Trade Marks and Registered Designs (Amendment) Rules 2013 (SI 2013 no 444)

This statutory instrument makes a few small amendments to the Rules, including providing that where a time limit has to be measured from the date on which an event occurs, the day on which that event occurs is not included when computing how much time has passed. It was made a few weeks ago, and came into force on 31 March.

Legal deposit of non-printed material

We don't have a copyright system that requires any form of deposit, of course, but there is a legal obligation on publishers to offer what they publish to the British Library, and if requested other institutions too. When I was editor of The Warwick Boar, now just The Boar, in or about 1976, we received a letter pointing out that we hadn't been sending them copies and alerting us to the substantial penalties that could be imposed if we remained in default. That was about my first experience of copyright law, albeit a rather peripheral bit of copyright law - that, and the problem we had when we used graphics cut from the Coventry Evening Telegraph for our "Spot the Ball" competition ... about which the less said the better: suffice to say that we did not copy the CET's photograph.

Nowadays, as editor of Motor Law, I send a copy of every issue of the newsletter to the British Library. I expect they find it a little more interesting than they used to find The Warwick Boar (though it has no "Spot the Ball" competition). If I am late getting the latest edition in the post, or if they just think I am (and given that, unlike most periodicals, the months named on the front cover are the months covered in the content, not the next month), they send me a letter asking where it is.

Increasingly, periodicals like Motor Law (and, no doubt, The Boar) are commonly distributed online. I find it much easier to upload a PDF to the website and send a link to subscribers, though yesterday it took me three goes to send a working link. But if this were the only channel by which such periodicals were distributed, the British Library would have nothing to put on its shelves (including virtual shelves), nothing for readers to consult. However, a solution to this problem is in hand: The Legal Deposit Libraries (Non-Print Works) Regulations 2013 (SI 2013 no 777) entitles the deposit libraries to a copy of online publications. There is, happily, an exemption for for micro-businesses, which certainly includes Motor Law Publications Ltd.

Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583 (22 May 2013)

In Novartis AG v Hospira UK Ltd [2013] EWCA Civ 583 (22 May 2013) the Court of Appeal, consisting notably of three former Patents Court judges, Lewison, Kitchin and Floyd LLJ, restated the principles that apply to the grant of an interim injunction pending appeal where the claimant was not successful at first instance. Floyd LJ gave the judgment of the court, saying:

I would summarise the principles which apply to the grant of an interim injunction pending appeal where the claimant has lost at first instance as follows:

i) The court must be satisfied that the appeal has a real prospect of success.

ii) If the court is satisfied that there is a real prospect of success on appeal, it will not usually be useful to attempt to form a view as to how much stronger the prospects of appeal are, or to attempt to give weight to that view in assessing the balance of convenience.

iii) It does not follow automatically from the fact that an interim injunction has or would have been granted pre-trial that an injunction pending appeal should be granted. The court must assess all the relevant circumstances following judgment, including the period of time before any appeal is likely to be heard and the balance of hardship to each party if an injunction is refused or granted.

iv) The grant of an injunction is not limited to the case where its refusal would render an appeal nugatory. Such a case merely represents the extreme end of a spectrum of possible factual situations in which the injustice to one side is balanced against the injustice to the other.

v) As in the case of the stay of a permanent injunction which would otherwise be granted to a successful claimant, the court should endeavour to arrange matters so that the Court of Appeal is best able to do justice between the parties once the appeal has been heard.

The Court decided that the trial judge had been right to say that the best way of preserving the status quo pending trial would have been to grant an injunction (had one been necessary), but that he had been wrong to say that the same did not apply pending the appeal. The Court therefore allowed the appeal, granting the injunction until final judgment in the appeal or further order.

Supreme Court on trade secrets

In Vestergaard Frantsen A/S (now called MVF3 ApS) v Bestnet Europe Ltd and others [2013] UKSC 31 (22 May 2013) the Supreme Court took a narrow view of a former employee's duty of confidence. It did not extend to stuff that she did not know was confidential, or to abuses of the information of which she was unaware.

Trine Sig, the former employee, had worked for the claimants and then set up the defendant company in competition with them. The co-founder of the new company, unknown to Ms Sig, had some of the claimant's trade secrets which he was misusing. At first instance, Arnold J held her liable for breach of confidence. Seager v Copydex [1967] 1 WLR 923 established that one can be liable for breach of confidence even if not aware of the breach. He relied on the confidentiality obligations in her contract of employment, and on her close involvement in setting up the defendant company and in its activities.

