The Supreme Court, in a judgment handed down today, determined that the claims of a UK patent may extend beyond the scope of what a skilled person would understand the language of the claims to mean. In doing so, it swept away the previous practice of the UK courts whereby a patent claim would provide only that monopoly which a reasonable skilled person, reading the claims in context, would think that the patentee was intending to claim.
The facts at issue concerned a claim that made reference to the drug “pemetrexed disodium”. One allegedly infringing product contained pemetrexed dipotassium in place of the pemetrexed disodium. The lower courts had held that there was no direct infringement, on the basis that the language of the claims clearly required pemetrexed disodium, and that specific compound was not present in the product at issue.
On appeal, the Supreme Court held that a patent claim in the UK can in principle cover products and processes that are not embraced by the language of the claims as a matter of normal interpretation. In particular, products and processes that contain features differing from those specified in a patent claim (so-called “variant features”) can nevertheless infringe if the variant features differ from the claimed invention only in immaterial ways. The Court set out a three-part test for determining whether or not a given variant product or process would infringe. The relevant considerations focus on whether or not the variant makes use of the inventive concept revealed by the patent, whether or not that would be clear to a skilled person, and whether or not the patent as a whole makes it clear that strict compliance with the literal meaning of the claims was essential.
On the facts of the case, the patentee was able to argue successfully that a patent claim that referred to pemetrexed disodium did indeed cover a product that contained pemetrexed dipotassium in place of the pemetrexed disodium.
The UK has become the ninth state to deposit the document required to apply the Protocol on Provisional Application (PPA) which is an essential step towards formation of the UPC. Four more deposits, including that of Germany, are required for the PPA to come into force which will allow the UPC to gain legal personality and start the process of selecting Judges and formally to adopt the Rules of Procedure. As reported previously, the UK Government has also laid secondary legislation before Parliament which will enable UK Ratification, foreseen in autumn 2017.
Should the UK Ratification process proceed as expected, the final major obstacle to the UP and UPC coming into force is the constitutional challenge to German ratification. It is understood that the application for interim relief in Germany which led to the German Constitutional Court asking the German Federal President not to ratify the UPC, is likely to be heard in autumn 2017, meaning that the PPA could come into force before the end of 2017, with the sunrise period starting in early 2018.
10 July 2017
EPO Lifts Stays of Proceedings Following Implementation of New Plant Patent-Eligibility Rules
On 3 July, the EPO lifted its stays of proceedings on cases that had been held in abeyance pending new rules on the patent-eligibility of plant-related subject matter. Following an intervention by the European Commission in November 2016, as of December 2016 the EPO had stayed the prosecution of a number of plant-related applications pending a possible rule change. The EPO’s Administrative Council then decided at the end of June 2017 to enact some new EPC Rules in this area. These became effective almost immediately, as of 1 July 2017 and are applicable to both existing and newly filed applications.
The main change is the addition of new Rule 28(2) EPC, which reads as follows
Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.
Article 53(b) EPC provides that patents cannot be granted for plant or animal varieties or essentially biological processes for the production of plants or animals. The interpretation of these provisions has been controversial for some two decades. The latest area of dispute has been around whether, in light of the exclusion of essentially biological processes, it is nevertheless possible to patent the products of those processes, eg to patent “classically” bred plants even though not the breeding processes by which they are created. Some European countries’ national laws already contain provisions to the effect that the products of essentially biological processes are not patentable, even though the EPC refers only to the processes themselves. In its so-called Broccoli/Tomatoes I decisions in 2010, the EPO’s Enlarged Board of Appeal held that, in essence, any process claim containing one or more breeding steps was patent-ineligible under Article 53(b) but then in further decisions known as Broccoli/Tomatoes II it held in 2015 that the products of such processes could be patented. In fact, prosecution of such applications tended to be very difficult for other reasons so few such patents were granted but improvements in technology, especially growth in the availability of molecular marker data, that gave applicants more information about their plants and allowed better definition of traits contained in them have recently been beginning to render such filings more realistic. In the meantime, however, political pressure from breeders’ groups, non-governmental organisations and continental European governments opposed to such patents led the EU to lobby the EPO and the EPO to change its Rules.
