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1

Synthon v SmithKline Beecham [2005] UKHL 59

  • Background:
    • Synthon appealed against decision that Beecham's patent for Paroxetine salt was valid in view of Synthon's earlier application (which was state of the art under PA 1977 s3(2) so only relevant for novelty)
    • Question at stake was whether Synthon's earlier application was an enabling disclosure for purposes of novelty
  • Legal principles:
    • Emphasises that disclosure and enablement were distinct concepts, each of which had to be satisfied separately and had different rules.
    • Disclosure - prior art had to disclose invention that, if performed, would infringe patent in suit (reverse infringement test for novelty)
      • for purposes of disclosure not enough to say skilled person would come up with invention that infringed patent without undue burden
    • Enablement - once disclosed, person would undertake reasonable experimentation to make it work
  • Decision:
    • Particular Paroxetine salt was disclosed in earlier application (despite the method listed not actually resulting in the correct salt)
    • Enabled as skilled person would have corrected mistake with common general knowledge in reasonable time

2

Pozzoli v BDMO [2007] EWCA Civ 588

  • Restated inventive step test

 

  1. a) identify notional person skilled in art b) identify relevant common general knowledge of that person
  2. Identify inventive concept of claim, or if that cannot readily be done, construe it
  3. Identify, what, if any differences exist between matter cited as forming part of the state of the art and the inventive concept of claim or claim as construed
  4. Viewed without any knowledge of alleged invention as claimed, do these differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
  • Decision:
    •  

 

3

Technip France SA’s Patent [2004] EWCA Civ 381

  • Man skilled in the art can be a team which is:
    • an assembly of nerds of different basic skills, all unimaginative
  • Skilled man whether team or person is "not a complete android" - shares common prejudices or conservatism common in art concerned

4

Merrell Dow Pharmaceuticals v Penn Pharmaceuticals [1996] RPC 76 

  • Background:
    • Merrel Dow's patent on anti-histamine had expired
    • Merrel Dow had later still patent on acid metabolite of anti-histamine which was produced by liver
    • Merrel Dow claimed supply of anti-histamine was infringement of later patent as it was a means for putting the invention into effect (by way of liver metablising drug)
  • Legal points:
    • Under s2(2), state of art is not confined only to products where chemical composition is known
    • It is invention itself which must be new
    • Invention part of state of art if disclosed information sufficient to enable public to work it
  • Decision:
    • Disclosure in earlier specification of "a part of the chemical reaction in the human body produced by the ingestion of terfenadine and having an anti-histamine effect” was sufficient to make product part of state of the art for the purposes of synthesising in body (but not for synthesising/isolating compound)

5

Lux Traffic v Pike Signals [1993] RPC 107 

  • Background:
    • Invention for traffic light control systems was trialled and made available to contractors over period of five months
  • Legal points:
    • There is no need to prove anybody saw the disclosure provided the relevant disclosure was in public
    • Anticipating description in a book will invalidate a patent if book is on a shelf of a library open to the public, whether or not anybody read the book
  • Decision:
    • These contractors were free in law and equity to observe it and if a skilled man had taken the time to test the invention he would have figured out how it works so disclosed (even though the contractors hadn't actually done so)

6

Generics v Lundbeck [2009] UKHL 12

  • Patent claim for product (rather than method) is not liable to revocation on grounds of insufficiency even if only inventive step is the method by which the product was made and only one inventive method is described
  • Inventive concept is connected to but not the same as the technical contribution:
    • Inventive concept - core (or essence) of the invention
    • Technical contribution evaluates its inventive concept by assessing how far forward it has carried state of the art
  • Facts:
    • Lundbeck had discovered one way of making escitalopram (separating enantiomers) and had product patent
    • Generics attempted to revoke product patent on basis only one way was described so their patent lacked sufficiency for product where only inventive step was in method of creating product and other superior methods for making product had become available
    • As a general rule (despite above) "technical contribution" should be used to assess monopoly granted to patent - Appeal dismissed as "technical contribution" was to make available the product which was the isolated enantiomer for the first time

7

G 2/98 - Requirement for claiming priority of the ‘same invention’  [2001] OJ EPO 413

