IP Bulletin - Bumper Summer Edition: August 2010



AstraZeneca AB and AstraZeneca plc v Commission, EU General Court - abuse of dominant position. This case was an appeal by AstraZeneca to the General Court against a decision of the European Commission which had fined AstraZeneca EUR60 million for abuse of its dominant position by patent misuse. The court mainly upheld the Commission's decision, but reduced the fine to EUR52.5 million. SAS Institute Inc v World Programming Ltd, High Court – Software Directive reference to ECJ. The High Court has made a reference to the ECJ concerning the interpretation of the Software Directive. The precise wording of the questions has not yet been finalised. In the matter of trade mark application no 2528977 in the name of the Chartered Institute of Patent Attorneys, Appointed Person – class headings in trade mark applications. The Appointed Person has made a reference to the ECJ concerning the use of class headings in trade mark applications. PATENTS

ECJ – Biotechnology Directive

Monsanto Technology LLC v Cefetra BV and others, Case C 428/08, 6 July 2010

The court has followed the Advocate General's opinion on questions referred to the ECJ by the Dutch court on the provisions of the EC Biotechnology Directive (98/44). See the March 2010 Bulletin for the report of the AG Opinion.

EU General Court - Abuse of Dominant Position

AstraZeneca AB and AstraZeneca plc v Commission, Case T-321/05, 1 July 2010

This case was an appeal by AstraZeneca to the General Court against a decision of the European Commission which had fined AstraZeneca EUR60 million for abuse of its dominant position by patent misuse. The court mainly upheld the Commission's decision, but reduced the fine to EUR52.5 million.

The Commission had found in 2005 that AstraZeneca had breached Article 82 of the EC Treaty (now Article 102 of the TFEU) by blocking or delaying market entry by parallel importers and generic competitors of its ulcer drug Losec. AstraZeneca was found to have abused its dominant position by making misleading representations to patent offices and national courts in order to obtain SPCs, and submitting requests for deregistration of marketing authorisations for Losec capsules in Denmark, Norway and Sweden.

In a long judgment, the court agreed with the Commission's conclusions on market definition and dominance. The court upheld the Commission's decision that AstraZeneca had abused its dominant position by making misleading representations to patent offices when applying for SPC's for Losec. AstraZeneca was not entitled to these SPCs, or only entitled to them for a shorter period.

The court also upheld the Commission's finding that AstraZeneca's deregistration of the marketing authorisations for Losec capsule in Denmark, Norway and Sweden, together with the launch of a new Losec product in those countries, amounted to an abuse of a dominant position, in so far as it restricted access to the market for generic products in those countries.

In relation to Sweden, it was clear that the Swedish authorities only granted parallel import licences if there was a valid marketing authorisation in place, as the parallel import licences in Sweden were withdrawn following the deregistration by AstraZeneca. However, the court held that the Commission had failed to establish to the requisite legal standard that the deregistration of the Losec capsule marketing authorisation was capable of excluding parallel imports of Losec capsules in Denmark and Norway. The court, therefore, reduced the fine imposed on AstraZeneca.

Court of Appeal – Person Skilled in the Art

Schlumberger Holdings Limited v Electromagnetic Geoservices AS [2010] EWCA Civ 819, 28 July 2010

The Court of Appeal has allowed an appeal from the High Court decision that patents for the use of an electromagnetic exploration technique (CSEM) in oil exploration were obvious. See the February 2009 Bulletin for the report of the High Court decision. An important issue in this case was whether, for the purpose of considering obviousness, the person(s) skilled in the art was a person (or team) with both exploration geophysics and CSEM skills.

The person skilled in the art is referred to three times in the EPC: in the Protocol to Article 69, Article 83 and Article 56. The first two are concerned with the position post-grant of the patent: Article 69 and its Protocol are concerned with the scope of the claims and Article 83 is concerned with sufficiency of description. Article 56 is about the position pre-patent. It is concerned with whether there is an inventive step.

