical company grow? – Page 24 Chris Newcombe talks about the importance of patents in the agricultural industry.

The role of IP in internet retailing – Page 26 Robert McDougall highlights the important role of IP protection as the number of e-commerce businesses continues to increase.

Veterinary patents – barking up the right tree – Page 28 It is predicted that Britons will spend more than £4.5bn on their pets during 2015 alone. It is no surprise that businesses working in the veterinary sector are keen to protect their intellectual property; Anton Hutter and Catrin Petty explain further.

The geographic coverage of a European Patent – Page 30 Yichuan Xu explores the jurisdictions in which patent protection can be obtained on the basis of a European Patent.

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A word from the editor

Inside IP, sometimes at least, gives our attorneys a chance to write about aspects of IP that particularly interest them. This issue is no different and in our cover article, petrol head Alex Brown has an in depth look at what innovation is doing to the automotive industry.

Users of the European Patent Convention will be interested to read Yichuan Xu’s article on pages 31 and 32 about the expanding geographic coverage of a European patent. It will be interesting to see whether this trend continues with other states joining the European Patent Convention.

Keeping on the theme of geographic coverage, Jan Walaksi has an update on the Unitary Patent and Unified Patent Court on pages 4 and 5. As Jan says, the wait is almost over.

In terms of case law, Kate McNamara has an update on the Warner Lambert v Actavis matter on pages 6 and 7, and Siân Gill has a case law round up on pages 20 and 21.

On the trade mark front, David Birchall discusses the concept of “genuine use” in Europe on pages 12 and 13, and Nora Fowler discusses changes in Switzerland to geographic indications, particularly relating to marks including the word “Swiss”.

On pages 28 and 29, Anton Hutter and Catrin Petty discuss patents in veterinary science and on pages 24 and 25 Chris Newcombe discusses patents in the agrochemical sector.

Rob Cork discusses some IP issues with wearable tech on pages 16 and 17, and Kirwin Lee has an update on Apple’s “slide-to-unlock” patent on page 18. In addition, on pages 26 and 27, Robert McDougall discusses IP’s role in internet retailing.

I hope that you find this issue interesting. We value feedback enormously, and if you have any queries regarding any of the articles in this issue, please feel free to contact me or the authors at any time. Simon Taor Partner

About Venner Shipley:

Venner Shipley is a leading firm 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, Chambers Directory and Managing Intellectual Property Magazine and we pride ourselves on our high standards of service and quality.

3 Unitary Patent and Unified Patent Court – the wait is almost over After a long and drawn out courtship, it seems that the unitary patent is finally close to setting a date for the wedding. This article examines some of the more recent developments, which are bringing the Unitary Patent (UP) and Unified Patent Court (UPC) ever closer to implementation.

This year has seen a significant Other developments Protocol to UPC Agreement signed acceleration in preparations for On 1 October 2015, representatives joins the UPC implementation of the UP/UPC of member states signed a Protocol In another significant boost to the system. Most recently, on 1 October to the UPC Agreement. Its intention is UP/UPC system, Italy, Europe’s fourth 2015, the Preparatory Committee, to allow some, mainly administrative, largest economy, with a GDP of over which is tasked with implementation parts of the UPC Agreement to $2.1 trillion (2014), formally joined the of the system, announced that it be applied early, with a view to system on 30 September. expected to finish its work in June achieving a smooth transition 2016, in preparation for a start date in to implementation of the UPC Only , and now early 2017. This is significant because Agreement itself. For example, the remain outside the system. There it has always been understood that Protocol allows for the recruitment are tentative signs that Spain may the Preparatory Committee would of judges and testing of IT systems. It join at some time in the future, while not set a start date unless it was is also intended that the provisional Poland is maintaining a wait-and-see reasonably confident that this date application phase envisaged by the approach. Croatia is also expected to could be met. Protocol will be used to allow the join and is only outside the system early registration of requests to because it joined the European Union A timeline of some of the significant opt-out existing patents from the in 2013, after the UPC Agreement had events from 2015 is illustrated below. jurisdiction of the Unified Patent been signed. Court. The opt-out fee has been set at €80 per patent family.

UPC event timeline 2015 Renewal fees One of the most contentious aspects of the Unitary Patent has been the 5 May 2015 24 June 2015 11 August 2015 30 September 2015 Early 2017 level of the single renewal fee that Final Spanish Renewal Fees UK announces Italy formally Realistic start will be payable to the EPO. It was legal challenge Proposal London location accepted into date for new rejected adopted of UPC UP/UPC system widely expected that this would be set at the equivalent of the renewal fees payable for five contracting states. EPO statistics suggest that 50% of patents are validated in 3 or fewer states, 40% in 5 or more, 8% in 13 or more and 2% in all available 8 May 2015 24 July 2015 1 September 2015 1 October 2015 states. Somewhat surprisingly, and UPC court fees 18th draft of Rules becomes Protocol to beneficially for applicants, the actual consultation of Procedure 8th country to ratify UPC Agreement published published UPC Agreement signed level chosen is equivalent to the renewals for four member states (UK, , and ) and known as “True Top 4”. Although this proposal has not been finally agreed, it is not now expected to change.

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Cumulative renewal fees compared The chart on the right shows cumulative renewal fees payable 40,000 under the existing and proposed 35,000 systems. It indicates that for the 30,000 first 10 years of the patent life at least, the True Top 4 proposal is not 25,000 DE, FR, GB significantly more expensive than 20,000 25 States Euros a standard 3-country validation 15,000 of UK, France and Germany, while True Top 4 extending to 25 countries in Europe, 10,000 representing an additional GDP of 5,000 over $8 trillion. The savings against 0 an equivalent 25-country validation if 0 2 4 6 8 10 12 14 16 18 20 done today, which is only illustrated Years for the first 10 years to maintain a reasonable scale, are truly staggering. Examples of the proposed court fees side, including training and selection for some common actions are set out of judges, setting up of courts and Court fees in the table below. selection and implementation of A further administrative aspect of the required IT systems. A critical the UPC court system that requires momentum appears to have been definition are the court fees payable. Further progress achieved and we fully expect the The proposed court fees, which are Eight of the required thirteen system to be up and running in 2017. still under consultation, have been set countries have now ratified the UPC Between now and then, applicants with a view to the system being self- Agreement, and we expect that the will need to start making their own financing, and generally provide for a ratification process will be completed preparations for the new system, variable fee based on a fixed element during 2016. Progress continues including deciding on an opt-out and a value based element. to be made on the administrative strategy.

Court fee proposals

Action Fixed Value based Infringement €11,000 €2,500 - €220,000 for action values from €500,000 to €30 million plus Revocation (stand-alone) €20,000 fixed only -

Revocation (counter-claim) €11,000 As for infringement, but Jan Walaski limited to €20,000 [email protected]

5 The on-going saga of Warner-Lambert v Actavis Some light has been shed this year on the protection afforded by so called “Swiss-type” second medical use claims. Claims in this format, which read “Use of a substance X for the manufacture of a medicament for the treatment of disease Y” can be used to provide protection for any second or further therapeutic use of a known drug, providing the use is novel and inventive.

Swiss-type claims are no longer indication(s) not encompassed by In the first case in this series1, in permitted by the EPO (in accordance a granted patent for the drug in January 2015, Warner-Lambert alleged with Decision G2/08), having been question. that, despite the ‘skinny label’ applied replaced under the law change that to Actavis’ product restricting its use brought in the new European Patent However, the majority of prescriptions to epilepsy and GAD, the supply by Convention (‘EPC 2000’), by second in the UK are written generically, i.e. by Actavis of Lecaent would infringe their medical use claims (“Substance X for reference to the international non- patent. Warner-Lambert sought a very use in the treatment of disease Y”). proprietory name of the drug, and particular interim injunction requiring However, Swiss-type claims are present without reference to the condition for Actavis to prevent their drug from in numerous granted patents, which which the drug is being prescribed. being dispensed by pharmacies for the could remain in force for several years. As such, a dispensing pharmacist treatment of pain. will not always know whether, in the There has been little guidance as to case of a drug that can be prescribed Mr Justice Arnold refused to grant the the scope of protection conferred by for multiple conditions, they are injunction, determining, in relation Swiss-type claims. One issue has been dispensing the drug for a condition to the main infringement action, that that, in the UK, direct infringement of which is encompassed by a patent there was no serious issue to be tried. a claim does not require knowledge claim or not. The result can be In reaching this decision, Arnold J or intention of infringement, yet this dispensing of a generic version of a considered the meaning of the word clearly cannot apply to a second drug for the treatment of a patented “for” in Swiss-type claims. He noted medical use claim which is considered indication. that it was common ground between to be purpose-limited. the parties that “for” means “suitable These issues have come under scrutiny and intended for”, and, as it was not A further issue relates to prescribing in a recent series of related UK court disputed that Lecaent was suitable and dispensing of drugs. A generic cases. We first related details of this for treating pain, the key issue was version of a drug may not be in our Spring/Summer issue of Inside whether Lecaent was obtained by the marketed for the purpose of the IP and there have since been further use of pregabalin for the manufacture therapeutic indications specified developments which warrant detailing. of a pharmaceutical composition in a related patent. Whilst generic intended for the treatment of pain. drugs are required to carry the The patent in question (EP 0 934 061) Arnold J stated: “the word “for” in Swiss same information as the originator was for pregabalin, which is marketed form claims imports a requirement of drug, including dosage(s), method by Warner-Lambert (part of the Pfizer subjective intention on the part of the of administration and therapeutic group) under the name Lyrica® for manufacturer that the medicament.. … indication, an exception to this applies epilepsy, generalised anxiety disorder will be used for treating the specified for indications which are encompassed (GAD) and neuropathic pain. The condition” (the ‘subjective intention by a patent for the originator drug. patent had claims directed to the use test’). He continued that it was not This has resulted in the development of pregabalin or a pharmaceutically enough to show that a foreseeable by the generics industry of a ‘skinny acceptable salt thereof for the consequence of the manufacture of label’, which lists only the therapeutic preparation of a pharmaceutical Lecaent would be its use to treat pain, composition for treating pain (claim 1), or that Actavis had actual knowledge with claim 3 specifying that the pain is that Leceant would be used to treat neuropathic pain. pain. As Warner-Lambert had not pleaded that Actavis subjectively Following the expiry of data exclusivity intended Lecaent to be used for the for pregabalin in July 2014, the treatment of pain, Arnold J was able to defendant, Actavis, sought to obtain reject Warner-Lambert’s application for marketing authorisation for its generic interim relief. However, it was noted pregabalin product, Lecaent, for the that both parties had already taken non-patented indications. Actavis also steps to try to reduce the likelihood of commenced revocation proceedings Lecaent being prescribed or dispensed against EP 0 934 061. for the patented indication, including steps taken by Warner-Lambert to notify its concerns to the Department of Health, NHS England, NICE and the Clinical Commissioning Groups (CCGs). 6 www.vennershipley.co.uk

