IP law update
- Festo case reopens
- Japan releases plans to improve IP protection
- Myriad cancer gene test patent under threat
- US to improve patent litigation
- US University to take on pharma giant in patent stoush
Festo case reopens
29 September - The US Federal Circuit has invited the parties involved in the Festo decision and any other interested parties to submit briefs on how the doctrine of equivalents should work in practice, prior to the court reopening the case. In July this year, a Supreme Court ruling remanded an earlier appellate court decision. Yet the Court of Appeals for the Federal Circuit is to now hear the case en banc later this year.
The Court is specifically seeking submissions which address four questions, two of which are unique to the Festo decision. One general question is whether, in applying the doctrine of equivalents, issues of rebuttal or foreseeability are questions of law or fact. The Court is also interested in the kind of role a jury should play when considering whether a patent owner can establish a claim to the doctrine.
A second general question is what factors are covered by the criteria laid down by the Supreme Court. In its judgement, the court determined that the doctrine may apply when "there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in questions".
With respect to Festo, the Court is interested to hear submissions on the rebuttal of the doctrine. If rebuttal is a matter of fact, can the facts of the case determine any rebuttal of the doctrine without the need for a Court's involvement? If the court is not needed, can the Festo decision rebut the ban of using the doctrine?
Interested parties have until 20 October 2002 to submit answers to these questions.
[Source: Legal Media Group - Sam Mamudi & James Nurton]
Japan releases plans to improve IP protection
27 September - Japan is to adopt a new intellectual property law, with the release of proposals for a new law from a Governments panel. The proposals, developed by the Strategic Council on Intellectual Property, generally improve the protection of intellectual property rights. Under the proposed legislation, patent application procedures will be sped up and piracy protection will be improved. The Council's proposals will form the basis of a Bill, to be presented to the parliament by the end of the year.
[Source: Legal Media Group - Stephanie Bodoni ]
Myriad cancer gene test patent under threat
26 September - Myriad Genetics Inc, the US-based company that holds three European patents over the BRCA1 breast cancer gene, is facing another assault from European laboratories and patient groups. Aiming to overturn the third patent, which covers therapy and predictive uses for the gene, opponents to Myriad's patents are to file opposition proceedings with the European Patent Office. Challenges to the first two patents, which cover the coding sequence of BRCA1 and its mutations respectively, are currently unresolved. Opponents to the patents centres on the argument that, contrary to yesteryear, modern methods in genetics enable researchers to easily identify and patent genes by examining sequences in large databases, which they argue cannot be novel or inventive. The opponents are particularly worried that if Myriad were to exercise its patent rights in Europe, the costs to women undergoing predictive testing for BRCA1 could rise dramatically.
[Source: Wall Street Journal - Gautam Naik]
US to improve patent litigation
6 October - The Senate has approved a Bill, HR2215 designed to make it simpler and more economical to settle patent disputes. Under the new law, which forms part of the 21st Century Department of Justice Appropriations Authorization Act , the standard for the "substantial new question of patentability" over a disputed patent is lowered.
Currently, if a patent examiner investigates a prior art reference, the US Patent and Trademark Office is then not permitted to reconsider that reference. The new law, in comparison, will allow re-examination of a patent based on a prior art reference, even if it has been previously inspected and rejected. Effectively, this change will allow companies greater flexibility to settle patent disputes without the need for a court action.
A further change in patent re-examination procedures is that, in opposition cases, it will now be possible to appeal any Office decision directly to the Court of Appeals for the Federal Circuit. This court serves as the country's specific patent court.
President Bush is expected to sign the Bill into law within the next week.
[Source: Legal Media Group - Sam Mamudi]
US University to take on pharma giant in patent stoush
25 September - The University of Rochester, a private US university, is to take on Searle and Pfizer, the companies that manufacture the popular arthritis drug Celebrex. Alleging infringement of a patent belonging to one of its researchers, Dr Donald Young, the University is to claim that Dr Young's patent covers all medical uses of drugs known as Cox-2 inhibitors, which can alleviate pain while minimising the side effects often seen with the use of other pain-killers such as aspirin and Ibuprofin. The defendants, however, argue that Dr Young's patent does not describe the content of the proposed treatment, and is therefore invalid.
[Source: Chronicle of Higher Education]
