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Patents Intellectual Property LLM Notes

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Table of Contents

LLM IP Lecture Notes

3 Introduction to Patents Patent law has a reputation for being difficult, because there is a lot of long and complex case law, and reading the cases is hard because there are hard scientific concepts at issue, but we're not expected to understand the technologies, and we are only expected to know the main legal principles. Where the facts are difficult, a potted summary will be given. "You can't hold back the waves, but you can learn to surf" It's more interesting and important than other parts of IP. Packaging is boring, as are trade names, but the chemicals inside are interesting!
We want to focus on how the law is interpreted and applied, along with how the law seeks to balance competing interests between innovators, competitors and users of technology, and how well it achieves that. There is a lot of politics behind patent law, and it generates a lot of strong opinions, so this might give you an idea as to how the law is developing. There is an interesting relationship between the UK and the EPO and the CJEU. There is also an assumption that patents provide a sensible incentive for innovation, and this is an important point as well.

What is a Patent?
It is a legal mechanism by which exclusive rights/monopolies can be obtained (i.e. to make, work and sell specified products or processes). They are time-limited, exclusive rights to restrict the trade and use of ideas and information, incorporated in a qualifying product or process. In a patent document, there is bibliographic information, which is used primarily for administrative purposes, and then a specification, with a description and the claims of the owner - defining the scope of the protection. This is interpreted in light of the description. There will be lots of claims - broad ones to maximise the breadth of the patent, with narrow ones as fall-back options. They are similar to other IP rights - time limited, exclusive rights, and it's a species of property. It is territorial, and only valid in the territory that grants it. They differ in key respects, though. They must be applied for, and registered, unlike copyright. This means that there are whole systems of patent attorneys and examiners to register them and grant them. There are also differences in requirement
- they need to be inventions, and there are requirements of novelty and inventiveness, and they need to be of credible utility. You are not required to use them, but there is a renewal requirement, and they only last for 4 years. Unlike copyright, you don't need to prove copying of the handiwork - any independent invention of the same idea is infringement.

History Used to be granted by monarchs, and reformed by the Statute of Monopolies in 1623. In the ensuing centuries, there's been a rocky ride to defining the principles surrounding patent law, which give it the legitimacy to give this right to people. Patents Law now governed by Patents Act 1977, which was designed to bring the UK into line with the European Patents Convention of 1973.

Procedure The question whether to patent must be taken very early on, and is a big decision. Whether or not to patent is dependant on a company's business model. It might decide to use trade secrets, or maybe it won't patent or use trade secrets - open science attitude. However, this is not widespread, and there are prolific uses of the patent system. Once you have decided to patent, how do you do it? This is done either through the UK patent office, or the EU patent office. The difference between them is in procedure. The UK office in

4 Swansea can grant a UK national patent. The EPO in Munich can grant a bundle of national patents. It checks the application against the European Patent convention, and against the interpretation of that act by its own boards of appeal in order to come to a decision. The European Patent Office doesn't have a system of precedent, but there is some ability to reference to larger boards of appeal. The systems aren't that different (the UK courts, and the UK acts are intended to harmonise the interpretation of the rules, but interpretation now always the same, and not always possible to discern whether interpretation is the same. EPO has a process of opposition - a Third Party can challenge the grounds of a patent up to 18 months after its being granted. However, in both systems you can apply to revoke a patent. There are differences in cost and speed, but the biggest difference is the multinational aspect of the EPO. Both of that bodies are supposed to be self-sustaining QuANGOs

Prosecution of a Patent The most important thing to note is the priority date. This is the date that the provisional application is filed. This is the date at which all of the criteria are judged. This is a tricky decision - you want to be as early as possible, but you can't fall short of proving inventive step, industrial application etc. Revocation is not uncommon, and when challenges happen, they are often successful. However, a patent officer has, on average, less than a day to read all of the scientific literature, and apply the law, to examine the patent application.