  • EPO requirement for claiming priority of "the same invention" (Art. 87(1) EPC) means priority is to be acknowledged only if skilled person can derive subject-matter of the claim directly and unambiguously (i.e. same requirements as for added subject-matter)

8

Biogen v Medeva [1997] RPC 1, 53

  • Application must be sufficient at date of filing (not date of publication)
  • Biogen insufficiency - invention cannot be performed across the whole range of claim without undue burden
  • Facts:
    • B's disclosure for method of producing antigens of hep B. virus - Insufficient as patent purported to cover methods of producing antigens that did not rely on the same principles to produce the antigens

 

9

Eli Lilly & Co v Human Genome Sciences Inc [2008] EWHC 1903 (Pat)

  • Key elements of requirements to determine sufficiency:
    • identify invention by reading and construing the claims
    • in case of product claim, that means making or otherwise obtaining the product
    • in case of process claim, it means working the process
    • sufficiency assessed on basis of the description as a whole including the description and the claims
    • specification must be sufficient to allow invention to be performed over whole scope of claim
    • specificaton must be sufficient to allow invention to be performed without undue burden (reasonable trial & error ok)

10

Eli Lilly v Actavis UK [2017] UKSC 48 

Reformulated Improver Questions

  • Eli Lilly restated Improver questions:
    1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? - Question of fact
    2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? - Question should still apply to variants which rely on, or are based on, developments since the priority date.
    3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? (when one is considering variant which would have been obvious at the date of infringement rather than at the priority date, necessary to imbue notional addressee with more info than they might have had at priority date)
    • For establishing infringement where no literal infringement: answers to first two questions must be yes and answer to thrid should be no.

11

Improver v Remington [1990] FSR 181

  • Improver questions for determining scope of claim:
    • does variant have material effect on the way in which the invention works? If yes, the variant is outside claim. If no -
    • Would this (i.e. that the variant has no material effect) have been obvious to a reader skilled in the art at the date of publication of the patent? If no, variant outside the claim. If yes -
    • Would a reader skilled in the art nevertheless have understood from language of the claim that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

12

Kirin-Amgen v HMR [2005] RPC 9

  • Improver questions and Article 69 EPC just guidelines for applying purposive interpretation to equivalents which are more useful in some cases than others
  • Improver questions fell out of favour and replaced with purposive interpretation of: what would the person skilled in the art have understood the patentee to mean?
  • It had been assumed prior to Kirin-Amgen that Article 2 of the Protocol of Interpretation of Article 69 in EPC 2000 had affirmed a doctrine of equivalents but
    • Kirin-Amgen asserted that provision only said equivalents should be considered and protection should not be extended beyond that covered by the claims (as interpreted by the person skilled in the art)
    • "doctrine of equivalents" essentially assumed under purposive interpretation by person skilled in the art and provided no further protection beyond this 

 

13

 Eli Lilly v Actavis [2017] UKSC 4

Overall Infringement Questions

Two questions to determine infringement:

  1. does the variant infringe any of the claims as a matter of interpretation; and, if not
  2. does the variant nonetheless infringe because it varies from the invention in immaterial way(s)? If yes to either, infringement otherwise no. (doctrine of equivalents)
  • issue 1 is a question of interpretation
  • issue 2 must be answered with reference to the facts and expert evidence

14

Eli Lilly v Actavis [2017] UKSC 48

Relevance of prosecution history

  • Reference to prosecution file is only appropriate where:
    • point of issue is truly unclear if one confines oneself to specification and claims of the patent, and contents of file unambiguous resolves the point; or
    • it would be contrary to public interest to ignore contents of the file

15

Catnic v Hill & Smith [1982] RPC 183

  • Claims should be construed 'purposively' i.e. they should not be limited to their strict or literal meaning and should be interpreted from the perspective of a person skilled in the art

16

Virgin Atlantic Airways v Premier Aircraft [2009] EWCA Civ 1062
(Pre-Eli Lilly summary of infringement principles)

(i) The first overarching principle is that contained in Article 69 of the
European Patent Convention;

(ii) Article 69 says that the extent of protection is determined by the
claims. It goes on to say that the description and drawings shall be
used to interpret the claims. In short the claims are to be construed in
context.

