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‘Expectation of Success’ as Part of Inventive Step Analysis

MyriadThis is the second in a series of articles on biotech inventions (the first article can be found here). The present article discusses ‘expectation of success’ which is often considered as part of assessment of inventive step for biotech inventions and also in other life science areas such as pharmaceuticals. Whilst this article is written from the perspective of how the test is used at the European Patent Office (EPO) and in the UK Courts, ‘expectation of success’ is also applicable in other territories. (more…)

An Overview of Biotech Patenting

MyriadThis is the first in a series of articles about biotech inventions. The articles will explore how Patent Offices deal with biotech inventions and how the demands of biotech research and financing impact on patent strategy.

The present article provides an overview of the issues that are relevant in patenting biotech inventions. (more…)

European Patent Litigation Certificate – responses to consultation

EU flagBefore the summer recess the Unified Patent Court Preparatory Committee ran a consultation on the European Patent Litigation Certificate (EPLC). Regular readers will recall that this certificate links to Article 48 of the UPC Agreement which states that parties may either be represented by lawyers authorised to practice before a court of a Contracting Member State or by European Patent Attorneys who have “appropriate qualifications such as a European Patent Litigation Certificate”.

The consultation closed on 25 July and, according to the latest Preparatory Committee roadmap, a revised version of the EPLC rules is expected early 2015. In the meantime one of our Twitter followers (thank you Guillaume S./@EPpatent) kindly pointed us at the Bristows UPC website where a few of the responses to the EPLC consultation are hosted.

Given that these responses include representatives from patent attorneys and also from lawyers we thought it might be fun to see how far apart the responses were! (more…)

An introduction to the Unitary Patent

EU flagIf you don’t know your Battistelli from your Balotelli and you think the UPC Arena is the football stadium formally known as the Arnold Schwarzenegger-Stadium in Graz, Austria rather than a new European patents court then you’ve probably been spending more time on your fantasy football league than you have preparing for the Unified Patent Package. Fear not though as IPcopy has you covered with our Unitary Patent 101 blog post! (more…)

The vexed question of “use as a trade mark”

stacked-booksToday on IPcopy we have a guest post from Carmen Champion, an IP barrister in Sydney, on the subject of “use as a trade mark”.

In a couple of recent cases in Australia, dealing with businesses as disparate as home elevators and halal butcheries, the courts have considered (or in one case, ignored!) that question central to trade make disputes: was the mark in question “used as a trade mark”? (more…)

New to IP? Here’s 10 facts about Intellectual Property

file2611249338382The aim of this article is to very briefly introduce some topics, facts and issues from the area of intellectual property law. This article is aimed at people who have had little or no contact with intellectual property and is designed as a (very brief) primer to highlight some particular elements of the subject area. (more…)

IP in collaborations – some considerations

AgreementThe following is a briefing note prepared for Interface by Richard Lawrence and Keith Turner of Keltie LLP.

A key role of Interface is to facilitate effective interactions between industry and academic and research-based organisations. Intellectual property rights ( ‘IP’ ) will often be relevant to this kind of interaction. In the case of a collaborative project, for example, there may be existing IP (owned by the participants and/or third parties) and also new IP created as a result of the project.

The identification of what IP is involved at various stages of any project and determination of how this IP is managed are central to a successful collaboration agreement. These are not intuitive issues. Intuitively, ownership of newly-generated IP would appear to be the main concern, and this can be problematic in negotiations. In practice, however, issues relating to how the IP relevant to the project can be used and how this IP should be managed during and after the project can be more problematic in any subsequent commercial exploitation. (more…)

America Invents Act – One Year Later

photo-3rToday on IPcopy we have a guest post from Wolf Greenfield attorneys Patrick Waller and Daniel Young that takes a look at the changes seen in the US following the implementation of the America Invents Act. This article is reproduced with permission from Intellectual Property Magazine (IPM). This article first featured in IPM’s May 2014 issue.

We are now well past the one-year anniversary of the implementation of the final changes to US patent law under the America Invents Act (AIA), signed into law by President Obama in 2011. While the full impact of these changes on US patent applicants will play out over the next several years, this anniversary provides an opportunity to reflect on the significance of the changes and their impact on the country’s patent system. (more…)

Managing Confidential Information

OLYMPUS DIGITAL CAMERAThis is the second in a series of articles which aims to demystify the topic of technology transfer and give you valuable insight into its key elements. Whether you are just setting out to conduct R&D in collaboration with a third party, or are exploring a business opportunity such as licensing-in someone else’s technology or licensing-out your own technology, it will be vital to manage the flow of confidential information, including any know-how or trade secrets, in order to mitigate the twin risks of knowledge leakage and knowledge contamination. (more…)

High Court rules no compensation for inventor Shanks

Piggy bankToday we have a guest post from David Knight of Field Fisher Waterhouse LLP on the Shanks v Unilever case and the issue of employee compensation. This article first appeared on the SnIPpets IP blog and is reproduced here with the permission of the author.

Three years have passed since we reported on the appeal on an interim point in the case of Shanks v Unilever, a case relating to Professor Shanks’ (a former employee of Unilever) right to compensation as an inventor of patents of outstanding benefit.  (The patents related to a capillary action measuring device which has now found large scale use in home diagnostic kits for diabetes.)

Amazingly the case continues to rumble on, and the High Court (Arnold J) has recently issued a Judgment on appeal from the UK Intellectual Property Office (UKIPO) on the substantive part of the case.

By way of reminder, section 41 of the UK Patents Act provides that an employee inventor may be entitled to compensation if two conditions are satisfied:

  • that the patent is of “outstanding benefit to the employer”; and if so
  • that it “is just” that he should be awarded compensation.

Once these requirements are fulfilled the employee should receive such a fair share of the benefit the employer has derived, or may be expected to derive from the patent or the invention.

The case was brought in the UKIPO which, together with the courts, has jurisdiction to hear cases relating to employee compensation.  After a marathon nine day hearing at the UKIPO, including three expert witnesses, the Hearing Officer decided that:-

  1. the benefit of the patents to Unilever was £24.5m;
  2. the benefit was not outstanding;
  3. but had the benefit been outstanding, Professor Shanks’ fair share would be 5%.

Professor Shanks appealed the second and third point above; Unilever appealed against the first and third point.  Many issues were thrown up by the parties in support of their respective appeals; we comment below on those that are more likely to have general relevance in other employee compensation cases. (more…)

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