Posted: July 28th, 2015

Patent Law

Patent Law

This part for the question that I have to completely answer

January 2013: Anna has recently graduate from Dorset University. She was the top student in her year, and is now taking an MSc at Dorset University. Dorset University has recently been given funding by AstraChem, a major producer of flu vaccines. to investigate the link between flu vaccine and weight loss. AstraChem had received a number of reports from GPs that obese patients who had received the flu vaccination had found it easier to stick to their diets (and had a lost some weight as a result) in the weeks after getting their vaccination. Anna’s Professor invited her to join the team working on the research as the basis for her dissertation.

September 2013: As a direct result of Anna’s research work a direct link was established between the flu vaccine’s active ingredient and appetite suppression. In her regular reports to AstraChem,she described her results.

October 2013 AstraChem are delighted with the results, and invite Anna in her vacation, to be an intern at AstraChem to help them develop a commercially acceptable tablet form for the active vaccine ingredient, which they intend to patent. Anna works with the AstraChem team who are successful in formulating a tablet that works well in tests to achieve the desired results

1.    Anna asks advice (i) on the patentability of her work and (ii) ownership of the patent for the tablet, if granted

2.    How would you advise Dorset University if the AstraChem drug, based on Anna’s work, turned out to be a huge commercial success.

3.    How might your advice differ if in December 2013 Anna, who is a member of the Academic Society of Chemists offered a paper to the A.S.C upcoming conference in Hawaii. Anna submitted an abstract based on her work, in which she described how she isolated the active flu vaccine ingredient and some of the data illustrating its success as an appetite suppressant.

Remark :
90% of available marks will be allocated to the application of judicial decisions, judicial and academic comments to the topic under discussion and no limited writing style. You may present information in the way that best conveys your ability to analyse and apply your knowledge, understanding, and research.

This part for detail in the program that it may be useful for answer the question

Patentability, exclusions and industrial utility

Lantana Ltd v The Comptroller General of Patents, Design and Trade Marks [2014] EWCA Civ 1463
Really Virtual Co Ltd v UK Intellectual Property Office Chancery Division (Patents Court) 02 May 2012
El-Tawil v Comptroller General of Patents, Chancery Division, 10 February 2012
Eli Lilly & Co v Human Genome Sciences Inc Also known as:
Human Genome Sciences Inc v Eli Lilly & Co, Supreme Court 02 November 2011
BANDAI/Game apparatus and control method (T1782/09) European Patent Office (Technical Board of Appeal) 05 May 2011

Protecting Kids the World Over (PKTWO) Ltd, Re Chancery Division (Patents Court), 26 October 2011
Halliburton Energy Services Inc’s Patent Applications, Re Chancery Division (Patents Court), 05 October 2011
Gemstar-TV Guide International Ic v Virgin Media Ltd. ChD (Patents Court) November 2009
AT&T Knowledge Ventures LP v Comptroller General Patents Designs and Trademarks 2009
Symbian Ltd v Comptroller General of Patents, Designs and Trademarks Court of Appeal (Civil Division), 2008
Actavis UK Ltd v Merck & Co Inc Court of Appeal (Civil Division), 2008
In the Matter of application GB0314464.9 sub nom Neal William Macrossan v Comptroller (2006)
Aerotel Ltd v Telco Holdings Ltd (2006) EWCA Civ 1371 (2007) 1 All ER 225 (CA CivDiv)
In the Matter of patent application GB 0017772.5 by Shopalotto.com Ltd (2005)

Teva Pharmaceutical Industries Ltd v (1) InstitutoGentili Spa (2) Merck & Co Inc; Arrow Generics Ltd v Same; Generics (UK) Ltd v Same (2003)

