Oxaliplatin: a 'basic' patent problem

In an application for a declaration of non-infringement withrespect to a patent claiming a method of preparation for a drug,a claim specifying that the pH is adjusted to be between 3.0and 6.0 by adding an alkali solution required a distinct additionof alkali and was not infringed by use of a reagent that yieldeda pH within the specified range without the need for separateaddition of alkali.     

Can you maintain a patent as granted after seeking maintenance of the patent in a more limited form?

This case concerns whether an appellant-patentee from a decisionof the Opposition Division can, before the Board of Appeal,have as a Main Request the maintenance of the patent as grantedeven though the Main Request before the Opposition Divisionwas for the claims in a more limited form.     

Vital parameters for patent morality a question of form

Legal context: At the interface between patent law and biotechnology, a debatehas arisen over the application of the morality provision, designedto ensure the future development of society on a principledbasis. This article reviews the provision in its European context,adopting UK and European perspectives for analysis. Key points: Analysis of the provision identifies that there is ambiguityregarding interpretation of the morality provision, which haslead to inconsistent application between the European PatentOffice and the European Patent Boards. This article assessesthe provision in the context of the patent system and offersa legal philosophy framework within which to understand theprovision as conveying: a methodology, a standard of moralityand a source for that standard which can be utilized to describethe possibilities. It then re-centres the debate to its practicalcontext in order to demonstrate that the patent system removesthe options which are inapplicable: advocating valid and achievablemethods for complying with the law both nationally and on aEuropean level. Practical significance: The morality provision has become an accepted ‘wild card’in assessing the patentability of biotechnology: it has cometo rely upon the identification of danger areas in innovationthat may trigger moral objections. This falls far short of thelegal certainty which is so vital to biotechnological growth.In the face of the impending implementation of the unitary patentright across Europe, the importance of achieving a predictableand practical approach to applying the morality cannot be underestimated.     

The patent lottery

A recent study by Boston academic economists James Bessen andMichael Muerer has argued that many patents are simply not worthhaving. Their case is based on the analysis of a large bodyof data. As James Bessen says, in a comment posted in responseto criticism on the IPKat weblog,

"We derived our estimatesof patent rents after reviewing 16 different papers publishedover 25 years, involving 17 different authors and several differentmethodologies.     

The software patent debate

Legal context. This article has practical application for thoseworking in the patent field, particularly with regards to thefiling of software patent applications. Key points. The article provides a detailed explanation of thestate of the art with regards to the legal protection of software,and describes the latest legal developments in the area, includingthe failed Directive on Computer Implemented Inventions andsome recent cases that may shed more light on some of the technicalissues involved in the area of software. The paper also exploressome of the arguments put forward by those in favour and opposedto software patents, in order to ascertain their validity. Practical significance. Existing case law may provide help tosolve the problem of patentability, but it might also be a goodidea to resurrect the idea that there should be a sui-generissoftware right.     

Exclusion payments in patent settlements: a legal and economic perspective

Legal context. The application of antitrust law to assess settlementsof patent litigation raises difficult issues concerning theappropriate balance of patent law and competition policy. Recentprivate and public invocations of US antitrust law to challengesettlement agreements covering pharmaceutical patents have broughtthese issues to the forefront. The agreements share the commonfeature of an ‘exclusion payment’ from a brand-namedrug manufacturer (the patentee) to a generic drug manufacturer(the accused infringer) in exchange for a promise by the genericcompany to refrain from marketing its product for some time.US federal courts that have examined these agreements have variedin their approach and conclusions regarding the appropriateantitrust analysis to be applied to these settlements. Key points. This article argues that informed antitrust analysisof such agreements must take due note of the ‘probabilistic’nature of patent property rights. Practical significance. The article concludes that exclusionpayments fall outside the scope of a patent's exclusionary scopeand thus are subject to antitrust scrutiny. It demonstratesthat barring anticompetitive exclusion payments in settlementnegotiation prevents collusive bargains that harm consumer welfarewithout discouraging efficient settlements.     

