The UK Court has never embraced the problem-solution analysis for inventive step used by the European Patent Office. There has been much debate as to whether the European Patent Convention requirement for an ‘inventive step’ calls for a higher level of inventive activity than the UK requirement that the invention must not be ‘obvious.’ The case Actavis v Novartis, involving a sustained release formulation of fluvastatin, throws up some pointers. Novartis did not claim a novel sustained release mechanism. It merely claimed sustained release fluvastatin thereby encompassing known mechanisms, with the justification that this was contrary to what a skilled person would think possible. On application by Actavis to revoke the patent, the lower court found the invention obvious. The Court of Appeal upheld the lower court’s decision, over Novartis’ appeal. The case hinged on the solubility of fluvastatin. It was a non-problem, held the Court, because fluvastatin is not so highly soluble as to make a sustained release form impossible by a skilled person. The Court commented that it would have arrived at the decision either way: by using the problem-solving method or by objective reasoning. ....Click here for full details >>

On 12 March 2010, the President of the German Patent and Trademark Office (DPMA) and the Commissioner of the Korean Patent Office (KIPO) signed an agreement for a pilot project to accelerate the examination of patent applications under a Patent Prosecution Highway (PPH). The PPH is an agreement between two patent offices to share information so that either patent office can benefit from reduced examination workloads and improved patent quality. A PPH also enables an applicant to request accelerated examination, provided that an equivalent patent application has been previously filed at the other patent office, and that at least one patent claim had been determined to be patentable by the other patent office. The new pilot project will be launched on July 1, 2010, for an initial term of two years, with an option for further renewal. The DPMA has already launched a successful PPH schemes with both the Japan Patent Office and the US Patent & Trademark Office. ....Click here for full details >>

This Article stipulates that the pharmaceutical products under the given compulsory licence license is exported entirely to the importing country and does not exceed the quantity prescribed in its notice sent to Council for Trade Related Aspects of Intellectual Property or the Ministry of Foreign Affairs of the ROC. Further, such products shall be marked with the basis of licensing on the external packaging under direction specified by the Patent Authority. The packaging, colour and shape of the products shall be distinguishable from the patentee’s products. The compensation amount - to be decided by the Patent Authority - is to be paid to the patentee by the licensee; and details concerning the product to be exported are to be published in the concerned website. Inspection and registration of the pharmaceutical products produced and exported under the compulsory licensing grant shall be governed by Item 2, paragraph 2 and article 40 of the Pharmacy Law. ....Click here for full details >>

On January 5, this year the US Court of Appeals for the Seventh Circuit ruled against Canadian pharmaceuticals company Xenon, holding the company liable to pay royalty fees to the Wisconsin Alumni Research Foundation following a licensing agreement for their shared patent. Xenon and Wisconsin jointly sponsored research on a cholesterol lowering enzyme and was granted a method patent. Xenon, as per the law, was free to sell, assign or licence the patent to a third party without consent of Wisconsin, but under the terms of the joint agreement, was obliged to pay Wisconsin a share of the proceeds as well as royalties, Wisconsin in its lawsuit, alleged that Xenon which had developed compounds based on the patent, had breached the agreement by licensing the patent to a third party and transferring ownership of those compounds, and failed to pay Wisconsin its royalty dues. The district court dismissed Xenon’s argument that it was statutorily entitled to do so, and awarded Wisconsin $300,000 in damages, which the Appeals court upheld. ....Click here for full details >>

Leviton filed its Germain patent No. 690, 776 in October 2003. Six months later it filed patent No. 827, 093, later issued as 6, 864, 766 (the ‘766 patent). During the prosecution of the ‘766 patent, Leviton made no mention of the earlier filed patent, or that some of its claims were identical to the later patent applied for. China’s Meihao Electric Inc brought action against Leviton for inequitable conduct among others. The PTO rejected the patent on grounds of double patenting and the district court held that Leviton’s conduct was inequitable and awarded the Shanghai company Summary Judgment and a million dollars in attorney fees and costs. Following Leviton’s appeal, the Federal Circuit, examined the material question of whether the information concealed would invalidate the patent. The Court held that the nearly identical claims raised issues on ownership and confirmed double patenting, even if the written description was immaterial. However, these grounds were not considered sufficient standards for issuing the SJ, observed the Federal Circuit, and remanded the case. ....Click here for full details >>