Reading:
Read the appropriate chapter in your text book +
International Stem Cell Corp v Comptroller General of Patents: the debate regarding the definition of the human embryo continues, EIPR 2014, 36(3), 155-163, Ella O’Sullivan
I.P.Q. 2013, 4, 279-302 Has the commodore steered the fleet onto the rocks? Biotechnology and the requirement for industrial applicability. Amanda Odell-West.
E.I.P.R.2012 Case Comment Software patents – a new approach, Robert Onslow
International Review of Intellectual Property and Competition Law 2010: On the European requirement for an invention, Justine Pila
European Intellectual Property Review, 2011 Patenting computer-related inventions in the US and in Europe: the need for domestic and international legal harmony Carole Deschamps
Intellectual Property Quarterly 2011 “Gene”-uinely patentable? The distinction in biotechnology between discovery and invention in US and EU patent law
Amanda Odell-West
Gemstar-TV Guide International Inc v Virgin Media Ltd – patenting tomorrow’s newspaper Citation: E.I.P.R. 2010, 32(8), 369-371 (Douglas Campbell)
The European Patent Convention and the (non-) patentability of human embryonic stem cells – the WARF case (Case Comment) Sigrid Sterckx I.P.Q. 2008, 4, 478-495
The patentability of computer-implemented inventions in Europe, David Booton, I.P.Q. 2007, 1, 92-116?

Novelty, Inventive Step and Obviousness in Patents

Teva UK Limited & another v AstraZeneca AB[2014] EWHC 2873 (Pat),
Hospira UK Ltd v Genentech INc, ChD (Patents Court) 2014
Regeneron Pharmaceuticals Inc v Genentech Inc Bayer Pharma AG v Genentech IncCourt of Appeal (Civil Division)21 February 2013
Smith & Nephew Plc v Convatec Technologies IncCourt of Appeal (Civil Division)14 December 2012
Wagner International AG v Earlex Ltd Chancery Division (Patents Court) 18 April 2012
Teva UK Ltd v Merck & Co Inc, Court of Appeal (Civil Division) 08 April 2011
Apimed Medical Honey Ltd v Brightwake Ltd, Court of Appeal (CivilDivision20 January 2012
Actavis UK Ltd v Novartis AG Court of Appeal (Civil Division), 17 February 2010
ConorMedsystemsInc v Angiotech Pharmaceuticals IncAlso known as:
Angiotech Pharmaceuticals Inc v ConorMedsystemsInc, Angiotech Pharmaceuticals Inc’s Patent (No.706376) House of Lords,09 July 2008
PozzoliSpA v DMO SA Court of Appeal, June 2007
Merrel Dow Pharmaceuticals Inc& Another v HN Norton & Co and others [1996] RPC 76
SabafspA v MFI Furniture Centres Ltd and others [2005] RPC 10 (HL)
Synthon BV v Smithkline Beecham plc (2006) RPC 10
Windsurfing International Inc v Tabur Marine Ltd (1985) CA
Haberman v Jackel [1999] FSR 683

Reading:
The relevant chapters in your text book +
UK and EPO approaches to excluded subject-matter and inventive step: are Aerotel and Pozzoli heading for the rocks? E.I.P.R. 2014, 36(9), 569-576, Nicholas Fox, William Corbett
Philips v Nintendo: ire-console-able differences mean Wii have a problem (Case comment) Ent. L.R. 2015, 26(1), 25-29, Dr Janet Strath
Obviousness – a trap for the unwary? Regeneron& Bayer v Genentech, European Intellectual Property Review 2013Case Comment
Dr David Lancaster Dr Penny Gilbert
Apimed Medical Honey Ltd v Brightwake Ltd: honey wars E.I.P.R 2011 Clive D. Thorne
Practice Notice (PO: Patents Act 1977: Second Medical Use Claims) Patent Office, 26 May 2010
Towards a single pan-European standard – common concepts in UK and “continental European” patent law: Part 2: obviousness, E.I.P.R. 2010, 32(6), 259-267 (Paul England)
KSR and Standards of Inventive Step: A European View, Paul Cole, 8 J. MARSHALL REV. INTELL. PROP. L. 14 (2008).
Inventive concept – is it a good idea? [2005] E.I.P.R. 170-175 (Gregor Grant, David Gibbins)

