UK Supreme Court Holds Brexit Needs to be Effected by Parliamentary Legislation
The UK Supreme Court has, by majority ruling, upheld the November 2016 decision by the British High Court which held that the executive does not have the power to trigger Article 50 and that such a decision needs to be made by Parliament. The UK Supreme Court held that withdrawal from the EU will make a fundamental change to the UK’s constitutional arrangements, and that the UK constitution requires such changes to be effected by Parliamentary legislation.
European Patents Soon Capable of Validation in Cambodia
Cambodia recently signed an agreement with the European Patent Office (EPO) under which a European patent applicant will be able to validate their patent application in Cambodia.
It is expected the agreement will enter into force on 1st July 2017. If that occurs, then European patent applications with a (deemed) filing date on or after 1st July 2017 can be validated in Cambodia. To clarify this, a European application that is filed on or after 1st July 2017 but which is based on a PCT application that is filed before 1st July 2017 would not qualify for validation in Cambodia, since the deemed filing date is before 1st July 2017. For an as yet unknown transitional period the validation agreement will not apply in respect to pharmaceutical products. As with other states, validation needs to occur within the later of 6-months of the mention in the European Patent Bulletin of publication of the European search report or before European regional phase if Europe is entered via the PCT. A 2-month grace period is allowed upon payment of a late fee.
European patent applications that are validated in Cambodia will be subject to Cambodian patent law and would require translation. Cambodia will be the first Asian country that allows European patents to be validated within its territory.
EPO Enlarged Board Counters Poisonous Priority Concern
In G 1-15 Infineum USA LP v Clariant Produkte (Deutschland) GmbH the Enlarged Board of the EPO Boards of Appeal held that partial priority need not give rise to self-colliding novelty issues or “poisonous priority”.
The case concerned partial priority for claims encompassing alternative subject-matters on account of one or more generic expressions – generic “OR”-claims. Infineum argued that a generic “OR”-claim can be interpreted in at least two ways: firstly, as relating to a claim broadened beyond the broadest disclosure of the priority document, and, secondly, as relating to a claim which is narrower in scope than the priority disclosure but which contains a generic term.
The opposition division held that the subject-matter of claim 1 is a generalisation of the more specific disclosure in the priority document and so did not represent the same invention. It further held that partial priority could not be claimed since the intermediate generalisation in granted claim 1 with respect to the disclosure in the priority document did not amount to claiming a limited number of clearly defined alternative subject-matters. Consequently, priority could not be claimed and the priority document was state of the art for the patent.
Five questions were subsequently referred to the Enlarged Board, who in their decision answered the following first referred question - with the other 4 referred questions not needing to be answered on account of the answer to the first question:
Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic “OR”-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?
The Enlarged Board agreed with Infineum’s submission that the EPC needs to be interpreted in a way that is consistent with the Paris Convention. It noted that under Article 4F of the Paris Convention, priority may not be refused on the ground that the applicant claims multiple priorities, or on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed - provided that, in both cases, there is unity of invention. For the elements not included in the priority application(s), the filing of the subsequent application gives rise to a right of priority under ordinary conditions.
The Enlarged Board held that assessing whether subject-matter within a generic “OR” claim enjoys partial priority involves firstly determining the subject-matter disclosed in the relevant priority document and then examining whether it is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic “OR”-claim not enjoying this priority but itself giving rise to a right to priority. By dividing the generic “OR”-claim into these conceptual parts, inside and outside the scope of each priority disclosure, the problem of poisonous priority and self-collision is resolved. The Enlarged Board concluded that:
Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
Joint Patent Attorney Registration Regime In Force from 24th February 2017
On the 24th January 2017 the Patents (Trans-Tasman Attorneys and Other Matters) Amendment Act 2016 Commencement Order 2017 was made. It brings Part 2 of the Patents (Trans-Tasman Attorneys and Other Matters) Amendment Act 2016 into force on 24th February 2017. In particular, it brings into force from that date the joint registration regime with Australia for patent attorneys.
United States of America
US Supreme Court Considers Damages when Infringing Article is a Component
In Samsung Electronics Co Ltd v Apple Inc the Supreme Court reversed and remanded the Court of Appeal of the Federal Circuit (CAFC) decision which affirmed an awarded $399 million in damages to Apple.
In earlier proceedings Samsung was found to have infringed Apple’s design patents for phones having a rectangular front face with rounded edges and a grid of colourful icons on a black screen. Under section 289 of the Patent Act an infringer is liable to the patent holder to the extent of their total profit, and Apple was awarded $399 million in damages, which was all of Samsung’s profit from the sale of the smart phones.
Samsung argued that the damages should not be for the entire profit as the infringing articles of manufacture were exterior components rather than the entire smart phone. That argument was rejected by the CAFC on the basis that the components of Samsung’s smartphones were not sold separately to ordinary consumers and thus were not distinct articles of manufacture.
However, the Supreme Court held that for multicomponent products the relevant article of manufacture for arriving at a damages award need not be the end product and so can be a component of an end product. An article of manufacture is not defined by its capacity for separate sale, rather it is simply a thing made by hand or machine, whether that be a final product or a component of such a product. In remanding the case, the Supreme Court left it for the Federal Court to determine whether for the design patents in issue the article of manufacture is the smartphone or particular components thereof.
MBIE Releases Report on Copyright and the Creative Sector
The Ministry of Business, Innovation and Employment has now released its report on Copyright and the Creative Sector following the launching of the study in October 2015. The study was initiated so as to better understand how the copyright and designs regimes are used by the various creative industry subsectors across the lifecycle of a creative work in a changing technological landscape and the challenges and opportunities that disruptive technologies give rise to. The report does not make any specific recommendations for change, but rather canvases a range of viewpoints and considerations to be taken into account when considering future legislative changes.
The study found that copyright is still important to the creative sector, but that some sectors have changed the way they obtain and protect commercial value in their creations. Technological developments have created new opportunities for finding new audiences for both new and historical works and allowing new types of content while reducing distribution costs, but have also enabled new forms of unauthorised use. As works become increasingly multimedia ownership of sub-works can be spread across multiple authors, which can make licensing such works complex.
The study is seen as the beginnings of a conversation and further input or feedback is encouraged to be sent to firstname.lastname@example.org.