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It’s such a shame for us to part (Poisonous Divisionals)
Unusually, I’m lost for words. Not words in general, as you can see, but specific words to describe the phenomenon of self-collision between parent and divisional applications identified in European practice by Malcolm Lawrence and Marc Wilkinson of Avidity IP as the poisonous… I’d better stop there. In the light of UK Trade Mark Registration No. 2612561, I think we need to find a new generic term. “Putrid Priority” is often the real problem but as a term, this doesn’t sound like an improvement. It would be good to make some reference to the overarching phenomenon of self-collision. How about “divisional collision”? Why not – let’s see by the end of the article whether it trips off the tongue well enough as we consider its application in in Nestec S.A. et al v. Dualit Limited et al.
RAND – the search for meaning reaches Seattle
IEEE 802.11 is a set of standards that cover wireless local area networking. These standards provide the basis for wireless network products which use the Wi-Fi brand (yes, it is a brand) – most people reading this article will use such technology many times a day. Patents have played a contentious role in the development of this standard, particularly in the successful licensing campaign carried out by the Australian national science agency CSIRO. This campaign has attracted strong criticism – for example in this Ars Technica article - and also some robust defence, particularly from Australia in this piece from the Patentology blog. While clearly no-one likes to be told that they are governed by trolls, hopefully tempers have now cooled, and this is all water under the bridge.
The Hand Test Revisited
Most patent attorneys at some point in their career will have been introduced to the “Hand Test”. This is a rule of thumb (well, four fingers and a thumb) test to determine whether a claim is useful. There are various versions, but a familiar one is for Claim 1 of a patent to be printed out – for the sake of argument and objectivity, let’s say in 12 point Times Roman with one-and-a-half spacing – and for a patent attorney (let’s say one taking size 8 in gloves) to try to cover it with their hand laid flat, with fingers together, on the paper over the printed claim. If there are lines of text showing above or below the hand, the claim is generally not infringed by the embodiment of interest, avoidable by one simple workaround or another, or simply impossible to infringe.
Does Every Experiment Need a Test Tube?
The UK Intellectual Property Office has recently launched a consultation entitled “The Research and Bolar Exceptions”. While all patent practitioners may have got as far as the end of the title, the profession will split into two groups after reading the subtitle, “A formal consultation on patent infringement in clinical and field trials”, indicating that this is another exercise in sculpting patent law specifically for the pharmaceutical industry.
This all relates to the interpretation of s.60(5)(b) of the Patents Act 1977, which states that:
“An act which, apart from this subsection, would constitute an infringement of a patent for an invention shall not do so if… it is done for experimental purposes relevant to the subject-matter of the invention;”
Most European countries have a similar provision as a result of the harmonisation in European patent law associated with the creation of the Community Patent and European Patent Conventions in the 1970s. Different countries, however, interpret this provision in quite different ways. The UK courts have interpreted this exception narrowly, leading to widespread concern that the UK is out of step in not having a clear exception for clinical trials.
