Catching up on EPO's Proposals and Changes

Posted by james on March 07, 2013

(Guest post by Betty Wu)

In the last couple weeks, the European Patent Office (EPO) has announced several proposals in relation to patent filing and prosecution with the aim to make its system more accessible and efficient.

One of the proposals aims to increase divisional patent application filings. Having reviewed the statistics of divisional filings upon introduction of Rule 36 EPC, the EPO has taken a proactive step by providing open consultation on its EPO website, inviting user feedbacks on the application of Rule 36 and their desired amendments (if any), in hope to cure the low figures of subsequent divisional filings (i.e. not the first divisional filing).

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An interesting recent decision from the BC Supreme Court highlights some of the importance of a patent indemnification clause in licensing agreements.  

The respondent is a software provider, Elastic Path Software Inc, who had licensed their online retail software to the appellant, Coastal Contacts Inc. As part of the software license, Elastic provided Coastal with a patent indemnification clause. That is to say, Elastic agreed that “Elastic Path shall defend or settle any claim made or any suit or proceeding brought against Licensee [Coastal] insofar as such claim, suit or proceeding is based on an allegation that any of the software supplied to Licensee pursuant to this Agreement infringes (directly or indirectly) any patent [...]”

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Paper on License enforcement published

Posted by james on February 20, 2012

Acquiring IP provides an exclusionary property right, namely the right to prohibit others from engaging in infringing activity. Most IP licence agreements try to convert the licensor's legal right to sue for infringement into a contractual obligation upon the licensee to provide consideration to the licensor (eg a lump sum, ongoing royalty payments, or cross licences to other IP)

I have written a paper addressing some of the questions the licensor should consider in determining whether they should enforce their proprietary or contractual rights, or both, when the license has been breached. The paper has now been published in the Oxford Journal of Intellectual Property Law, and is available at http://jiplp.oxfordjournals.org/content/7/3/176.full.pdf?keytype=ref&ijkey=ARpAzSLKzj41oyN

 

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Conor v Angiotech

Posted by james on November 26, 2011

I was fortunate to be able to attend the Conor v Angiotech ‘appeal’ this Wednesday at UCL’s main London campus. The event was a mock appeal of The House of Lords decision [2008] UKHL 49 which upheld the validity of a patent granted to UBC and to Angiotech, a UBC spinoff, on a drug eluting stent used for treating or preventing recurrent stenosis.

The UK patent was challenged successfully at trial and at the Court of Appeal on the grounds of obviousness. However, The House of Lords overturned the lower court decision, upholding the validity of the patent.  The decision has since been widely applied in the UK, and has influenced Canadian patent law as well.

For the mock appeal the Rt Hon. Professor Sir Robin Jacob acted on behalf of the appelants while the Rt Hon Professor Lord Hoffmann defended the House of Lord’s decision he himself had penned on behalf of the Respondent. Canada was well represented, thanks to Justice Rothstein of the Supreme Court of Canada who was present to act as the presiding judge. Overall it was a pleasure to observe such distinguished lights in the patent community, and a very informative event.

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Inventor's Clinic

Posted by james on November 14, 2011

Attended an Inventor’s Clinic the other day in Nottingham. This is something we don’t seem to have in Canada, where members of the intellectual property profession volunteer to provide general advise to inventors on a drop in basis. (Generally in Canada the approach varies more by firm and individual practitioner, with many such as ourselves offering free initial consultations).

Unfortunately, while we were there no inventor’s were present, and so we were unable to see the system at work. Fortunately though, there were many interesting displays of new inventions coming out of the University of Nottingham. Nottingham has a long history of innovationhttp://www.bbc.co.uk/nottingham/sense_of_place/facts/inventors.shtml and it is great to see this continue.

 

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