“ use was foreseen, and as such, Arnold J emphasised the need for Actavis was held not to have infringed centralised and authoritative guidance the claims of EP 0 934 061. to be given to prescribers It is expected that Arnold J’s decision will be appealed, which will give the ” Court of Appeal the opportunity to re-visit the meaning of Swiss-type The parties returned to court in pregabalin for patients to whom it will claims. February 20152, with Warner-Lambert be administered for the non-patented pleading that Actavis subjectively indications is not within the technical intended Lecaent to be used for subject matter of the claim. Only the Arnold J also expressed, in an the treatment of pain, and Actavis former category of manufacture makes afterword to his decision, the need requesting that Warner-Lambert’s use of the technical contribution of the for a system to address the problems case on infringement be struck out, patentee”. As such, it was held that the conferred by second-medical use or that summary judgment be made ultimate end use of the medicament patents, stating that prescribers dismissing the case. was relevant; the therapeutic cannot be expected to know when it treatment was new because, and is required to write a prescription for Mr Justice Arnold declined to grant only because, it is carried out with the patented indication by reference to Actavis’ request, and ordered a full the intention of producing the new the patentee’s brand name, and when trial of the infringement and validity therapeutic effect. As such, the skilled it is required to write prescriptions for proceedings to be heard in June 2015. person would understand the word non-patented indications by reference This was on the basis that, amongst “for” in a Swiss-type claim to provide to the generic name of the substance, other things, this was a developing a link between the act of manufacture nor, he commented, should they be area of the law and the proper course of the medicament and its ultimate required to take steps to find out. was therefore to establish the facts at intended use. Floyd LJ concluded that Arnold J thus emphasised the need for a trial before attempting definitively it was sufficient for infringement that centralised and authoritative guidance to determine the law. the producer knows or can reasonably to be given to prescribers. foresee that the medicine would A development prior to the full trial ultimately be used for treatment of One notable lesson from the story came in the form of an application pain. Lord Justice Floyd thus concluded to date is the outcome of the action by Warner-Lambert for a novel form that Warner-Lambert had an arguable against NHS England, which arguably of relief, which would require NHS case for infringement5. achieved one of Warner-Lambert England to issue guidance advising primary aims, namely to compel doctors to write only the brand name And so to June 2015, and a court case dispensing practitioners to prescribe Lyrica®, when prescribing pregabalin resulting in 174 page judgment from only the patented product, Lyrica®, for the treatment of neuropathic pain3. Mr Justice Arnold, which was handed for the patented indication. The NHS England had previously indicated down on 10 September 20156. traditional strategy of using a second that it would not issue guidance on medical use patent to sue the generic the proper prescribing practice for In summary, Warner-Lambert’s manufacturer may now not be the pregabalin within a timescale that European Patent, EP 0 934 061, was only path available to the patentee in would be helpful for the litigation. held to be invalid on the grounds the UK. Alternatively, or more likely of insufficiency, on the basis that additionally, the patentee can ask Arnold J allowed the application, and, the data in the application as filed the court to compel NHS England to having considered that ordering NHS was insufficient to demonstrate issue specific prescription guidelines England to issue prescribing guidance that pregabalin was effective in the that effectively enforce the protection fell within the jurisdiction of the court, treatment of central neuropathic pain. afforded by a second medical use made the order, commenting that patent. This may, therefore, be a path “the issuing of guidance by NHS England With regards to infringement, Mr worth considering for patentees with is the most efficacious, dissuasive Justice Arnold commented that the second medical use claims who find and cheapest solution to the problem Court of Appeal’s view regarding the themselves in the same situation. which confronts Warner-Lambert”. interpretation of Swiss-type claims NHS England duly issued guidance to was not part of the formal reasons for medical professionals4. its decision, and was not, therefore, binding on him. However, despite Further to this, an appeal by Warner- expressing doubts about Lord Justice Lambert against some of the Floyd’s interpretation, Arnold J said judgments issued in the preceding that he was not “entirely convinced” cases provided the Court of Appeal, that it was wrong, and so applied both led by Lord Justice Floyd, with the that interpretation and his own. He opportunity to consider the meaning therefore considered whether Actavis of Swiss-type claims, and Mr Justice could have reasonably foreseen that Arnold’s ‘subjective intention’ test. their pregabalin product would be Kate McNamara used for the treatment of pain. Taking [email protected] Floyd LJ confirmed that Swiss-type into account the use of a ‘skinny 1 [2015] EWHC 72 (Pat) (21 January 2015) claims are process claims, and stated label’ and the steps that Actavis had 2 [2015] EWHC 223 (Pat) (6 February 2015) “I would describe the subject matter of taken to notify pharmacists that 3 [2015] EWHC 485 (Pat) (26 February 2015) 4 http://www.england.nhs.uk/wp-content/ the claim…as making pregabalin for its drug was not licensed for the uploads/2015/03/pregabalin-guidance.pdf patients to whom it will be intentionally patented indication, Mr Justice Arnold 5 [2015] EWHC 556 (Pat) (28 May 2015) administered for treating pain. Making concluded that no such intentional 6 [2015] EWHC 2548 (Pat) (10 September 2015)

7 A green driver of innovation in the automotive industry The automotive industry has always been an innovative area of technology right from its beginnings in the late 18th century through to the present day, although the drivers for innovation in this field have changed significantly in recent years. It is fair to say that the automotive sector is currently experiencing its most intense and extensive period of growth and innovation in its entire history, with R&D activity at its highest levels and this resulting activity generating an enormous amount of intellectual property.

Historical developments greater performance, refinement they burn fuel and so are inherently and passenger comfort before polluting. As former Saudi oil minister The earliest days of the automobile considerations of passenger safety Sheik Yamani said, “the Stone Age came saw innovations stemming from led to now-standard technology to an end not because we had a lack of the desire simply for mechanised such as the three-point inertia-reel stones, and the oil age will come to an transport with various inventions seat belt (invented by Nils Bohlin of end not because we have a lack of oil”. around the first automobiles, Volvo, patent applied for in 1958); Notwithstanding the factual merits including Nicolas-Joseph Cugnot’s airbags (variously credited to German of this quote, global sensitivity and 1769 steam powered wagon (below engineer Walter Linderer who filed awareness of minimising mankind’s left), George B Selden’s patented German patent no. 896,312 in 1951 environmental impact is more acute Selden Road Engine (US 549,160 filed and American John W. Hetrick who than ever. The world’s population is in 1879) and more famously, Karl filed US patent 2,649,311 granted in also increasing dramatically, resulting Benz’s gasoline-powered “Benz Patent 1953); and ABS (anti blocking system in the total number of cars on the Motorwagen” (below right) which or anti-lock braking system – first planet rising sharply over the past he patented in 1886. The two most invented for aircraft in 1929, although decade (see fig. 1 opposite). These common power units of today’s road Bosch claim to have filed a patent factors have led to extremely strict vehicles were developed by Nikolaus application for an “Apparatus for emission regulations being imposed Otto (four-stroke petrol engine – preventing lock-braking of the wheels on the auto industry, particularly in patented in 1887 - US 365, 701, of a motor vehicle” as early as 1936). the US and Europe, something that although later revoked as Aphonse the recent VW scandal has brought to Beau de Rochas had previously the public’s attention. patented the idea, although had not The emissions issue made it practical) and Rudolf Diesel One of the greatest current drivers Europe has the “Euro n” vehicle (diesel engine patented in 1892 – RP of innovation in the automotive emissions standard which dictate 67207). industry is environmental regulatory the limits of carbon monoxide (CO), restrictions. nitrogen oxides (NOx), hydrocarbons More recently, developments in (HC) and particulate matter (PM) that the automotive sector have been One of the fundamental problems new vehicles may emit with limits driven by market demands for with traditional powertrains is that

