Tuesday, 24 June 2014

5 Points on Incremental Innovation

These points are based on a report from the Fraser Institute entitled ‘The Benefits of Incremental Innovation’.

1. The economist Robert Gordon is of the view that western societies have reached a scientific plateau and now there will be a decline in the usefulness of future inventions compared to past inventions. Other academics believe that there is presently too much ‘imitative’ incremental innovation and too little ‘breakthrough’ innovation, and the pharmaceutical sector is pinpointed as a particular area for this concern.

2. Innovation can be classified into incremental (improving existing products), breakthrough (providing more substantial changes to technologies) and radical (creating drastic changes to the competitive environment and perhaps even creating entirely new businesses).

3. There is a feeling that managers of companies are more risk averse to innovation than shareholders would prefer.

4. In the pharmaceutical field incremental innovation does provide benefits to patients and helps cost-cutting. Incremental innovation will often be based on improving the ways of delivering known drugs, making them more effective or reducing side-effects.

5. There is controversy as to whether patents that protect incremental innovations in the field of medicine are ‘legitimate’ or whether this is simply an attempt to extend patent protection on the drug itself (so called ‘evergreening’). India has specific legislation designed to stop evergreening of drugs.

6. The report ultimately concludes that incremental innovation is beneficial. However we believe that this is a very complex topic where the discussion is ongoing.

The report can be found here.

Our IPKat article on IP and medicines can be found here.

Our PatLit article on innovation and the IP system can be found here.

Monday, 23 June 2014

5 Recent Interesting Decisions of the EPO Boards of Appeal

The following recent decisions caught our eye as being interesting or illustrating policy points at the EPO.

1. T1142/12 concerns denial of the applicant’s request by the Examining Division to have oral proceedings in Munich rather than in The Hague. The Board found that this was not part of the Examining Division’s decision and could therefore not be subject to appeal, and nor could it be referred to the Enlarged Board. The outcome is as expected and is a reminder that what is appealable is tied to whether the issue is, or can be, the subject of a decision  

2. T2599/11 concerns whether the patent proprietor can file a broader request in appeal than was decided upon by the Opposition. The Board decided that in this case the broader request could be filed. The fact that such an outcome is possible shows there is some flexibility in the Boards’ increasingly strict approach on accepting claim requests.

3. T67/11 concerns inventive step of a new antibody. The applicant limited the claims to antibodies with specific sequence changes. These were found to be inventive because the skilled person would not know which changes in sequence would be disruptive and which would be beneficial. Unpredictability can be the basis of inventive step, but then it usually requires the claims to be narrow.

4. T1293/11 has some interesting comments on the language used to claim a transgenic plant. The Examining Division had not accepted ‘…transformed with vector X…wherein expression of X gives activity Y’, arguing that it covered transformation of non-functional sequences and also covered plants where the activity was gained by other means. However the Board disagreed and allowed the applicant’s definition of the transgenic plant.

5. In T1100/10 an appellant (rather ambitiously) challenged the Board’s actions in not accepting claim requests by arguing that the Rules of Procedure of the Boards of Appeal did not have legal basis because they had been drafted by the Presidium rather than the Administrative Council. However the Board did not accept the argument because they said it was sufficient that the Administrative Council had approved the Rules.

Friday, 20 June 2014

8 Points on the US Supreme Court Decision Alice v CLS Bank

1. This decision was seen as the Supreme Court’s opportunity to comment on whether software is patentable. However that does not seem to have happened and the word ‘software’ is not mentioned in the decision at all.

2. The patent at issue concerned a computer-implemented scheme for mitigating ‘settlement risk’ (the risk that only one party in financial transaction will pay what it owes) by using a third-party intermediary. The claims are directed to a method carried out on a computer, a computer system configured to carry out the method and a computer-readable medium. The Supreme Court decided all the claims were to an abstract idea and merely requiring generic computer implementation was not enough to make them patent eligible.

3. The history of the case is that the District Court found all the claims to be patent ineligible as they were directed to the abstract idea of ‘employing a neutral intermediary to facilitate simultaneous exchange of obligations in order to minimize risk’. A Federal Circuit Court reversed the ruling. An en banc Federal Circuit hearing affirmed the District Court’s view, but seven different opinions were given. Dissenting opinions were of the view that only the system claims were patent eligible or all the claims were patent eligible.

