Patents

Misusing a patentee’s market power

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The Court of General Instance (formerly (?) the EU’s CFI) has upheld the European Commission’s ruling that AstraZeneca abused its dominant position in the market by practices designed to block or delay generic drugs competing with Losec from entering the market.

The abusive practices were:

  1. submitting deliberately misleading statements to patent agents, national patent offices and national courts in order to acquire or preserve supplementary protections certificates for omeprazole to which AstraZeneca was not entitled or to which it was entitled for a shorter duration; and
  2. requesting (and obtaining) the withdrawal of regulatory marketing authorisations for Losec capsules and replacing those marketing authorisations with marketing authorisations for Losec MUPS tablets.

The result of the second practice was to delay entry on to the market of competing generic products as they could not use the abridged marketing approval process.

The Court did reduce, however, the fine from Euros 60 million to Euros 52.5 million.

The case concerned patents for omeprazole, the patent protection for which has generated some controversy in Australia.

Like the EU, Australian law does provide for supplementary protection certificates and there is the potential for abridged marketing approval processes for generics (pdf – e.g). Art. 82 of the Treaty also has some resemblance to s 46 of the TPA and, while we might think that the EU has a fairly idiosyncratic approach to determining market power, the Hoffman-La Roche ruling relied on by the Court of General Instance has been referred to with approval by the High Court in Australia.

Case T?321/05 AstraZeneca AB v Commission

which has been conveniently summarised by Linklaters and Gibson Dunn.

Now, we might think this is an application of the peculiar EU approach to

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Peer-to-patent Australia

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Ben McEniery from QUT has kindly provided an update on the completion of the Peer-to-patent Australia pilot:

The peer review phase of the inaugural Peer-to-Patent Australia pilot project is now complete. For those of you not familiar with the project, Peer-to-Patent Australia (www.peertopatent.org.au) is a web-based initiative aimed at supporting patent examination and improving the quality of issued patents in Australia. This is a joint project of the Queensland University of Technology (QUT) and IP Australia that was launched in December 2009. The project’s chief investigators are Professor Brian Fitzgerald and Ben McEniery.
The project is designed to prevent the grant of patents that do not satisfy the statutory requirements of novelty and inventiveness. It aims to achieve this goal by allowing members of the public to put forward prior art references to be considered by IP Australia’s patent examiners during patent examination. The object of the pilot is to test whether an open community of reviewers can uncover relevant prior art that might not otherwise be found by the patent office during a routine examination.
In all, 31 pending patent applications were reviewed by the community of peer reviewers during the six-month peer review phase. During that time, the community generated 106 prior art references in response to those applications. These prior art references will now be forwarded to IP Australia to be considered by the patent office in examination.
Peer-to-Patent Australia has now entered a six-month evaluation phase. During this phase, both IP Australia and QUT will evaluate the pilot’s success. The results of the pilot will be published in an anniversary report, which will be made available under a Creative Commons licence on the project website in December 2010. Any prior art submission applied in examination will be recognised in the ‘Prior Artist Awards’ section of the Peer-to-Patent Australia web site as information comes to hand.

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What happens when an opponent stops opposing

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Delnorth had successfully opposed the grant of a standard patent to Dura-post for the latter’s flexible roadside posts (Patent App. No. ) on the grounds that it lacked inventive step.

Dura-post appealed to the Federal Court.

Delnorth decided not to continue with its opposition on appeal. (By this time, it had already lost this one (on the innovation patent) and was in liquidation.)

The Federal Court directed that the appeal be allowed and Dura-post’s application proceed to grant.

Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (Administrator Appointed) [2010] FCA 465

The practice point here is that the parties were able to go along to Court armed with a letter from the Commissioner indicating she did not intend to appear on the appeal. Contrast the (interlocutory) outcome in Sherman, where the Commissioner wished to fight on.

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Fee surcharge for more than 20 claims

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Patent Baristas look at rule changes introduced by IP Australia to stop patent applicants  circumventing the $100 surcharge for each claim in a patent in excess of 20 claims.

Read on here with links to IP Australia’s announcement.

Apparently, IP Australia plans that the new arrangements come into force on 1 August 2010. Wonder whether the CoreEconomy guys will be publishing articles about distorting the market for excessive claiming? Still, is it just me, or do Australian applications seem to have more claims in them than the US counterparts?

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Inventive step standard

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Tom Cordiner (from the Victorian Bar and a registered patent attorney) and Beth Webster (from IPRIA) are giving a seminar for IPRIA and IPTA on Raising the Inventive Step: A Look at the Issues:

Brisbane on 18 May 2010

Sydney on 19 May 2010

Melbourne on 21 May 2010

The seminars are free and if you are subject to the continuing education requirements of the Professional Standards Board, the Queensland, Victorian or NSW Bars or the Law Society of NSW garner you one “point”.