(iii) It follows that the claims are to be construed purposively—the
inventor’s purpose being ascertained from the description and
drawings.

(iv) It further follows that the claims must not be construed as if they
stood alone—the drawings and description only being used to resolve
any ambiguity. Purpose is vital to the construction of claims.

(v) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.

(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is  also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory.

(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.

(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. 

 [(ix) It further follows that there is no general  “doctrine of equivalents” - superseded by Eli Lilly

(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context  - superseded by Eli Lilly] 

(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.
 

17

KCI Licensing v Smith & Nephew [2010] EWHC 1487 (Pat), Arnold J

  • Interprets s.7(2) of the Patents Act 1977 as meaning that the patentable invention was property (i.e. the invention itself rather than just the application/patent, this property exists even before patent applied for) and that the inventor was first owner unless conditions in s.7(2)(b) applied. 
  • This property could be used to found claims to entitlement.

18

Oxford Nanopore Technologies Ltd v Pacific Biosciences of California Inc {EWHC]

  • A licence is an "exclusive licence" within the meaning of the Patents Act 1977 s.130(1) where a third party had an option to take a licence under a patent but had not done so.

19

Allen & Hanburys Ltd v Generics (UK) Ltd [1986] RPC 203 (UKHL)

  • Licenses of right:
    • If license agreed voluntarily then no restriction on what licensor and putative licensee may agree
    • In default, terms agreed by comptroller, these must:
      • the patent proprietor to receive reasonable renumeration
      • be the terms that would be agreed between a willing licensor and willing licensee
      • otherwise, comptroller not subject to greater fetters than parties themselves would have been (unless they're contrary to well-established principles of law or public policy

20

Patchett’s Patent [1967] RPC 237 (EWCA)

  • Basic compensation for Crown use is willing licensor, willing licensee approach

21

Unilever plc v Procter & Gamble Co [2000] FSR 344 (Court of Appeal)

A communication made during without prejudice communications is usually protected from being a threat

22

Berry Trade Ltd v Moussavi [2003] EWCA Civ 715

  • Without prejudice cannot be used as a cloak to make a threat

23

IDA v University of Southampton [2006] EWCA Civ 145

  • Who should hear entitlement proceedings
    • Where there are proceedings before the court (e.g. breach of confidence) then entitlement proceedings should be heard before the court. The Comptroller's jurisdiction should be reserved for relatively straightforward cases
  • Who should be entitled:
    • Mere non-enabling idea is not enough to give patent for it solely to the devisor
    • Those contributing enough information by way of necessary enablement to make the idea patententable would count as "actual devisors" (as turned "airy-fairy" into practical)
    • Those who contribute only unnecessary detail cannot be counted as actual devisors

24

Luxim v Ceravision [2007] RPC 33 (High Court)

  • Factors for deciding whether court or comptroller should hear entitlement proceedings:
    • Different costs regime applied before hearing officer - in court full adverse costs can be granted against losing party but far lower adverse costs payable in IPO
    • Technical issues - hearing officer well equipped
    • Non-technical factual issues - if sufficiently complex then judge better (e.g. fraud, breach of fiduciary duty)
    • Patent Law issues - hearing officer well equipped
    • Non-patent law issues - indicates judge likely to be more appropriate
    • Not a simple judgment as to whether a matter was "highly complex"
    • Relevant factors must all be balanced
    • Falls to comptroller to decide

25

Yeda v Rhone-Poulenc [2007] UKHL 43

  • There was no general principle or doctrine that a person claiming to be entitled to a patent that had been granted to somebody else could not succeed merely by proving that he, and not the owner of the patent, was the inventor, but had to invoke some other rule of law to establish his entitlement.
  • Amending nature of claim to entitlement (e.g. from joint to sole ownership) is not a new claim (and so provided original claim was made within two years of grant, claim is still valid if amended)
  • First to file rule is about validity not entitlement so three cases possible where A claims his inventive concept has been patented by B:
    • B arrived independently at the same invention so B entitled
    • A communicated information to B without duty of confidence, B's patent is invalid for lack of novelty
    • A communication information to B in confidence, patent will be valid and A can claim entitled because A is the inventor and not because B made application in breach of duty of confidence, confidence is relevant to validity and not to entitlement