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Figure 2 global“ sensitivity 0.36 and awareness of 0.30 Euro 1 1993 minimising mankind’s Euro 2 1996 Euro 3 2001 environmental impact Euro 4 2006 0.20 is more acute than Euro 5 2009 2013 PM (g/kWh) Euro 6 ever 0.10 set at different levels for different ” vehicle types. Euro 1 was introduced in 1992 and resulted in the switch 1 2 3 4 5 6 7 8 to unleaded petrol and the fitting NOx (g/kWh) of catalytic converters to reduce CO emissions. Progressively tightened limits have led to the latest regulation, in the short term, either alone or in technology advances, this material Euro 6, applicable to all new cars combination with alternative power has become more cost-effective from September 2015. The restrictive source, it has also forced innovation to use and we are now seeing its effect of these emissions standards in refining the design, performance application in a wider range of is dramatically shown by fig. 2 above, and efficiency of ICEs. vehicles and in greater volumes, which plots two of these regulated together with other light weight emissions, NOx and PMs, for the Within the UK, the Automotive Council composite materials. successive Euro standard limits for UK has set a “passenger car low heavy duty diesel vehicles. Euro 6 also carbon technology roadmap”, setting Internal combustion sets fleet average CO2 targets falling out the vision for the development of from 130g/km in 2015, to 95 g/km in various different vehicle powertrains engine 2020, and further lower limit by 2030, over the coming decades, which is The two main objectives in making a yet to be confirmed. For reference, a shown in fig. 3 overleaf. vehicle more fuel efficient are firstly 2014 model Ford Fiesta, the UK’s top getting the most power from the fuel selling car in 2014, emits 99 g/km for Light-weight solutions by making the combustion process the smallest engine available in the as efficient as possible, and secondly range, a 1.0l turbo petrol engine. So, At the bottom of the chart is the maximising transfer of that power refinement of current automotive for a company’s fleet average CO2 to propelling the car. The trend in emission to drop 4 g/km below that technology, including improvements ICE development has been towards level is going to require some very to engine, transmission and vehicle smaller capacity turbocharged innovative engineering solutions. structure technology. engines to achieve the emission and fuel economy improvements. An The regulatory restrictions have One of the most effective ways to example is Ford’s 1.0l three-cylinder pushed the automotive industry to improve a vehicle’s fuel efficiency, Ecoboost engine replacing its previous accelerate development of alternative and thereby reduce its emissions, is four-cylinder 1.6l unit, the new engine powertrain technologies, such as to reduce its weight. A reduction of producing the same 123bhp yet hybrid, full-electric and hydrogen fuel 100kg in a car’s weight can reduce with significantly lower emissions its CO emissions by 6 – 8 g/km. This cell power. However, since internal 2 and improved fuel economy. These combustion engines (ICEs) will remain has led to manufacturers making smaller engines also have fewer and the primary power source for vehicles greater use of lightweight materials lighter moving parts, adding to their and developing improved vehicle efficiency. structures, retaining or improving Figure1: Historical and projected strength and rigidity whilst using less increases in global motor vehicle Other technological developments material or much lighter material. An number 1950 to 2030 helping improve ICE efficiency and example of the effectiveness of this reduce emissions include intelligent approach was Jaguar Land Rover’s 3.0 control of the engine and drive train, adoption of a full aluminium body such as cylinder-deactivation (where 2.5 Cycles & scooters structure for their latest Range Rover some of an engine’s cylinders are shut Trucks & buses models, shedding in excess of 400kg down when full power is not needed), 2.0 over the previous model. Cars stop-start control, and improved fuel injection. Advances have also been 1.5 Another material renowned for made in reducing parasitic losses in its light weight and strength and 1.0 the powertrain, such as disconnecting extensively used in the aero industry components like the alternator when is carbon fibre. This material has 0.5 the battery does not require charging, traditionally been expensive to Number of motor vehicles (billions) ultra-low friction coatings on moving 0 manufacture and only high-end engine/transmission components, supercars made significant use of the and improved power steering systems 1950 1960 1970 1980 1990 2000 2010 2020 2030 material. However, as manufacturing which sap less engine power. 9 Figure 3

EU fleet average 130 95 TBD CO2 targets (g/km) Demonstrators Fuel cell vehicle

H2 infrastructure Fuel cell & H2 supply/storage breakthrough Niche EVs Mass market EV technology Charging infrastructure Energy storage breakthrough Demonstrators Plug-in hybrid Energy storage breakthrough Full hybrid

Micro/mild hybrid

IC engine and transmission innovations (gasolene/diesel/gas/renewables)

Vehicle weight and drag reduction

2000 2010 2020 2030 2040

Diesel engines in particular have start” engine control, where the there catching up fast and consumers are come in for emission-related scrutiny is no electrification of the powertrain facing much greater choice in the in recent times which has forced but where batteries keep the electrical market place. manufacturers into intensified R&D systems running when the engine activity in certain areas. Diesel engines is shut down temporarily when not One limitation of full HEVs is that the had previously been promoted over needed, such as to prevent idling at batteries are only able to be charged

petrol engines for having lower CO2 traffic lights. These are claimed to by the ICE or by energy recovery emissions and offering better fuel see a 5 – 10% improvement in fuel during “regenerative” braking. A economy. This resulted in an increase economy and therefore resulting solution to this problem is provided in the proportion of diesel cars on UK emission reduction. “Mild hybrids” by the latest generation of HEVs roads rising from only 1% 30 years include an electric motor connected known as the “plug-in” hybrid (PHEV). ago to around 35% now. However, to the ICE to provide some power As the name suggests, these are full the pendulum swung the other way assistance and allowing the ICE to be hybrids with the additional capability over the health impact of their NOx turned off when braking or coasting for the battery to be charged from and PM emissions, leading to calls and to restart the ICE when needed. an external electricity source and for diesel car surcharges and future However, such HEVs do not have a can been seen as bridging the gap bans on diesel cars in some cities. separate electric powertrain and so technologically between full HEVs Some say this demonization of diesel cannot drive in an electric-only mode. and entirely electric vehicles, allowing is unfair and following billions in By their design, micro and mild hybrid owners to charge their cars overnight investment in R&D by manufacturers engines are easier to engineer into and while parked, to maximise use into diesel engine technology in areas existing vehicle architecture, but in all-electric mode and minimise such as advanced turbocharging, cannot offer the sort of emission reliance on the ICE. PHEVs are also complex exhaust gas recirculation, reductions full hybrid or electric only strengthening consumer acceptance and particulate filters which can powertrains can offer. of entirely electric vehicles since they capture 99% of particulates, these enable owners to utilise the growing engines are vastly cleaner than in the A full HEV has an electric motor charging infrastructure whilst still past, although there remains work to and an ICE, but crucially the electric providing the back-up security of do to get NOx emission levels down motor can propel the vehicle alone the ICE if needed. PHEVs have much to a level on a par with petrol engines in an electric-only mode, with the larger batteries than other HEVs due and to a level necessary to meet the ICE cutting in when additional to their intended use for extended latest emission targets. power is needed or the battery electric-only operation, which also is low. This means full HEVs offer means that they are more reliant on Hybrid technology greatly increased fuel economy and advances in battery technology as reduced emissions over mild or micro part of their development. Currently Hybridisation and electrification of HEVs. The ubiquitous Toyota Prius PHEVs are more expensive than powertrains is the highest profile is probably the most well-known their non-hybrid equivalent models alternative fuel engine development and certainly the highest-selling due to the additional hardware trend and is seeing the greatest full HEV to date and its commercial and technology, but this price investment by car companies and success is testament to Toyota’s early difference will inevitably reduce as their development partners. There commitment to R&D in this area. the technology develops and also are different types of hybrid electric However, most major manufacturers as taxes and other running costs on vehicles (HEVs). “Micro-hybrid” engine now include a full hybrid in their higher-emission cars increase. It is technology is actually just the “stop- model range so the competition is clear that the PHEV is going to remain

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emissions when considering the fuel production, around the same as those for a HEV. There remains consumer concern about driving around in a vehicle with high-pressure hydrogen tank, although the perceived risk is often overstated. The hydrogen tanks are extremely strong and in the unlikely event of a rupture, the contents, being a gas much lighter than air, would most probably dissipate within seconds into the The Hundai ix35, one atmosphere, unlike petroleum which of the first hydrogen would pool in and around the vehicle. fuel cell electric vehicles Despite lagging behind HEVs and BEVs, a number of manufacturers one of the key automotive solutions continues to expand, driven also by are investing heavily in development to enable manufacturers to meet ever the uptake of PHEVs, and this will and production of FCEVs which will stricter emission regulations, advance further ease consumers’ reservations help drive consumer acceptance the acceptance of electric vehicles of BEV ownership. and investment in infrastructure. In and drive expansion of the electric particular, Toyota’s Mirai sold 1,500 charging infrastructure. Hydrogen fuel cell vehicles units in its first month release in Hydrogen fuel cell technology Japan, and has just gone on sale in the Electric vehicles continues to be part of the discussion UK in September 2015, with Hyundai Pure battery-powered electric when considering future automotive beating them to it in the UK with their vehicles (BEVs) are the ultimate aim powertrain solutions. Essentially, a ix35, being the first manufacturer to for a future automotive powertrain hydrogen fuel cell electric vehicle sell a production-ready FCEV in the solution that has zero harmful tailpipe (FCEV) converts hydrogen and oxygen UK. emissions. BEVs are also very low in an electrochemical device to maintenance, having only one moving produce electricity to drive electric Conclusion part in the electric motor rather than motors powering the vehicle. FCEVs The automotive industry is facing hundreds of an ICE powertrain. include a large storage tank in which enormous social, economic and hydrogen is stored under high regulatory pressure and is having to A large number of manufacturers pressure (around 10,000 psi) to feed invest heavily in innovative solutions now offer BEVs and with each year in the fuel cell. There are some very to stay competitive and meet these development, these cars are gaining convincing benefits to FCEVs, the demands. The strict emission public acceptance rather than being most obvious being there are zero target limits being imposed upon seen as a curious fringe offering. harmful tail pipe emissions, with pure the industry is one of the toughest Nissan is leading the way with the water being the only waste-product drivers of this innovation, and these Nissan Leaf, selling over 30,000 units of the energy conversion process. targets are forcing a rapid pace of in 2014 in the US alone, and Tesla In addition, fuel cell vehicles have change in the sector and making continuing to help raise the profile of a much larger range than current us as consumers radically re-think BEVs as one of the first manufacturers BEVs (typically around 350 miles) and our personal vehicle choices and to present them in a premium car they can be refuelled in less than 5 more generally changing society’s sector. minutes as opposed to BEV charging expectations for its future transport time of hours. solutions. Against this landscape The perennial concern with BEVs inherently come leaps in technology is their limited range on a single However, there are a number and generation of huge amounts of charge, known as consumer “range of drawbacks with FCEVs which intellectual property which can give anxiety”, and could explain why has hampered their uptake. One the leaders in this new ground a vital PHEVs currently have more market major issue is the lack of refuelling technical and commercial advantage. momentum than BEVs. Maximum infrastructure. There are currently range for a BEV varies depending only 15 hydrogen refuelling stations in on make and model but is typically the UK and so significant investment between 60 – 80 miles, although a needs to be made in this area before Tesla can achieve around 200. This is FCEVs can be accepted as a viable directly linked to battery technology option. FCEVs are also expensive, and as advances improve power due to the complex technology and density, optimise battery chemistry, the materials used (e.g. platinum reduce weight and lower costs, catalysts). Hydrogen as a fuel is the drawback of limited range will also expensive to produce and the diminish, and the price of BEVs will process, when being made from Alex Brown fall. Alongside the vehicle technology, natural gas, actually produces a large [email protected] the infrastructure to support BEVs amount of CO2, making the total CO2

11 What constitutes use in the European Union? – the European Trade Mark Registries’ contradictory decisions Background In our Spring /Summer 2013 issue we reported on the judgment of the European Court of Justice (CJEU) in Leno Merken BV v Hagelkruis Beheer BV (C- 49/11), a case which centred around what constitutes “genuine use in the Community” of a European Community Trade Mark registration (“CTM”). The Community in question is the European Union (EU).