4. The Supreme Court relies heavily on the Bilski, Mayo and Myriad cases. Quoting Mayo they state that patent law cannot be used to tie up the ‘building blocks of human ingenuity’.

5. The Court refers to the framework provided in Mayo which first determines whether the claims are directed to a patent ineligible concept and then asks ‘what else is there in the claims before us?’. This second step is the search for an inventive concept, something that ensures the patent amounts to ‘significantly’ more than the ineligible concept.

6. In the Court’s analysis the claims are directed to the abstract idea of intermediated settlement which is a known economic practice. The Court took the view this is as much an abstract idea as was the method in Bilski (for hedging against the financial risk of price fluctuations). The Court decided it did not need to go further to set out the ‘contours’ of the abstract ideas category.

7. The Court went on to conclude that the additional elements of implementation on a generic computer system do not transform the abstract idea into a patent eligible one. At this point the Court quoted Mayo saying that the method of determining metabolite levels was well known in the art, seeing the use of a computer in the present case as similarly insufficient to give patent eligibility. Benson and Flook were also quoted to support the conclusion that eligibility cannot be gained simply by limiting use to a ‘particular technological environment’. A contrast was made to Diehr where the specific method of recording the temperature made the claim eligible, not the computer implementation. The claims in Diehr were seen to improve on ‘an existing technological process’.

8. The Court’s analysis found each step of the computer-implemented method claim to be conventional, and no ‘improvement’ of the computer or a technology occurs. That was insufficient to give patent eligibility and the same applied to the computer system and computer-readable medium claims, with the Court quoting from Mayo which warned against making patent eligibility ‘depend simply on the draftsman’s art’.

The decision is available here.

Commentary on the decision is available at: Patently-O (see here), IPWatchdog (see here) and Patent Docs (see here). IPWatchdog has criticised the decision most stating that it has rendered most software patents invalid. It takes the view that patent applications will now need to be drafted to include much more details of the computer device used to implement the invention. Patent Docs takes the view that bad cases make bad law and this was an ‘extreme’ case which led to the wrong approach being used, i.e. eligibility rather than novelty and non-obviousness.

In our view the decision continues the Supreme Court’s blurring of eligibility with novelty and non-obviousness, the word ‘conventional’ being used often in the Court’s reasoning . In addition the decision needs to be seen in the context of perceptions that too many invalid patents are being granted to computer-implemented inventions and the problem of patent trolls.

[Update on 23 June 14: Patently-O has gathered together different reactions to the decision - see here]

[Update on 24 June 14: IPKat article now available here. New Patently-O article available here.]

Thursday, 19 June 2014

Patent Blogs

We are based in the UK and use blogs to keep informed about patent developments.  This post is based on our experience of reading patent blogs over the last 2 years.  Inevitably there is a UK, European and US bias reflecting our work needs.

Our favourite blogs are IPKat and Patently-O which we look at on a daily basis. Both blogs post frequently covering all major developments in a timely fashion. The writing is of high quality and objective. Diverse topics are covered with plenty of informed interesting analysis. IPKat has a UK and European focus, though also covering stories from other territories.  Patently-O is very US based.

We also look at IPWatchdog on a daily basis. Again all major developments are covered in a timely and thoughtful manner. We don’t always agree with IPWatchdog’s politics, but we accept it makes an important contribution to patent debates. IPWatchdog is very US based.

We also follow IP Finance and PatLit which are essentially subsidiary blogs to IPKat. Posts on these blogs tend to be based on more technical issues, but we usually find them interesting.  They post articles less frequently.

We also look at Patent Docs less frequently. We find it is very good for following US biotech/pharma issues (of which there are many at the moment).

Our firm, Holly IP, is part of Keltie’s K2 Network. That means we follow, and occasionally contribute to, IPCopy, which is very UK and Europe based.

We have recently started following Written Description. We find it to be very readable offering an insight into the academic side of US patent matters.

On more specialist matters we would mention the following:

- Spicy IP. This is a very active blog covering all Indian IP matters. Lots of interesting opinions.

- K’s Law. This EPO case law blog became inactive in May 2014 but it remains a useful online resource.