Deploying pre-grant patent opposition mechanisms in Africa to monitor abuse of the patent system

This article examines the extent to which African countries could deploy pre-grant patent opposition provisions in their domestic patent regimes to mitigate the abuse of the patent system. The author argues that the public has the right to participate in the patent system in order to oppose the grant of bad patents. Therefore, if African countries were to strengthen legislative provisions on pre-grant opposition civil society and non-governmental organisations that represent the interests and will of citizens would be able to invoke key provisions to challenge any abuse in the patent system in order to protect the public interest.     

Negative declarations in patent cases

The Patents Court has ruled that it has discretion to awarda claimant a negative declaration that its own product was obviousat the priority date of certain divisional applications. Thegrant of the declaration sought would assure the claimant thatit was not accruing ongoing liability.     

Failure to register exclusive patent licence

In professional negligence proceedings a patent agent's causationdefence was summarily dismissed under CPR 24 on the basis thatthe defendants had no real prospect of success and there wasno other compelling reason why the issue should have to be disposedof at trial.     

Using patent filings to measure innovation

Ever since Bennett Woodcroft compiled his seminal index to theearly English patents, it has been recognized that the emanationsfrom Patent Offices contain a wealth of information. Battelle,in their work on patent trends analysis, revealed that approximately50 per cent of patents are used during their lifetime and that80 per cent of the information obtainable from patents is notavailable from any     

专利权质押贷款风险之化解——兼评相关地方新出台的专利权质押贷款管理办法

专利权质押贷款存在着专利权被宣告无效、专利权评估不准确、专利权实现、丧失专利权、被宣告破产等诸多风险。去年以来,我国一些地方政府出台的有关专利权质押贷款管理的相关规定,试图通过立法化解风险,但对借款人、专利权人所面临风险普遍关注不够,使得借款人和专利权人在现有专利权质押贷款制度下面临的风险增大。有必要通过“接管”借款企业、建立化解专利权质押贷款风险的风险补偿金制度以及重新确定政府在专利权质押贷款中的职责等措施,真正化解专利权质押贷款风险。     

The wonderful world of patent drafting

To anyone involved in patent litigation, it is clear that thetask of drafting is not for the faint-hearted. Those who draftpatents are acutely aware of the pitfalls which await theirclients following even a mere slip of the pen. This commentator,who is daily involved in the pre-filing review and prosecutionof patents and, alongside clients, assisting lawyers in manycountries with patent litigation,     

Terrell on Patents--a patent attorney's perspective

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

Terrell on the Law of Patents By Simon Thorley, QC, RichardMiller,     

Maximizing patent term in the USA

Legal context: The standard term of a US utility patent is twenty years fromits filing date, but the term may be extended for various reasons.The statutory Patent Term Adjustment (PTA) scheme automaticallyextends the term of a patent by the number of days of delayin prosecution attributable to the United States Patent andTrademark Office (USPTO), minus the number of days of delayattributable to the applicant. By avoiding actions or inactionsthat result in delay, a US patent applicant may maximize theterm of the resulting patent. This article is intended particularlyfor practitioners outside the US who are instructing a US practitioner. Key points: Delay by the applicant chiefly results when more than threemonths elapses from the mailing of a USPTO action or requirementto receipt of the applicant's response or when a paper is filedat an inappropriate time. Such delays may be avoided or minimizedby promptly sending instructions and required documents to theUS patent attorney or agent in charge of the case. Time spentin an ultimately successful appeal of a final rejection willincrease PTA. Errors in PTA calculations by the USPTO may becorrected upon filing a request. Practical significance: PTA can be a potent source of extended US patent term, especiallywhen the applicant takes care not to introduce delay into theexamination process.     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

修改专利文件的合法性审查

在专利申请审查和无效宣告审查程序中，专利权人可能需要对专利文件进行修改。但这种修改必须符合法律规定，否则可能影响专利权的效力或者不会被接受。修改的基本原则是不能超出原申请文件记载的信息，且在无效宣告审查程序中不得增加未包含在授权的权利要求书中的技术特征，仅能以删除或合并的方式修改权利要求。司法案例对上述原则进行了具体诠释。