English and EPO case laws are clear that the person skilled in the art might be a notional team of people having different skills. However, the point of law in issue here, ie whether the notional team had, by law, to be the same for all purposes, was not addressed in any existing case law.

Jacob LJ gave the judgment and said that, in at least some cases, the person skilled in the art for obviousness was not necessarily the same person skilled in the art for performing the invention once it was made.

"The art" was not necessarily the same both before and after the invention was made. The assumption might be correct in most cases, but some inventions were themselves art changing.

In this case, on the issue of obviousness, the idea of combining the skills of exploration geophysicists and experts in the electromagnetic technique was itself inventive.

The court also held that the judge had erred in principle in considering the effect of the secondary evidence of inventiveness.

Secondary evidence was generally only relevant when considering the question "if it was obvious, why was it not done before?" If the problem was shown to have been long standing and solved by the invention, secondary evidence could be important. If a useful development was, in hindsight, seemingly obvious for years and the apparently straightforward technical step from the prior art was not taken, then there was likely to have been an invention. Other types of secondary evidence, such as the commercial success of the patented product (particularly if it met a long-standing need) and the reaction of experts could also point to inventiveness.

European Commission – Monitoring of Patent Settlements


The European Commission has published its report on the monitoring of patent settlements in the pharmaceutical sector for the period July 2008 to December 2009. The number of patent settlements that were potentially problematic under competition law fell to 10% of total patent settlements in the sector compared with 22% for the period January 2000-June 2008. The amount of money involved in the settlements, between the "originator" pharmaceutical companies and producers of generic drugs has decreased from more than € 200 million to less than € 1 million in the more recent period.

The Commission says that the overall number of patent settlements shows that its heightened scrutiny of the sector has not hindered out-of-court settlement of litigation. It will continue monitoring the sector to make sure that the settlements in the sector are not delaying entry of generics in the market, nor contain other restrictions that would be problematic under EU competition law.


ECJ – Google AdWords

Portakabin Ltd and another v Primakabin BV, Case C-558/08, 8 July 2010

The ECJ has responded to questions referred by the Dutch court concerning the use of third-party trade marks and variants of such marks as internet search keywords to advertise the resale of genuine trade marked goods.

The claimant, Portakabin Ltd, made and supplied mobile buildings. It owned a Benelux trade mark for PORTAKABIN in relation to metal and non-metal buildings, parts and building materials.

The defendant, Primakabin Ltd, sold and leased new and second-hand mobile buildings, including units made by Portakabin, which had originally been put on the market within the EEA with Portakabin's consent.

Primakabin chose the keywords "portakabin" and the misspellings "portacabin", "portokabin" and "portocabin" as Google Adwords. The sponsored advertisement shown in response to a user inputting any of these keywords was initially headed "new and used units" and was then subsequently changed to "used portakabins".

Portakabin commenced proceedings for trade mark infringement in the Dutch court which referred questions to the ECJ.

The ECJ held that the use of keywords did constitute use of a sign within the meaning of Article 5(1)(a) of the Trade Marks Directive, and that such use would be infringing unless it was made clear that the advertised goods or services did not emanate from the trade mark proprietor or any entity economically linked with it.

The court said that where this was not clear, Article 6(1) of the Directive (which permits the use of marks to indicate characteristics of the goods) would rarely provide a defence, although it was open to national courts to find that there was such a defence on the specific facts of a case.

In a case such as this involving the sale of second-hand but genuine trade marked goods, the defendant would be permitted to use the trade mark as a keyword by virtue of Article 7 of the Directive (the provision dealing with exhaustion of rights) unless the proprietor had a legitimate reasons to oppose the resale of its goods. The judgment gives guidance on specific circumstances in which such a legitimate reason might exist.

High Court – Threats Action

Best Buy Co Inc and another v Worldwide Sales Corp. Espana SL [2010] EWHC 1666 (Ch), Floyd J, 8 July 2010

The High Court has dismissed an action for unjustified threats of trade mark infringement proceedings concerning CTMs under section 21 of the Trade Marks Act 1994.

The court held that, viewed as a whole, the letter containing the threat complained of was in the context of...

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