Patent Infringement and Interpretation of Patent Claims

Schutz (UK) Ltd v Werit UK Ltd Also known as: Schutz (UK) Ltd v Werit (UK) Ltd Supreme Court13 March 2013
Protomed Ltd v Medication Systems Ltd Court of Appeal (Civil Division)25 July 2013
Occlutech GmbH v Aga Medical Corp [2010] EWCA Civ 702 (CA (CivDiv)
Apimed Medical Honey Ltd v Brightwake Ltd, Court of Appeal (CivilDivision20 January 2012
Virgin Atlantic Airways Ltd v Delta Airways Inc Court of Appeal (Civil Division) 23 February 2011
Grimme v Scott [2010] EWCA Civ 1110
KCI Licensing Inc v Smith & Nephew Plc Court of Appeal (Civil Division), 18 November 2010
Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Ltd EWHC 2009, AND EWCA 2009
Kirin Amgen Inc& others v Hoechst Marion Roussel Ltd and other [2004] HoL
General Tire and Rubber Co v Firestone Tyre and Rubber Co [1972] RPC 457
Catnic Components Ltd v Hill and Smith Lt [1982] RPC 183 (HL)
Improver Corporation v Remington consumer Products Ltd [1990] FSR 181

Reading:
The appropriate chapter in your text book +
Intellectual Property Quarterly2011Case Comment
A case-study in literalism? Dissecting the English approach to patent claim construction in light of Occlutech v AGA Medical Matthew Fisher
European Intellectual Property Review 2011 Virgin Atlantic v Contour & Delta Airlines – patent actions brought back down to earth? Gary Moss
International Review of Intellectual Property and Competition Law 2011Case Comment United Kingdom: Patents Act 1977, sec.60(2) – GrimmeLandmaschinenfabrik v Derek Scott
Patent infringement in Europe: the British and the German approaches to claim construction or purposive construction versus equivalency Axel von Hellfeld E.I.P.R. 2008, 30(9), 364-370
New Protocol, same old story? Patent claim construction in 2007; looking back with a view to the future Matthew Fisher, I.P.Q. 2008, 2, 133-162

Dealing in Patents and Patent Ownership

SDL Hair Ltd v Next Row Ltd & others[2014] EWHC 2084(groundless threats)
Shanks v Unilever Plc Court of Appeal (Civil Division), 25 November 2010
Kelly v GE Healthcare Ltd ChD Feb 2009
LB Europe Ltd (t/a DuPont Liquid Packaging Systems) v Smurfit Bag in Box SA Chancery Division, 2008
Liffe Administration & management v (1) PavelPinkava (2) De Novo Markets Ltd (2007) CA CivDiv
Memco-Med’s Patent [1992] RPC 403

Reading:
The appropriate chapter in your text book +
W.I.P.O.J. 2013, 5(1), 25-34Collective invention and patent law individualism: origins and functions of the inventor’s right of attribution. Graham Dutfield.
Intellectual Property Quarterly, 2011 Extra compensation for inventive employees: is our system equitable, unbiased and motivating? Claire Howell
Kelly v GE Healthcare Ltd: employee innovation in health care: deciphering ownership and the alchemy of “outstanding benefit” (Case Comment)
E.I.P.R. 2010, 32(9), 449-456 (Amanda Odell-West)
The legal status of academic employees’ inventions in Britain and Germany and its consequences for R&D agreements, Christian G Stallberg, I.P.Q. 2007, 4, 489-530
Morally regulating innovation: what is “commercial exploitation”? Amanda Warren-Jones, I.P.Q. 2008, 2, 193-212
Ownership of employees’ inventions: duties, expectations and variable objectivity (Case Comment) Adrian Chandler, E.I.P.R. 2008, 30(4), 164-170
Japan: patents – inventor compensation (Case Comment) John A. Tessensohn, Shusaku Yamamoto, E.I.P.R. 2007, 29(2), N21