Find below biotech IP newsletters recently provided by Dr. Stefan Danner.
Archive for the ‘Non-U.S. Practice’ Category
Biotech IP Newsletters
Tuesday, December 6th, 2011One step ahead and one step backward for the EU patent
Tuesday, March 22nd, 2011The following is a contribution from Camilla Rendal Nielsen of Zacco Denmark A/S
1. The EU Competiveness Council have authorised “enhanced cooperation” in the area of unitary patent protection, and.
2. The EU court now states that the proposed Patents Court is not compatible with the provisions of the EU Treaty.
The European Competiveness Council have given their final consent to create a unitary patent system under the so-called enhanced co-operation scheme. As we announced last month, a number of European countries have moved towards a unified patent under the EPO, without Spain and Italy, who were blocking the proposed language regime (English, French and German). The current presidency under Hungarian leadership is eager to move the process forward and to begin negotiations to get all member states involved. The proposed unitary patent or EU patent would be granted by the European Patent Office and be valid in all participating states without the need for further translation or registration in each country, thus reducing the costs of patenting in Europe dramatically.
The Council gave their consent, well aware that the European Court of Justice had just handed down an opinion stating that a European and Community Patent Court (the Patents Court) is not compatible with the provisions of the EU Treaty. (Press release available at the end of this post). The presidency and numerous legal experts maintain that the creation of a unitary patent and the creation of the Patents Court are two different issues, and we may see a unitary patent system in place well before the Patents Court is functional.
Canadian Ruling Supports “Antibody Exception”
Thursday, March 10th, 2011
In my recent post on the Centocor v. Abbott decision, I noted that the Fed. Cir. had at least preserved the “antibody exception,” which I define as permitting broad claims to structurally uncharacterized antibodies (monoclonal and polyclonal) if the structure of the antigen is known (and preferably is novel) and methods of preparing the antibodies are routine. This dicta has been recently “followed” by the Canadian Patent Appeal Board in an appeal involving Immunex.
Learn more here.
A Scheme For Maximizing The Benefits Available Under The Patent Prosecution Highway (PPH)
Tuesday, March 1st, 2011
This post is from Mark Horsburgh of Fisher Adams Kelly in Australia.
Summary
- File in Australia first;
- Request expedited examination (report issues within 3 months);
- Address objections and obtain acceptance;
- File in USA and request entry to PPH (faster and fewer office actions);
- File PCT designating EPO as ISA;
- Amend claims for best possible prosecution based on results from AU, US and EP.
Explanation
The PPH aims to accelerate examination in an office of second filing (OSF) based on the outcome of examination in an office of first filing (OFF). To take maximum advantage of PPH an allowance should be obtained as early as possible in the OFF and then a request to use the PPH made in the OSF, together with a claim table showing correlation between the OSF claims and the allowed claims.
The PPH has best advantage when a quick allowance is possible in the OFF. Australia affords this opportunity through the expedited examination procedure. At the time of filing an Australian patent application it is permissible to voluntarily request examination and pay the examination fee. At the same time the examination can be expedited by a request with a simple justifying reason. A suitable reason may be, “The Applicant is entering a competitive market and seeks early determination of validity”. If expedited examination is granted (and it almost always is) an examination report will issue within three months. A diligent and comprehensive response can lead to allowance of the application within 6 months of filing.
Once allowance is obtained a corresponding application can be made in USA together with a request to use the PPH. The main requirement is that the claims in the US application correlate with the allowed claims from Australia. Statistics show that the first office action on a PPH case issues up to a year earlier than a non-PPH cases and on average a PPH case receives about one less office action than a non-PPH case.
If the Applicant is seeking protection in a number of countries it is sensible to use the PCT system. The PCT application could designate the EPO as the searching authority, thus providing a third independent view on the validity of the claims. Article 34 claim amendments can be made to obtain a clear IPRP. This would virtually guarantee the patent issuing in Europe, together with the patent having issued in Australia and probably being close to issuance in USA. With this level of testing of the claims it can be reasonably expected that the claims are valid and likely to be defendable in any court action.