In a reversal of its earlier decision on a motion for injunction in a case regarding infringement, the Canadian Federal Court recently stayed the re-examination process requested by the defendant, till it had finished deciding whether the patent in question was infringed. Credibility issues were of significant concern here, where Prenbec Equipment had initially sought a stay on the re-examination of their Canadian patent No. 2, 084, 0113 for a detachable saw tooth that could be mounted on a circular saw disc, during their infringement suit against Timberblade. Timberblade counterclaimed the patent was invalid due to prior art claims. A request for re-examination at a critical juncture of trial proceedings are often seen as an inexpensive strategy, and Prenbec’s submission that the Canadian Patent Act allowed for a year’s grace in respect to disclosures, prompted Timberblade to request injunction against continued re-examination. The Court, considering that re-examination proceedings may cause the patent to be revoked as anticipated and invalid, exercised its discretion and decided that the infringement issue was of foremost importance and stayed re-examination. ....Click here for full details >>

EPO’s Opposition Division on April 20, 2010 upheld the patent at issue for the production of an extract from Pelargonium sidoides or Pelargonium reniforme. The patent was opposed by the African Centre for Biosafety and Erklärung Von Berne who viewed the patent as offending on environmental considerations under Article 53(a) of the European Patent Convention, as the plant has traditionally been used by Southern African tribes as medication. The Opposition Division considered the important question of whether the exploitation of the plant could endanger the environment and refused to revoke the patent, observing that the plants could be obtained by controlled farming. Further, the opponent’s submissions on informed consent and benefit sharing requirements under the Convention of Biological Diversity (aka the Rio Convention) were overturned by the Opposition Division which held that the disclosure requirements under the German Patent Act were not sufficient to exclude patentability. The patent, however, was revoked as the process claimed a known and obvious method. ....Click here for full details >>

If in doubt whether a method patent is infringed, a request to the district court to appoint an independent expert to determine whether the infringer is using the method in his factory (provided the specific infringement areas were clearly identified beforehand) is always plausible; but requesting that the patent owner, be shown relevant parts of the written opinion to confirm infringement of its patent for electric arc lacing, is debatable. The German Federal Supreme Court was called upon to decide the issue after the district court and the Appeal court had refused Lichtbogenschn?rung’s attorneys access to the written opinion following teh inspection of the defendant’s premises. On November 16, 2009, the Supreme Court ruled that parts of a written opinion may be shown to the attorneys of the plaintiff under secrecy obligations, which the attorneys were bound to honour, irrespective of the secrecy interests of the infringer. However, on the patentee’s request that the facility be extended to it as well, the Munich District Court observed, that the defendant would be disadvantaged as they bore the onus of demonstration and proof, even though the secrecy interests of the defendant did not assume precedence over the claimant’s interests to information. ....Click here for full details >>

Honeywell International’s Japanese patent No. 1877437 for ‘Azeotrope-like Compositions of Pentafluoroethane and Difluroromethane’ was challenged by Ionesco Flauer, seeking its revocation on grounds that it failed to meet enablement requirements under Article 36(3) of the Japanese Patent Act. Honeywell corrected the claims during trial. The Trial Board of the Japanese Patent Office, however, found that the first and second elements in Claim 1 were in conflict and decided that the specification did not enable the invention. On appeal, the Intellectual Property High Court on January 14, 2010, overruled the Trial Board’s decision and observed that seemingly conflicting elements did not appear in conflict when construed keeping the specification in mind. Ioness’ argument citing the 1991 Lipase case, that specification may be only considered in special circumstances such as clerical errors, was dismissed by the IPHC which held that it was possible for someone skilled in the art to figure out from the specification that a composition within the scope of the disputed claim would behave like an azeotrope, and that its ruling was not against the Lipase decision. ....Click here for full details >>

Tester products, as everyone knows, are original products used as demonstrators and try-outs for customers. The products are clearly distinguishable from products on sale by specifying it is for demonstration, and it is not for sale. But in the above case, transferred to the European Court of Justice from the Nuremburg Appeal Court, the ECJ ruled that Coty had failed to comply with both requirements. The retention of the title by Coty and no declared prohibition on sale of the testers implied Coty had assented to such sales, and had exhausted its rights in the European Economic Area under Article 13 (1) of the European Council (EC) Regulation 40/94. ....Click here for full details >>

In this case, two trademarks for a writing instrument are in conflict - one prior, and the other, a later Community Design - where both are registered for identical designs. Trademark validity has traditionally been determined by assessing possible confusion based on the degree of similarity of the marks at issue. In May this year, EU’s General Court disagreed with OHIM’s Invalidity Division and the Board of Appeal which held Beifa Group’s Design as infringing. The Court, bypassing the infringement issue, ruled that both the Invalidity Division and the Board of Appeals had, inexcusably, classified both marks as 3D marks during the test for infringement, when the prior trademark was a 2D mark. This was important because unlike in a figurative mark, the relevant public examines an object from all angles. ....Click here for full details >>

