Publications
European IP Bulletin, Issue 3, July -
Patents
Patents
13. Rockwater wins case on infringement and invalidity
Rockwater Limited v Coflexip S.A. & Technip, [2003] EWHC 812 (Ch)
This was an action initiated by Rockwater, who sought revocation of the defendants’ patent, whilst the defendants in turn counterclaimed for infringement. In fact, the defendants had already been successful in enforcing this patent against a third party in a previous case, maintaining the patent's validity in the process. The presiding judge then, as here, was Laddie, J, who had been partially overruled by the Court of Appeal.
The patent in question related to a process and apparatus for laying flexible pipes out at sea. Both parties accepted the claim construction as set out in the previous case. However, the issues of infringement and validity, including the prior art relied upon, were quite different from those of the previous case.
The defendant accepted that the claimant had not infringed the process claims of the patent, and that there had been no use of the allegedly infringing apparatus in the manner described in the patent. The apparatus claims, though, were construed as claiming "apparatus capable of being used for". Consequently, infringement of these claims was alleged despite the claimant never having put the allegedly infringing equipment to the use claimed.
In considering non-literal infringement, the judge initially declined to use the Improver approach, noting that although such a structured approach could be useful, it should not be seen as a straight jacket. In so doing, he emphasised that the court was trying to determine "not what the inventor intended to be covered by his claims but the meaning of what he [the inventor] said he intended to cover". Using this unstructured approach, Laddie, J felt that the integer in question, which was missing from the claimant's apparatus, was essential to the claim and therefore there was no infringement. In reaching this conclusion, he noted that as the claim only incorporated a few integers, it was less likely that any of them would be read as being redundant. Although this settled the issue of infringement, he nevertheless also applied the structured Improver approach and came to the same conclusion.
Laddie, J then moved to assessing the validity of the patent. Two items of prior art were put forward, neither of which had featured in the earlier case. Because of the nature of the claims, the question was not whether the prior art disclosed equipment which had been used in the way described, but whether or not it disclosed or rendered obvious equipment which was capable of being used as described. The importance of taking a natural construction of prior art was emphasised, and on such a construction, Laddie, J found that certain of the claims were anticipated, and all were obvious. He thus held the patent invalid.
14. Obligation of farmers to provide information to Holders of Community Plant Variety Rights
Schulin v Saatgut-Treuhandverwaltungs GmbH, C-305/00, ECJ
In this case, the ECJ interpreted the sixth indent of Art. 14(3) of Council Regulation (EC) No. 2100/94, on Community Plant Variety Rights and Art. 8 of Commission Regulation (EC) No. 1768/95, implementing rules on agricultural exemption as provided in Art. 14(3), and held that the obligation of farmers to provide information to rights holders only extends to those who have derogated from such rights under Art. 14 and not to all farmers as such. The right holders must demonstrate some indication that the farmer has used or would use their variety for any purposes stated in Art. 13(2) of the Council Regulation.
A German seed company engaged in the trust management of rights holders requested Mr Schulin, a farmer, to provide information under Art. 14(3), to what extent he has grown protected plant varieties, even where the company did not have any indication about him using such plants in his field. Mr. Schulin refused to provide the information on the basis that the obligation under Art. 14(3) does not arise unless some indication is shown that the farmer has used the protected plant variety.
Art. 14(1) and (2) of the Council Regulation authorises farmers to derogate from acts relating to plant variety rights under Art. 13 and use product of their own harvest of selective agricultural crops, like fodder plants, cereals, potatoes and oil and fibre plants for propagating purposes in the field. Art. 14(3) lays down the criteria necessary for obtaining such derogation, including equitable remuneration to the right holders, obligation of farmers to provide information to right holders, etc.
Though the ECJ took notice of the difficulty of right holders in asserting their right to information, since the examination of plant does not reveal whether it was obtained by the use of a product of harvest or by purchase of seed, it took the view that the right holders could make alternative arrangements to find out the details of farmers who buy their propagating material from the distributors. The ECJ, in fact, held that Art. 13(2) second sub-paragraph empowered the right holders to require the distributors to record details of farmers buying their propagating material. It appears that though the ECJ has exonerated farmers as such from being obliged to provide information in some circumstances, it has empowered the right holders in obtaining relevant information by placing a duty on distributors to provide details of farmers buying their propagating material.
15. Refusal of Supplementary Protection Certificate to combination drugs
Takeda Chemical Industries Ltd v Comptroller General of the Patent Office, [2003] EWHC 649 (Pat)
In this case, Takeda appealed to the Patents Court against the decision by the UK Comptroller of Patents to refuse a supplementary protection certificate ("SPC") in respect of a medicine consisting of a combination of two drugs. The appeal was dismissed and no SPC was granted. The patents for which SPC's were requested were held not to protect the combination despite protecting one of the two components or the use of one of the components.
Lansoprazole is protected by two patents. The first patent is to the compound itself which was developed and sold for the treatment of acid disorders of the upper gastrointestinal tract. It later became apparent that the compound could be used in treating diseases caused by the bacterium H. Pylori and a "swiss form" patent to cover this second medical use was filed and granted. Further research indicated that treatment of H. pylori using Lansoprazole was especially effective when used in combination with one of three antibiotics.
The case turned on whether the requirements of Article 3a) of the SPC Regulation (EEC/1768/92) was satisfied namely that "the product is protected by a basic patent in force".
The Court, upholding the Comptroller's decision, found that the patents in question did not protect "the product" as a whole, rather they protected one element of the product and so Article 3(a) was not satisfied. There was no suggestion of a combination with an antibiotic in either patent nor was it claimed. It was insufficient to argue that sale of the product by a third party would infringe the patents as this was merely by virtue of the presence of Lansoprazole.
The difficulties faced by Takeda resulted from the failure to mention and claim the combination of Lansoprazole with antibiotics in the second medical use patent. This narrow interpretation or Article 3a of the SPC Regulation underlines the need to seek wide patent protection that specifically covers the potential use of combinations in drug formulations.
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