Systemic Complexities The EPO procedure is important - lots of debate about whether it should change. EPC and the EPO are not part of the EU legal framework. They are actually an international regional treaty that sits outside the EU. It includes a number of non-EU members, so not easy to transpose it into the EU, or vice-versa. No direct route to the CJEU, for example. Even though it's not a EU instrument, the EU is very important in the protection of inventions, especially in biotech (see Biotech Directive). In the event of legal uncertainty here, the EPO can refer questions to the CJEU. Another set of complexities is between the EPO and the UK. The EPO plays no part in enforcement, only granting - it grants a bundle of individual national patents, which need to be enforced separately in the different countries where the patent applies, with different rules of procedure and appeal. A result in one country does not necessarily lead to the same result in another, so inconsistent results are common between Europe and the UK. There are also different bodies of case law precedent. EPO judgements are not binding on the UK, but they are taken very seriously, unless they are 'steering patent law onto the rocks', as was thought to be the case with computerimplemented inventions. EPO decisions are taken so seriously because they are made by technical experts, and the precedent given is very different to the UK courts system.

Should Europe move to a EuroPatent across the EU?
This would be similar to the CTM. Businesses would like it, as it would decrease costs a lot. The idea has been around since the 1960s, even before the EPC in 1977. This would be a Community Patent (now the Unitary Patent Proposal). This has proven elusive - there are several sticking points. The question of language is important - patent documents are translated, and the court cases are in many different languages. Every word can be important, so translation is very costly. There is also no consensus that there should be any one (or a few) prime language(s). Small businesses are already sceptical, and forcing them to read and defend patents not in their mother tongue seems bad (see Italy and Spain's objections). Also, how would it be enforced? The courts might lead to poor precedent - see CTM and Copyright. What about bundles of national patents?
Could these still be an option for businesses that want protection only in one or a few designated

LLM IP Lecture Notes

5 countries? This would lead to more fragmentation! Does the EU have competency here? And who would grant them? The EPO has no EU competency. Lots of stop-starting here. In 2009, Council of the European Union agreed a broad principle for an EU patent. December - EU parliament voted in favour for a unitary patent. Spain and Italy still opposed, but it is possible to proceed without their support. The proposal has been set up using a procedural mechanism - Enhanced Co-operation - that doesn't need them. Spain and Italy have already challenged the proposals, and in the challenge, they dodge the question whether the proposal is sufficiently deferential to the CJEU. In the past, this has been a problem for similar proposals. The relationship with the CJEU is not clear but we are on a path to Unitary Patents. Complete harmonisation would be useful in many of the cases where there is conflict. An exemplary conflict situation, where substantive patent laws of member EPC countries diverged, occurred with the Epilady cases, which pitted the U.K. against Germany. Both British and German courts differed in their interpretations of the same European Patent claims under identical factual infringement proceedings. Inconsistent lower court opinions were both reversed upon appeal, resulting in inconsistent appellate opinions, although the courts of both countries were guided by Article 69 of the EPC.

Why Have Any Patent System?
There are a few justifications:

1. Natural Rights - inventor should own and control fruits of labour a. Sceptics argue that this doesn't apply to patents - this only protects the first inventor, despite the fact that the second person will receive nothing from patents, except a bill for infringement, b. Also, it only recognises some types of labour (inventive labour, not sheer hard work)

2. Consequentialist - incentive theory a. Inventions are hard to make but easy to copy. We want people to make and improve them, so we have patents. b. But economists struggle to prove that patents are actually efficacious in this way. c. But is this system the best? Maybe stronger/weaker, or longer/shorter?
d. What about the problem of monopoly prices for life-saving drugs?
Machlup (1958) argues that if we didn't have a patent system, we probably wouldn't set one up, but given that we have one, it's probably better to keep it. Reforms are good, but we will probably leave the broad structure as it is.

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Entitlement Anyone can apply for a patent (PA 1977 s7(1)), but it can only be granted to a few, per s7(2). Prima facie, the only person who can be granted the patent is the inventor or joint inventor. However, other people may be granted one in preference to them. For example, this might be a person who owns the invention by virtue of an enactment (e.g. an employer), or a rule of law, or an enforceable term of agreement with the inventor. In any event, a successor in title to one of these people or the inventor (e.g. an assignee) may also apply, but it may be granted to no other person than these.