New Rule 28(2) is prima facie in conflict with the Broccoli/Tomatoes II decision so it remains to be seen how this will be play out when the EPO begins to apply it. In principle, Article 23 EPC means that the EPO’s Boards of Appeal have to follow only the EPC itself, not its Rules, so if the Boards feel that the Rules are not in line with the EPC, they can ignore them. However, day to day examination will of course be conducted in line with the Rules so it seems likely that applications will be refused and test cases filed with the Boards of Appeal, leading ultimately to a further Enlarged Board of Appeal decision on the topic in the next few years. If the Enlarged Board ultimately re-confirms its existing case law, this will create a conflict in that the EPO will be forced to grant patents that may be unenforceable in litigation in many EPC member states, i.e. all those that are members of the European Union. This situation however exists to an extent already because of the national laws that are drafted differently than the EPC. The position of non-EU states that are members of the EPC is interesting in this regard, as those countries will more easily be able to reach their own decisions and may be more swayed by EPO case law than EU opinion. It is for example possible that UK practice on this issue could diverge when the UK leaves the EU. However, it is equally possible that the UK could enact a rule change similar to the one that introduced Rule 28(2) EPC.
All of this is however for the future. In the meantime, examination of the stayed cases will now resume and the new rules will also be applied to newly filed cases. Exactly how they will be applied will only become clear with time and experience but, from guidance published by the EPO before the changes were made, it appears that practice will remain similar in some ways and toughen in others. The use of the word “exclusively” in new Rule 28(2) suggests that plants and animals that are obtained partly by breeding and partly by technical means such as transformation and mutagenesis (including gene-editing techniques such as CRISPR/Cas) should still be patent-eligible as long as the claims are not confined to individual plant varieties, which are excluded by the other limb of Art 53(b) EPC. Claims to transgenic and mutant plants are thus unlikely to be affected, and new Rule 28(2) also does not change the position on claims in process format, on which the main authority remains Broccoli/Tomatoes I.
However, the rule change is likely problematic for so-called “native trait” claims in which the invention lies in the identification and definition of a beneficial characteristic and its transfer into other genetic backgrounds by breeding because, even when such traits are well-understood and defined in terms of sequences or marker positions, the plants themselves are still obtained by breeding processes. The EPO has in particular opined that claims to plants produced by marker-aided selection processes, in which breeding is accelerated by reliance on molecular markers but still fundamentally composed of crossing and selection steps, should not be patent-eligible under new Rule 28(2) EPC. Such subject matter could already not be claimed in process format because of the Broccoli/Tomatoes I decisions but this is a significant step away from the position in the Broccoli II decision, where the Enlarged Board of Appeal specifically approved claims relating to subject matter of this type in product-by-process format. The growing introduction into national infringement laws (including that relating to the forthcoming EU unitary patent) of so-called breeder’s exemptions, which have somewhat differing scopes but in general provide that it is not an infringement to breed a new variety from a patented plant, further tends to weaken patentees’ positions in this regard.
Patent applicants in this field therefore continue to face uncertainty but in general may need to recognise that some options previously available to them have been closed down and other strategies will have to be developed for protection of their inventions in Europe. For more information, please feel free to contact Andrew Bentham or your usual J A Kemp contact.
J A Kemp is supporting the first Bessemer Society dinner at Rhodes House in Oxford on 11 July.
The Bessemer Society is a new forum made up of ‘serial’ CEOs, founders and entrepreneurs who are committed to creating successful new companies based on technological innovation in the fields of science and engineering.
Named after Sir Henry Bessemer, the Society aims to promote his distinctive blend of technical, creative and entrepreneurial skills.
The objective of the evening is to bring together leading figures from science and technology manufacturing companies based in the Oxford area in a collegial atmosphere to discuss areas of mutual interest including their successes and the challenges facing their business. The evening is expected to attract more than 40 delegates, including a large number of J A Kemp clients and two J A Kemp partners, Dominic Forsythe and Ben Mooneapillay.
The event will feature presentations from Dr Gordon Sanghera, CEO and co-founder of Oxford Nanopore Technologies Ltd, Prof Peter Dobson, doyen of the Oxford University spinout scene, and Martin Fiennes, a principal of Oxford Sciences Innovation, the patient capital fund management company.
J A Kemp has been ranked as a top tier trade mark firm in the 2017 edition of the IP Stars Handbook, published by Managing Intellectual Property.
James Fish, head of J A Kemp’s trade mark practice, and fellow trade mark partner, Tom Albertini, were both recognised individually as IP Stars.
26 June 2017
UK Closer to Ratifying UPC Legislation
Secondary legislation required to bring the Protocol on Privileges and Immunities for the Unified Patent Court into effect in the UK (The Unified Patent Court (Immunities and Privileges) Order 2017) was laid before Parliament on 26 June 2017. The protocol establishes the legal personality of the Unified Patent Court in the UK.
