Publications

Total Documents: 23

 

Patent-related incentives and impediments to transfer of technology

Document No: PUB 20H/13 Posted: 23 December 2013

The Standing Committee on the Law of Patents (SCP) comprises all Mem­ber States of WIPO (World Intellectual Property Organization) and/or of the Paris Union, and, as observers, certain Member States of the UN non-members of WIPO and/or Paris Union, as well as a num­ber of inter­govern­mental and non-governmental organisations.

At its nineteenth session held from 25 to 28 February 2013 in Geneva, the SCP decided that the Secretariat should revise the document on transfer of technology (document SCP/18/8) by adding further practical examples and ex­periences on patent-related incentives and im­pedi­ments to transfer of technology on the basis of input received from members and ob­servers of the SCP, taking into account the dimension of absorptive capacity in tech­nology transfer. Thus the IP Federation was invited, in its capacity as observer to the SCP, to submit such examples to the Inter­national Bureau on or before 30 June 2013.

Patents, Trade Marks and Design Rights: Groundless Threats

Document No: PUB 20I/13 Posted: 23 December 2013

On 17 April 2013, the Law Commission published a consultation paper on groundless threats. This consultation relates to their Patents, Trade Marks and Design Rights: Ground­less Threats project. The Commission was consulting on two approaches to reform:

  • The first is to build on the reforms made to patent law in 2004 and to extend these to the other rights. We also propose that legal advisers should be protected from liability for groundless threats.
  • The second approach is to treat groundless threats as a form of unfair competition and to introduce a new and broader cause of action based on the Paris Convention. 

Privilege

Document No: PUB 20J/13 Posted: 23 December 2013

If a client is involved in litigation in a common-law country, then discovery (disclosure) may be sought of his communications with IP advisers. Clients have encountered serious and often insuperable obstacles to asserting privilege against such discovery with respect both to local advisers and to foreign ones. These obstacles are essentially unique to IP cases because (a) internationalised IP activity is the norm, and (b) so-called “non-lawyer” patent and trade mark attorneys/agents[1] are trusted major providers of IP legal advice and draft­ing. Privilege in general is in the public interest, and the anomalies which have arisen are accordingly contrary to the public interest. In the UK, these anomalies have been rectified to a limited extent in CDPA s. 280 and TMA s. 87, but much remains to be done both in the UK and elsewhere. (An extended discussion, albeit to be read in the light of the recent developments reported below, can be found in Trends and Events, December 2010, pages 24–27.)

 


[1] “So-called” is a reference to the UK situation. The Legal Services Act 2007 treats barristers, solicitors, patent and trade mark attorneys, and other specified legal professionals all as “lawyers”. 

Promoting clinical trials of pharmaceuticals in the UK

Document No: PUB 20K/13 Posted: 23 December 2013

It has for a long time been uncertain whether the conduct by the innovative pharmaceutical industry in the United Kingdom falls within the defences to the Patents Act.

Proposal for Collaborative Search and Examination (CSE) in the PCT

Document No: PUB 20C/12 Posted: 08 March 2013
Collaborative search and examination (CSE) has been the subject of prolonged support by the Federation, beginning with a presentation by a Vice-President in June 2007 at an international Colloquium on Patent Quality in Amsterdam, and in 2012 involving con­tribu­tions by the President at similar events in London and Warsaw. Since 2010, support for CSE has been given also by the International Chamber of Commerce (ICC), which has been valuable because of ICC’s relationship with WIPO.

Patent Box – The Basics

Document No: PUB 20I/12 Posted: 08 March 2013

If you pay UK corporation tax and develop your own products but still haven’t taken a look at the Patent Box, you really should. From April 2013, companies which satisfy specific criteria will be able to claim an additional deduction against their taxable profits, effectively taking the tax rate applied to a proportion of their profits down to 10%. There will be some companies for whom the new Patent Box will make no difference at all but, equally, there will be some for whom it will offer a relatively easy way of reducing their tax burden.

Patent Marking

Document No: PUB 20J/12 Posted: 08 March 2013

Patent marking is an often neglected aspect of patent law, but in recent years has come into the spotlight. Most countries, including the UK, have a provision that damages from infringement can be awarded where an infringer has copied a product only where said infringer is put on notice of the existence of a patent right by virtue of the patent number being applied to (i.e. ‘marked’ on) the product (cf Section 62 (1) of the UK Patents Act).

Patent Enforcement – Portugal enacts law mandating arbitration for pharmaceutical patent disputes

Document No: PUB 20L/12 Posted: 08 March 2013

In December 2011 the Portuguese government enacted Decree Law 62/2011 which for the first time moved certain IP disputes, in particular patent disputes, in the pharmaceutical sector away from the Jurisdiction of the court and mandated that they are handled exclusively through arbitration. The reasoning underlying this controversial and unprecedented change is clearly political but has not been unambiguously expressed. It has been implied that it is linked to austerity measures in Portugal and indeed a Memorandum of Understanding on Specific Economic Policy Conditionality was concluded between Portugal and the Troika (European Commission, IMF and ECB) in May 2011. However, whilst the Memorandum of Understanding contained a section on the Portuguese Judicial system and mentioned arbitration within the context of alternative dispute resolution as a way to facilitate resolution of backlog cases and out of court settlement, there was no mention of its mandatory use, or any contemplation of its use in IP law, and certainly not in a specific sector. The only reference to IP in the Memorandum of Understanding was to make a speciality court on IP fully operational by Q1 2012. What is plain, however, is that the specific IP disputes selected by the Law to be handled in arbitration are the critical innovator vs generics disputes that effectively govern when a generic copycat medicine can legally be commercialised in Portugal.

Presidents of the IP Federation

Document No: PUB 4/12 Posted: 27 November 2012
Presidents of the IP Federation formerly the Trade Marks, Patents and Designs Federation

Preliminary injunctions alive and well – a view from Europe

Document No: PUB 12/11 Posted: 13 February 2012
How do European IPR holders prevent key competitors from launching or selling their prod­ucts in valuable markets in Europe? The answer is simple: obtain a preliminary in­junction (PI), also known as an interim or interlocutory injunction, to put a stop to the competition at an early stage. It worked for Pfizer in the UK, where the sale of generic Lipitor® was recently halted within a matter of hours. Similarly, within 24 hours, Novartis stopped Sanofi’s at-risk launch of generic CoDiovan® in France. PIs have also recently been obtained by Apple against Samsung in respect of products in both the Netherlands and Germany.
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