Archive for the ‘Non-U.S. Practice’ Category

Patenting “Natural Products” Down-Under Post-Myriad

Wednesday, December 16th, 2015

iStock_000063710003_SmallAlthough the Australian High Court held that claims to naturally occurring DNA (e.g., BRCA1 nucleic acid) were not patent eligible because they were not a “manner of manufacture,” since the encoded information therein was not “made” by human action, in contrast to the USPTO, the Australian Patent Office issued “Examination Practice” guidelines dealing with the requirements to patent products of nature. The Guidelines generally left their Bergy-like examination standards intact outside of the nucleic acid arena. A copy of those guidelines can be found at the end of this post.

Naturally occurring nucleic acid molecules derived from genetic material or synthesized, including fragments thereof like primers, probes and iRNA, as well as cDNA are not patent-eligible since they “merely replicate the genetic information of a naturally occurring organism.”

More encouraging is the reaffirmation by the Australian PTO that “technical subject matter” including recombinant or isolated proteins, pharmaceuticals, methods of treatment and “applications of computer technology” remain patent-eligible, as do plant and microorganisms. The key factor seems to lie in determining whether or not the substance of the claims was “made” – created or modified by human action – or is “artificial.” Merely “artificial” is a bar, but it appears to include inspecting the claim for replicants – Dolly? — or synthetic versions of naturally occurring materials. While the physical difference between the claim and the material in its natural state is one factor to be weighed, the heartening sentence is that “[i]solation or purification can represent making or modification when the substance of a claim is properly directed to a chemical product.”


A Hidden Danger Under The EPC – The “Extension Trap”

Wednesday, March 14th, 2012

Provided to us by Dr. Stefan Danner of DHS Patentanwalts GmbH, find below the current issue of the biotech IP newsletter dealing with recent EPO case law on Article 123(2)(3) EPC.

Extension Trap

Biotech IP Newsletters

Tuesday, December 6th, 2011

Find below biotech IP newsletters recently provided by Dr. Stefan Danner.


One step ahead and one step backward for the EU patent

Tuesday, March 22nd, 2011

The 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.