- DeltaPatents, EQE Tools, EPLAW Patent Blog and  Le Blog du Droit EuropĂ©ean des Brevets are all good for EPO (and to an extent European) case law.

- The SPC Blog. Very specialist.

Wednesday, 18 June 2014

9 Points on Differences Between Europe and the US Relevant to Patents and Biotech Innovation

These points are a collation of our thoughts on the differences between Europe and US relevant to innovation and patent law development. Some of the points are more relevant to biotech which is our specialist area. It is not the purpose of this post to list the specific differences in patent practice between the two territories.  We realise that some of the points listed below are speculative, coming from ‘anecdotal’ experience.  Partly this is because it is difficult to see what the situation is in Europe in particular areas due to lack of data collection and analysis.

1. Despite the European Union (EU), members of the EU remain very much individual economies, with national boundaries impacting on IP matters and potentially hindering innovation. In contrast the US is a single economy with central institutions for granting and enforcing patents. The sheer size of the US means that larger institutions, companies and ecosystems can come into existence.

2. The US is more developed in many economic areas. For biotech the venture capital system is much more developed. It is larger in terms of the amounts invested and also seems to have more expertise in dealing with the complexity of funding early stage biotech research.

3. It could be argued that the European patent system is not yet complete in that the Unitary Patent and the Unified Patent Court have not yet come into existence. Looking at the existing systems it is of course difficult to see how well the European and US patent systems are doing compared to each other. Given the impact of recent US Supreme Court decisions and the number of different bills that have been proposed to deal with the problem of patent trolls, the US system certainly seems to be changing rapidly and is arguably more responsive.

4. It seems to us that the US patent system is more open to different ideas and perspectives, including lobbying, at the level of law-making, USPTO practice and Court decisions.

5. The US in general is a place with a higher level of level of experimentalism.  There are more ideas and more organisations experimenting, including think tanks, companies and universities. The Federal System itself allows experimenting with democracy and law-making which central government can see the results of and learn from.

6. In our opinion the US remains more capable of developing innovation ecosystems. In addition we speculate that collaborations are much easier to set up without the complexity of national boundaries.  US research also tends to have a more ‘visionary’ approach which seems to focus it and give it momentum.

7. We would propose that in the US there is a higher level of ‘conversation’ happening in the areas of patent law development, funding of innovation and R&D strategies. Certainly there are more high quality blogs reporting and commenting on these areas. We would also propose that US institutions and corporations are more exposed to this ‘conversation’ allowing them to potentially be better decision-makers.

8. There seems to be a higher level of academic study of innovation and IP in the US, in terms of published articles and books. Academics also seem to participate more in policy arguments.

9. It must be pointed out that the economies of Germany, the UK and the US are comparable in productivity terms, and so the performance of the economies per se of these countries are not responsible for the differences we have mentioned.

You may also wish to see related articles How is Biotech Patenting Different? and 10 Patenting Scenarios.

Tuesday, 17 June 2014

6 Academic Articles on Changing TRIPS and the Global IP System

These articles were found by a brief internet search on the topic of how to change the global IP system. Although this was not our original intention they are focused more on developing world issues.  We were surprised by how few recent academic articles are available on the internet about how the global IP system should develop. In addition, whilst several articles discuss the need for change and the mechanisms that could be used to achieve it, the specific changes that are required do not seem be discussed. We have purposely avoided articles which delve deeply into areas which might be considered controversial or political. We have not included articles on IP and access to medicines. That issue was considered in our post on the IPKat blog (see here).

1. ‘Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO and Beyond’ by Dinwoodie and Dreyfuss (see here)

This starts from the point that the TRIPS regime is in trouble with lawmaking at the WTO having stalled though there is a need to continue to recalibrate the rules. It notes that TRIPS has failed to deliver on its promise of technology transfer. It explores ways of reviving lawmaking in the global IP system, suggesting using WIPO as a ways of achieving this.

2. ‘A Neofederalist Vision of TRIPS: The Resilience of the International Intellectual Property Regime’ by Dinwoodie and Dreyfuss (see chapters 6 and 7 here)

This discusses what sort of an IP system TRIPS should seek to create, and to what extent it imposes rigid obligations which are in conflict with public interest concerns.

3. ‘The Architecture of the International Intellectual Property System’ by Dinwoodie (see here)

This article is quite old now, but gives a readable summary of the components of the global IP system.