French Corporation Agatha Diffusion, manufacturer and seller of personal jewellery took to court Japanese jewellery company A Smart K.K for its use of its trademark Agatha Naomi, which it claimed was confusingly similar to its own AGATHA. The Tokyo District Court on February 27, 2009 had ruled there was no case for confusion, as the earlier portion of A Smart’s combination mark was not strong enough to be associated with Agatha’s single mark. Besides, Agatha Naomi implied a woman’s name, therefore did not indicate the origin of the goods. The district court held that Agatha Naomi should be considered a single unit and dismissed Agatha Diffusion’s infringement allegations. On appeal, the French company’s assertions that Agatha Naomi could in no way be considered a single unit; that AGATHA was a recognised brand for jewellery in Japan; and that the ‘Agatha’ in the defendant’s combination mark was dominant and a source indicator, and therefore was confusing, found merit with the Intellectual Property High Court, which on October 13, 2009 held that A Smart had infringed the AGATHA mark. ....Click here for full details >>

In a new idea, the JPO suggests registration fees be paid in instalments for trademarks with short life cycles to assess whether trademark rights are maintainable. Given the large number of cancellation cases filed with the JPO for invalidating a trademark on grounds of non use (there were some 4, 970 cases between 2006 and 2008) and revocations ordered, it is time for the JPO, (and for trademark offices around the world) to take stock and evaluate the reasons why so many marks lie unused, and think of more efficient alternatives. Non-use of marks is usually a result of business decisions related to sales and strategy. Therefore, the JPO’s proposal to identify marks which might not be used in teh long run, by way of periodic review or renewal should ensure use or free up marks which are taken. In the case of well known marks, it is suggested that the companies file for rights with the understanding that such trademarks may become unused. ....Click here for full details >>

The trademark law amended some causes which do not allow trademark applications for registration. Trademarks descriptive of goods and services, generic signs or terms or other non-distinctive terms are not allowed. Additionally, three dimensional shape of the goods or packaging is deemed unregistrable, as are non traditional marks comprising colours or sounds. According to Article 6-3 of the Paris Convention, the Trademark Act will be amended to protect armorial bearings, flags and other State emblems of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them and other emblems of international intergovernmental organisations. Further, the amended trademark holds that that the consent agreement of co-existence should be under the premise of no obvious impropriety to each party. Further, a trademark featuring a non-distinctive or functional part is required to disclaim such parts of the trademark, failing which, it will be rejected. ....Click here for full details >>

Recently, a trademark application was filed in Taiwan, together with claiming the priority date of its corresponding parent US trademark application in Class 35, in which ‘real estate and property auctioneering services’ was one of the designated services. At the examination stage, the item ‘real estate and property auctioneering services’ was moved to class 36 along with the payment of an additional official fee, in accordance with Taiwanese IP classification. ....Click here for full details >>

Imagecity Corporation filed an action before the Tokyo District Court pre-empting the Japanese Society for Rights of Authors, Composers and Publishers from obtaining an injunction against it for copyright violation under Article 2, paragraph (1), item (ix) - 4 of the Japanese Copyright Act. Imagecity provides online storage services for music files for cell phones through its server which it controls and maintains, enabling it to provide direct transmission of music to users through its own software and can be held instrumental in infringement of automatic public transmission rights, the district court ruled. JASRAC manages the copyright belonging to song writers, composers, publishers of musical works and such. ....Click here for full details >>

The Omani government issued a resolution on May 16, 2010 regarding the official fees schedule in connection with its Industrial Property Law. The increase varies from double the current rate for filing a single class trademark application to five times the current applicable fees for conducting a trademark search in the Registry records. Regarding patent applications, the official fees have increased three times the current rate for filing applications to six times the current rate when paying the 20th annuity. This resolution makes it possible to file a design application for the first time in Oman, as the increase in official fees also relates to the registration and renewal of industrial designs. ....Click here for full details >>

In June this year, the Changwon district court in South Korea sentenced a criminal defendant to eight months imprisonment for trade secret violation relating to the processing and recycling of waste for preparation of artificial marble. The technology had been developed by the defendant’s former client at a cost of US$6.7 million over a period of two years. The court also sentenced as accessory, the defendant’s associate for establishing a company to exploit the stolen technology and subsequently, filing for a patent based on it. ....Click here for full details >>