Whether or not genuine use has However, the CJEU’s decision in Leno has, understandably, led to a tacit been made in the EU of a CTM Merken BV v Hagelkruis Beheer (known understanding that, despite the ONEL/ which is more than five years old as the “ONEL/OMEL decision”) altered OMEL decision, use in one EU member (the five years are calculated from this because in it the CJEU held that, state is genuine use of a CTM. the registration, as opposed to in general, a CTM had to “be used in a the application, date) is regularly larger area than the territory of a single In two recent decisions, the UK Trade considered in two different scenarios: member state” to qualify as “genuine Marks Registry and UK courts have use”. While the CJEU added the caveat taken a very different position. (i) where a third party applies to that “it cannot be ruled out that, in cancel such a CTM on the basis of certain circumstances, the market In the first case (UK Trade Marks non use (either as an independent for the goods or services for which a Registry O-451-14), Intermar Simanto application or as a counterclaim in Community mark has been registered Nahmias (ISN), the owner of a CTM of infringement proceedings); and is in fact restricted to the territory of a JUMP, opposed an application by Nike (ii) where the owner of such a CTM single Member state”, the gist of the International Ltd to register JUMPMAN relies on it as the basis of an decision seemed to be that only in as a CTM. The opposition succeeded opposition against an application very particular circumstances would and the decision was upheld when it to register a trade mark (as either use in one single EU member state was appealed. After its unsuccessful a CTM or a national trade mark in suffice. appeal, Nike International Ltd then a European Union member state) exercised its right to convert its and the applicant exercises its right Recent developments failed CTM application into a UK TM to require proof of genuine use of application (which it subsequently the CTM. Despite the ONEL/OMEL decision assigned to Nike Innovate C.V). holding “it is reasonable to expect that a ISN, once again relying on its It was long considered, based on case Community trade mark should be used CTM, opposed this UK application. law (the European Court of Justice’s 11 in a larger area than a national mark” However, by this time, the CTM May 2006 decision in the VITAFRUIT the European Community Registry (which covered footwear) was over case C-416/04P) and the Community has, however, since that decision five years old so Nike was entitled Registry’s guidelines, that use of a was issued, repeatedly accepted, in to require proof of use of ISN’s CTM. CTM in just one member state of the CTM opposition proceedings, that The UK’s Trade Marks Act 1994 EU constituted “genuine use in the proof of use of the Opponent’s CTM provides that where an opposition Community”. in just one EU member state was is based on a registration over five “genuine use in the Community”. This years old, the opponent must show 12 www.vennershipley.co.uk

Owners“ of CTMs should consider well in advance of the fifth birthday of their CTMs how extensively they have used such CTMs in the Community ” that the earlier mark “has been put to That UK registry decision was Conclusion genuine use” in the five-year period followed by a decision in a trade With such apparently contradictory before publication of the application mark infringement action brought in decisions from the UK and the and that, where that earlier mark the UK courts by the owners of CTM European Community Registries on is a CTM, such use must be “in the registrations of SOFA WORKSHOP what constitutes genuine use of a European Community”. In this way the (The Sofa Workshop Ltd v Sofaworks CTM, it seems, paradoxically, as if UK legislation imposes exactly the Ltd [2015] EWHC 1773 (IPEC). In this the European Community Registry same requirement as the European case, since the allegedly infringed will accept far more geographically Community legislation. CTMs were over five years old, the limited use of a CTM than the UK defendant counterclaimed that the Trade Marks Registry and UK courts. The UK Trade Mark Registry accepted CTMs should be cancelled on the On the other hand, at least one other that ISN’s evidence showed that, basis of non-use. The CTM owner EU member state has held that use during the relevant five-year period, filed evidence of use of its CTMs. The of a CTM in its member state would ISN had sold 55,000 pairs of footwear UK court accepted that the evidence qualify as genuine use. For as long bearing the JUMP trade mark to a showed that the CTM owner had “put as this indecision and disagreement single customer based in , its CTMs to genuine use on an extensive remains, owners of CTMs should with a total value of $476,000, of scale in the UK in the relevant 5 year consider well in advance of the which the Bulgarian customer period”. However, the UK court took fifth birthday of their CTMs how had sold 170 pairs onwards to a the view that, since there was nothing extensively they have used such CTMs Romanian company. The UK Registry to suggest that the market for the in the EU. If they have not used their also accepted that the Bulgarian goods and services covered by the CTMs extensively in the EU then, customer had for the last year of the CTMs was, for any reason, restricted to avoid the misfortunes suffered relevant period dedicated an area of to the UK, there had therefore not by the CTM owners in the two UK its shop in the Bulgarian city, Vasra, been genuine use of the CTMs in cases reported above, they should to JUMP footwear. While irrelevant, the EU. Consequently the CTMs consider their options. In particular, because the sales took place three were liable to be cancelled on that they should consider the merits of years before the beginning of the basis. With the CTMs thus cancelled, continuing to renew any national TM relevant five-year period, it was also the trade mark infringement claim registrations that they have within accepted that ISN had, in addition, brought by their owner automatically the EU, applying for fresh CTMs and/ demonstrated that it had sold 53,000 failed. or converting their existing CTMs into pairs of JUMP footwear to four national registrations. businesses in Germany, , Spain In this case, the UK judge interpreted and . the CJEU decision in the ONEL/OMEL case in relation to CTMs as follows: While the UK Registry conceded that the use of the CTMs had not been “the geographical extent of use is, in sham or token, it held that it was “very the general run, crucial: it must extend geographically limited” and therefore at least beyond the boundaries of insufficient to prove genuine use of one Member State. By way of a non- the CTM in the EU. As a consequence, exhaustive exception to the general rule, ISN’s opposition was dismissed. The this does not apply where the market for decision has been appealed and the the goods or services is confined to one David Birchall appeal decision is awaited. Member State” [email protected] 13 Mind the gap... in Switzerland When choosing goods, consumers will often be swayed by indications of which country those goods come from. For example, a common perception is that German cars are at the peak of technical design and performance and therefore desirable (whether this will be affected by the recent VW scandal remains to be seen). Wine from France has a particularly good reputation as do chocolates from . Switzerland is well known for products including chocolate, cheese, watches and multi-tool pocket knives.

In recent years Swiss businesses have passed in Switzerland which will come with that place, is also regulated by become increasingly concerned about into force on 1 January 2017. national and supranational laws. deceptive use of the “Swiss brand”. "Switzerland" or "Swiss" is perceived Free riders may use the Swiss brand There are already laws governing as a geographical indication in many in an attempt to benefit from positive when and how terms such as “made countries, in particular for watches. connotations. The concern for Swiss in Switzerland”, “made in Britain” etc. brand owners is that this could lead can be used on products. The use The new “Swissness” legislation is to loss of reputation for real Swiss- of geographical indications such as aimed at strengthening the “Made made products and dilution of the Champagne, Darjeeling tea, Basmati in Switzerland” designation and the value of the “Swiss” label. As a result rice, etc., which can only be used use of the Swiss cross on goods in new “Swissness” legislation has been on goods with specific geographical Switzerland. The bill establishes strict origin and which possess qualities rules in relation to the conditions or have a reputation associated under which products may be labelled “Swiss”. The criteria depend on the type of product; for crops the

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"Switzerland"“ or "Swiss" is perceived as a geographical indication in many countries, in particular for watches ” criteria will be the place of harvest, goods did not originate from France, a in Switzerland but that it would for industrial goods at least 60% of deceptive mark. also be misleading if the goods did manufacturing costs and at least one not originate from Italy, Johnson & essential manufacturing step must be In this case, the decision was Johnson will not be able to market its in Switzerland. overturned by the Swiss Federal product as FIRENZA in Switzerland. Administrative Court (FAC) in 2011 The aim is to bring greater clarity to (Case B-3458/2010) which held that With the new Swissness laws coming the use of the Swiss brand as well as “Gap” had various meanings and the into force relatively soon, we can to allow stricter measures to be taken city of Gap was not known to the not expect the Swiss registry to against offenders (including criminal majority of the Swiss population. become more lenient in relation to sanctions). The Court stated that the sign was marks which allude to geographical perceived as a trade mark and that locations. In some cases it may be The Swiss trade mark registry and the the majority of people would not possible to convince the Swiss registry Courts have already become stricter associate it with the name of the city. to register the mark. However, there in relation to trade marks including or remains a serious risk of objection. alluding to geographical indications However, there have been numerous Such an objection can be appealed (including place names in Switzerland other examples of refusals by the to the Swiss courts. However, there is and abroad). One reason for this may Swiss registry. Janssen Pharmaceutica no guarantee that the courts will hold be that, in order to strengthen the NV (part of Johnson & Johnson) that such a mark is registrable either. Swiss position abroad, there needs to sought to extend protection of its be a show of willingness to prevent International registration for FIRENZA If considering using or applying for the dilution of other geographical for a pharmaceutical product to a new trade mark in Switzerland it is indications. Switzerland. The application was important to bear in mind the new refused by the Swiss registry on the Swissness legislation as well as the An example is the case of the basis that it would be understood by stricter approach to geographical application by US clothing company the Italian speaking population as indications. Gap (ITM) Inc. in 2008 to register GAP. referring to the Italian city of Florence The Swiss registry refused to register (Firenze in Italian). the mark because Gap is the name of a city in France. The city is known This case also went to the FAC as a city through which the Tour de (Case B-5451/2013). Even though France travelled. Therefore, the Swiss Florence is not known for its registry argued, it had to be assumed pharmaceutical industry, it was that the city of Gap was known to held that it was not impossible to the Swiss population. As such, it was manufacture pharmaceuticals there. a geographical indication or, if the As the FAC not only held that the sign FIRENZA should not be protected Nora Fowler [email protected]

15 Wearable tech: an IP perspective

Once the preserve of science- fiction comics and spy movies, wearable technology has finally entered the mainstream with the arrival of consumer devices such as smartwatches and fitness monitors. In this article, we explore the IP challenges – and opportunities – presented by recent advances in wearable technology.

