Patent Bits and Pieces: the Future of the Federal Circuit, When Can You Amend in UK Litigation, Non-Patent Incentives, Patent Pools and Personalised Medicine

Here’s a collection of interesting items we recently came across:

1. ‘Coming of Age for the Federal Circuit’ is a paper by Professor Feldman about what the Supreme Court is trying to tell the Federal Circuit through recent decisions.

2. A recent UK High Court decision, Compactgtl v Velocys & Ors, sets out when amendments are allowable during litigation. See the decision here. See the IPKat post about it here.

3. ‘Patentable Subject Matter and Non-Patent Innovation Incentives’ is a paper by Lisa Ouellette asking Courts to think about non-patent incentives to assist in defining what is patentable.

4. ‘Patent Law’s Problem Children: Software and Biotechnology in Trans-Atlantic Context’ is a paper by Dan Burk examining the issues around patenting software and biotechnology.

5. ‘Power and Governance in Patent Pools’ by Michael Mattioli studies 52 patent pools to see how they operate and proposes initiatives which could help patent pools promote innovation.

6. ‘Reviving the Paper Patent Doctrine’ by John Duffy explores whether Courts should discriminate against enforcement of patents which are not practiced.

7. ‘Incentives, Intellectual Property, and Black-Box Personalised Medicine’ by Nicholson Price II looks at the patenting of personalised medicine inventions based on algorithms in view of the Mayo, Myriad and Alice decisions.

8. ‘Personalised Medicine and Patent Eligibility’ by Steven Amundson looks at the effect of the Akamai, Mayo and Classen decisions on patenting personalised medicines.


Evergreening in the Pharma Sector

A recent IPKat post (see here) about adoption of a resolution (see here) about second medical use claims at AIPPI has led to some interesting Anonymous comments which discuss the controversy over evergreening.

This caught our attention because of two interesting points cited by the comments:

- The UK decision Les Laboratoires Servier and Servier Laboratories Limited v Apotex Inc, Apotex Pharmachem Inc Apotex Europe Limited and Apotex UK Limited [2008] EWCA Civ 445 (see here for the decision, see here for the IPKat post). In the decision Robin Jacob made some very harsh comments against evergreening.

- Robin Jacob’s comments on evergreening in the pharma sector (see here) which were part of the EU enquiry into the sector.

This is clearly a controversial area, but the role that second medical use claims can play in effectively extending protection beyond the initial term has to be acknowledged.

You may also wish to see related articles 10 Points About the State of the Pharma/Biotech Sector and 10 Observations on Different Types of Research.

How Patents Contribute to Academia, Economics and Society

Patents are important, complex and bring up controversial issues that affect many people. This post briefly examines some of the issues around patents that would be of interest to people in other sectors.

1. Language and claim construction

Much has been written about how to interpret claims, and claim construction is often pivotal to the outcome of litigation particularly in the US. Indefiniteness was the subject of a recent US Supreme Court decision Nautilus (see here). Clearly there is an inherent uncertainty in language which will always be there. In addition in certain territories the claims are also the basis of a doctrine of equivalents or ‘purposive’ construction.

Claim construction can therefore help us to formulate theories of how to approach text (see here).

For further academic articles about claim construction see here, here, and here.

2. Morality of Biotech Inventions

In Europe the Biotech Directive (see here) has given guidance on biotech inventions which are considered unpatentable for morality reasons. Subsequently the Brustle decision tackled the patentability of embryo stem cells (see here). Whether or not one agrees with these it is a platform to discuss and formulate a ‘European’ view of morality. That can then feed into discussions such as these.

3. Post-Structuralism

Patents are complicated and take place in the context of human systems. That means we must be aware of the limits in understanding them to the extent imposed by ‘post-structuralism’, i.e. there may not be an underlying ‘structure’ or ‘right answer’ in a situation. That means for any given situation it may not be possible to achieve complete certainty to ‘is this claim scope patentable?’ or ‘how much is this patent worth?’.

4. Patents and Economics

How do patents affect innovation? Generally of course patents are judged to be good incentives for promoting innovation (see here). However the situation is complex and there is evidence that patents inhibit the subsequent development of an invention by other parties (see here). Clearly the answers to these questions will also vary from country to country (see here).

5. International Relations

Each nation has agreed to respect other nation’s patent rights. However there have been accusations that this can lead to a sort of neo-colonialism (see here). Clearly this is a complex issue, but the power of IP monopolies means they can conflict with national interests. However harmonisation of IP laws has also demonstrated the power of countries to work together and to develop joint institutions such as the European Patent Office.

6. Ways of Doing Research: Open Innovation

The traditional way of doing research and then patenting is being challenged by the rise of open innovation and collaborative models of research. This leads to the question of how the patent system should respond (e.g. for defensive patent licencing see here), and whether in fact it is time to get rid of it altogether (see here).


Patent Problems and Controversies

Patents are a powerful monopoly with International reach. That means they can be very helpful in promoting innovation, but they can also cause problems and controversy. We list below topical problems relating to patents. This post does not aim to discuss each topic in detail, instead giving links to further information for those who are interested.

1. Access to medicines

Patents in the developing world cause drugs to be unaffordable for the poorest. It’s an issue still in need of resolving. See our IPKat post about it here.

2. TRIPS issues

The TRIPS agreement is not assisting technology transfer to the developing world as it was meant to, and arguably is hindering development in certain countries. We briefly discuss articles that suggest changing TRIPS here.

3. Patent trolls

This is a well-known problem in the US hi-tech sector with daily developments (see for example here). The US is responding with many legislative initiatives and the recent US Supreme Court ruling Alice v CLS Bank will also help (see our post on this decision here).