Details and registration via here.

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The grace period and “reasonable trial”

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Mack Innovations lodged a provision patent application for a “cable pulling apparatus for helicopters” on 12 August 2005. The complete application for a standard patent was lodged on 14 August 2006 and a standard patent was subsequently granted (yes, 12 and 13 August 2006 fell on the weekend).

Apparently, Mack Innovations had begun testing parts and subsequently a prototype of the device in public around March 2005; i.e., about 5 months before the provisional application was lodged.

Rotorco, having been sued for infringement, tried to argue that  Mack Innovations’ own actions in March 2005 had rendered the patent “not novel”; contending that the grace period did not apply because the complete application was filed more than 12 months after first public use.

The problem for Rotorco was that its summary judgment application was based on reg. 2.2(2)(d), not 2.2(1A). Reg. 2.2(1A) provides for a grace period where there was a publication or use “within 12 months before the filing date of the complete application”. On the other hand, reg. 2.2(2)(d) applies where:

(d)    the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:
(i)    for the purposes of reasonable trial; and
(ii)    if, because of the nature of the invention, it is reasonably necessary for the working to be in public.

and Tamberlin J, albeit in dicta, had already ruled that filing the provisional application on which the patent was based within the 12 months grace period was sufficient for reliance on this provision.

One might add that, given the difference in wording between reg. 2.2(1A) and 2.2.(2)(d), this conclusion seems consistent with the Full Court’s decision in Mont Adventure Equipment (admittedly dealing with the application of the grace period in the context of a divisional application).

Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor [2010] QSC 138 (McMurdo J)

As this was an application for summary judgment, I am not sure whether that means it still remains to be resolved whether or not Mack Innovations’ use was in fact reasonable trial which it was reasonably necessary to conduct in public.

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TRIPs protocol: Australian implementation consultation

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IP Australia has issued a consultation paper on implementing the TRIPS protocol.

The TRIPS protocol is the modification (or is that clarification?) of TRIPS obligations to improve the availability of “crisis” pharmaceuticals in least developed and developing countries. From the discussion paper:

The TRIPS Protocol seeks to address this problem by amending the TRIPS Agreement to permit WTO members to issue compulsory licences to produce patented pharmaceutical products for export to least-developed and developing countries. The main features of the Protocol are:
• Licences may only be issued for products of the pharmaceutical sector needed to address public health concerns.
• Countries eligible to import pharmaceuticals under the system comprise any least-developed WTO country or any other WTO country that has notified the TRIPS Council.
• Importing countries are obliged to provide the TRIPS Council with details such as the names and quantities of the products needed and whether they need to issue a compulsory licence in their own country.
• Exporting countries are obliged to notify the TRIPS Council of a range of details and ensure that importing countries have done the same.
• Both importers and exporters must have in place anti-diversion measures to ensure the products produced under the system reach the intended market and are not re-exported.

Read the paper here (pdf).

Submissions due by 4 June 2010.

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Gene patents invalid in USA

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District Court Judge Robert Sweet has ruled that Myriad’s patents for the BRCA1 and 2 isolated gene sequences are invalid on the grounds that isolation of the “pure” form of the gene is insufficient to confer patentability.

The New York Times has a lengthy report.

Patently-O summarises, with a link to the 152 page judgment. Prof. Crouch goes on to note that the reasoning effectively invalidate almost all gene patents but expresses the view that the Federal Circuit will reverse, setting up the matter for the US Supreme Court.

These are the patents which sparked controversy in Australia in 2008 and 2009 as a result of which the Senate is now holding an inquiry, currently due to report by 17 June 2010. The ALRC had earlier in 2004 recommended that patents should continue to be available for genetic material.

Association for Molecular Pathology and ACLU v. USPTO and Myriad (S.D.N.Y. 2010) (Judge Sweet)

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Amazon’s 1-click in the Euro-space

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Following this week’s developments in the USA, Amazon’s “1-click” patent is also in the news in Europe.

The EPO’s Board of Appeal has confirmed a finding of invalidity, on grounds of obviousness, for the original claims, but has remitted the heavily amended version of the claims for reconsideration.

IP:Jur has the report.

Lid dip: PriorSmart

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Amazon’s 1-click patent survives re-examination

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Patently-O reports that Amazon’s 1-click patent has survived re-examination in the USA before the USPTO.

It would appear that the application was amended to tie the claims to use of a shopping cart:

The approved-of amendment adds the seeming trivial limitation that the one-click system operates as part of a “shopping cart model.” …. Because most retail eCommerce sites still use the shopping cart model, the added limitation appears to have no practical impact on the patent scope.

One of the (more intelligible) comments claimed that re-examination before the USPTO did not extend to consideration of obviousness issues.

Amazon’s counterpart patent application in Australia, No 762175, is under opposition by Telstra.

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