Patent Law | Roundtable: Patents 2011

Who?s Who Legal has brought together four leading practitioners from around the world to discuss key issues facing Patent lawyers today

Participants

Who?s Who Legal: Have you seen any significant regulatory changes in recent months? Are there any impending changes that are likely to affect the practice of patent law in your jurisdiction in the future?

Stephen Stern: There are a number of proposed legislative changes which would, if enacted, impact significantly on the practice of Australian patent law.

First, the Intellectual Property Law Amendment (Raising the Bar) Bill 2011 was published by the Commonwealth government in late December 2010. The stated purpose of the bill is to raise the standards and improve the processes of the Australian patent system so that it aligns with the positions and standards in other jurisdictions. Some key changes that the bill would introduce include:

removing the limitation for ?inventive step? so that the common general knowledge is broader than what was disclosed in Australia only;

adoption of the USPTO requirement that a patent specification disclose ?a specific, substantial and credible use? (ie, utility);

requiring the examiner to consider utility and allowing the examiner to consider prior use (rather than prior art documents only) at the application stage;

granting client-patent attorney communications privilege to the extent that client-lawyer privilege would apply; and

deeming a patent to have been ?sealed? when it is entered onto the register.

The bill is a welcome development as it will strengthen granted patents and make them less vulnerable to attack by raising the threshold that must be met in order to obtain a patent. The bill has been released as a draft only and IP Australia is seeking submissions on the bill.

Secondly, there is considerable movement in Australia on the question of what may properly constitute ?patentable subject matter?. There is currently a bill before the Australian parliament entitled Patent Amendment (Human Genes and Biological Materials) Bill 2010, which would amend the Patents Act to exclude ?biological materials? (including derivatives) from patentability. If such an exclusion was introduced, as proposed in the bill, it appears that the practical implications would be limited as it would only exclude patenting biological material per se and would not invalidate method claims relating to or using biological material.

At the same time, and in contrast to the Bill?s proposal, the government?s Advisory Council on IP (ACIP) has released a report recommending that (among other things):

there is no persuasive case for the government to amend the Patents Act to expressly exclude ?biological materials? from patentability at this stage; and

the Patents Act should be amended to codify the common law test that an invention must be ?an artificially created state of affairs in the field of economic endeavour?.

At this stage it is too early to predict whether the government will prefer the bill?s approach or ACIP?s recommendations.

Jay (Young-June) Yang: Korea has proposed the Framework Act on Intellectual Property Policies, the purpose of which is to guide future developments of IP-related policies and to establish a national framework for the protection and enforcement of IP rights. In the current system, laws and regulations are each proposed and enforced by individual agencies of the government. Ultimately, the Act will unify these fragmented laws into a single consistent legal framework in order to promote more efficient protection and application of IP in Korea.

An impending change that is likely to affect our patent practice in the future is a proposed amendment to the Korean Patent Attorney?s Act. The main thrust of the amendment is to allow Korean patent attorneys to co-represent clients with attorneys-at-law in patent infringement litigation. Currently, Korean patent attorneys are not allowed to ?officially? represent clients in patent infringement proceedings, although the two professional groups work together closely. The proposed amendment will allow for greater involvement of Korean patent attorneys.

Ron Dimock: There are no impending regulatory changes likely to affect Canadian patent law in the near future.

There is, however, an impending court decision that may affect patent law in Canada.

Amazon successfully appealed a decision of the Commissioner of Patents that rejected the ?one-click? patent on the basis that business methods are not patentable in Canada. The Federal Court of Appeal for Canada is currently reviewing the case, and an affirmation of the Federal Court decision would confirm that business methods are patentable in Canada. Amazon has filed its memo of fact and law and the interveners are currently awaiting a decision regarding their inclusion in the appeal.

Nicola Dagg: In March this year proposals for a unitary, pan-European patent court system were rejected by the Court of Justice of the European Communities (ECJ) as incompatible EU law. Under the proposals patentees would have been able to obtain a single court decision applicable across Europe and pan-European remedies including cross-border injunctions. This regime now seems unlikely to succeed. Although the European Commission is pressing ahead with proposals for a modified unitary European patent there is currently much uncertainty about how such a patent might be litigated and about whether it will be possible for European countries to find a way of working together to rationalise the current fragmentary system of patent litigation in Europe. In the meantime the spotlight that has been thrown on these issues may have some indirect consequences for national litigation as the European courts continue to try to co-operate more on timing when there are parallel patent cases and in taking notice of each others? precedents. Some have also speculated

Source: http://findpatenthere.com/patent-law-roundtable-patents-2011/

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