4. ‘Moving Towards a Sustainable Future: Replacing Trips With A New International Regime For Intellectual Property And Sustainable Energy Technology Transfer’ by Pradhan (see here).

This focuses on the issue of climate change to argue that the present TRIPS based system is insufficient to provide tech transfer to the developing world.

5. ‘Technology Transfer in the TRIPS Age: The Need for New Types of Partnerships between the Least Developed and Most Advanced Economies’ by Foray (see here)

This is a study finding that the usual economic incentives (i.e. profit) are insufficient to lead to tech transfer to less developed economies. That means other models, such as a public-private partnerships, are needed.

6. ‘Top 10 Innovative Policy Measures to Promote Intellectual Property Creation and its Commercialization’ by the World Economic Forum (see here)

This is not really an article, but we’ve included it to show the sort of documents that are out there. This is from a more ‘business friendly’ approach.

Thursday, 12 June 2014

9 Points on What Makes a Commercial Biotech Blog a Good One

We monitor developments in commercial biotech for our Twitter account @businesssnippet (see here) and so that we can best advise our clients. Over the last 2 years we’ve developed a sense of the blogs that are most useful to us and why. Here are our thoughts on the matter.

1. Insight and Context

The best bloggers are able to add a lot of insight and context to the facts of a story. An individual event will be placed in the context of what is happening in the biotech world, for example an M&A bubble or the trend towards personalised medicine or virtual structures. That will make their posts much more readable. Luke Timmerman (former Xconomy writer) is an example that comes to mind, though he is no longer blogging (see his Twitter account here). We also very much enjoy reading Bruce Booth at ‘Life Sci VC’ (see here).

2. Unafraid of Controversy

It’s quite easy to tell after a while which blogs mention the controversies that happen in the pharma world and which do not.  Pharmalot is not a blog that we follow regularly but it is unafraid of controversy and whistleblowing. It is in the process of moving to The Wall Street Journal (see here).

3. Bias

The biotech/pharma world is a complex one and it’s quite easy to become entrenched in a particular position. We find the best posts come from writers who are appreciative of the different perspectives that can be taken (i.e. pro-pharma, pro-patient, pro-patents, pro-developing world, etc).

4. Catching Everything

Some blogs are able to offer a ‘news service’ where they can be relied on to report every significant event. The Big Red Biotech Blog [Update: this blog is no longer online] and FierceBiotech (see here) fall into those categories. Both are able to analyse individual stories to give the wider context in very readable posts.

5. Timeliness

Blogs need to report stories quickly if they are going to be a good ‘new service’. FierceBiotech can be relied on to do this.

6. The Grass Roots/Insiders

Biotech/pharma seems to need contact with ‘insiders’ to deliver the best articles. Reading the everyday publicity is probably very deceptive to what’s really going on. Luke Timmerman and Derek Lowe’s ‘In The Pipeline’ (see here) seem to deliver this.

7. The Hype

A good biotech writer must be able to see beyond the hype. Derek Lowe is an example of a writer that has the correct level of scepticism to ask the right questions.

8.  US Focus

All the blogs we look at frequently are based in the US. The US is simply more developed in the area of specialist blogging and also probably has more organisations and journalists collecting and disseminating data. European biotech seems like a black hole in comparison. We do like the UK blog ‘Drug Baron’ though (see here).

9. Analytical vs Academic vs Journalistic

When evaluating posts we distinguish between the purpose and style of each writer. Life Sci VC is close to ‘academic’ in the quality of analysis and writing, but publishes less often.  The Burrill Report (see here) is somewhere in the middle.

Here’s a rather old FierceBiotech post on the topic of biotech bloggers (see here).

Monday, 9 June 2014

8 Points on What Patent Judgments Achieve

In the last week we’ve seen two US Supreme Court judgments on patent issues, Limelight Networks v Akamai Tech and Nautilus v Biosig.  In addition here in the UK there have been two significant recent Court decisions on important patent issues, Actavis v Lilly (first instance decision on claim construction) and Shanks v Unilever (appeal from the IPO on employee compensation).  The purpose of this post is not look at any particular decision, but instead to focus more generally on the purpose and impact of important patent judgments, including decisions by the EPO Boards of Appeal.