The Court of Appeal, where the leading judgment came (naturally) from Jacob LJ, overturned part of the first instance judgment, and the Supreme Court (Lord Neuberger giving the leading judgment) upheld the Court of Appeal.

Before the Supreme Court, the claimants argued that obligations of confidentiality arose under Ms Sig's contract of employment, as a result of her 'common design' with her business partner, and because she either turned a blind eye to his activities or played with fire. None of these lines of reasoning impressed the Supremes.

Lord Neuberger was not prepared to imply into the contract of employment a term that Ms Sig would not assist another person to abuse the claimant's trade secrets where she knew of neither the trade secrets nor the abuse. To accept that argument would be almost to impose strict liability, and would be wrong.

The claimant's most strongly-argued line was that there was a common design. Lord Neuberger drew a comparison with a driver who conveys a robber to a bank. Only if the driver knew why the robber wanted to go to the bank would there be a common design: ignorance would be a defence, and again to hold otherwise would be to impose strict liability.

The absence of dishonesty on the part of Ms Sig defeated the "blind eye" argument, while the "playing with fire" scenario might help to show that there was dishonesty, but merely taking the risk of bringing in the co-founder did not make her liable.

PA has a go at government over copyright

The Bookseller reports that Publishers' Association CEO, Richard Mollet, has criticised the government for its attitude to copyright. He says that other countries in Europe are "incredulous" at our government's attempts to weaken copyright protection. He would, wouldn't he? But as an author I think he's right to call the government to account. Copyright is not perfect but it does not need to be diluted as much as appears to be happening - especially if we are to attract lots of new technology businesses to Silicon Roundabout and other sites in this country ...

Button Moon creator wins in PCC

Button Moon (Photo credit: Wikipedia)

The BBC reports that Ian Allen, the creator of the children's TV series Button Moon which entertained at least some of my daughters all those years ago, has won a copyright infringement case in the Patents County Court. In fact it was a passing off case too (as you might well guess after reading the BBC piece), decided by Miss Recorder Amanda Michaels last week. I wonder whether this is Amanda's first published judgment? The case is Allen v Redshaw [2013] EWPCC B1 (15 May 2013) and I don't think it contains anything groundbreaking. The mere fact that the BBC reported it on their website is reason enough to mention it here, though.

It turns out that it isn't her first published judgment: I find there are a couple in the same piece of litigation, Ghias (t/a Griller) v Ikram (t/a the Griller Original) & Ors [2012] EWPCC 4 (26 January 2012) and [2012] EWPCC 3 (24 January 2012).

When is genetic material capable of (or susceptible of) industrial application?

Human Genome Sciences Inc v Eli Lilly and Co [2011] UKSC 51 is by no means a new case. However, it is the Supreme Court's first foray into patent law, which gives it some lasting importance, and it is noteworthy for the way Lord Neuberger, the Master of the Rolls, played such an influential part in a court which is not normally his preserve, such that the Supreme Court reversed judgments of two of the finest intellectual property lawyers (Kitchin J and Jacob LJ) of the era. This article (for such it is) was a long time in the writing, so long that the journal for which it was intended no longer considered it current enough to use. If it is insufficiently current for a printed journal, it is even less sufficiently current for a blog, but we are not deterred. It will still be useful to someone, and we hope it will also be at least a bit entertaining. It is not all my own work: it benefits from the co-authorship of Dr Yasmin Churcher, shortly-to-be-a-solicitor, who actually understands the science involved.

Introduction

The unravelling of the human genome has led to many innovations, some of them in the patent system. For one thing, it has led to the formulation of rules that permit the grant of patents for what look to most people like excluded discoveries. Directive 99/44/EC confirms that a naturally occurring gene is patentable, but to overcome the objection that it is merely something that has been discovered the Directive goes on to insist that its industrial application be disclosed in the application. That might seem a bit of a statement of the obvious, simply reinforcing Article 52(1) of the European Patent Convention, but the key difference is that you can't get away with just hoping that some industrial application will turn up later, as many participants in the human genome patent rush seemed to be doing: it helps to ensure that the patent teaches how to solve a technical problem. Or, to put it another way: “However clever and inventive you may have been in discovering a gene sequence, you cannot have a patent for it or for the protein for which it encodes if you do not disclose how it can be used.” (Jacob LJ, [2010] RPC 14, [2010] EWCA Civ 33, para 57.)

Article 52(1) insists that you must have an invention that is susceptible of industrial application, and Article 57 expands on the meaning of this phrase, stating that the requirement will be satisfied if the invention can be made or used in any form of industry. Applying this to the fruits of biotechnology research, as the Supreme Court was called on to do in HGS v Eli Lilly, is not an easy matter.

