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UKIPO gains new powers to revoke patents which fail a novelty or obviousness test – but only if ‘clearly invalid’

by Dr Mark A G Jones

The UK’s Intellectual Property Act 2014, enacted to implement recommendations of the 2011 Hargreaves Review of Intellectual Property, has extended the powers available to the United Kingdom Intellectual Property Office (UKIPO) to revoke British patents of its own motion. This applies both to patents granted directly by the UKIPO or patents obtained through the EPO route. The new statutory provisions are contained in Section 73 of the Patents Act 1977, as amended.

The new power, available from 1 October, 2014, allows the UKIPO to revoke a patent for lack of novelty or lack of inventive step where a third party has sought an Opinion from the UKIPO Opinions Service as to [...]

Gemalto’s UK appeal dismissed

by Naomi Hazenberg and Brian Cordery

On Wednesday 22 October 2014, the Court of Appeal (Ref [2014] EWCA Civ 1335) has upheld Birss J’s decision last year in HTC v Gemalto (Ref [2013] EWHC 1876 (Pat)) but has found that he erred on a point of construction. The appeal concerned just one of the patents considered at first instance (EP (UK) 0932865) which relates to using higher level programming with a microcontroller. Only claim 3 (and its dependent claims) survived the attack on validity at first instance and HTC’s devices were held not to infringe.

At first instance, the judge needed to construe the term “microcontroller”. As it was not an expression used in ordinary English, expert [...]

Obvious to try attacks remain topical even if they take a different path

By Gregory Bacon and Brian Cordery

The English Patents Court (Birss J) recently demonstrated a somewhat unconventional approach to answering the statutory question of obviousness when assessing inventive step*. The judgment also provides some guidance on the role of commercial as opposed to technical considerations, in particular regulatory concerns, when assessing obviousness. Leo Pharma, the defendant in these proceedings, market a successful product in the UK under the brand Dovobet Ointment. Teva sought to revoke two patents in Leo Pharma’s name which protect the Dovobet Ointment product. Leo Pharma in turn claimed infringement of the two patents by Teva’s proposed generic version of [...]

The EU Patent Package – Where does Europe stand End of June 2014?

1 Introduction

Reports that say there’s — that something hasn’t happened are always interesting to me, because as we know, there are known knowns; there are things that we know that we know. We also know there are known unknowns; that is to say we know there are some things we do not know. But there are also unknown unknowns, the ones we don’t know we don’t know.

Donald Rumsfeld, United States Secretary of Defense, 1975-1977 and 2001-2006

According to Article 89 of the Agreement on a Unified Patent Court (UPCA), the Agreement is set up to enter into force on one of three dates, whichever is the latest. The first date provided in the Agreement was 1 January 2014. As we all know, it did not h [...]

English Patents Court grants extra-territorial DNIs

Patent litigators around Europe will be taking note of the latest significant development from the English Patents Court in the case of Actavis v Eli Lilly [2014] EWHC 1511 (Pat) (judgment dated 15 May 2014), in which the English Court decided to grant declarations of non-infringement (DNIs) for three foreign designations of a European Patent in addition to that for the UK.  The decision of Mr Justice Arnold, the most senior UK patents judge at first instance, is wide-ranging and merits careful analysis by litigators throughout Europe in light of the potential impact on cross-jurisdictional litigation strategies.  Thus, the authors make no apology for this comparatively lengthy analysis or [...]

Hospira clears the way for generic Herceptin

The development of Herceptin (trastuzumab) in the late 1980s and 1990s is one of the most remarkable advances in the treatment of breast cancer. The story of the drug and its pioneer, the “velvet jackhammer”, Dennis Slamon, is neatly summarised in Siddhartha Mukherjee’s award winning novel: “The Emperor of All Maladies – a Biography of Cancer” – a fascinating if not necessarily uplifting read.

In short, unlike traditional chemotherapy, trastuzumab is a monoclonal antibody which specifically targets a receptor known as HER-2 which is involved in the development of breast cancer. No-one disputes that the development of Herceptin was a landmark advance in the field of oncology – [...]

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