26

Goddin & Rennie’s App [1996] RPC 141

Remedy should be granted which: “provides a reasonable opportunity for the patent to be exploited should there be a demand for it”

27

Staeng’s Patent [1996] RPC 183

  • Job description of employee will usually indicate whether they were employed to invent

28

Harris’s App [1985] RPC 19, 29

  • Employed to invent? - Look at activities usually undertaken by employee
  • would 'an invention' result?" - not any invention resulting nor the particular invention resulting, instead something between the two
  • "special obligation" - depends on status of employee and attendant duties and responsibilities (Managing Director and Sales Manager have very different roles, being called a 'manager' not enough for this obligation to arise)

29

LIFFE v Pavel Pinkava [2007] RPC 30

  • Should not just look at duties when a person is first employed but take into account what they have become as duties change over time (for purposes of ownership)
  • PA1977 s42(2) means contracts trying to diminish employees rights are not enforceable

30

Shanks v Unilever Plc [2017] EWCA Civ 2

  • "outstanding benefit" - consider whether the benefit to the employer exceeded what would normally be expected to result from the work for which the employee was paid so long as one bears in mind that the focus of s.40(1) is on the benefit to the employer not inventiveness of employee
  • "employer" refers to real employer not notional employer
  • "benefit" means actual benefit not potentially realisable benefit
  • turnover and profit of employer relevant but not decisive
  • Being appealed to supreme court

31

Kelly v GE Healthcare [2009] EWHC 181 (Pat)

  • S40 available to "actual deviser"
  • At time, 'patent' had to be cause of benefit (but now expanded to invention in act)
  • Compensation under s41 determined in light of all available evidence
  • Employee's share of value might in principle lie anywhere between 0 and 33% 
  • Taking into account relevant factors, it was towards lower end in this case - 3%
  • "Ex-post" analysis should be applied to determine benefit not ex-ante: i.e. real not hypothetical profit

32

American Cyanamid Co v Ethicon Ltd [1975] AC 396

Test for determining whether interim injunction should be granted:

  • assess whether there is a serious question to be tried
  • assess whether damages would be adequate remedy for party injured by grant of, or refusal to grant, interim injunction
  • where the balance of convenience lies (if everything else equal, normally prudent to preserve status quo)

Only consider relative strength of each party's case if extent of uncompensatable damage is similar and strength of one's party case is disproportionate to that of the other party.

- Significance: Court should not try to resolve conflicts of evidence for interim injunction, these should be dealt with at trial.

 

33

Wyeth Holdings Corpn v Alpharma Ltd [2003] EWHC 3196 (Pat)

Serious question to be tried:

•Where the claim and the defence are “triable” (in other words arguable) then this criteria is satisfied – it is not appropriate to have a ‘mini-trial’

34

Warner-Lambert Company LLC v Sandoz GmbH [2016] EWHC 3317 (Pat)

  • Balance of convenience is in favour of proprietor where there will be large impact on market as refusing injunction could lead to irredeemable harm to them due to pushing down of prices (from which it will be hard to recover)
  • For example, arrival of generic on to market before expiry of patent could have ongoing effect on prices even if generic later removed from market.

35

Warner Lambert v Teva [2011] EWHC 1691 (Pat)

Relevant to interim injunctions:

  • When patent expiring soon, balance of convenience is with claimant as irreparable damage could be done to them while defendant does not substantially lose out (as exclusivity ends soon anyway)
  • Inadequacy of damage - can prices of patented product be restored if no injunction granted and the claimant wins

36

Norwich Pharmacal v Customs and Excise [1974] AC 133

Norwich Pharmacal order - order for third party to disclose information needed to decide whether it is worth suing or taking action against wrong doer

Conditions to obtain order:

(a)a person has become mixed up in the transaction of which disclosure is required;

(b) the order for disclosure is for a legitimate purpose, which must be identified in the application; and

(c)the person against whom the order is made must not be a mere witness.