Inventor The inventor is the actual deviser of the invention (s7(3)). To find out who this is, we must identify the inventive concept, and find out who formulated it. The question looks for the heart of the invention, and its creator, and, ignoring the non-creative contributions, and non-technical contributions, looks for those persons still involved. University of Southampton's Application University of Southampton applied for patent relating to method of controlling pests where part of pest is exposed to particles carrying a magnetic charge. Previous invention where electrostatic charge was used had been patented. M, employee of claimant, IDA, had confidentially phoned Prof H, employee of Southampton, suggesting he substitute the electrostatic charges with of magnetised particles. Examiner: found for IDA (Metcalfe was sole devisor). Laddie J: reversed (Prof H responsible for sticky poison concept so Prof H and M were joint inventors). CA: reversed Laddie J - Metcalfe was sole devisor of the heart Sticky poison (and means of enablement) was just common general knowledge To put that grant in issue, Per Yeda Research (HL) (overruling Markem), The Challenger (A) must first establish who was the 'inventor' or 'inventors'. Then they must show that the patent could have been granted to A under s.7(2); if A claims sole entitlement to the patent, he must also prove that B was not entitled to be granted the patent under s.7(2). No need to prove any additional element e.g. breach of confidence, contract, or breach of statute. Entitlement can be challenged before or after grant. After grant, a time limit of 2 years applies (PTO). A challenger can also submit their own patent application; but consider whether application will be rejected for anticipation (lack of novelty).

Employer When the invention is deemed to belong to the employer, s/he can be granted the paten per s. 7(2) (b). The key provision here is s39. The invention belongs to employer in two situations only.

1. When the employee is employed to design or invent, and the invention arises in the course of their duties. a. Must prove: i. Employment relationship; and ii. The invention was made during the course of the employee's normal duties or their specifically assigned duties; and iii. An invention might reasonably have been expected to result from the carrying out of such duties. LIFFE Admin...v Pavel Pinkava Pinkava worked for Liffe (London International Financial Futures Exchange) as a manager in its interest rate product management team. Dec 2003 Sudworth asked Pinkova to research tradable

LLM IP Lecture Notes

7 credit derivatives. Key insight in July 2004 after attending conference. P invented electronic trading of financial instruments -swaps/credit deriv'ves. Applied for US patents in April 2005. Left Liffe, July 2005. Liffe claimed to be entitled; Pinkava sought declaration under s. 12. Kitchin J held Liffe to be owner (specifically assigned duties). CA affirmed (normal duties, which had evolved over time) (para 56) "The source of an employee's duty is primarily contractual, though some of the terms may be implied by law...But the contract evolves in the course of time such that, in my view, it is unsafe to have regard only to the terms contained in an initial written contract of employment. The actions of employee and employer in performance of the contract may give rise to an expansion or contraction of the duties initially undertaken by a continuous process of subtle variation..." Para 98 (Jacob LJ) "The 'duties' are determined realistically." Morritt C: Para 60. By end of 2003 it had become normal duty "to consider and, if he could, devise an exchange tradable credit derivative or its equiva." 'In the Course of'

* (para 101 per Jacob LJ) "This clearly draws on the well-known common law concept of 'in the course of employment'. The classic contrast is 'a frolic of one's own.' In practice, once the duties are ascertained this requirement should cause little difficulty.' Reasonable Expectation

* "particularly incompetent wording" (para.102 per Jacob LJ)

* "an" invention must be reasonably expected not "the" particular invention (para. 72, 81, 102)

* An objective test (para. 77)

* If employee is employed to innovate, test satisfied (para 102)

* Query - take into account attributes of the actual employee (such as Pinkava) (para. 78, Morritt C. and Longmore LJ) cf. Jacob LJ at para. 103

2. When the invention is made by a senior employee during the course of their duties. a. Must prove: i. Employment relationship; and ii. The invention was made during the course of any duties; and iii. The nature of the employee's duties and responsibilities were such that he had a special obligation to further his employer's interests.

Compensation For Employee Inventions

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If the invention is granted to the employer (ie through operation of s.39), the employee is entitled to compensation if the invention [since 2004], patent or both is of "outstanding benefit" to the employer, and it is "just" to award compensation.

* If the patent was granted to the employee and he subsequently assigned it to the employer, the employee is entitled to additional compensation if the benefit he derived from is "inadequate" in relation to the benefit derived by the employer In both instances, entitled to "a fair share" of the benefit. This is generous on paper, but very difficult to engage in practice. See British Steel, Memco-Med's Patent, GEC Avionics. But...
Kelly and Chui v GE Healthcare (Amersham) K & C invented "phosphine 53". Patent granted to Amersham. "Myoview" sales exceeded PS1.3 billion between 1993 - 2007. Outstanding benefit? Yes - Conservative estimate = PS50m. Is it Just? Yes. Fair share? 3% of the benefit the patent brought to the employer, shared between the two employee-inventors. (= 0.1% of turnover). So Kelly got PS1m and Chui PS500k.

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