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The arrival of affordable, powerful Consequently, when drafting a claim narrow claim to a smartphone-type wearable devices owes much to to a wearable device, it would be device by shifting certain functions the technological arms race in the best to avoid wording which implies away from the smartphone and onto smartphone sector over the past that processing steps are performed a paired wearable device. decade, which has driven rapid locally. For example, instead of a advances in such areas as battery device “calculating” a result, it might Finally, it is worth noting that the technology, wireless data transfer be better to say that the result is wearable device sector is very much speeds, energy-efficient displays “obtained”. A dependent claim could in its infancy, and manufacturers are and processors. The trend in mobile then be included to explicitly protect still experimenting with a wide range devices has been one of integration, embodiments in which the result of form factors, including watches, with more and more features being is obtained by transmitting data to glasses, earbuds, and jewellery. The crammed into each new generation an external device for processing. general consensus is that no-one has of device. Whereas once a consumer The dependent claim would not be yet hit upon a form factor that will go might have carried numerous of much use as a fallback position on to become the de facto industry separate devices such as a mobile in Europe, where it is normally standard. As a result, registered phone handset, pager, satnav considered a straightforward design design protection is arguably even receiver, compact digital camera, choice to shift the processing burden more important for new wearable and MP3 player, they can now enjoy to another device if local resources devices than for other types of a similar range of functionality in a are limited, but would nevertheless device. The test for infringement of single lightweight, compact device. add value by providing certainty that a a registered design under UK law is commercially important embodiment whether the alleged infringing design The rise of wearable devices may is protected. An alternative approach produces the same overall impression see a reversal of this trend, at least could be to include multiple on the informed user. In reaching a temporarily. We are still some way independent apparatus claims, conclusion, the court is supposed to from the ultimate goal of a wearable which is permitted under European take into account the design freedom device that can fully reproduce all law provided that the independent for the product type in question. the functionality that consumers claims are directed to “interrelated” There is great design freedom in have come to expect from their products. choosing the outward appearance of smartphone. Consequently, there has a wearable device. As such, one could been a trend to shift the processing expect registered design protection burden away from the wearable to be more effective for wearable device and onto a separate host “ devices than for smartphones or device with more resources, such as a as technology tablets, for which it has proven paired smartphone. This arrangement progresses, wearable difficult to enforce registered design poses new challenges for rights. drafting. In particular, care must be devices will become taken to ensure that an independent In summary, wearable tech is a new claim will still be directly infringed. more powerful and and exciting sector that continues to capable of operating develop at a breathtaking pace, and it Consider a hypothetical example in is difficult to predict which devices will which an independent apparatus fully independently prove to be commercially successful claim recites a device comprising a in 5 or 10 years’ time. In such a fast- sensor, a processing unit configured ” moving area, great care needs to be to process data from the sensor, Of course, it is to be expected taken to ensure that the intellectual and a display unit for displaying that as technology progresses, property rights being created today the result of the data processing. wearable devices will become more will be relevant for the devices of Depending on the wording used, it is powerful and capable of operating tomorrow. conceivable that the claim would not fully independently. In this case be directly infringed by a smartwatch- the reverse scenario might arise, type device in which the processing whereby tasks that would normally is performed remotely. The claim be performed by the smartphone can would still be directly infringed by a be outsourced to a nearby wearable combination of the wearable device device. It is difficult to see how this and a smartphone. However, if arrangement would be beneficial the separate devices are made by from a technical perspective. different manufacturers, it could then Nevertheless, one could conceive of be argued that individually each party a situation in which a manufacturer is only liable for indirect infringement. is able to avoid directly infringing a Rob Cork [email protected] 17 Top German court rules against Apple “slide-to- unlock” patent protection The Bundesgerichtshof (Federal Court of Justice, Germany’s highest court) ruled on 25 August 2015 that Apple’s method for unlocking the iPhone did not reach a high enough level of sophistication needed to be awarded patent protection, affirming the Federal Patent Court’s decision in April 2013 to declare the German part of Apple’s European patent invalid.

In summary, judges of the German “ Although Apple’s slide-to-unlock court held that the subject-matter of The German court patent was ultimately invalidated in Apple’s patent, i.e. “unlocking a device Germany due to a lack of inventive by performing gestures on an unlock considered this to be a step, an important takeaway image” did not involve an inventive trivial difference that message for applicants is that it is step. The most damning piece of possible to obtain EP patents for prior art against Apple’s claim was the did not render Apple’s graphical user interfaces with a Neonode’s N1m smartphone which patent inventive relatively broad protection scope, used a similar unlocking feature. as long as a “technical effect” can The N1m was first released in 2005, be demonstrated. According to the predating the patent in question and ” EPO Guidelines (G-II 3.7.1), features the launch of the original iPhone. hand, claim 1 in Apple’s patent concerning the graphic design of defines a method comprising a step user interfaces may be considered to Unsurprisingly, Neonode, a Swedish of “transitioning the device to the user- achieve a technical effect, for example mobile phone manufacturer, also had interface unlock state if the detected if they are combined with steps of their unlocking feature patented. A contact corresponds to a predefined interacting with the user. The slide-to- side-to-side comparison of drawings gesture”. unlock feature in Apple’s patent was from Neonode’s patent (US 8095879) deemed technical by the EPO during and Apple’s patent illustrates the Neonode’s and Apple’s patent prosecution, because it solves a similarities of their sliding/swiping/ claims are identical in essence, problem associated with using touch gliding functions. apart from the difference that Apple screens on portable devices, namely additionally implemented a graphic the unintentional activation of device The sliding functionality is covered drag element on the display rather functions. in claim 12 of Neonode’s patent, than using pure text to provide the which reads: “...the user interface user with instructions. The German Needless to say, aside from ensuring is characterised in, that an active court considered this to be a trivial that functional objects are clearly set application, function, service or difference that did not render Apple’s out in the specification so as to satisfy setting is advanced one step by gliding patent inventive, and said “[T]he the “technical” requirements of the the object along the touch sensitive contested patent thus isn’t based on EPC, when drafting an application area from left to right”. On the other an invention.” applicants should always bear in mind the state of the art of existing Left: Drawings technologies to avoid the obvious from Neonode’s pitfall. patent US 8,095,879; right: drawings from Apple’s patent EP 1,964,022.

Kirwin Lee [email protected]

18 www.vennershipley.co.uk Venner Shipley News Venner Shipley opens in Manchester Continuing our theme of growth, we have Venner Shipley LLP added to our offices by opening a base in Lowry House Manchester. The existence of an established 17 Marble Street engineering and biotech industry, as well as the Manchester development in and around Manchester of the M2 3AW "knowledge economy", represent some great opportunities for us. T: +44 (0) 161 661 4582 W: www.vennershipley.co.uk

New Starters We welcome two new starters in our Electronics team. Jonathan joins our London office and Rachel joins our Cambridge office.

Jonathan Pennell Rachel Gregory Associate MSci Associate MPhys, PhD Jonathan graduated from the University of Birmingham in Rachel joined Venner Shipley in October 2015. She July 2015 with a first class Master's degree in Theoretical graduated from the University of Oxford in 2011 with a Physics. During his degree he studied fluid mechanics, Masters degree in Physics, specialising in optics, lasers superconductivity, semiconductors, optics and quantum and quantum computing. During her degree she spent field theory. His final year project, which was deeply rooted several months at the Manipal Institute of Technology in many particle theory and condensed matter physics, in India investigating thin film characterisation. Rachel involved studying the one-dimensional confinement of went on to complete a PhD in Physics at the University of electrons in carbon nanotubes to seek Luttinger liquid Southampton. Her research was in the area of experimental phenomena. atomic physics, with a focus on atom interferometery and applications in emerging quantum technologies. 19 Case law

A roundup of recent noteworthy English court update and EPO decisions.

The meaning of “1” – A “reasonable expectation predict the results of the test. It is Potential Referral to the of success”? irrelevant whether or not the testing Supreme Court In Teva UK Ltd & Another v Leo Pharma was routine and that numerous A/S, the Court of Appeal issued a compounds could be easily tested. In the ongoing dispute between Smith The decision provides more certainty & Nephew and ConvaTec relating decision reversing the finding of obviousness by Mr Justice Birss at regarding obviousness and could to silverised wound dressings, the prove particularly relevant to focus of the Court of Appeal case first instance. The Court of Appeal questioned the earlier evaluation industries where empirical testing is was on the interpretation of "1" in the basis of many inventions. Some the context of a claimed range of 1 to of “expectation of success” which was part of inventive step analysis, commentators feel that rather than 25%. At first instance, Mr Justice Birss being wrong in how he applied this had construed the range as meaning suggesting that it was being wrongly applied in a pharmaceutical setting. test to the case before him, Mr Justice a lower limit of 0.95%. The Court of Birss was perhaps ahead of his time in Appeal came to a different conclusion, The patent claims under consideration reconsidering the test and suggesting holding that the lower end of the a more subtle approach. range extended to 0.5%. recited two active agents, a base and a commercially available solvent. The Court of Appeal refused leave In his decision, Mr Justice Birss had EPO appeal proceedings for Smith & Nephew to appeal to the found the composition obvious and and "adverse effect" on his reasoning included the statement: Supreme Court, because it considered appellants that there is no significant point "The notional skilled formulator of general public importance at would test some familiar compounds The recent decision of a European stake. In coming to its decision, the but, subject to the regulatory point Patent Office Board of Appeal in Case Court of Appeal had simply applied considered below, would not be T 0327/13 offers a warning for would- the established principles of claim put off from including unfamiliar be appellants. construction from Kirin Amgen Inc v compounds merely because of Hoechst Marion Roussel Ltd. However, their unfamiliarity. The question is During Opposition proceedings, the Smith & Nephew have stated that primarily a technical one and would patentee had requested dismissal of they will seek leave from the Supreme be decided based on consideration the opposition (the Main Request), Court to appeal. of the known properties and desired or maintenance of the patent on the characteristics of the compound". basis of granted independent claim 3 This decision highlights that the (an Auxiliary Request). Following the interpretation of numerical ranges The Court of Appeal disagreed, decision of the Opposition Division very much depends on the facts of the reiterating a previous finding that: to maintain the patent in amended case. It is a reminder that patentees “mere possible inclusion of something form (maintaining originally granted and patent attorneys should carefully within a research programme on claim 3), the patentee appealed. In consider how numerical ranges are the basis you will find out more the Statement of Grounds of Appeal, expressed when drafting or amending and something might turn up is not the patentee requested, as the Main patent applications. The decision will enough. If it were otherwise there Request, maintenance of the patent also have an impact on third parties would be few inventions which were on the basis of independent claims 2 who will need to carefully consider patentable. The only research which and 3 (as granted). whether operating just outside a would be worthwhile (because of the numerical range is enough to avoid prospect of protection) would be in The Board of Appeal held that the infringement. areas totally devoid of prospect.” appellants were not entitled to appeal, although it was acknowledged For now, therefore, it is accepted that they were adversely affected by that the required “expectation of the Opposition Division's decision success” is about whether one could not to grant the Main Request in 20 www.vennershipley.co.uk