37

HTC Corpn v Nokia Corpn [2013] EWHC 3778 (Pat)

  • Correct approach to granting final injunction is to consider matters required under enforcement directive:
    • efficiacy
    • proportionality
    • dissuasiveness
    • avoidance of creating barriers to legitimate trade
    • provision of safeguards against abuse

38

Smith & Nephew v Convatec Technologies [2013] EWHC 3955 (Pat)

Defines criteria for post-expiry injunctions

  • Caution before restraining otherwise lawful activity
  • Unwarranted advantage justifying injunction should be identified as well as precise relationship between that and later acts exploting this advantage
  • Injunction must be in appropriate form and duration commensurate with unwarranted advantage
  • Court must be particularly careful not to put claimant in better position than they would have been if wrong hadn't occurred
  • Availability of other remedies should be taken into account incl; account of profits (and if satisfactory these may be preferable)

39

Samsung v Apple [2012] EWCA Civ 1339

  • Publication of judgment may also apply in cases of non-infringement
  • Decision: Apple had to post notices stating that Samsung had not infringed their community design to dispel commercial uncertainty caused by Apple's actions

40

General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1975] FSR 273

  • Object of damages is to compensate for loss or injury, damages should put injured party in same position as if he had not sustained the wrong
  • Key principles for assessing damages:
    • plaintiffs have burden of proving thier loss
    • damages should be assessed liberally (as defendant is the wrong-doer) but goal is to compensate plaintiff's not punish defendants
  • Where claimant licenses patent, loss assessed based on lost licenses
  • Rate paid is that achieved from earlier licenses but there is no need for there to be any earlier licensees, only need to show that it is the rate that would have been charged

41

Vestergaard Frandsen v Bestnet Europe [2013] EWCA Civ 428

  • Where parties are in competition, usual approach is to use lost sales to determine damages.

42

Gerber v Lectra Systems [1997] RPC 443

  • No rule of law limiting scope of recovery of loss of profits to the amount that the patent holder would have earned in activities over which he had a monopoly under the patent:
    • not only 'monopoly profits', general profits even if could be achieved without invention
  • Quote:
    • the claim is in truth not for lost profits; it is for lost income, from which must be deducted the expenses saved. If it is only the marginal cost which is saved, the remainder of the lost income is recoverable. That is a misfortune which falls upon the wrongdoer

43

Alfrank Designs Ltd v Exclusive (UK) Ltd & Anor [2015] EWHC 1372 (IPEC)

  • Customers likely to buy matching goods in some instances
  • Where this is the case, the claimant is entitled to damages for lost profits on sale of these matching goods (even though they may not be covered by IP protection themselves)

44

United Horse Shoe and Nail Co v Stewart (1888) 13 App Cas 401

Claimant can claim for drop in price from defendants product being on market

45

Force India Formula One Team Ltd v 1 Malaysia Racing Team [2012] EWHC (upheld by Court of Appeal)

  • 'user principle':
    • consider what sum would have been negotiated between the parties (willing licensee, willing licensor basis) taking into account (at time of notional negotiation):
      • respective bargaining positions
      • information available to them
      • commercial context
    • Assessment should be made at time of breach
    • Court can take into account other factors, e.g. delay by claimant in making claim

46

Henderson v All Around the World Recordings [2014] EWHC 3087 (IPEC)

  • Summarises additional principles for assessing damages on 'user principle' (summarising 32Red OKC v William Hill [2013] EWHC)
  • These are:
    • there are limits to the extent to which the court will have regard to the parties' acutal attributes:
      • financial circumstances of parties are not material
      • character traits of parties are to be disregarded
    • in contrast, court must consider actual circumenstances at time of hypothetical negotiation, so must establish value of wrongful use to defendant not a hypothetical person
    • if defendant had available a non-infringing course of action, parties can be considered to have taken this into account in hypothetical negotiation (which need not have all advantages/attributes of infringing action for it to be relevant)
    • hypothetical licence relates solely to the rights infringed
    • hypothetical licence is for period of defendant's infringement
    • other elements of hypothetical license depend on the facts (i.e. the circumstances under which the parties were hypothetically negotiating)

