IP Bulletin - April/May 2011

April cases

KEY CASES AND DEVELOPMENTS

R (on the application of British Telecommunications plc and another) v The Secretary of State for Business, Innovation and Skills, High Court – judicial review of Digital Economy Act. The High Court has rejected the challenge by BT and TalkTalk to the provisions of the Digital Economy Act 2010 by way of judicial review. It did accept one ground of challenge to the order imposing costs-sharing between ISPs and copyright owners. More>>> DHL Express (France) SAS v Chronopost SA, ECJ – pan-EU injunction. In a reference from the French courts, the ECJ has followed the Advocate General's opinion and ruled that an injunction and coercive measures issued by a national court under the CTM Regulation have effect throughout the EU. More>>> PATENTS

High Court – sections 64 and 68 Patents Act 1977

H. Lundbeck A/S v Norpharma SpA and others [2011] EWHC 907 (Pat), Floyd J, 14 April 2011

The High Court has held that a patent for making an anti-depressant drug was obvious over prior art. However, if the patent had been valid, it would have been infringed, although there would have been a partial defence under section 64 of the Patents Act 1977 and limitation of remedies under section 68 of the Patents Act.

Section 64(1) of the Act provides:

"Where a patent is granted for an invention, a person who in the United Kingdom before the priority date of the invention –

does in good faith an act which would constitute an infringement of the patent if it were in force, or makes in good faith effective and serious preparations to do such an act, has the right to continue to do the act or, as the case may be, to do the act, notwithstanding the grant of the patent; but this right does not extend to granting a licence to another person to do the act."

Section 68 has been amended. In the section as set out below, the words in square brackets were removed and the words in bold added by the Intellectual Property (Enforcement, etc) Regulations 2006 (SI 2006/1028) which came into force on 29 April 2006.

"68. Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors ... of a patent and the patent is subsequently infringed [, the court ... shall not award him damages or order that he be given an account of profits in respect of such an infringement occurring] before the transaction, instrument or event is registered, in proceedings for such an infringement, the court ... shall not award him costs or expenses unless – (a)the transaction, instrument or event is registered within the period of six months beginning with its date; or (b) the court...