1.  A significant judgement should add to the case law providing guidance to lower courts in areas where it is need. Last week an article on the Patently-O blog site noted how in fact precedence can be incorrectly applied when it is used in the wrong context (see here). In addition a Court trying to do justice can sometimes contort the law in a way that sets an incorrect precedent, and so there can be a tension between ‘justice’ and future case law certainty.

2.  Court decisions are of course part of the appeal process. Their function is to correct mistakes, in particular ensuring that the law has been applied correctly.  However the sheer number of cases that are reversed on appeal or where there are dissenting opinions show that it can be difficult to agree and be certain on how to apply the principles of patent law.

3.  Very senior courts do bring a deeper level of insight to a case. This is important where the judgment is going to significantly impact future practice. They are more likely to understand the purpose of legislators, and perhaps even the historical perspective in which the legislation was drafted and the problems it was meant to address.

4.  Judgments of higher courts keep the lower courts accountable and that increases the quality of the system as a whole. Ultimately knowing that the judgement can be reviewed and changed by a higher body keeps the lower courts, and even individual Patent Office Examiners, on their toes. It means that lower Court judgments are more likely to be properly reasoned and based on a logic that is not idiosyncratic.

5.  Court decisions can be contrasted in many ways with the manner in which EPO Boards of Appeal make decisions.  EPO Boards of Appeal have a high turnover rate.  That means they have more of a feel for what happened on related cases and that can give a more consistent harmonised approach on matters which are not explicitly defined by doctrines.  Essentially, in my personal opinion, it makes them good at judging on complex matters, such as ‘Given this experimental finding, with this amount of data, and this prior art, what is a fair scope of claim?’.

6.  The US and UK are of course common law jurisdictions where judgments are part of law-making and the approach is more about arbitration between parties (in contrast to civil law where judges apply the law to the case in hand and there is more of an investigative approach).  In the individual cases cited above one can see different overall approaches in what the judgment does. Where a judgment is an appeal reviewing a previous judgment, either it can simply note if there are any mistakes in the first instance judgment (e.g. Shanks v Unilever) or it can set out to identify the correct principle that should be used in that situation, which is of course what the Supreme Court decisions do.  The latter approach is more helpful to developing case law.

7.  Policy matters do influence judgements, though that might not be explicitly indicated in the judgment.  The UK House of Lord/Supreme Court is more likely to do this explicitly versus the US Supreme Court. The influence of lobbying on law-making and judgements is hard to quantify in different jurisdictions, but it clearly does happen.

8.  In my personal opinion different territories respond differently to judgments.  The Nautilus US Supreme Court judgment has been heavily criticised, which is something that would not happen in the UK where there is a more deferential approach to Court judgments. I am as yet undecided as to whether criticism of judgements as happens in the US improves the Courts system or whether it is simply the result of a more entrenched mindset in a system that is very adversarial.

Limelight Networks v Akamai Tech can be found here.

Nautilus v Biosig can be found here.

Actavis v Lilly can be found here.

Shanks v Unilever can be found here.

Friday, 6 June 2014

5 Snapshot Points on Tech Transfer from the Association of University Technology Managers (AUTM).

These points are from an interview of Jane Muir by IP Watchdog.  She is the Director of the Florida Innovation Hub at University of Florida and is presently the President of the AUTM.

1. It is important to understand that the process of technology transfer, going from lab discoveries to marketplace takes a long time, which in biotech can be 5 to 10 years. It is also a complex process consisting of discovery, patenting, licensing and putting the technology on the market place.

2. The valley of death: the majority of discoveries in universities are early stage. They are patentable but not yet a ‘product’.  The valley of death is the process of getting a product through the development stage to market.

3. Universities are restricted in what they can research (by the terms of available funding), and often cannot do development work.  Government will tend to direct research money to solving problems that the nation faces.

4. Universities have to choose their commercial partner carefully, agreeing milestones that ensure that development happens in the right way.  Tech transfer offices are often challenged in finding the resources to look for the best partners.

5. It has to be recognised that getting a technology to market is difficult and requires very different skills to those that scientists (or patent attorneys) have.

You can read the interview here.