47

Hollister Incorporated v Medik Ostomy Supplies [2012] EWCA Civ 1419

  • Account of profits is equitable remedy and therefore discretionary
  • If defendant's business is not running to capacity and defendant's general overheads have not increased because of infringement then defendant should not be allowed to attribute these overheads (or a proportion of them) to the infringement (as this would allow defendant to benefit from unlawful activity)

48

Celanese International v BP Chemicals [1999] RPC 203

  • Where account of profits was sought, defendant treated as having done business and made profits on behalf of plaintiff
  • Where all profits could not be attributed to infringement, court to split profits between those attributable to the infringement and those that were not
  • In absence of special reason to contrary, profits of a single project attributed to parts or aspects of project in same proportion as costs/expenses attributed to them
  • In account, defendant is allowed to deduct from revenue all allowable costs (even if these costs were wasteful/inefficient) - must take defendant as he is

49

Design & Display v Ooo Abbott [2016] EWCA Civ 95

  • Broad principle - patentee entitled to profits earned by use of his invention
  • Convoyed goods and products into which the subject-matter of the patent has been incorporated should also be considered when determining these "profits"
  • Account of profits is through the lens of what the infringer has done and not loss to the patentee
  • Overheads cannot be deducted when determining "profits" if:
    • the overhead would have occurred anyway even if the infringement had not occurred
    • the sale of infringing products would not have been replaced by sale of non-infringing products

50

Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46

  • A patent once revoked is deemed to never have existed:
    • if no inquiry held yet, none should be held
    • if inquiry held and judgment given (but before payment), judgment has to be appealed
    • where payment has been made, it is possible (but no authority) that the money may have to be repaid

51

Coco v Clark [1969] RPC 41

To establish a breach of confidence, the claimant must show that:

  • Information must be of a confidential nature (hence capable of being protected)
  • Information must have been communicated in circumstances importing an obligation of confidence
  • Must be unauthorized use of the information to the deteriment of the person communicating it.

Reasonable recipient test:

  • if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realized that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence

52

Ocular Science v Aspect Vision [1997] RPC 289

  • Essential in breach of confidence action that the plaintiff should give full and proper particulars of all confidential information on which he intended to rely because:
    • the plaintiff usually sought an injunction and unless particulars identified injunction is of uncertain scope and is difficult to enforce
    • defendant must know what case he had to meet as he might wish to show certain items relied on were matters of public knowledge
  • If plaintiff failed to give proper particulars, court could infer that purpose of litigation was harrassment and action could be struck out as abuse of process
  • Mere mechanical collection of data probably is not protected even if lots of labour to put it together, needs skill as well

53

Attorney-General v Guardian (No. 2) [1990] 1 AC 109

  • No injunction can be granted to protect information in the public domain
  • Publication in foreign countries may put information into public domain
    • 'Spycatcher'  book was published in Australia, Ireland and the USA and partially serialised in Sunday Times so no harm from further publication as most information known
  • Duty of confidencearises where confidential information comes to the knowledge of a person… in circumstances where he has notice, or is held to have agreed, that the information is confidential

  • A third party who comes intopossession of confidential information which he knows to be such, may come under a duty not to pass it on to anyone else

54

Vestergaard Frandsen v Bestnet Europe [2013] UKSC 31

  • There is breach of confidence where the claimant's confidential information is is being used inconsistently with its confidential nature by a defendant who received it in circumstances where they had agreed, or ought to have appreciated, that it was confidential

 

55

Terrapin v Builders’ Supply [1967] RPC 375, 391

  • Springboard doctrine
  • Quote: "a person who has obtained information in confidence is not allowed to use it as a springboard for activities detrimental to the person who made the confidential communication, and a springboard it remains even when all the features have been published or can be ascertained by actual inspection by any member of the public"

56

Vestergaard v Bestnet [2009] EWHC 1456 (Ch)

