Managing Intellectual Property | Example Law Essay

 

REPORT FOR FUTURE FUSION 

Future Fusion, a research and development company working in the nuclear power industry, was formed by former employees of Fissile Pile, a different company working in the same field. The employees left Fissile Pile as a result of strong personal disagreements with its owners. Future Fusion intends to produce their own original research not reliant on proprietary knowledge from Fissile Pile. 

1. OBJECTIVES.

Future Fusion must comply with the requirements and procedures necessary for the successful application, filing and registration of patents as part of their overall intellectual portfolio.[1] Rivette and Kline state that ‘patents are actually only one type of “intellectual property” ’.[2] The reason for focusing on patents in this report, rather than other forms of intellectual property, is also provided by the same authours. They argue that ‘patents are the most tangible form of intellectual property, they enjoy the strongest legal protection, and … have the greatest effect on the commercial success and market value of companies today’.[3]

The stages of the patent process are explained in this report by reference to the Patent Act 1977 (PA77), European Law and by the application of any relevant case law. Moreover, the emphasis in this report is to articulate the methodologies that need to be adopted by Future Fusion against any possible legal action initiated by Fissile Pile in disputes concerning an alleged contravention of their (Fissile Pile) rights.

2.  THE IMPORTANCE OF NEW INVENTIONS IN THE PATENTING PROCESS FOR FUTURE FUSION.

The Inventive step.

Section 1(1)(a) of PA77 states that any invention that is to be patented must be ‘new’, and section 1(1)(b) stipulates that the discovery of the invention must also involve an inventive step.[4] Within this context, the case of Windsurfing International v Tabur Marine[5] is important for the following reasons. Jacob LJ formulates a 4- step test to establish the criteria and parameters involved in determining and identifying the inventive step; defining the objective criterion to be appliéd in this assessment by a ‘hypothetical addressee’; [6] and, whether the invention has contributed to an enhancement in the state of the art.[7] (In 2004,[8] Jacob LJ further enunciated the meaning of the ‘addressee’ as  a ‘nerd’,[9]  but  not a ‘complete android’.[10]) Therefore, Lord Jacob’s test in Windsurfing International can be stated in the following way:

  1. The identification of the ‘inventive concept’ by the court; and
  2. an evaluation of what a ‘normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question’; and
  3. to determine ‘if any, differences exist between the matter cited as being “known or used” and the alleged invention’; and, finally,
  4. whether ‘viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention’.[11]

Case law after Windsurfing International v Tabur Marine.

Case law has evolved since Windsurfing International v Tabur Marine in the delineation and interpretation of the inventive stage, the ‘problematic step’ in the patent application timeline.[12] Three questions for Future Fusion to consider flow from these changes in case law. First, what if a new product is to be patented by Future Fusion that enhances in some manner a patent that Fissile Pile has previously and successfully launched in the market? The answer is related to the principle of obviousness; namely, for a patent to succeed the Courts will determine whether the ‘inventive step’ by Future Fusion was inventive or merely an enhancement on some existing patent.[13] The test to be applied is that ‘the skilled person must recognise a high expectation of success in order for an alleged invention to fail for obviousness’.[14]  Second, in 2009, the case of Generics (UK) Limited and others v H Lundbeck A/S [15]availed an opportunity for the House of Lords — after extensively reviewing  previous landmark cases on the same subject-matter, including Kirin-Amgen Inc v Hoechst Marion Roussel Ltd — [16] to refine the formula for the inventive step into two principles. This 2 -stage test effectively distinguishes the intellectual insight with the ‘utilitarian contribution’ and enhancement of the state of art required for a successful patent.  Lord Walker in Generics (UK) Limited states that:

 "Inventive concept" is concerned with the identification of the core (or kernel, or essence) of the invention The invention's technical contribution to the art is concerned with the evaluation of its inventive concept—how far forward has it carried state of the art? The inventive concept and the technical contribution may command equal respect, but that will not always be the case. [17]

Third, the case of Amersham Pharmacia Biotech AB v Amicon Ltd and others[18] underlines the principle that the test determining whether any patent is to be struck out by a conflict with existing state of art must be specific rather than any generalisation of current knowledge on the patents. In this case, it was held that‘The court has to take account not only of the words of the claim but also the description in the specification’.[19]

3. THE PATENT ACT 1977 AND RELEVANT CASE LAW IN THE FILING STRATEGY OF FUTURE FUSION.

Obtaining a patent.