those proceedings. Specifically, the Board noted that the appellants did not defend the Main Request as filed before the Opposition Division, which included claim 2 as granted. The Grounds of Appeal did not address the“ interpretation the original Main Request at all, let alone indicate any reason for setting of numerical aside or amending the decision of ranges very the Opposition Division that claim 1 of this request lacked over much depends D1. As a result, the Board felt that it was apparent from the Grounds of on the facts of Appeal that the appellants no longer the case disputed that claim 1 as granted and of the Main Request as filed before ” the Opposition Division lacked novelty. Hence, it was held that the appellants did not challenge the refusal of this claim by the Opposition Division.

The Board concluded that this meant that the appellants were not adversely affected by the Opposition Division's decision to dismiss the Main Request filed in the Opposition proceedings, but by the non-maintenance of an independent claim based on claim 2 as granted, in addition to the duly filed (and maintained) independent claim based on claim 3 as granted. However, the Board went on to state that the subject-matter of claim 2 as granted was not the subject of an individual request in the Opposition proceedings, so that it had not been addressed as such in the decision of the Opposition Division.

The Board therefore considered the Appeal to be an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the Opposition proceedings, which is not the purpose of appeal proceedings.

Potential appellants should therefore take note. The mere maintenance of the Main Request at first instance may no longer be sufficient to ensure that the appellant is adversely affected by its refusal. An Appeal must substantively address why the refusal at first instance was wrong.

Siân Gill [email protected]

21 Patent Prosecution

The Patent Prosecution Highway Highway (PPH) allows an applicant having claims found allowable in one territory to request accelerated processing of corresponding applications before other offices. This can be an effective way of achieving a quick grant of applications around the world before participating offices.

To request PPH before a given office, PPH schemes In addition to these schemes, there at least one pending claim must are a number of bilateral agreements A Global Patent Prosecution Highway correspond to the claims which have between countries, including PCT- (GPPH) pilot scheme launched been found allowable in the other PPH agreements allowing the written on 6 January 2014. Under the territory. Additionally, there must be opinions of the ISA and IPEA, and the scheme, a request for accelerated a PPH agreement in place between IPERs from one office to be made processing can be made at any of the office which found the claims use of by the other office party to the participating offices. Because allowable and the office before which the agreement, alongside the usual individual bilateral agreements do PPH is being requested. work products from national stage not need to be set up between offices examination. participating in the scheme, the GPPH Traditionally, the agreements were provides access to PPH in a large bilateral agreements between number of countries. Currently, the Requirements for PPH individual offices, but in recent times, GPPH has 21 countries participating, PPH schemes have been introduced Claims of a corresponding application including the UK. The EPO is not a which have expanded the network of must have been found allowable by a member of this scheme. offices offering PPH, improving access first office, during national phase, or to PPH around the world. It is likely during the international phase if the The IP5 is a PPH pilot scheme which that this network will continue to first office acted as ISA or IPEA. also launched on 6 January 2014. The grow as more national offices sign up participating offices are the EPO in to participate in PPH schemes. The first office must have a PPH Europe, the JPO in Japan, the KIPO agreement in place with the office in Korea, the SIPO in China, and the The idea behind PPH is that the before which PPH is being requested, USPTO in the US. work carried out in relation to the or each office must participate in a search and examination of a patent common PPH scheme. Each of these schemes allows the application can be shared among work products from examination participating offices, to reduce One or more claims of the application to be made available for the the amount of work duplicated for which PPH is being requested participating offices. The work by examining offices. In theory, must substantially correspond to the products include those established this sharing of work and use of claims found allowable before the during national phase examination of accelerated procedures before the first office. a participating office, but also include national offices can result in a quick work products established during grant of an application with allowable Because the claims pending under the international stage, if one of the claims. PPH before a second office have been participating offices has acted as ISA found allowable before a first office, a or IPEA and found one or more claims benefit of PPH may be that the claims to be allowable. are sufficiently narrow to limit the

22 www.vennershipley.co.uk scope of any searching performed by “ the second office, compared to claims just because a first office has found claims which have not yet been examined or to be novel or inventive, this does not mean amended to overcome prior art in any other territory. that other offices will arrive at the same

In practice however, just because finding a first office has found claims to be novel or inventive, this does not ” mean that other offices will arrive Filing a PACE request causes the quite short. PPH before the UKIPO at the same finding. In particular, search and examination of the can therefore be a good option for interpretation of both the claim application to be prioritised. As achieving a quick grant in the UK. language and the prior art can differ such, the extended European search between offices. For example, the report and examination reports will There are many other measures USPTO may attribute a broader be issued more quickly than under which can be taken in order to interpretation of the claims and ordinary examination circumstances. speed up prosecution. For example, the prior art compared to the EPO, There is no fee for a PACE request, before the EPO, the right to receive and so more detail may be required and no requirements to fulfil, other certain communications may be before the US examiner considers than making the request in writing. waived, meaning the search report the claims to distinguish over the or examination reports arrive sooner prior art. Additionally, inventive The EPO accelerate prosecution of than they otherwise would do. This step or obviousness thresholds applications under PPH in the same could be done alongside filing a PACE can vary depending on the office of way as applications under PACE, and request. examination. For example, Japan search and examination is performed appears to have a higher threshold in the usual manner, but under PPH For international applications, the for inventive step than the EPO. the EPO will also take into account the EPO regional phase or UK national work products from the office before phase may be entered early, and early Conversely, there is a possibility that which the corresponding claims were processing requested. This means the second office would have found found allowable. In practice therefore, that regional or national processing slightly broader claims to be allowable the EPO treats applications under PPH can begin earlier than the usual 31 than claims found allowable before and PACE in a very similar way. months from priority. A PPH request the first office. Therefore, the scope of could also be filed in addition to early protection obtained under PPH may Under PACE, accelerated examination national phase entry. be more limited than might otherwise is not dependent on the claims having have been obtainable. In such a been found allowable before a first case before the EPO, a preferable Conclusion office, unlike PPH. Therefore, PACE option may be to file broader claims may be a good option if you do not PPH can be an effective means of in Europe and file a PACE request yet have a corresponding application speeding up the issuance of search (discussed below) instead of PPH. with allowable claims. Additionally, and exam reports, which may result in if your granted claims are quite a quick grant. The EPO takes a stricter approach narrow, and you think you may be to added matter than many other able to obtain broader scope before However, in practice it is found that, offices. As such, claims amended the EPO, then a PACE request may due to differences in procedures of before a first office may be found be preferable to PPH under these some examining offices and subtle to add matter before the EPO. This circumstances. differences in national laws, the may complicate prosecution because effect and outcome of applications the applicant will need to amend the At the UKIPO accelerated processing under PPH are not entirely uniform. claims in order to remove the added can be requested, but a reason must Furthermore, PPH is not a guarantee subject matter. be given. Examples of such reasons that an application will ultimately are awareness of a potential infringer, proceed to grant. It is therefore Therefore, it is important to bear in a need for faster processing to secure important to take into account the mind that just because the claims an investor, or even the need for a facts and circumstances of each have been found allowable before a granted patent in order to request individual case before deciding if PPH first office, this is not a guarantee that PPH before another office. With is the best step to take. they will be always found allowable PPH at the UKIPO, no such reason before a second office. is required, and so PPH therefore provides an effective means to get What are the other options? accelerated processing before the If PPH is unavailable or unsuitable, UKIPO if none of the other reasons for then the EPO and UKIPO have accelerated processing apply. alternative means to accelerate prosecution of applications. In practice the UKIPO often allows applications under PPH based on At the EPO, prosecution may be the positive opinion of a first office, Katherine Dainty accelerated by filing a “PACE” request. and the timescales involved can be [email protected]

23 Patents: helping your agrochemical company to grow? Global population has increased by over 5 billion people in little more than a century and the United Nations predicts that global population will continue to rise to roughly 9 billion people by 2050. Clearly such an explosion in population results in a massive increase in the demand for food and one of the industries that has always been the most acutely aware of the pressures brought on by population change is the agricultural industry.