  • Two types of springboard available based on confidential information:
    • information is still being misused by defendant
    • defendant is no longer misusing the information but has obtained the benefit
  • Cannot get springboard injunction to "punish" defendant in second case (as it would have no effect and finiancial remedy is more appropriate)
  • Springboard doctrine means that information could have a limited degree of confidentiality even though it could be ascertained by reverse engineering or by compilation from public domain sources, so:
    • an injunction could be granted in relation to this information for a limited period which should be limited to time it would take someone starting from public domain sources to reverse engineer or compile the information
    • BUT should not put claimant in better position than if there had been no misuse and duration should not extend beyond period for which the defendant's illegitimate advantage might be expected to continue

57

Faccenda Chicken v Fowler [1987] Ch 117

  • Employee has good faith/fidelity obligation during employment
  • Implied term imposing obligation after termination of employment is more restricted in its scope than general good faith duty and necessary to consider facts of case to determine whether particular item of information falls within implied term
  • To be assessed on following factors:
    • Nature of the employment (how close to the centre of the employers' business)
    • Nature of the information (protection not available for general business methods)
    • Did employer impress on employee confidential nature of the information?
    • Can information be easily isolated from other information (e.g. the general information which someone picks up working at the company)?

58

Masterman's Design 

as it relates to

Exclusions from Patentability

Decision as to wheteher to refuse something on the grounds [of morality and/or ordre public] is judicial and not administrative so there is no question of the state endorsing a particular invention

59

Plant cells/PLANT GENETIC SYSTEMS [1995] - EPO board of appeal

  • Concept of morality is related to belief that some behaviour is right and acceptable whereas other behaviour is wrong
  • This belief is founded on totality of accepted norms which are deeply routed in a particular culture
  • For EPC, this is the culture of European society/civilization
  • So, inventions the exploitation of which is not in conformity with conventionally accepted standards of conduct in this culture are excluded as being contrary to morality

60

T 19/90 Oncomouse/HARVARD [1990] OJ EPO 476

  • Balancing test must be applied
  • There must be a careful weighing up of the suffering of animals and possible risks to the environment on the one hand, and the invention's usefulness to the mankind on the other

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Relaxin [1995] EPOR 541

  • EPO attempts to avoid balancing test of Oncomouse
  • Whether humam genes should be patented is a controversial issue on which many persons have strong opinions, the EPO is not the right institution to decide on fundamental ethical questions

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G 2/06 Use of embryos/WARF [2009] OJ EPO 306

EPC forbids the patenting of claims directed to products which - as described in the application - at the filing date could be prepared exclusively by a method which necessarily involved the destruction of the human embryos from which the said products are derived, even if the said method is not part of the claims.

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C-34/10 Greenpeace v Brustle [2012] 1 CMLR 41 (CJEU)

  • Article 6(2)(c) means that:

    • 'human embryos' are:

      • human ovum after fertilisation

      • non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted

      • any non-fertilised human ovum whose division and further development has been stimulated by parthenogenesis

    • court must ascertain whether a stem cell obtained from a human embryo at the blastocyst stage 

  • Exclusion under Art 6(2)(c) covers use for purposes of scientific research, only use for therapeutic or diagnostic purposes applied to the human embryo and useful to it are patentable

  • Art 6(2)(c) excludes inventions from patentability where technical teaching which is subject-matter of the patent application requires the prior destruction of human embryos or their use as base material, whatever the stage at which that takes place and even if description of technical teaching claimed does not refer to use of human embryos

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C-364/13 International Stem Cell Corp (18 Dec 2014)

Article 6(2)(c) of Directive must be interpreted as meaning that an unfertilised human ovum whose division and further development have been stimulated by parthenogenesis does not constitute a ‘human embryo’, within the meaning of that provision, if, in the light of current scientific knowledge, it does not, in itself, have the inherent capacity of developing into a human being, this being a matter for the national court to determine.”

