Intellectual Property Update Spring 2008: Focus On The UK

PATENTS

No need for a rule of law on entitlement -

so ruled the House of Lords (Lord Hoffmann again) in Yeda v

Rhone-Poulenc1 overturning a Court of Appeal

decision in an earlier action2 concerning the

entitlement to a patent under the Patents Act 1977. The Court

of Appeal had held that the person claiming entitlement had to

"invoke some other rule of law to establish his

entitlement". Lord Hoffmann disagreed.

The factual background to the Yeda action is

somewhat complicated but in essence Yeda exploits inventions

and technology developed by an Israeli research institute. The

institute had found an effective combination treatment for

cancer, written up the results for publication and sent a draft

to a Professor Schlessinger, who had supplied some of the

monoclonal antibodies used in the experiments. Professor

Schlessinger worked for a company that then became part of

Rhone-Poulenc. Before the institute's article was

published, Rhone-Poulenc applied for a patent naming Professor

Schlessinger and his team as inventors. Yeda sued claiming

entitlement as assignee of the institute's rights in the

invention.

The action was further complicated by Yeda initially

pleading co-entitlement to the patent but later deciding this

was over-generous to Professor Schlessinger. Following

established case law on the need to contribute to the inventive

concept to be entitled to a patent, Lord Hoffmann agreed -

Professor Schlessinger's contribution was limited to claim

integers reflecting the known prior art. Yeda was therefore

allowed to amend its case to argue sole entitlement to the

patent.

Lord Hoffmann then held that there was nothing in the

Patents Act saying that an inventor's entitlement depended

on anything other than being the inventor. The Court of Appeal

was wrong in requiring an inventor to have to rely on a

separate cause of action against the incorrect patentee. A rule

of law or agreement would need to exist to give someone

secondary ownership (such as an employer over an employee's

invention) but that was irrelevant to an inventor's primary

right to the patent. By clarifying the law in the area, the

decision should simplify and so reduce the costs of entitlement

disputes. The decision also illustrates the risks an inventor

takes if he discloses his idea to another before applying for a

patent. Further, if Professor Schlessinger had not been

considered bound by a duty of confidence, no one would have

been able to patent the invention - the institute's draft

article would have been a novelty destroying prior

disclosure.

Progress on Community patents and patents

court. Our

Autumn 2007 Update commented that it was difficult to see

the Community patent system coming to fruition in the near

future. It now looks somewhat more likely due to the efforts of

the Slovenian Presidency which took over the rotating

presidency of the EU from Portugal in January 2008. The

Portugal Presidency set up a series of working parties to which

the Slovenian Presidency has recently put a working document on

the Community patent3.

The working document tackles the 2 issues that have held up

progress to date: translation of patent claims and the

distribution of renewal fees. To try to steer a course between

the prohibitive costs of translating claims into all 23

official languages of the EU and national pride in languages

the working document proposes two alternative solutions. The

first is for a "flexible" Community patent:

applicants would be able to decide which languages to file

claim translations in. The resultant patent would only be

enforceable in those member states with the official languages

of the translations. Businesses could therefore decide

patent-by-patent how to trade off geographical coverage against

translation costs. The second proposal is to make translation

into all official languages affordable by use of a low cost,

mainly automated, central translation service. It is further

suggested that automated translations could be "made

available to any interested party by a simple click via the

website of the central service concerned". The working

document acknowledges that significant work would be necessary

to build up dictionaries of technical terms and that possible

inaccuracies mean translations could be used for information

only (as anyone who has tried to use the EPO's current

automated translation service will appreciate). While this

option has the benefit of reserving full translation costs to

the very small percentage of patents that are ever litigated,

it will also require third parties wanting to assess potential

infringement to bear translation costs themselves.

The working document is due to be discussed at

inter-governmental meetings on 29 and 30 May 2008. France,

which succeeds Slovenia in the Presidency, is reportedly keen

to keep the momentum going. But the hope expressed by some

politicians that political agreement on the Community patent

can be reached by the end of the year seem optimistic if the

past 30 years of missed opportunities are any guide.

As regards a Community patents court, the Portuguese

Presidency presented a working paper with its proposals in

October 20074. In a November progress

report5, the Presidency stated that broad agreement

had been reached on most proposals though reservations still

existed, in particular on splitting infringement and validity

actions and the language arrangements. The Commission has

emphasised that split validity and infringement proceedings are

not compulsory the aim is to give flexibility. While a split

system is used in Germany, it makes less sense when courts in

separate countries may be involved with potentially a number of

different languages being used by the parties and judges. As

well as increased costs, there is increased risk of

contradictory constructions of a patent's claims being

reached. On languages the proposals are for the central

division of the court to use the language of the patent whereas

national divisions use the language of the member state in

which they are located unless agreed otherwise. It is

understood that the Slovenian Presidency is pushing hard to

resolve these and other issues and also for the Community

patents court to be implemented separately to the Community

patent if necessary to avoid delay.

TRADE MARKS

Damage by co-branding and de-branding -

Lord Justice Jacob observes in the opening paragraphs of his

February judgment in Boehringer v

Swingward6, that "European trade mark law

seems to have arrived at such a state of uncertainty that no

one really knows what the rules are, outside the obviously core

case of straightforward infringement". Perhaps a little

pessimistic but there is justification for the view in light of

the Boehringer case. After 2 references to the ECJ

there is still no clear answer on whether or not co-branding or

de-branding of goods by parallel importers is in principle

likely to damage a trade mark's reputation or not. The

reason for the continuing uncertainty is the ECJ's puzzling

acceptance of a reference in an altogether separate

action7.

The Boehringer case concerns the parallel

importation of branded pharmaceuticals into the UK which need

to be repackaged for...