Three options are available to Future Fusionin the application and filing of a patent; moreover, it should be noted that it is the company which files first andnot the first to invent which may be awarded a patent. The options are:

        i.            Applying to the UK Intellectual Property Office, and if granted these generally confer a 20-year monopoly of the patent.

      ii.            Applying to the European Patent Office under the European Patent Convention (EPC).

    iii.            Applying for an international patent under the Patent Cooperation Treaty 1970 (PCT).

Capable of industrial application.

Section 4(1) of PA77 states that…’an invention shall be taken to be capable of industrial application if it can be made or used in any kind of industry…’ Furthermore, and of specific interest to Future Fusion, is that in all the following three the patent was rejected because they contravened core and fundamental laws or principles of physics ( summarised in brackets):

  1. Duckett v Patent Office[20] (Conservation of energy).
  2. Thompson v Comptroller General of Patents, Designs and Trade Marks[21](Newton's third law of motion).
  3. Ward v Comptroller-General (unreported) (19 May 2000) (Perpetual motion).

Enabling disclosure.

If a disclosure of the product is made available to the public before the filing date, then the application could be rejected. Lord Hoffman in Synthon BV v SmithKline Beecham plc[22] formulated the following test in the determination of an enabling disclosure as a potential infringement of patent rights:

…when the matter relied upon as prior art consists…of a written description, the skilled person is taken to be trying to understand what the author of the description meant… the disclosure is either of an invention which, if performed, would infringe the patent, or it is not.[23] 

Exclusions.

Under ss1(1)(d) PA77, the invention must not fall under any of the categories of exclusions that are outlined in ss 1(2)(a), 1(2)(b), 1(2)(c), 1(2)(d) and s1(3). Two cases of relevance in this context are Aerotel v Telco Holdings and others, and Neal William Macrossan’s application[24].

4. INFRINGEMENT AND EMPLOYEE DISPUTES.

Infringement.

Infringement matters emanating as a result of Future Fusion’s portfolio are covered comprehensively under section 60 of the PA77. Leading case law on infringement matters include the following, with the substantive legal issue highlighted in brackets:

a)      Catnic Components Ltd v Hill and Smith Ltd[25] (interpretation of patentee identification).

b)      Improver Corporation v Remington Consumer Product Limited [26] (specification of patent and what the variant actually covers).

Employee disputes.

Sections 39(1) and 42(3) of the PA77 concern issues relating to contractual disputes between employer and employees in patent and invention matters; specifically, the sections demarcate the divisions between the various parties duties within the context of employment rights, responsibilities and obligations.[27].Sections 40(a) and 41(3) of PA77 relate to compensation concerns arising from such disputes.


[1]Molly Shaffer Van Houwelhze ,‘Technology and Tracing Costs. Lessons from Real Properly’ in Shyamkrishna Balganesh (ed), Intellectual Property and the Common Law(Cambridge University Press 2013).

[2] Kevin G. Rivette and David Kline ‘Discovering New Value in Intellectual Property’ (2000) Jan- Feb, Harvard Business Review 54, 56.

[3] ibid.

[4]  L Bently and B Sherman,  Intellectual Property Law (Oxford University Press 2014) 555.

[5]  [1985] RPC 59.

[6]  Technograph v Mills & Rockley [1972] RPC 346, 355 (Lord Reid).

[7]  Patent Act 1977 (PA77), ss(2)1 ,(2)2 and s((3); Art 54(2) EPC; Synthon BV v SmithKline Beecham plc [2005] UKHL 59 [34] (Lord Hoffman).

[8]  Rockwater Ltd v Technip France Sa (Formerly Coflexip Sa), Technip Offshore UK Limited (Formerly Coflexip Stena Offshore Limited) [2004] EWCA Civ 381. 

[9]  ibid [7] , [10].

[10] ibid [11].

[11]  [1985] RPC 59 [73].

[12] L Bently and B Sherman (n4) 556.

[13]Saint-Gobain v Fusion Provida 2005 EWCA Civ 177.