4. Is the present patent system appropriate for the developing world?

In many developing countries far more patent applications are filed by foreign companies than domestic companies. In this situation perhaps we need to rethink IP rights so that national interests are better served. See a Guardian article on this issue here.

5. Bioprospecting

Who owns natural resources and should patents be allowed to hinder their exploitation? A recent article in the Queen Mary Journal of Intellectual Property illustrates these issues very well in the context of marine genetic resources (see here).

6. Specialist IP courts

Can specialist IP courts develop biases towards patentees? This accusation is sometimes directed at the US Federal Circuit (see here). See our post on specialist courts here.

7. Patenting nature or ‘building blocks’

The US Supreme Court decisions Mayo, Myriad and Alice are based on the principle that nature, natural law and abstract ideas cannot be patented. Essentially the ‘building blocks’ of innovation must be free for all to use. Decades of US case law no longer applies and patents will be more difficult to obtain in the biotech, pharma, chemical and software fields. See our post on the post-Alice post-Myriad post-Mayo world here.

8. Unfair trade agreements

What norms are needed to ensure that trade agreements that refer to IP are fair? This is a difficult issue when negotiations happen between parties of different powers, but clearly relevant to TRIPS and the present discussion on the Trans-Pacific Partnership (TPP) and the Trans-Atlantic Trade and Investment Partnership (TTIP). The Max Planck Institute is trying to formulate appropriate norms. See our post on their Declaration on Patent Protection here. See our post on the TPP here.

9. Evergreening

Evergreening is the use of patent protection on subsequent developments to extend protection for pharmaceutical products. Certain territories, like India, have legislation to specifically prevent this. See a paper on evergreening here.

10. Dominant patents inhibiting subsequent developments

There can be a ‘pioneer’ effect where the first party to obtain patent protection in a new field obtains broad claims which then hinder development in that field. See articles on that here and here, and our discussion of it on the PatLit blog here.


Top Tech Blogs

Tech blogs have huge numbers of visitors and are therefore an important way of disseminating news about the latest developments in technology. We’ve listed the most popular and our favourites below.

1. Mashable – 24 million visitors a month.

2. Gizmodo – 23.5 million visitors a month.

3. TechCrunch – 15 million visitors a month. We like this site. Whilst many articles are on very specific developments or new phone releases, there are also articles which are analyse the overall trends to understand what is happening in the tech space.

4. Engadget – 14 million visitors a month.

5. Wired – 13 million visitors a month. We like the mix of articles the Wired provides, with the odd political, social or historical story thrown into the tech topics.

6. TechRepublic – 4.5 million visitors a month.

7. VentureBeat – We like this site for articles that provide analysis of the tech space.

8. Fast Company – Not really a tech blog, but nicely written articles on new developments in lots of different areas.

9. Techdirt – a political blog with a lot interesting reactions and opinions to everything that is happening.

You may also wish to see related posts on Patent Blogs and 10 Points on Using Online Patent Databases.


A Collection of IP Reports

We come across many IP reports, articles and decisions which are of interest in trying to keep up to date, but which we can’t devote entire posts to. Here’s a bundle of them:

1. An OECD/G20 report ‘Countering Harmful Tax Practices More Effectively, Taking into Account Transparency and Substance’ which comments on Patent Box and generally approves of the way the UK is doing it. See the report here. See IP Finance discussing it here.

2. AIPPI’s Working Committee Q238 report on ‘Second Medical Use Claims and Other Medical Indication Claims’ which provides a background on claim formats to protection medical inventions and the approach which different territories take to enforcement. See the report here. See IPKat’s discussion of it here.

3. Baillie v Spencer [2014] EWHC 2149 (Ch), a UK High Court case where a patent attorney was accused of professional negligence. The patent attorney was ultimately found to not be negligent, but there were clearly instances where he was too optimistic about the protection that could be gained and he offered advice on commercial matters that he should not have done. See the decision here. See Solo IP discuss it here.

4. The WIPO Journal (see here). We found the first article of Volume 5 Issue 1 on the development of the Chinese patent system very interesting (see here).


5 IPKat Articles by Holly IP

We have now written 5 articles for the IPKat blog. We are very appreciative of the opportunity to write for this prestigious blog. These are the articles:

Taking It Personally: Patents, Medicines and Genetic Markers

This was about whether the European Patent Office was about to change its policy on the way it looks at the feature of patient groups when assessing the novelty of medical use claims. That would clearly have a lot of implications for claims covering personalised medicine inventions.

Is Innovation Always the Best Choice? A Review of the Global Innovation Index 2013

This article discussed what contributes to innovation and how it is measured, together with thoughts on how innovation policies fit into the wider issues of how a country should decide on where to use its resources.

Balancing IP and Human Rights: The Case of Medicines

This article explores the debate around the issue of access to medicines in the developing world, and whether this is a human rights issue.

The Heart of the Matter: One Patent, Two Views

This article reviewed the UK Court decision AGA Medical v Occlutech and contrasted the findings of the UK judge with what happened at opposition at the European Patent Office.

Publication of Patent Applications: Not So Unsexy After All

This is about proposals from the UK IPO to change the way it publishes application. The article considers all the possible consequences of this seemingly mundane issue.

We have also had the following articles published on blogs related to IPKat:

Are We Too Afraid to Rethink the Patent System (on the PatLit blog)

This article explores whether the patent system is still fit for purpose in the age of open innovation ecosystems.

Ethics Versus Money in University Tech Transfer (on the IP Finance blog)

This article considers whether hard-pressed university tech transfer offices should turn to Patent Assertion Entities to monetise their patents.