IP Updates

On 25 November 2011, the Court of Justice of the European Union (CJEU) decided three cases relating to Supplementary Protection Certificates (SPCs) by reasoned order (i.e. without a hearing). The orders follow judgements already handed down in the Medeva (C-322/10) and Georgetown University et al (C-422/10) cases that we previously reported in our IP Update No. 165. The following are further points of note.

The Court of Justice of the European Union (CJEU) ruled yesterday in an important case (C-125/10, Merck Sharp & Dohme Corp. v Deutsches Patent- und Markenamt), relating to Supplementary Protection Certificates (SPCs). The decision of the CJEU is binding upon all national patent offices and courts, and dictates how the term of an SPC is calculated, especially in view of a 6-month extension of term that may be available.

In essence, the CJEU has approved "Model A" of an article published on 7 July 2007 by Mike Snodin and John Miles of this firm, which introduced the revolutionary concept of zero and negative term SPCs.

That is, the CJEU has decided that SPCs can be granted even if they initially have a zero or negative term, i.e. if less than 5 years and 1 day has elapsed between patent filing and Marketing Authorisation (MA) issuance. This is because, provided that at least 4 years, 6 months and 1 day has elapsed from between patent filing and MA issuance, a zero or negative term SPC can serve as the basis for an extended SPC with a positive term.

The particular factual background to this case is discussed in our IP Update no. 153 (relating to the opinion of the Advocate-General that has effectively been confirmed by the Court). However, the essential points of the case, as well as possible actions that you may wish to take, are outlined below.

On 24 November 2011, the Court of Justice of the European Union (CJEU) delivered its judgement in two seminal cases relating to Supplementary Protection Certificates (SPCs). Potter Clarkson represented Georgetown University, University of Rochester and Loyola University of Chicago in one case and the party in the other case was Medeva. Our IP Update No 155 discusses the corresponding Advocate General's opinion, which opinion is superseded by the present judgement. The ruling provides significant clarity and is binding on all EU national patent offices and courts.

On 2 November 2011, the UK Supreme Court (formerly the House of Lords) handed down its decision in Human Genome Sciences Inc (HGS) v Eli Lilly and Company (Lilly), which was primarily concerned with the issue of industrial applicability of claimed biological material. The judgment provides some welcome clarification of the level of disclosure required for industrial applicability in this field to be recognised. The full decision can be found at tiny.cc/neutrokine.

Taking away with one hand, giving with the other?

Background: stem cell research, controversy and the law

Stem cells are able to differentiate into specialised cell types and therefore have great potential as tools for therapeutic tissue and organ regeneration. As a result, they are the focus of a considerable amount of academic and industrial research.

In our Newsletter issued in April of this year, we reported the publication of the Advocate General's opinion in the dispute between Interflora and Marks & Spencer, concerning the latter's bidding on the INTERFLORA trade mark as a "keyword", so that their website link features in a Sponsored Link/Adword section on the first page of results after "Interflora" is entered into the Google search engine.

Interflora sued Marks & Spencer in the UK for trade mark infringement, and the Court of Justice of the European Union (CJEU) has now responded to certain questions that were asked of it by the UK Court.

The UK Intellectual Property Office has called for those having an interest in the industrial design field to comment on the relationship between design and innovation.

The consultation has resulted from a recommendation in the Hargreaves Review of IP and Growth of the establishment of a legal framework that positively supports innovation in design-related industries.

Mike Snodin, a member of our SPC & Regulatory group, has published an article in the journal Scrip Regulatory Affairs that challenges the manner in which many patent offices in Europe calculate the terms of Supplementary Protection Certificates (SPCs) that are based upon a centralised (European Commission / European Medicines Agency) marketing authorisation.

US patent reform is moving the US patent system much closer to those of other countries, but there remain significant differences, particularly in how the availability of public disclosures and earlier patent applications as prior art is determined. In assessing the new opportunities that the new US patent system may present, it is important not to forget the requirements in territories outside the US.