The judgment does more than shed light on the difficult question of how to apply the industrial application rule. It is also intimately tied up with the equally important, perhaps even more important, issue of how national courts cope with the need to follow the case law of an institution with a very different approach to the doctrine of precedent.

The science and the patent

Readers more accustomed to reading complex legal material, whose eyes may glaze over (or skip over) scientific technicalities, may find the following summary of the science helpful. Those magical molecules so important to writers of detective fiction, deoxyribonucleic acid or DNA, are found in the nucleus of the cells that make up living organisms, such as us. Genes, sequences of nucleic acid, are regions located along those molecules, and they are said to code or encode (often with the redundant preposition “for”) proteins, determining how the organism will synthesise, or in the scientific vernacular “express”, the protein. Proteins have biological properties, including therapeutic ones, and so do their antibodies, which are another type of protein.

If a gene is involved in the regulation of cell proliferation, activation and differentiation, it might have applications in the field of cancer treatment, and knowing how it is expressed could be extremely valuable. Such was the case with European Patent (UK) 0,939,804, the application for which was filed by Human Genome Sciences Inc on 25 October 1996. The patent describes the encoding nucleotide, the amino acid sequence, and certain antibodies, of a novel human protein, Neutrokine-α (which for the sake of simplicity, readability, and ease of typing, is referred to in this piece as “the protein”). The patent includes what are referred to as “contentions” or predictions about its biological and therapeutic properties and those of its antibodies, but they are little more than educated guesses largely based on the proposition that the protein is a member of the group of proteins known as the tumour necrosis factor (or TNF) ligand superfamily (which, for the same reasons as set out above, is referred to in this piece as “the superfamily”). Members of superfamilies share certain properties, so the predictions were well-founded, but do those predictions show that the invention is susceptible of industrial application?

The history of the litigation

In the EPO, Eli Lilly opposed the grant, and the Opposition Division answered that question in the negative and revoked the patent. Eli Lilly also bought parallel proceedings in the High Court for revocation of the patent in the UK.

After the Opposition Division's decision, the High Court (Kitchin J) also revoked the patent on the grounds that a person skilled in the art would have concluded that the functions of the protein were too general and would provide nothing more than the basis of a research project ([2008] EWHC 1903 (Pat), [2008] RPC 29). There were further grounds for revocation based on insufficiency and obviousness. The High Court and the Opposition Division were in agreement, but then in October 2009 the Board of Appeal spoilt matters by reversing the Opposition Division's decision (on the basis, it should be noted, of more restricted claims) in T 0018/09. It held that the notional addressee would have appreciated that in the light of general knowledge of the superfamily the protein would have certain functions, and that was all that was needed.

In February 2010 the Court of Appeal unanimously upheld Kitchin J's decision on the industrial applicability point, maintaining the rift between Munich and London, and did not rule on the other issues ([2010] EWCA Civ 33, [2010] RPC 14). It dismissed the appeal on the basis that (even with the more restricted claims with which the Board of Appeal had been satisfied) the invention was not susceptible of industrial application. Conscious that its decision was contrary to that of the EPO, the Court of Appeal (in the judgment of Jacob LJ, with whom Lady Justice Hallet and Lewison J agreed) was at pains to explain and contrast the functions of the EPO and the Court of Appeal and the manner in which each reached its decision before concluding that:

157. ... The upshot of all this is that the Board, working on different evidence and using a different procedure came to a different conclusion on the facts. We are not bound to follow, or even give deference to, the Board’s findings of fact.158. For the above reasons I have come to the clear conclusion that the Judge was right to hold that the invention failed to comply with Art. 57.

The Supreme Court judgment

The Supreme Court which heard the appeal in July 2011 (giving judgment on 2 November) comprised Lord Hope (Deputy President), Lord Walker, Lord Neuberger MR, Lord Clarke, and Lord Collins. The leading judgments came from Lord Hope and, significantly, Cambridge chemistry graduate Lord Neuberger (the Master of the Rolls making, as it were, a guest appearance). Unsurprisingly, it was the judgment of the chemist (and former Patents Court judge) that was the more leading of the two.

While recognising the importance of deferring on matters of fact and value judgments to a court of first instance (especially when it had been upheld on appeal), the Supremes allowed the patentee's appeal. Lords Walker and Clarke went so far as to say that their default position had been not to interfere with the lower courts' decisions, but they had been persuaded by Lord Neuberger to allow the appeal. That they, against their instincts, should overturn the judgments of two heavyweight patents judges speaks volumes about Lord Neuberger's powers of persuasion. Some commentators have suggested that Lord Neuberger may be too influential and asked whether this situation is any different from the Hoffmann era.