The Order requires approval from both the House of Commons and the House of Lords before it can pass.
The Order, together with a separate Order expected to be laid before the Scottish Parliament, will enable the UK to formally ratify the UPC Agreement. Once the legislation has passed, the UK will be in a position to ratify the UPC Agreement, leaving Germany as the only remaining ratification required to bring the UPC Agreement into effect. The chairman of the preparatory committee is hopeful the UPC Agreement can enter into force in 2018.
26 June 2017
J A Kemp Wins “Best UK IP Firm” Award
J A Kemp has won the “Best UK IP Firm” award at this year’s International Legal Alliance Summit & Awards.
On 15 June the 10th anniversary of the event, held in New York, attracted over 500 delegates from all over the world. Simon Wright, a partner in J A Kemp’s Biotechnology and Life Sciences Group, collected the “Best UK IP Firm” award on behalf of J A Kemp.
The award recognises the firm for excellent performance and outstanding management and leadership in the UK market.
23 June 2017
Unwired Planet v Huawei - Mr Justice Birss Grants First FRAND Injunction, and Publishes Terms of FRAND Licence
We reported on 12 May 2017 that Mr Justice Birss had given an important decision concerning FRAND undertakings. On 7 June 2017, Mr Justice Birss gave a follow-up decision dealing mainly with the FRAND licence agreed between the parties and the decision as to whether to grant Unwired Planet an injunction to restrain patent infringement by Huawei, along with some ancillary matters (damages, declaratory relief, costs and permission to appeal). While almost all of the detail of the licences referred to in the earlier decision had been redacted, the settled FRAND licence agreed between these parties is annexed to the judgment in full.
In his decision of 5 April 2017, Mr Justice Birss said that an implementer which refuses to take a licence on the FRAND terms has effectively chosen to have no licence and so if it has been found to infringe a valid patent then an injunction can be granted against it. However, an implementer who makes an unqualified commitment to take a licence on FRAND terms cannot be the subject of a final injunction to restrain patent infringement.
Up until that decision, Huawei had refused to take the licences, later found not to be FRAND, offered by Unwired Planet. After that decision Huawei offered undertakings to the effect that it would enter into the form of licence settled by the courts. Huawei submitted that the court should accept its undertakings and therefore refuse to grant an injunction to restrain patent infringement. Unwired Planet contended that a final injunction should be granted but accepted that it should be stayed pending appeal.
Mr Justice Birss refused the undertakings offered by Huawei on the ground that Huawei had refused to offer an unqualified undertaking before trial and before judgment and therefore forced Unwired Planet to go to court and vindicate its rights. Mr Justice Birss agreed to grant what he termed “a FRAND injunction” which would be stayed pending appeal. A FRAND injunction is an injunction to restrain infringement of the relevant patents which includes a proviso that it will cease to have effect if the defendant enters into the FRAND licence. Further, the FRAND injunction permits either party to return to court in future to address the position at the expiry of the FRAND licence, if the FRAND licence is for a shorter period than the lifetime of the relevant patents, or the FRAND licence ceases to have effect for any other reason, because the court should not prejudge at this stage what should happen if or when the FRAND licence ceases to have effect.
Huawei was granted permission to appeal on the global licensing issue, hard edged non-discrimination and on Huawei v ZTE, while Unwired Planet was granted leave to appeal on the blended global benchmark issue (see our report on the main judgment for more detail).
Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect.
With the publication of Regulation No. 2017/1001 in the EU Official Journal on 16 June 2017, we are reminded that several significant reforms will enter into force on 1 October 2017.
To find out more about what will change on 1 October 2017 please read our briefing on the subject.
14 June 2017
London Cleantech Cluster SIG XII - "When is the Right Time to File a Patent Application?" - 18 July 2017
On Tuesday 18 July 2017 J A Kemp is hosting the 12th London Cleantech Cluster IP Special Interest Group.
The session is called “When is the Right Time to File a Patent Application?”.
- At what point should I file my patent application?
- What do I need? A prototype?
- Should I do a search first?
- Do I need to file before speaking to customers and partners?
- How early do I need to file to impress investors?
- How long can I delay?
The seminar is free to attend and you will have the opportunity to ask specific questions about your own IP situation. Refreshments will be provided and there will be plenty of time for networking.
J A Kemp, 14 South Square, Gray's Inn, London WC1R 5JJ (for detailed directions please click here)
5.30 - 6.00pm - Arrival and networking
6.00 - 7.30pm - Talks
7.30 - 8.00pm - Questions and networking
To register yourself or a colleague for this event, please click here.