[14] B Whitehead, S Jackson and R Kempner, ‘Managing generic competition and patent strategies in the pharmaceutical industry’(2008) 3(4) Journal of International Property Law and Practice 226, 229.

[15] [2009] UKHL 12.

[16] [2004] UKHL 46; ‘Kirin-Amgen Inc v Hoechst Marion Roussel Ltd’  (2005) 122 (6) Reports of Patent,  Design and Trade Mark Cases, 169–207.

[17] [2009] UKHL 12 [30] (Lord Walker).

[18] [2001] All ER (D) 61 (Jul); C Colston and  J Galloway, Modern Intellectual Property Law ( 3rd edn, Routledge 2010) 213, 217.  

[19] [2001] All ER (D) 61 (Jul) [11].

[20] [2005] EWHC 3140.

[21] [2005] EWHC 3065.

[22] [2005] UKHL 59.

[23] ibid [34].

[24] [2006] EWCA Civ 1371; D Bainbridge, ‘Court of Appeal parts company with the EPO on software patents’ (2007) 23 (2) Computer Law & Security Review 199, 204.

[25] [1982] RPC 183.

[26] [1990] FSR181 

[27]Greater Glasgow v Health Boards application:1996. International application No. PCT/GB90/00465. ; Greater Glasgow Health Board's Application (1996) 113 (7) Reports of Patent, Design and Trade Mark Cases 207-224.

Example Law Essay UK: Managing Intellectual Property

REFERENCES

Statute law

  • Patents Act 1977.

Cases

  • Aerotel v Telco Holdings and others, and Neal William Macrossan’s application [2006] EWCA Civ 1371.
  • Amersham Pharmacia Biotech AB v Amicon Ltd and others[2001] All ER (D) 61 (Jul).
  • Catnic Components Ltd v Hill and Smith Ltd [1982] RPC 183.
  • Duckett v Patent Office [2005] EWHC 3140.
  • Generics (UK) Ltd and others v H Lundbeck A/S [2009] UKHL 12, [2008] EWCA Civ 311.
  • Greater Glasgow v Health Boards application:1996. International application No. PCT/GB90/00465.
  • Improver Corporation v Remington Consumer Product Limited [1990] FSR 181.
  • Kirin-Amgenv Hoechst Marion Roussel Ltd [2004] UKHL 46.
  • Rockwater Ltd v Technip France Sa (Formerly Coflexip Sa), Technip Offshore UK Limited (Formerly Coflexip Stena Offshore Limited) [2004] EWCA Civ 381.
  • Saint-Gobain v Fusion Provida 2005 EWCA Civ 177.
  • Synthon BV v SmithKline Beecham plc [2005] UKHL 59.
  • Technograph v Mills & Rockley [1972] RPC 346.
  • Thompson v Comptroller General of Patents, Designs and Trade Marks [2005] EWHC 3065.
  • Ward v Comptroller-General (unreported) (19 May 2000).
  • Windsurfing International v Tabur Marine [1985] RPC 59.

European Conventions

  • 1973 European Patent Convention.

International Agreements

  • Patent Cooperation Treaty 1970 (PCT).

Books

  • Balganesh S (ed),  Intellectual Property and the Common Law (Cambridge University Press 2013).
  • Bently L and Sherman B,  Intellectual Property Law (Oxford University Press 2014).
  • Colston C and Middleton K, Modern Intellectual Property Law ( 2nd edn, Cavendish 2005).
  • Colston C and Galloway J, Modern Intellectual Property Law ( 3rd edn, Routledge 2010).

Journals

  • Bainbridge D, ‘Court of Appeal parts company with the EPO on software patents’ (2007) 23 (2) Computer Law & Security Review 199-204.
  • Greater Glasgow Health Board's Application (1996) 113 (7) Reports of Patent, Design and Trade Mark Cases 207-224.
  • Kirin-Amgen Inc v Hoechst Marion Roussel Ltd’  (2005) 122 (6) Reports of Patent, Design and Trade Mark Cases 169–207.
  • Rivette K G and Kline D, ‘Discovering New Value in Intellectual Property’ (2000) Jan- Feb Harvard Business Review 54-66.
  • Whitehead B, S Jackson S and Kempner R, ‘Managing generic competition and patent strategies in the pharmaceutical industry’(2008) 3(4) Journal of International Property Law and Practice 226 - 235.

 

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