The Supreme Court found little in the way of domestic authority on industrial application, particularly of biological material: the principles are found in the jurisprudence of the EPO's Board of Appeal, in what are sometimes, a little disparagingly, referred to as “T cases”. National courts are not obliged to follow the Board's reasoning in its decisions , but normally they should follow the EPO jurisprudence. This is especially so where the Board has adopted a consistent approach to an issue in several decisions, as the Supreme Court found was the case here – not that the Board's decisions all go one way.

The Supreme Court also identified good policy reasons for a consistent approach to patents in the biotechnology field: researchers need to be able to tell when they should file patent applications, and they need to be able to use patent protection to support their search for funding. These policy reasons surely extend to other areas of research too. The Justices were aided in their appreciation of this point by the intervention of the Bioindustries Association. See para 96 ff.

The patent contained wide-ranging and generalised suggestions about the uses of the protein it described and its antibodies: “[I]t contains an astonishing range of diseases and conditions which Neutrokine-α and antibodies to Neutrokine-α may be used to diagnose and treat and there is [sic] no data of any kind to support the claims made”: Kitchin J, at para 31. It did not however tell the reader anything specific: the only relevant guidance it gave came from its teaching about the tissue distribution of the protein, its expression in T-cell and B-cell lymphomas, and its membership of the superfamily. On the face of it, nothing about the invention's susceptibility to industrial application could be found in the patent. It neither revealed how the protein could be used to solve a particular problem, nor identified any disease or condition which it could be used to diagnose or treat.

So was the judge in the High Court right (or was he at least entitled) to conclude that Article 57 was not satisfied, that the inferences that (back in 1996) would have been drawn from the specification were insufficient?

The Supreme Court thought not, because this approach was not consistent with that of the Board in a series of cases, although the fact that both parties were able to derive support from the jurisprudence makes one wonder about the consistency of the Board's decisions.

Eli Lilly placed reliance on T 0870/04, Phosphatase/Max Planck where the Board held that it was not enough to describe the product, means and method for making it, and prospective use for basic scientific activities: the “application identifies no practical way of exploiting it in at least one field of industrial activity therefore not sufficient for industrial applicability”, and no function was identified. There was only a vague and speculative indication of possible objectives that might or might not be achievable by carrying out further research.

Shortly thereafter, the Board concluded in T 1329/04, the Tumour Growth Factor 9 (Factor-9/JOHN HOPKINS) case that because there was no functional characterisation and that a significant feature was not identical with the rest of the TGF superfamily there was an absence of applicability.

HGS sought assistance from T 0898/05 Hematopoietic receptor/Zymogenetics where the Board refused the patent application because the use of computer assisted sequence homology does not provide concrete conclusions about the actual function of the protein and therefore no inevitable therapeutic or diagnostic use, and because ZCytor1 was nothing more than a research tool and only the beginning of the process towards quest for industrial applicability.

In T 0604/04 PF4A receptors/Genentech the important point was that chemokines as a family were not only interesting but important for pharmaceutical industry irrespective of whether their role was clearly defined or not. It would therefore be reasonable to conclude that the claimed peptides exhibiting characteristics of receptors of PF4A family of cytokines would have been regarded as important to the pharmaceutical industry so the requirement for industrial applicability was automatically satisfied.


T 1452/06 Serine Protease/Bayer the application was refused due to lack of any experimental evidence in support of the claimed serine protease activity. Although the Board said that such support might be provided by computer assisted comparisons against known serine proteases and more particularly with the alleged closely related related sequence of Epithin, it pointed out that although Epithin is defined as a putative serine protease there was no experimental evidence to support that finding.

In T 1165/06 IL-17 related polypeptide/Schering 19 July 2007 the main issue was obviousness but the Board also considered the requirements of Article 57 and whether they had been addressed, and were decided that they had.

In light of the principles drawn from the jurisprudence of the Board, the Supremes considered that, taking common general knowledge into account, the disclosure of the existence and structure of the protein and its gene and of its membership of the superfamily sufficed to show that it was susceptible of industrial application. All known members of the superfamily were expressed on T-cells and could co-stimulate T-cell proliferation: the protein could be expected to display these properties too.

It made no difference that other properties found in superfamily members were not displayed by the new protein. Proteins in the superfamily were also known to have pleiotropic effects - multiple effects from a single gene, so members of a superfamily may be capable of driving multiple biological processes: but the Supreme Court considered this to be a red herring. given that the value of the new member of the superfamily lay in the features it had in common with all the other family members, and the skilled reader would have understood that not all its properties would be shared.

