Regular intellectual property news from Australia and overseas.
- ALRC to investigate gene patenting
- Canadian Supreme Court refuses patent for Harvard mouse
- Glaxo Wellcome wins AIDS drug patent battle
- New Designs Bill introduced into Parliament
- Scherer withdraws patent action against Pan Pharmaceuticals
- WIPO states discuss harmonisation of patent laws
ALRC to investigate gene patenting
18 December – The Australian Law Reform Commission announces it is to undertake another reference involving genetics, this time to examine the laws and practices governing IP rights over genetic materials. The terms of reference, released by Attorney-General Daryl Williams, require the ALRC to consider whether changes are required to current patenting laws, whilst maintaining the aim of encouraging and rewarding biotechnology research to provide health and economic benefits. Additionally, the Commission is to consider how a system of protecting IP will not impede worthy research or hamper the delivery of clinical services. The Commission is expected to complete its report by 30 June 2004. For further information or to register interest in being on the mailing list, please contact the ALRC.
[Source: ALRC Media Release]
Canadian Supreme Court refuses patent for Harvard mouse
5 December – The Supreme Court of Canada has ruled (five to four) that Canada's 1985 Patent Act does not permit the patenting of Harvard's so called 'oncomouse'. The majority judgment was given by Justice Bastarache, who said: 'In my view Parliament did not intend higher life forms to be patentable'. The decision ends Harvard's 17-year battle to gain a Canadian patent for its mouse, which is genetically modified to be more susceptible to cancer. Harvard wanted the patent to cover the original mouse, all its offspring, and any other kind of nonhuman mammal that Harvard might breed, genetically altered to be more at risk of cancer. Critics of the decision fear it could push research offshore. Harvard has urged the Canadian Parliament to amend the Patent Act.
[Source – Reuters – David Ljunggren]
Glaxo Wellcome wins AIDS drug patent battle
6 December – The Supreme Court of Canada has awarded Glaxo Wellcome Inc almost C$200m damages in a fight over the company's patent for AXT, a highly successful AIDS drug. Apotex Inc and Novopharm Ltd argued unsuccessfully that Glaxo's AZT patent was invalid because it was based on mere speculation that the drug would ultimately be used to treat AIDS in humans. When Glaxo applied for the patent in 1985, AZT had only been tested on mice. Furthermore, later research was conducted by the US National Health Institute because Glaxo lacked the technology for further testing. Apotex and Novopharm argued this meant that Glaxo was not the sole inventor of AZT.
Justice Ian Binnie rejected both arguments. His Honour said that inventors whose patents are challenged must demonstrate the future use of their invention 'based on the information and expertise then available' and that patent authorities must recognise that further work will generally be necessary before an invention comes to fruition, limiting the accuracy of prediction. Justice Binnie also said that 'care must be taken, however, that the doctrine is not abused, and that the sound prediction is not diluted to include a lucky guess or mere speculation'.
[Source – The Globe and Mail – Kirk Makin]
New Designs Bill introduced into Parliament
13 December – The new Designs Bill 2002 (Cth) and Designs (Consequential Amendments) Bill 2002 (Cth) were introduced into the Commonwealth House of Representatives on 11 December, with debate on both Bills adjourned. If the first Bill is enacted, the registration system for designs will become more streamlined, and enforcement and dispute resolution procedures will be improved. Additionally, thresholds for both eligibility and infringement will be made stricter. The Consequential Amendments Bill will amend provisions in the Copyright Act that deal with the interaction between copyright and designs laws, such as when a design may also be considered as an 'artistic work' under copyright law. Further information about both Bills is available from the Federal Parliament's website.
[Source – Australian Copyright Council]
Scherer withdraws patent action against Pan Pharmaceuticals
9 December – R P Scherer Pty Ltd, the Australian subsidiary of US-based R P Scherer Corporation, has withdrawn its patent infringement action against Australia's largest contract manufacturer of complementary medicines, Pan Pharmaceuticals Ltd. Scherer has also offered to pay Pan's costs. Pan is still considering whether to proceed with its cross-claim, challenging the Scherer patent.
[Company Announcement]
WIPO states discuss harmonisation of patent laws
3 December – Member states of the World Intellectual Property Organisation have met in Geneva to participate in discussions on the further global harmonisation of substantive patent laws. Revised provisions of the draft Substantive Patent Law Treaty were discussed by the Standing Committee on the Law of Patents at its eighth session, between 25-29 November. Representatives from 76 member states, four intergovernmental organisations and 23 non-governmental organisations took part. The purpose of the draft treaty is to ensure consistency between member states regarding substantive conditions for the grant of patents and the invalidation of granted patents. The treaty is also aimed at reducing duplication of search and examination work in patent offices. Agreement on principle was achieved on various draft provisions. The discussion of other issues, including grace periods, the scope of patentable subject matter, and various other public policy issues was postponed. The next session of the standing committee is in May.
[Source – WIPO Media Release]