Wednesday, 4 June 2014

9 Videos on Plants, Food Security and Developing World Research Issues

We follow developments in Plant Technology and Food Security via our twitter account @GeneTanical (see here).  We follow developments in Developing World Research via our twitter account @Tech_Capture (see here)

The videos below provide a snapshot into these sectors.



8 Points on the US Supreme Court Decision Nautilus v Biosig

1. The case concerns whether the description of electrodes being ‘in spaced relationship with each other’ meets the definiteness requirement.  The Federal Circuit had reversed the District Court’s findings of indefiniteness on this point.

2. The Federal Circuit felt that the test for indefiniteness should be based on whether a claim is ‘amenable to construction’ and as construed is not ‘insolubly ambiguous’.  In this case the Federal Circuit said there were certain inherent parameters limiting the distance between the electrodes.  The electrodes had to independently detect electrical signals at two points in the hand and could of course not be overlapping.  This allowed the skilled person to understand the ‘metes and bounds’ of the spaced relationship.

3. The Supreme Court disagreed with the Federal Circuit’s test seeing it as tolerating some ambiguous claims and not others. The Supreme Court said the correct test was that a patent would be invalid for indefiniteness if the claims read in the light of the specification and prosecution history fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

4. The Supreme Court noted that the parties agreed that definiteness should be evaluated from the perspective of the skilled person, in light of the specification and prosecution history and at the time the patent was filed.

5.  The Supreme Court noted the need for a ‘delicate balance’, taking into account the inherent limitations of language and providing a ‘modicum of certainty’. It noted the need to avoid a zone of uncertainty and also the need for a meaningful definiteness check to stop applicants purposely drafting ambiguous claims.

6.  The Supreme Court noted that the certainty which the law requires is not greater than is reasonable having regard to the subject matter, and this may turn on the evaluations of expert testimony.

7.  The Federal Circuit’s test of ‘amenable to construction’ and ‘insolubly ambiguous’ was seen as the Court taking the approach of ascribing ‘some meaning’ to a patent claim leaving a ‘zone of uncertainty’.  This was seen as more ‘amorphous’ than the statute allows.

8. The Supreme Court also said it does not ‘micromanage’ the Federal Circuit’s word choice in applying patent-law-doctrine, but it must ensure that the test is at least ‘probative of the essential inquiry’.

The decision can be found here.

You may also wish to see related articles Top 10 Uncertainties In Patents and 10 Observations on Patent Litigation.

Tuesday, 3 June 2014

8 Points on the US Supreme Court Decision Limelight v Akamai

1. This concerns an electronics method claim where the alleged infringer Limelight performed many of the steps of a method claim, but its customers performed the step of ‘tagging’.  Thus no one party performed all the steps of the method claim, and therefore there was no direct infringement.

2. The en banc Federal Circuit found Limelight to be liable for ‘inducing’ infringement, and that this could happen even where no single party had infringed directly.

3. The Supreme Court disagreed with the Federal Circuit and held that direct infringement must occur by ‘one person’ in order for inducing of infringement to be possible.

4. Without commenting on whether it was correct the Supreme Court referred to the Federal Circuit decision Muniauction which held that a method cannot be said to have been performed for infringement purpose unless each step is performed by the same party.

5. The Supreme Court could not agree with the Federal Circuit in the present case because it would not lead to ‘ascertainable standards’ for infringement, and two bodies of infringement law would need to be developed for the different types of infringement.

6. The Supreme Court also felt that when Congress wishes to define inducing infringement more broadly it can do so, for example in Section 271(f)(1) which gives a detailed definition of inducing infringement. Thus the Courts should not create a liability of inducing infringement where Congress has not elected to do.

7. The Supreme Court also referred to Deepsouth Packing v Laitram where it was held that contributory infringement could not occur where direct infringement had not occurred in the US.

8. The Supreme Court recognised that its view meant that infringement could be escaped by dividing the steps of a method between different parties. However this is not enough to justify the Federal Circuit’s decision which creates its own ‘serious and problematic consequences’ of an infringement test which is ‘untethered’ to the statutory text and difficult to apply consistently.

The decision can be found here.

Monday, 2 June 2014

15 Videos Relating to Innovation and Tech

These videos are chosen to provide a snapshot of what is happening in the world of innovation and tech.

14. Scott Anthony's 'How to Spot Disruptive Innovation Opportunities' [A little bit old, but still relevant]