Around the IP blogs!

IPKat is here with your weekly round up of the goings-on around the IP blogosphere. This week's highlights include the Dutch equivalent of Actavis v ICOS (Tadalafil), a US ruling on patent eligible subject matter and medical diagnostic methods and contradiction between the CJEU and the Spanish Supreme Court on SPC regulations. 

Patents

Actavis v ICOS - Netherlands

Last year, IPKat reported on the UK Court of Appeal decision Actavis v ICOS [2017] EWCA Civ 1671, in which the concept of "obvious to try" for a particular dosage regime was assessed in the context of clinical trial data. EPLAW reports on the equivalent Dutch case. In a similar decision to the UK courts, the Dutch District Court ruled that the skilled person, when starting from the prior art, would arrive at the claimed dosage range in various non-inventive steps constituting to "no more than walking down a one-way-street". The Dutch EP patent was thus revoked. 

US patent eligible subject matter

Patentlyo analyses a recent split Federal Circuit ruling concerning patent eligible subject matter, particularly applied to medical diagnostic methods, and Alice/Mayo step 2, i.e. whether the claims include an inventive concept beyond a natural law “sufficient to transform the claims into a patent-eligible application” (MPEP § 2106). The Federal circuit ruled that a claim directed to a method of detecting human body temperature was valid and did not relate to patent ineligible subject matter. The court's reasoning is worth a read for US applicants encountering Alice/Mayo objections who are looking for potential ways-forward. 

Cheshire knows all about Alice

Indian patent working requirement

TrustinIP explores the historical background and modern day relevance of the Statement of Patent Working requirement in India. Section 146(2) of the Indian Patent Act requires every Indian patentee and licensee (exclusive or otherwise) to provide an annual statement of the extent to which the patented invention has been worked on a commercial scale in India. The deadline for providing the statement is the 31st March of each year. As described on TrustInIP, non-compliance with the requirement can result in a fine of 1 million rupees (~ £11,000), whilst knowingly providing false information can be punished with imprisonment for up to 1 year (Indian Patent Act, Section 122). TrustinIP considers the relevance of this requirement to modern patent practice and technologies, and comments on recent indications that the provision may soon be targeted for reform. 

National genetic heritage and traditional knowledge in Brazil

On a previous Around the IP Blogs, IPKat highlighted IPTangos report on the approach of Peru to biopiracy relating to unauthorized and/or non-compensated access and/or use of biological resources or traditional knowledge (TK) of indigenous people. This week, IPTango reports that the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has given notice that they will now (from 27 February 2018) be issuing formal Official Actions asking all applicants for Brazilian patent applications relating to national genetic heritage and/or TK, to provide proof in the form of a positive declaration of authorization to access the relevant resources. If no such declaration is provided within 60 days, the INPI will assume there has been no access to such resources, and will continue with examination. IPTango asks, if the INPI continues regardless of whether a declaration is filed, what will be the practical purpose of the office action?

Brazilian Kat

Event report - Union IP, Indirect Infringement

Tufty the cat reports on the UNION-IP Round Table Event in Germany, which focused on the approach of different European jurisdictions to indirect infringement. 

SPCs

The SPC blog reports on the development in Sweden regarding the correction of the duration of SPCs, in the context of the CJEU ruling C-492/16, that the term of an SPC is set by the rules of the Regulation 469/2009 and cannot be set by a national patent office. In second instance proceedings, the Spanish Patent and Market Court of Appeal (PMCA) found that the Spanish patent office was competent to decide on the duration of an SPC. The Spanish Supreme Court recently decided not to hear an appeal of the relevant cases, such that the second instance decision of the PMCA became final, in apparent contradiction to the position of the CJEU. 

Spanish Supreme Court

Copyright

The Kluwer Copyright blog reports on the recent ruling by the Spanish court in proceedings brought against a number of internet providers. The proceedings were brought by various audiovisual producers belonging to the Motion Picture Association of America (MPAA) and were aimed at forcing the providers to block internet access to certain websites providing content infringing the claimants' copyright. As pointed out by Kluwer Copyright, one interesting aspect of this judgement is that it was directed against the internet providers as opposed to the websites themselves. 

Trade marks

Marques Class 46 provides a guest post by Ricardo Alberto Antequera on the recent changes in Venezuela of the foreign currency system used to calculate and pay official fees at public authorities, including IP office fees. 

Sources of case law?

Finally, IP Draughts muses on case law trawling and argues that legal firms providing case law reports need to get better at explaining the context and importance of a case. Of course, for important IP case law, there is IPKat!

Author: Rose Hughes