The IP Year 2007 In Review: Focus On The UK

Following our very successful The IP Year 2006 In Review,1 rated most popular Canadian article on the MONDAQÆ website (www.mondaq.com) in February 2007, Fasken Martineau's Intellectual Property ("IP") Group is pleased to present The IP Year 2007 in Review focusing on IP developments in the U.K. Our synopsis of the year 2007 significant IP related decisions and noteworthy developments in U.K. law will be helpful and informative for those interested in doing business in the U.K. since these may affect your rights with regard to patent, trade-mark and copyright protection.

Roger Loosley, Ralph Cox and Stuart Richards, of our U.K. office, provide the following updates relating to patents, trade-marks and copyright.

DEVELOPMENTS FROM ACROSS THE PONDÖ

A Quantum Leap Above Our Competitors. On February 1, 2007 Fasken Martineau merged with U.K.'s Stringer Saul LLP, a London-based firm that specializes in listing companies on the Alternative Investment Market (AIM), the junior listing arm of the London Stock Exchange. The firm's London office, Fasken Martineau Stringer Saul (FMSS), is the world's first ever full service U.K.-Canadian law partnership and provides lawyers that practice both English and Canadian law. The office comprises more than 50 lawyers, many of whom are recognised specialists in their field of expertise.

The office provides a broad-based capability in commercial law including company and corporate, commercial agreements, intellectual property, information technology, tax, commercial property, employment, international trade and litigation services. The firm has a strong reputation, born out of specialist legal and commercial expertise, in a number of specific business areas including the AIM market, life sciences, mining and natural resources, publishing and retail property. Its expertise in patent litigation is recognised by its ranking amongst leading London firms in the Chambers 2008 directory, with Ralph Cox being named as a leading individual in the field. Chambers 2008 also gives a high ranking for the life sciences team with Gary Howes and Paul Ranson being highly rated leading individuals.

FMSS provides a gateway for businesses in the U.K. seeking to enter the Canadian market or faced with a Canadian legal issue. Similarly, it provides strategic legal advice on a wide range of Canadian business initiatives to the U.K., Europe and Africa.

There have been many interesting and important developments in the U.K. over the past year. For many of our clients, there is more than just an interest in the IP law of the U.K. as many are or will be actively pursuing rights in that jurisdiction.

PATENTS & DESIGNS

Possible Cost Savings. France will finally ratify the London Agreement thereby bringing it into force, potentially in early 2008. The London Agreement reduces the translation burden on European patent owners in signatory states as its practical effect is that they will only need to submit applications in one of the three official EPO languages - English, French, or German. On grant of the patent only its claims, rather than the entire specification, will then need to be translated into the national language for each country for which the patent is designated.

Software Patents. The Court Of Appeal has clarified the law on the exclusion of computer programs from patent protection in Aerotel Ltd v Telco Holdings Ltd & Ors and Macrossan's Patent Application.2 The Court of Appeal endorsed a new structured approach for assessing the presence of a technical contribution put forward by the Comptroller of the U.K. Intellectual Property Office ("UKIPO") and which should help to address an earlier criticism that the previous test was too vague. The approach is to (a) properly construe the claim; (b) identify the actual contribution; (c) ask whether it falls solely within the excluded subject matter; and (d) check whether the actual or alleged contribution is actually technical in nature. The Patent Office has now adopted this test but considers that in the great majority of cases it will make no difference to its decision on patentability.

An Early Route to Market for Generics? In a potentially significant decision in Arrow Generics Ltd v Merck & Co, Inc.,3 the High Court has held that a generic drug company could request a declaration that its product was obvious at the priority date of a patent application. If so, were the patent granted from that application to cover the product, it would be invalid. The decision therefore opens up the possibility of generic companies (and any other would-be infringer) being able to clear a product's path to market without having to wait for a patent to grant in order to bring invalidity or non-infringement proceedings.

Reformulating the Test: Considering Obviousness Test In the U.K. For 20 years or so the test applied by the courts in England and Wales to determine whether or not the invention claimed in a patent is obvious has been that laid down in the Windsurfing case.4 The Court of Appeal recently decided in Pozzoli SpA v (1) BDMO SA (2) Moulage Industriel de Perseigne SA that the test needed reformulation to...