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Biotech News IP law update Regular intellectual property news from Australia and overseas. |
- ACIP examines experimental patent provision
- Pfizer wins painkiller patent dispute
- Victoria University staff found to hold IP on trust for employer
- WHO unveils IP investigational body
ACIP examines experimental patent provision
February 27 – The Commonwealth Government has requested The Advisory Council on Intellectual Property to examine whether some types of patents inhibit advancements in research and development, particularly within the biotechnology industry. The paper entitled 'Patent and Experimental Use' explores possible ways in which to better licensing practices by introducing an experimental use exemption or public domain system. The paper considers current Australian and international legislation regarding experimental use policies whilst discussing economic arguments behind such exemptions. In examination, ACIP is to consider whether an experimental use exemption would help researchers more effectively use the patent system to commercialise their research and development. ACIP welcomes written or electronic submissions including empirical information and data until April 30. The paper and further information are available on the ACIP website.
[Source: Media Release]
Pfizer wins painkiller patent dispute
February 22 – The US Court of Appeals affirmed a ruling that dismissed patent infringement claims against Pfizer and Pharmacia. The University of Rochester had sued the two companies, claiming billions of dollars from the sales of painkillers Celebrex and Bextra, alleging that the two products infringed one of its patents. In March 2003, a New York district court found Rochester's patent invalid, thereby dismissing its claims. The court ruled that Rochester's patent did not claim for the drugs subsequently developed by Pfizer and Pharmacia. 'Celebrex was invented and patented by GD Searle, which was subsequently acquired by Pfizer' said Jeffery Kindler, general counsel of Pfizer. 'While Pfizer recognises the valuable contributions made by academic research into disease and potential new treatments, this decision makes clear that, in this case, the University played no role in the development of Celebrex.'
[Source: Legal Media Group]
Victoria University staff found to hold IP on trust for employer
18 February 2004 - Justice Nettle of the Supreme Court of Victoria has found that academic staff at Victoria University held a patent on trust for the University. The staff developed the technology during the period that they were employed by the University and the University argued that it was entitled to the patent on at least three grounds. First, that the technology was developed in in the course of employment and under common law the patent was University property. Secondly, that the University's IP policy provided for ownership of inventions made by staff to vest in the University. Thirdly, that the staff had breached a fiduciary duty owed to the University not to use their senior positions in the relevant department for personal gain.
The court rejected the first two arguments. It found that the staff were not employed by the University to develop technology and the University did not have a formal IP policy in place at the relevant time. The University however, succeeded on the third ground.
The staff had spun off a company to hold the patents and had expended significant personal time and expense working on the venture. It was not clear that the University would have sought to commercialise the technology had it been given the opportunity. However, in the early commercialisation phase, the staff had referred to their positions at the University in presentations to potential commercial partners and had held themselves out as representatives of the University. For example, by signing correspondence in their academic capacity and including the University logo on PowerPoint presentations. The court found that the staff had placed themselves in a position where the duty to the University was in conflict with their own personal interest, and thus acted in breach of fiduciary duty in excluding the University from the opportunity to be involved in the venture. The court indicated that it would order either that the staff hold their shares in the spin off company as trustee for the University or pay to the University an amount of money equal to the value of those shares plus the proceeds of any shares already sold, less subscription moneys already paid and just provision for appropriate expense and allowances.
Although the technology did not relate to biotechnology, the case is a timely reminder of the need to exercise caution on issues of ownership of IP. The case may be the subject of an appeal and Biotech News intends to review the decision in more detail in a Feature Article in the near future.
[Source: Supreme Court of Victoria]
WHO unveils IP investigational body
February 22 – Last month the World Health Organisation (WHO) established the Commission on Intellectual Property Rights, Innovation and Public Health following a resolution at its annual assembly. The aim of the Commission is to carry out an independent study of existing research and innovation efforts, IP rights and their effects on public health and the development of new medicines. The study will also look at the effects of funding and incentive mechanisms in the creation of new health products targeted at diseases affecting developing countries. The pharmaceutical industry has welcomed the study, which it hopes will set out the appropriate global framework to boost more research and indentions of new medicines. The 10-member commission will have its first meeting in March and is expected to submit its final report to the WHO's executive board in January 2005.
[Source: Legal Media Group]