The industry has radically changed used on crops roughly 4500 years Research continued and in over the last century, adapting to ago2. Throughout history, mercury, 1970 arguably the most famous produce enough food required to sulfur, and arsenic compounds have agrochemical was discovered by feed the increasing global population, been used as insecticides; tar has Monsanto chemist John Edward Franz. and one of the most important been used on tree trunks to trap Glyphosate (N-(phosphonomethyl) factors that has enabled this has been crawling insects; and salt water has glycine) is a broad-spectrum herbicide the introduction and subsequent been used to control weeds. effective at killing a wide variety development of agrochemicals. of plants and was marketed by However, it was not until Monsanto as Roundup. The exclusive Agrochemicals such as pesticides, the 1940s that the first true rights were retained in the USA until herbicides, insecticides, and blockbuster agrochemical, DDT its patent expired in September 2000. fungicides enable crops to thrive in (dichlorodiphenyltrichloroethane) Glyphosate is now marketed and less than ideal conditions and provide was discovered. DDT was discovered sold around the world by dozens of consumers with the high quality by the Swiss chemist Paul Hermann agrochemical companies, with over produce free from blemishes, fungi, Müller who received the 1948 Nobel 750 products containing glyphosate and insect contamination that they Prize in Physiology or Medicine for on sale in the US alone4. desire. It is reported that with the his work. A Swiss patent for DDT use of agrochemicals, between 1961 which granted in 1940 was quickly Due to the innovation in this industry and 2009 food productivity increased followed by patents in the UK, USA, and the use of more specialised by 150%1. However, the Food and and Australia3. Early tests showed agrochemical products, the total Agriculture Organisation of the United that DDT was effective against a wide amount of pesticides used by Nations (FAO) estimates that even variety of pests and was found to farmers has fallen and advancing when using agrochemicals, between be of enormous value in combating chemical research has allowed 20 and 40% of the world’s potential typhus and malaria during the Second better resistance management and crop production is lost annually World War. But resistance to DDT was improved selectivity5. Additionally, because of the effects of weeds, reported in 1946 and other problems largely due to Directive 91/414/ pests, and disease. This equates to were found in the contamination EEC, over the last 25 years there has billions of dollars worth of lost crops of non-target plants and animals. been a more focussed search for per year; that number would be Further issues were identified in the compounds that are able to control noticeably higher if agrochemicals US, where an increasing number pests without damaging crops or were absent from the growing, of people were expressing concern the environment. The Directive storing, and transportation of crops. over the hazards associated with entered into force on 25 July 1993 DDT. The initial success of DDT and helped focus new research Modern day agrochemicals use therefore was short lived due on more environmentally friendly are significantly more to subsequent resistance and the agrochemicals by harmonising the bespoke than the alleged identification of unacceptable rules for registration of pesticides first chemicals side-effects. in the EU. Before a pesticide

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containing a new active ingredient amount of salinated water will Luckily, in Europe, the patent system can be sold to the public, it must gain increase. In order to cope with lower has a method of compensating for regulatory approval and in order amounts of water, crops may be this time lost, through the use of a to gain regulatory approval, new engineered to be drought-resistant supplementary protection certificate pesticides typically require one of or able to survive on salinated water. (SPC) which effectively extends the the following characteristics: reduced Alternatively, hydrogels could be a duration of a patent. SPCs were impact on human health and very solution. Hydrogels are synthetic originally brought in to protect low mammalian toxicity; exhibit polymers which are able to absorb medicinal/veterinary products in a toxicity lower than alternatives; many times their own weight in water, the early 1990s but were extended reduce the effects on non-target and can therefore be distributed into in order to protect plant protection organisms; exhibit a lower potential dry regions in order to improve the products in the mid 1990s. A SPC for contaminating groundwater; or, ability for soil to absorb water. must specify the “product” or active have increased efficacy. ingredient that it has marketing Different approaches could be authorisation on and only extends Innovation has clearly been key to used to assist farmers to produce the patent term with respect to enabling the agricultural industry more food. The use of autonomous that product; it does not provide an to meet the needs of a growing machinery could be used to plough, extension of the term of the patent as population. In the future however plant, and gather crops, which could a whole. there will most likely be further operate more consistently than additional pressures that will lead human driven machines, such as The standard maximum term for a to higher requirements in the through the night. Lab-grown meat SPC is five years, but a SPC may run production of food. Not only will made from strips of muscle and stem for five and a half years if it relates the population increase, but it is cells has been found to be a more to human medicinal products for likely that there will be a higher efficient and environmentally friendly paediatric use. For blockbuster calorie demand as quality of life will way of producing food. products, this six-month extension to improve; more land will be required a SPC is likely to be a highly valuable for urbanisation and recreation; more reward; however, nothing similar crops will be used as bio-fuels; crops exists for plant protection products. may suffer from shortened growing “ Due to the increasing amount of time seasons because of global warming; The UN has predicted it takes for a new agrochemical to and other crops may be unable to that the agricultural make it to the market, could a similar pollinate at higher temperatures. The amendment to the paediatric use be UN has predicted that the agricultural industry will have to made to SPCs for plant protection industry will have to increase increase production products? Such an amendment production by 60% by 2050. In order would surely help to increase the to meet this increased productivity by 60% by 2050 profits and therefore the amount requirement, it would seem that we of money available for R&D which must invest and focus on innovation, ” will undoubtedly help develop research and development, and solutions to the upcoming agricultural implement new technologies and Agriculture has seen a massive problems. practices on a commercial scale. Can overhaul recently looking into new the industry facilitate these huge technologies, but agrochemicals increases in production? still have a place in the future of agriculture. But systems could Several changes in the industry have be adapted in order to assist the already been observed. For example, agrochemical industry. bio-surfactants have been found to be both useful and effective at protecting The requirement of obtaining plants from fungi and bacteria. Bio- marketing approval before a product surfactants are produced by bacteria, is launched means that commercial yeast, and fungi and have been found exploitation of an invention may Chris Newcombe to be significantly less toxic and not be possible for several years [email protected] more eco-friendly than traditional after a patent application is filed. agrochemicals. Because they are Presently the length of time it takes 1 http://www.theguardian.com/ made from renewable resources they to obtain regulatory approval is over environment/2011/nov/28/un-farmers- produce-food-population do not release harmful greenhouse 10 years. The main consequence of 2 http://agrochemicals.iupac.org/index. gases into the atmosphere and this is that the effective period during php?option=com_sobi2&sobi2Task=sobi2Deta therefore do not contribute to global which a patent can be exploited ils&catid=3&sobi2Id=31 warming. is severely reduced. The length of 3 http://www.nobelprize.org/nobel_prizes/ time and cost of R&D and regulatory medicine/laureates/1948/muller-bio.html restrictions continue to increase, both 4 http://npic.orst.edu/factsheets/glyphogen. Another impact of rising global html of which can be disadvantageous to temperatures is that global fresh 5 http://www.nap.edu/read/9598/chapter/6#176 water levels will decrease and the agrochemical companies.

25 The role of IP in internet retailing

Internet retailing is increasingly becoming one of the main trading forums for a lot of suppliers both in the UK and throughout the world. Two of the largest e-commerce websites are Amazon® and eBay®. Amazon and eBay currently permit third parties to sell products through their websites. The access and popularity of these websites has led many retailers to sometimes use them as their sole means of e-commerce.

Although Amazon and eBay allow easily circumvented by simply for third party vendors, they operate Buyers“ accessing rewriting the listing in different words. in different ways. eBay allows the Some companies are therefore now seller to create their own bespoke a product page turning to registered IP rights, such as listing for a single product. Amazon can be presented registered trade marks and designs, allows a product page to be created to help secure their e-commerce for a type of product where the seller with a number of market position. These rights provide can sell multiple copies of the same an official registration number product via a price listing associated price listing options that enhances the legitimacy of a with that product. Amazon differs allowing for price complaint and can protect aspects from eBay by allowing different of the products themselves rather parties to advertise/sell equivalent undercutting than just the descriptive text on the products via the same product page. webpage. Buyers accessing a product page ” can therefore be presented with eBay, a copyright violation of their A valid registered design protects a number of price listing options listing text by another company, a product’s appearance and can allowing for price undercutting, which with the offending product listing help stop others selling the same may be undesirable to the company being removed within one week goods because it gives you the that created the product page. and further repeat offending listings exclusive right to sell products removed within 2-3 days. Even made to that design. One type of Amazon and eBay have their own though copyright can be used to design registration is a Registered policies which allow aggrieved stop competitors, it may not always Community Design (RCD) which is Intellectual Property (IP) owners to be successful because copyright is typically registered within 2-3 days, complain and get third party product/ an unregistered right in the UK. By thus providing you with a fast- price listings in conflict with their IP complaining to Amazon/eBay on registered IP right covering all of rights removed from the website. a copyright basis, you are relying the EU countries that you can use List removal can be fast. In one case, on them believing that you own to help prevent others advertising an aggrieved company reported, to copyright in the work. Such textual similar-looking products on Amazon/ copyright protection may also be eBay. A registration can only be valid

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if the design fulfils the criteria of Filing a registered design application Some companies have been being ‘new’ and having a different is not appropriate if you are looking successfully arguing that only ‘overall impression’ to existing designs to sell an externally designed product similar branded products can be already in the marketplace. Filing that has been on the market for a sold through that product page and for registered design protection number of years. In these situations, therefore third parties need to use is therefore a good option if your some companies are relying on separate product pages as they product has not yet been released registered trade marks which protect cannot use that particular registered on the marketplace. Some registered signs, such as brand names and logos, sign shown in the pictures. This in design rights, such as RCDs, even associated with particular goods/ turn has helped some companies allow you to file your application up services. An application to register prevent price undercutting to one year after putting your design a Community Trade Mark (CTM) to competitors from ‘hooking up’ to their in the market. These validity criteria cover all EU countries usually takes product page. are only assessed if the validity of 4-6 months and can be filed for signs the design registration is formally already in use. Some companies Overall, as e-commerce continues to challenged. If a third party is using importing and selling existing well- increase, IP may also start to play a a registered design to stop you known products are reporting some more important role for the internet selling through Amazon/eBay and success in preventing others posting retailer. you believe that the design does not equivalent products under their fulfil the validity criteria, then you can Amazon product page by branding seek to invalidate it. Furthermore, the the product with their registered Amazon website currently provides trade mark and using pictures of an indication of when the goods the branded product on the page. shown on a product page were first Amazon’s own rules state that “When advertised via Amazon, which in some listing items for sale using an existing circumstances may help you provide product detail page, the product being evidence that a registered design was offered must be listed on a product not ‘new’ when the application was detail page that accurately describes the filed. product in all respects”. Robert McDougall [email protected]

27 Veterinary patents – barking up the right tree The UK is said to be a nation of animal lovers, and this is supported by the fact that Britons are predicted to spend more than £4.5bn on their pets during 2015 alone. Furthermore, global spending on domesticated animals is estimated to exceed £65bn this year, and so it is no surprise that businesses working in the veterinary sector are keen to protect their intellectual property in order to ensure that they are in a strong position to take advantage of this hugely growing market.

