Thomson Reuters organizes patent law conferences regularly and recent conference titled “Patent Law Conference 2015” was organized on 11 June, 2015 at The King’s Fund, Cavendish Square, London. The main agenda of the conference broadly included developing, managing and protecting patents as a part of business strategy. While patents are regularly affected by technology and competition, nature of protection offered by patents encounters different uncertainties and possibilities. For example, introduction of the Unified Patent Court (UPC) and its impact on UK courts is not fully clear.
The conference’s agenda was aimed at providing specific sessions relevant to different industries by covering practical reviews and review of recent cases, practical options, risks and implications of the UPC, identification of ways patent box and SPCs can help maximize profits, and understanding the impact of technology on patentable subject matter.
Discuss your Queries
Unified Patent Court, or the UPC as it is well known, is closely related to the European Unitary Patent. In essence, the UPC is a proposed common patent court open for participation of all member states of the European Union. The Court will hear cases regarding infringement and revocation proceedings of European patents (including unitary patents) valid in the territories of the participating states, with a single court ruling being directly applicable throughout those territories. The UPC includes a Court of First Instance, a Court of Appeal in Luxembourg, an Arbitration and Mediation Center and a common Registry. The Court of First Instance will consist of a central division in Paris (with thematic sections in London and Munich) along with several local and regional divisions. More details here.
After debates spanning across four decades, European Union leaders have agreed on the location of a new European patent court and the legislative framework is finalized to make UPC a reality. Consequently, European companies and business owners should keep themselves abreast with the developments pertaining to the UPC system. Specifically, patent owners need to formulate corresponding pan-European patent litigation strategy considering the fact that the UPC’s upcoming developments will be focused around five major work streams, including, legal framework, financial aspects, IT facilities and human resources & training.
The session covered UPC in detail, including, how will the UPC benefit different sizes and types of companies, what should organisations be doing now to organise their portfolios in preparation, who stands to gain the most and least following the introduction of the UPC, will the UPC favour certain sectors, and, how can this be utilised to advantage.
At the patent law conference 2015, Graham Burnett-Hall, partner at trademark and patent attorneys Marks & Clerk, spoke about latest developments concerning the UPC. According to Mr. Hall, the most important factor in the success of the Unified Patent Court (UPC) will be the quality of its judiciary. He further said that
He concluded that high fee is unlikely to act as deterrent among patent owners as evident from the success of Community Trademarks, wherein trademark owners have successfully paid a bit higher to seek intellectual property protection across all European Union (EU) member states. Details may be read here.
Patentable Subject Matter
One of the themes of the conference covered interesting topic of the impact of technology on patentable subject matter. A sub-topic of this theme was focused on shift from molecules to stem cells and biosimilars. The discussion included impact of technological innovations on IP strategy and the future of patenting in the life sciences sector. The speakers were, David Brindley, research fellow (healthcare translation), centre for the advancement of sustainable medical innovation, Mackenna Roberts, IP adviser, centre for the advancement of sustainable medical innovation, and Ian Bingham, owner, IP Asset.
Stem Cell Patents In Europe
Research using stem cells is highly potential that may be used to replace or repair tissues, and may further be used to treat diseases like diabetes and heart attacks. However, since most common source of human stem cells is the early human embryo, which can be destroyed when the stem cells are removed, this generally gives rise to ethical and moral issues surrounding stem cells based research. Subsequently, patent protection of stem cells derived from human embryo is prohibited in Europe.
However, a recent court ruling in a case filed in Britain by US company International Stem Cell Corporation against the UK Intellectual Property Office has paved way for stem cells patent protection. In 2011, the ECJ had ruled that stem cell research involving human embryos could not be patented. On similar grounds, the UKIPO refused to grant the patents stating that the eggs involved were active and developing organisms, even though they were not fertilized by male sperm. In this particular case, the US company argued that the eggs, activated by a chemical process known as parthenogenesis, could not develop into human beings as they lacked the full parental DNA required.