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G 1/04 Diagnostic methods [2006] OJ EPO 334

Rationale for exclusion from patentability of medical methods:

  • Medical and veterinary practitioners should be free to take the actions they consider suited to diagnose illnesses by means of investigative methods. 
  • Policy is aimed at ensuring those who carry out diagnostic methods are not inhibited by patents

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G 1/07 Treatment by surgery/MEDI-PHYSICS [2011]

  • Interventions involving high degree of complexity and/or high degree of invasiveness would normally also be such as to require profession professional medical expertise and entail health risks even when carried out with care and expertise indicate "treatment by surgery"
  • But, degree of invasiveness or complexity of operation are not determinative as to whether physical intervention is a "treatment by surgery
     

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T 290/86 Cleaning plaque/ICI [1992] OJ EPO 414

“Therapy” not limited to curative medical treatment as opposed to prophylactic medical treatment of disease, which may be preventive or curative.

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G 1/04 Diagnostic methods [2006] OJ EPO 334

Diagnostic methods likewise do not cover all methods related to diagnosis. To determine whether a claim is directed to a diagnostic method within the meaning of Art. 53(c), it must first be established whether all of the necessary phases are included in the claim.

  The claim must include method steps relating to all of the following phases:

  (i) the examination phase, involving the collection of data,

  (ii) the comparison of these data with standard values,

  (iii) the finding of any significant deviation, i.e. a symptom, during the   comparison,

  (iv) the attribution of the deviation to a particular clinical picture, i.e.

  the deductive medical or veterinary decision phase (diagnosis for   curative purposes stricto sensu).

•…each of the preceding technical method steps relating to phases (i)  to (iii) must be performed on a human or animal body.

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T 19/86 Pigs II/DUPHAR [1989] OJ EPO 24

  • Doctor/vet is not required for method to be a therapeutic method
  • In case, a method was therapy even though it was carried out by farmers not vets

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G 05/83 Eisai/Second medical indication [1985] OJ EPO 64

A claim to the method of use of a known substance could not be patented, a claim to the use of a product for the manufacture of a medicament for a specified new and inventive medical use could be permitted

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Wyeth’ Application [1985] RPC 545

The approach of EPO to novelty of Swiss type use of claim directed to subsequent, therapeutic use is equally possible under UK PA 1977.

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G 6/99 MOBIL OIL/BAYER/Friction reducing additives [1990] EPOR 73

  • Second non-medical use claims permissible
  • [a claim is patentable] if [a technical feature of a product] has not been previously made available to the public by any means as set out in Article 54(2) EPC, then the claimed invention is novel, even though such technical effect may have inherently taken place in the course of carrying out what has previously been made available to the public.

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Warner-Lambert Company v Actavis [2015] EWCA Civ 556

  • Medical second use patents infringed when knows or foresee that users will intentionally administer for the particular indication
  • Quote: How does one tell whether a manufacturer is using the manufacturing process of the claim, and therefore rendering himself liable for patent infringement? The answer must be when he manufactures [the drug] when he knows or foresees that users will intentionally administer it for [particular the indication].

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Warner-Lambert v Generics [2016] EWCA Civ 1006

To avoid infringement in second medical use cases:

The intention will be negatived where the manufacturer has taken all reasonable steps within his power to prevent the consequences occurring. In such circumstances his true objective is a lawful one, and one would be entitled to say that the foreseen consequences were not intended, but were an unintended incident of his otherwise lawful activity…

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G 3/08 Computer Programs [2011] EPO OJ 10

  • EPO approach to inventive step for CII ( from DUNS Licensing)
  • The approach is to:
    • disregard non-technical features
    • judge inventive step on basis of technical features only

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Aerotel (UK CII test)

  1. Properly construe the claim
  2. Identify the actual contribution
  3. Ask whether it falls solely within the excluded subject matter
  4. Check whether the actual or alleged contribution is actually technical in nature

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Signposts from AT&T (EWHC) and confirmed in HTC v Apple (EWCA)

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether there is an increase in the speed or reliability of the computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to being merely circumvented.

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Genetech Inc’s Patent  [1985] RPC 553

It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can tell people how it can be usefully employed, then a patentable invention may result. This in my view would be the case, even though once you have made the discovery, the way in which it can be usefully employed is obvious enough

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T 163/85 Colour television signal/BBC [1990] OJ EPO 379

The presentation of image would cover the moving pictures on a television but not the signal which leads to the creation of the picture itself.

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