Medical devices dog) having injured hind quarters. horses. As readers will know, horses The prosthesis comprises a wheeled are large mammals typically weighing The veterinary sector includes many cart to which the animal's thorax 450-500 kg, and sometimes much fields of research with medical is harnessed, an adjustable hip more. However, they have relatively devices, such as animal implants, support for carrying the animal's slender and fragile legs which can prostheses and orthoses, being a rear quarters, and an adjustable shin easily become injured, either from particularly popular area for seeking support for the animal's rear legs, as blunt force trauma or from repeated patent protection. Previously, when shown. loading of the limb during training. an animal sustained a serious injury, Once an animal is injured, it will the only humane option was to Animal prostheses have come a long require a substantial rest period euthanize the animal. However, way since this Canadian patent was which can lead to a large financial over the last 40 years, a wide range issued. More recently, patents have cost due to the inability of the animal of patent-protected prosthetics for been granted for technically advanced to work and the need to pay large animals have become available, prostheses, such as an intervertebral vet bills. US20140148746 describes allowing injured animals a new lease disc prosthesis for the cervical spine a limb protection device for a horse of life. One of the early patents in a dog, which involves a complex (illustrated) such as a racehorse, in this field is a Canadian patent system of inter-engaging discs which intended to be worn during exercise. (CA1166095), which was granted in are implanted between adjacent 1984, and covers a prosthetic cart vertebrae in the dog. This device for a four-legged animal (such as a demonstrates how far many pet owners are prepared to go in pursuit of the welfare of their animals.

As well as medical devices intended to improve the quality of life of injured animals, devices are being developed which actively prevent injury to animals. For instance, such devices have been developed to be used by

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The device provides mechanical advances“ in therapy receives much more funding support to the horse's fetlock without than veterinary medicine. However, unduly interfering with the normal veterinary science this is not a one-way street, and motion of the joint. By supporting advances in veterinary science can the horse's leg in this way, the device can often be highly often be highly valuable to human provides protection when the horse's valuable to human medicine. One example of this is in leg might otherwise be vulnerable to the field of cancer research. Unlike injury during training. medicine mice and rats, which are traditionally used in medical research, dogs and Compositions ” cats, which are kept as pets, are genetically diverse and are exposed and later from the damage caused Although, it is clearly possible to to many of the same environmental to skin and tissue. Additionally, it is patent medical devices in Europe, factors as their owners. Additionally, important that any treatment has very such as the types of apparatus like people, dogs and cats suffer low toxicity to the fish being treated described above, Article 53(c) from naturally occurring tumours. and also does not harm other marine European Patent Convention (EPC) Currently, the diagnostic tests and animals which might come into stipulates that it is not possible to therapeutic treatments available contact with the formulation, such obtain patent protection in Europe for pets suffering from cancer are as lobsters and oysters. One group for a method of treating an animal limited. However, the legislative has obtained a patent for a range of by surgery or therapy, or diagnostic burden associated with research small molecules which effectively kill methods that are performed directly carried out on pets is often lower sea lice without harming other marine on an animal body. Nevertheless, the than it is for humans, and so there is animals. EPC does allow patent protection, a growing focus within the veterinary in Europe, for the use of substances community towards detecting and or compositions in a therapeutic or Dentistry curing cancer in animals, which will diagnostic method that is performed In addition to improving or saving hopefully result in similar diagnostics on an animal. animal lives, innovations also exist in and therapies becoming available for the improvement of animal hygiene. human use. For example, laminitis is a painful Unlike humans, most animals, inflammatory condition that affects especially domesticated pets, are the feet of hooved animals, in Summary unable to take care of their own particular horses and cattle. Although It can be seen therefore that the dental hygiene, and so a number of it is not possible, in Europe, to patent veterinary sector, both for domestic products have been developed for a method for treating an animal pets, and farm livestock, is a growing caring for their teeth. These include suffering from laminitis, one group market and, as a result, there has a composition which is added to an has successfully patented the use of been an increase in the number of animal’s drinking water and comprises a novel compound for the treatment patent filings covering veterinary breath freshening agents, vitamins, and prophylaxis of laminitis in horses. innovations. Due to the increased and zinc gluconate which acts as an Similarly, another group has patented interest and investment in the sector, antibacterial agent. The patent even a novel chemical formulation effective it is expected that the number of claims that the composition can be for use against sheep ectoparasites, filings will increase, and could result formulated as a toothpaste (WO such as blowfly. Blowfly infestations in innovations which can be used in 2009/009126 A1). Animals clearly do can affect sheep with an estimated human medicine. not understand why dental treatment 80% of flocks in the UK suffering may be necessary, and so to expedite one or more cases of blowfly strike procedures and avoid injury to a vet each year. Symptoms can include or animal dentist, it is sometimes agitation and dejection in the sheep necessary to use a device to ensure and shedding of wool. A distinctive that the animal cooperates with odour is noticable, and if the parastic the animal handler. For instance, infection is not treated, this smell can one group have obtained patent attract more flies and will eventually protection for a speculum for a horse, lead to an agonising death for the which allows the vet to view the teeth sheep. Accordingly, the patented within a horse's mouth without the composition to treat this infection Anton Hutter need to place their hand inside the could be extremely useful for sheep [email protected] mouth and risk considerable injury. farmers.

Novel compositions have also been Translational medicine invented for the treatment of fish, for It will be seen that the veterinary example for killing sea lice, which are sector is responsible for patent encountered in many fish farms. It is filings protecting a diverse range important that this problem is dealt of inventions in this area. Despite with promptly, as a severe infestation this many of the drugs and surgical can kill fish with mortality rates of equipment that are currently in over 50%. In a first phase, sea lice use for the treatment of animals infestation is seen in the appearance were originally invented for human Catrin Petty of the parasites attached to the fish medicine, primarily because human [email protected] 29 The geographic coverage of a European patent Since coming into effect in 1977, the European Patent Convention (EPC) has provided a legal framework for the obtaining of patent protection across Europe through a centralised application and prosecution process at the (EPO). A lesser known fact, however, is that the territorial coverage available from a European patent is not limited to the contracting states of the EPC, and indeed not even limited to only European states. This article briefly explores the jurisdictions in which patent protection can be obtained on the basis of a European patent.

unlike extension agreements, Contracting states “ validation agreements are not limited The most obvious jurisdictions unlike extension to European countries. in which patent protection can agreements, be obtained on the basis of a There are currently validation European patent application are validation agreements in force with the contracting states to the EPC. and , both of which entered In each of the contracting states, agreements are not into force this year (March 2015 and a granted European patent can be limited to European November 2015 respectively). An validated to confer the same rights agreement has also been signed with as a granted national patent in those countries , although this is not yet in states, provided that translation force. requirements are met. Extension agreements allow ” European patents to be extended Under the extension/validation Since the in 2008, to cover European states which system, if an applicant for a European the amount of translation required are not contracting states to the patent submits a request for has been relaxed in many contracting EPC, and are often a precursor to extension/validation and pays the states, making it cheaper and more the state becoming a contracting extension/validation fee in due time, feasible for applicants to obtain state. In the past, there have been the European patent can be extended broad geographic coverage within the extension agreements with a number to/validated in these countries. This contracting states. of countries which subsequently provides a relatively simple and became contracting states to the cost-effective way of obtaining patent At present, there are thirty-eight EPC – for example, and protection in a number of states contracting states, as listed in the are former extension states which which are not contracting states to table opposite. became contracting states in 2010 as the EPC, including countries which are the most recent additions. even outside of Europe.

Extension/validation states At present, only two extension Outside of the contracting states, agreements remain in force: those Other territories it is also possible to obtain patent with and Finally, there are also a number of protection with a European patent . other territories in which a European in certain states which have an patent can be used to obtain patent agreement with the EPO. These Validation agreements are very protection. In general, these are agreements fall into two categories: similar to extension agreements, and territories which have a historic extension agreements and validation allow European patents to have effect affiliation with one of the contracting agreements. in non-contracting states. However, states, or are an overseas territory 30 www.vennershipley.co.uk

Map showing the geographic coverage of one the contracting states – in particular the UK, France and the of European patents Netherlands.

The UK provides the largest group of these territories – a European patent which has been validated in the UK automatically covers the Isle of Man, and can be extended to cover Anguilla, Bermuda, British Indian Ocean Territory, British Virgin Islands, Brunei Darrussalem, Cayman Islands, the Falklands, Fiji, Grenada, Guernsey, Jersey, Kiribati, Saint Vincent, Samoa, Solomon Islands, Turks and Caicos Islands, Tuvalu and Vanuatu. It is also possible to apply for patent protection in Hong Kong on the basis of a European patent application designating the UK.

A European patent validated in France covers French overseas territories including Polynesia and New Caledonia, and a European patent validated in the Netherlands covers Curaçao, Sint Maarten and the Dutch Caribbean (Bonaire, Sint Eustatius and Saba).

Although these territories may be lower down the list of commercial significance when it comes to patent protection, it is useful to keep in mind that they can still be covered with a European patent. Map taken from https://www.epo.org/about-us/organisation/member-states.html Conclusion Contracting States Extension States Validation States Although European in name and Albania, , Bosnia and Morocco based on the EPC, European patents Belgium, Bulgaria, Herzegovina Moldova can also provide patent protection for applicants in non-EPC states and Croatia, , Montenegro Tunisia (signed but not outside of Europe. In particular, the , yet in force - shown in signing of validation agreements , , light blue) with Morocco and Tunisia reflects Finland, France, the growing sphere of influence of Germany, Greece, the European patent system outside Europe, and may be an indicator of , , the future possibility of more North Ireland, Italy, , African countries using the European , , patent system. This may well be worth Macedonia, , bearing in mind for applicants looking , Netherlands, for comprehensive geographic , Poland, coverage for their inventions. Portugal, , , Serbia, , , Spain, , Switzerland & , and the UK

Yichuan Xu [email protected] 31 www.vennershipley.co.uk [email protected]

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