Accordingly, the above-mentioned ruling stated that such organisms do not constitute human embryos, and that their uses in scientific research could therefore be patented. Specifically, the ruling stated, “In order to be classified as a ‘human embryo,’ a non-fertilized human ovum must necessarily have the inherent capacity of developing into a human being”.
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Another sub-topic under the theme of patentable subject matter covered “The future of software patenting”, including options for filing software patent, accompanying risks and benefits, and, effect of UPC on the UKIPO approach to software patenting. The speakers were, Jonathan Garner, Patent Manager, Canon Europe, and Peter Thorniley, Associate, Kilburn & Strode.
Working In Competitive Market
This theme covered topics highlighting intersection of intellectual property rights and competition laws, including, using FRAND licensing to suit businessneeds, unwilling licensee, and competition interface. Speakers were, Sven Volcker, Partner, Latham & Watkins, and, Jonathan Weeks, Director of Legal Affairs, Intel Corporation.
FRAND Principles & New EU Digital Watchdog
It is well known that companies involved in developing technical standards for new technologies are often required by the standard-setting bodies they work alongside to license any technology they patent based on those standards on fair, reasonable and non-discriminatory (FRAND) terms. Subsequently,
that use online platforms, such as price comparison websites, to win business, are not unfairly shut out of accessing the data those platforms gather when providing their intermediary services. According to media reports the European Commission is considering setting up “a central EU-wide body with the power to monitor platforms’ use of data, and to resolve disputes between the operators and the businesses they serve”. Those plans are not yet official, but it suggests the Commission is looking for a new way to regulate online platforms at a time when the data they hold is becoming increasingly important to the development of innovative new products and services. More details here.
Taking Advantage of Second Medical Use Patents
This sub-topic covered case updates, international perspective, and checklist for ‘legitimate commercialization’. Speakers included Fiona Bor, Former Vice President And Director of IP, Mylan Pharmaceuticals, and, David Rose, Partner, King & Wood Mallesons.
Second Medical Use Patents
As it is well known,
Pharmaceutical companies use such types of patents as secondary patent protection.
Patent infringement cases pertaining to second medical use have had different outcomes in different EU states and there does not exist a uniformity among all member states. In the UK, patentability of a second medical use was confirmed by the Court of Appeal decision in Actavis v Merck. The Court held that second medical use claims were allowable even where the novelty resided solely in a new dosage regime or other form of administration of a known substance. The Court of Appeal noted that “Research into new and better dosage regimes is clearly desirable, and that there is simply no policy reason why, if a novel non-obvious regime is invented, there should not be an appropriate patent reward”.
Techniques for Maximizing Profit
This theme covered interesting sessions, including, effective utilization of supplementary protection certificates, real implications of SPCs, and, drafting patents differently in light of these changes. Speakers were Nicole Jadeja, Partner, Rouse, and Dr. Michael Lubienski, Associate General Patent Counsel, UCB.
Another session covered under this theme included “Organising your portfolio to capitalise on the UK Patent Box regime”, which included topics:
- What do the changes mean for businesses in the UK?
- How can you organise your patents to take full advantage of the regime?
- Case study: what does patent box mean in practice for in-house counsel?
- Speakers included Simon Maclennan, Former Group Head of IP, Sky, and James Cross, Partner, RGC Jenkins & Co.
Mind and Machine: Using Big Data and Risk Management for Portfolio Management
This session covered development in IP analytics, including, utilising analytics tools to assess patent portfolio, big data solutions for identifying IP risk and value, Using business and competitive intelligence to make better decisions, working towards the optimum IP risk management process, risks faced by portfolio, where do such risks come from, and, implementing innovative solutions to handle risk. Speakers were, Donal O’connell, Managing Director, Chawton Innovation Services, and, Nigel Swycher, Founder And CEO, Aistemos.
Protecting And Enforcing Patents
This session covered litigation options and court procedures, and handling NPEs. Speakers were Dominic Hornblow, Assistant General Counsel, AstraZeneca, Kathy Osgerby, Associate, Arnold & Porter, Sharaz Gill, Managing Director, Skepsis Telecom, and, Katie McConell, Of Counsel, Hogan Lovells.
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