Posts Tagged ‘EPO’

Australia: Cancer Voices v Myriad Opinion Affirmed

Friday, September 5th, 2014

This is a guest post from Paul Cole.

An opinion was handed down earlier today by the Federal Court of Australia – Full Court (Allsop C.J., Downsett, Kenny, Bennett and Middleton J.J., D’Arcy v Myriad Genetics Inc [2014] FCAFC 115 (5 September 2014))(1). In an outcome strikingly at variance with that before the US Supreme Court, it affirmed the opinion of Nicholas J. that claims for isolated nucleic acids are for a manner of manufacture for purposes of s.18(1)(a) of `Australian Patents Act 1990 and s.6 of the Statute of Monopolies (Cancer Voices Australia v Myriad Genetics Inc [2013] FCA 65 (15 February 2013)(2) [The links for footnoted items can be found at the end of the post.]

In its opening remarks, the Full Court held that expressions such as “the work of nature” or “the laws of nature” are not found in the statute, nor are they useful tools of analysis. Adopting the reasoning of Frankfurter J. in Funk Brothers Seed Company v Kalo Inoculant Company, [1948] USSC 22; 333 US 127 (1948), it confuses the issue to use such terms. They could fairly be employed to challenge almost any patent.

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EPO Abolishes Prior “Short” Divisional Guidelines

Monday, October 21st, 2013

This is a guest post from Mewburn Ellis of London.

The Administrative Council (the governing body of the European Patent Office) has decided at its meeting on 16 October 2013 to change the regulations regarding the deadline for filing divisional applications, specifically, to abolish the current deadlines.

From 1 April 2014, it will once again be possible to file a divisional application right up to the day before grant of the parent application.  We understand that the new rule will apply to all applications that are pending on or after 1 April 2014, even if a deadline for filing divisional applications under the current regulations had already been set or indeed had passed.  Thus, for many applications, the “window” for filing divisional applications will re-open.

There will also be an additional filing fee for second and subsequent generation divisional applications (i.e. divisionals of an application that is already a divisional application).

The EPO official announcement can be found here.  We will provide further information as it becomes available.

Case Law of the EPO Boards of Appeal Released

Thursday, October 10th, 2013

Thanks to correspondent Paul Cole of Lucas &Co. for sending us the below notice.

Students of patent law will welcome the 7th edition of this well-known compilation which went live on the EPO website on 4th October. It is now available both online in HTML here and in hardback, but not yet as a pdf. Such works grow with time: the 5th (2006) edition ran to some 746 pages including the index, the 7th (2010) edition was of 1091 pages and the present edition is of some 1200 pages.

A foreword by Wim van der Eijk, Chairman of the Enlarged Board, records that the first appeal decision, J 2/78, issued on 1 March 1979 and was followed in 1981 by 16 technical appeal decisions. The number of technical appeals has grown from 8 in 1980 to 2659 in 2012. It is recorded that over the past 34 years the boards of appeal have settled more than 34 000 cases and that more than 90 decisions or opinions of the Enlarged Board covering legal points of fundamental importance have been handed down.

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Patentability Issues for Plants in the EPO

Monday, July 15th, 2013

While this decision from the EPO Technical Board of Appeal raises more questions than it answers, it does a very good job of framing the issues and uncertainty regarding the patentability of plants in the EPO. The claim was to a broccoli plant containing elevated levels of certain anti-cancer compounds. The plant was claimed in product by process form that recited only conventional breeding and selection step. However, while plant varieties are not patentable in the EPO, and conventional plant breeding methods are not patentable either, the question remains as to whether improved plants that are not claimed as varietals but that are made by conventional breeding methods are patentable.

You can find a guest post on this decision “Broccoli Reheated — Second Referral to The EPO Enlarged Board of Appeal” by Dr. Stefan Danner below.

07 13 Patentability of plants