TIBOLONE PATENT CASE; JIPLP SURVEY

Tibolone patent case

The IPKat has received the following news from his talented friend Gill Grassie, the Legal Lassie (Maclay Murray and Spens):

"The decision of Lord Glennie in the patent revocation case of Arrow Generics v Organon and Norton [2006] CSOH 146 was posted on the Scottish Court website last week. A Scottish Court of Session decision, it dealt with the application for revocation of two European patents, each relating to the same compound - Tibolone. The first patent (‘035) related to the crystalline purity of two polymorphic forms of Tibolone; the second patent (‘375) related to the chemical purity of the same compound.

Lord Glennie (the Scottish specialist IP judge) held that all the claims subjected to attack by Arrow/Norton were invalid, basing his decision on either anticipation or obviousness. In regard to ‘035 the Court rejected the argument that polymorphic Form 1 was not anticipated because Form 2 at the time of the relevant prior art document had not disclosed Form 1, or because of the fact that the compound was polymorphic had not yet been discovered. The prior art document clearly disclosed pure Form 1; that was sufficient to anticipate. The ‘375 patent effectively was prolonging a monopoly on a product based on its chemical purity. Lord Glennie held that a document disclosing a compound and its manufacture makes that compound available to the public in all grades of purity which are achievable by conventional means such are within common general knowledge of those skilled in the art.

Akzo’s argument that particular yields should be read into the ‘375 claims was rejected. The Court also refused to allow an application to amend various claims of ‘375 made by Akzo, as the application was made too late and would require the Proof (Trial) to be reopened. In addition, the proposed amended claims were unlikely to meet the tests laid down in Kirin-Amgen for product-by-process claims.

The effect of this decision is to revoke the main claims of both these European Patents throughout the whole of the UK".

The IPKat is always glad to see cases coming through the Scottish courts. He wonders whether, following the upgrade to Scottish IP enforcement in the wake of the recent Enforcement Directive, the volume of North-of-the-border enforcement litigation will increase. Merpel says,I hear it's cheaper than in England too ...


JIPLP survey

Readers of that thoroughly democratic institution, the Journal of Intellectual Property Law & Practice (JIPLP), now have the opportunity to make their feelings felt since a readers' survey is being conducted. The story goes like this:

"Oxford University Press is conducting a survey on its new Journal of Intellectual Property Law & Practice, seeking views on the content and appearance of both the online and print versions of the journal. Survey responses are confidential and those received by Friday 29 September will be entered into a prize draw for £400 worth of OUP books.

If you have not seen the journal yet, you can see a free sample issue here. If you have not already received an email request to fill in the survey, why not take a look at the journal and give them your views on it by clicking this link: Click here to take survey".

The IPKat says, do take the trouble to complete the questionaire. It's the only way of letting publishers and editors know what you really expect from an IP journal. Merpel adds: there are several factors here - what readers want, what they need, what they like and what they're prepared to pay for. It's a tricky set of factors to balance when readers are drawn from different countries, professional or commercial sectors and IP specialisms.

Survey methodologies here and here