Lifesciences Snapshot: Winter 2007/08

INTELLECTUAL PROPERTY

L'Oreal SA and Others -v- Bellure NV [2007] EWCA Civ 936

The Court of Appeal considered the use of a competitor's trade marks on comparative price lists and the use of similar marks in packaging in relation to whether such use would interfere with the essential function where the marks were used to designate the characteristics (in this case smell) of the competitor's goods. In commenting on the issues, Jacob LJ gave a clear indication that he considers European trade mark law should resist becoming overprotective as "neither the image nor the essential function of the trade marks for the originals is adversely affected by the lists". The Court of Appeal also took the opportunity to roundly reject any notion of extending the law of passing off to include broader concepts of unfair competition.

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Rhone-Poulenc Rorer International Holdings Inc And Another v Yeda Research And Development Co Ltd [2007] UKHL 43

In this decision the House of Lords overturned the broad principle in Markem Corporation v Zipher Ltd (2005) that any claim of entitlement to a patent (including by someone claiming to be the true inventor) must be based upon 'some rule of law', for instance, breach of contract or confidentiality. The only determination for the Court to make is to decide who was the inventor of the claimed invention. The decision also clarified the procedure relating to amending an entitlement claim, especially with regards to how the limitation period applies to an application for amendment.

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In The Matter Of An Appeal By DLP Limited In Relation To The Decision Of A Hearing Officer Of The UK Intellectual Property Office Dated 26 April 2007 Pursuant To Section 74B Of The Patents Act 1977 [2007] EWHC 2669 (Pat)

On 16 November 2007, Mr Justice Kitchin ruled on the first appeal to reach the Patents Court under the scheme for the provision of opinions by the Comptroller of Patents, finding that the Patents Court could hear appeals of this type.

In 2006, DLP Limited ("DLP") sought an opinion from the Comptroller as to whether Scrabo Bathing Care ("Scarbo") had infringed one of its UK patents relating to lower level shower trays readily accessible by infirm or disabled people seated in a wheelchair. The examiner issued an opinion that Scrabo's shower trays did not infringe DLP's patent. DLP requested a review of the opinion under section 74B of the Patents Act 1977 and the rules made under that section, which was issued by the Hearing Officer acting for the Comptroller, who ordered certain parts of the original opinion be set aside but did not find fault with the examiner's overall conclusion. DLP brought an appeal against this decision under section 97 of the Act and rule 77K of the Patent Rules 1995, SI 1995/2093.

In his judgment, Kitchin J ruled that the Act and the Rules intended that the review by the Hearing Officer is a decision against which there is a right of appeal and that this type of appeal is not one which the court should decline to exercise jurisdiction, despite it being an inherent feature of the procedure that it can only result in the production of non-binding opinions or decisions.

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REGULATORY

Proposed New Regulatory Authority For Tissue and Embryos ("RATE") Dropped

The Government have accepted the recommendation to reconsider its proposal to establish RATE. In the Government's response to the Report from the Joint Committee on the Human Tissue and Embryos (Draft) Bill, plans for the proposed new regulatory authority RATE have been dropped. Originally it was planned that RATE would be established to replace the existing regulators the Human Fertilisation and Embryology Authority (the "HFEA") and the Human Tissue Authority (the "HTA").

The Joint Committee's report considered that the regulatory oversight currently being provided by the HFEA and the HTA would be better than that which could be provided by RATE. However, the report did recommend that the Government, the HFEA and the HTA, look at ways to achieve improvements in savings, consistency, efficiency and co-operation between the HFEA and the HTA.

In November the Human Fertilisation and Embryology Bill was published and the Bill is currently being...