The patent was not well-drafted, but neither Kitchin J nor the Board had considered this would have diverted the person skilled in the art from their understanding of what the patent taught, given their common general knowledge and what they would have found in the literature. The Supreme Court considered that the lower courts had erred by concentrating on the speculative nature of some of the therapeutic uses of the protein which were disclosed in the patent, and on the extra effort that would be required to work out those uses: the known activities of the superfamily were enough in themselves to justify the grant of a patent for a novel molecule and its encoding gene.

The Supreme Court also rejected the argument that the specification was insufficient, for the same reasons. Kitchin J had, the Supreme Court decided, set a standard for susceptibility to industrial application that was higher, more exacting, than that set by the Board. He sought something that would show that a particular use for the protein had been demonstrated, when he should have been looking for something that showed that it could plausibly be used for research work. Reading between the lines of the Board's decision, the Supreme Court interpreted it as saying that this in itself amounted to an industrial activity.

After the Supreme Court reversed this decision, it remitted the case to the Court of Appeal, so that the question of insufficiency of three of the claims could be considered: two had been ruled insufficient at trial and HGS appealed, arguing that they weren't, while a third was ruled sufficient at trial and Eli Lilly appealed on the ground that it wasn't. But the insufficiency points are another, less important, story, not one we have time to tell here.

Chnges to copyright law: industrial designs, orphan works, collecting societies

Significant changes to the copyright law will happen now that the Enterprise and Regulatory Reform Act 2013 has become law.  It received Royal Assent on 25 April 2013.  Probably the most significant thing it does is repeal Section 52 of the Copyright, Designs and Patents Act 1988, so industrially-exploited artistic works will benefit from copyright protection for the full term of life plus 70 years instead of having the term cut short to 25 years, to match the protection available under the Registered Designs Act.  The change seems to have been considered necessary to comply with the Designs Directive.

The 2013 Act will also lead to the introduction of a system for licensing orphan works, as well as a clearance procedure for using individual orphan works.  As far as the Act is concerned, it only empowers the Minister to make regulations to do these things, so we must wait to see the form of regulations, but in the meantime right holders and photographers in particular are anxious about what this change in the law will mean for them.  One important matter that worries everyone who will be affected by this change is what exactly will be required in the way of a “diligent search” before advantage can be taken of the new rules.

The Act also gives the Secretary of State power to introduce a code of practice for collecting societies.  But one thing it does not do is enact provisions to make it much easier to amend the exceptions to copyright protection which the Hargreaves Review recommended.  The provisions originally included in the Bill were watered down by Parliament, and a good thing too. 

Damages for unauthorised use of photographs

The Patents County Court nowadays has to have a clear idea about the amount of damages at stake in actions before it, so in Sheldon v Daybrook House Promotions Ltd [2013] EWPCC 26 (8 May 2013) it had to take an initial view about the value of a claim for a photograph of a couple of popular musicians together.  This would determine whether the case should remain on the small claims track or whether it should be allocated to the multi track.  The amount that the Court thought might be at stake would also have a significant bearing on the prospect of settlement.

The Claimant was a professional photographer, and in that capacity he had exclusive access to the tour bus on which the musicians were travelling.  The Defendant ran a nightclub and without permission it used the photograph on printed material, online advertisements and its Facebook page.  It said it would have expected to pay no more than a few hundred pounds for that but the Judge was unimpressed.  He took the view that it was irrelevant what the claimant would have paid, and what mattered was the Claimant’s evidence about the rates that he would normally charge for such a photograph.  On that basis he decided that if the Claimant succeeded the damages that would be awarded would amount to £5,682 – plus VAT, of course.

Queen’s Speech: Intellectual Property Bill

Actually, more of a Patents and Designs Bill, and it is unfortunate that it's entitled “intellectual property” – hardly a precise enough expression to use in legislation.  But whatever they call it, the Bill will implement changes to the design laws that the Government announced recently in response to a consultation it carried out.  These include introducing criminal penalties for infringing registered designs (but not, thank goodness, unregistered design right).  The concept of what is commonplace for unregistered design right purposes will be tied to a specific geographical area, and the first owner of unregistered design right will be the designer even where the design is commissioned.

The Bill also contains provisions to create a new opinions service, like the one the Patent Office already offers in relation to patents, covering registered designs.  It will also provide for appeals from decisions of the Designs Registry to go to an appointed person rather than to the High Court.

As far as patents are concerned, the Bill will create a framework for establishing part of the central division of the Unified Patent Court in the first instance in London, and local divisions elsewhere in the UK.

There is more to be said about the Bill, and I plan to come back to expand this post in the future.