The London Agreement – Germany and German Translations:
An update (July 2008)
There has been uncertainty about the requirement to file a German translation of a European patent granted in English or French in the period 1 May 2008 to 31 August 2008.

The recent entry into force of new German law implementing the London Agreement retroactively from 1 May 2008 means that the requirement to file a German translation is removed (as was expected) for patents granted on or after 1 May 2008.

This article sets out the background and provides our considered view on the German position in light of the new law and advice from Germany.

BACKGROUND
• As the result of a mistake in the German law of 2003 the London Agreement was due to come into force on 1 September 2008, not on 1 May 2008 as required by the London Agreement itself.

• The German Ministry of Justice said it would fix this by a new law having 'retroactive' effect so that the translation requirement would be (as was expected) abolished for EP patents granted from 1 May 2008 onwards.

• Some people in Germany had raised doubt that the new law would completely fix the problem.

CURRENT SITUATION
• New German law implementing the London Agreement was published and entered into force on 11 July 2008. The new law retroactively implements the London Agreement from 1 May 2008. This retroactive effect is clearly stated in an announcement of the German Patent Office (in German only, http://www.dpma.de/service/aktuelles/londonerprotokoll/index.html).

OUR VIEW
• In our opinion, on advice from Germany, therefore, it is not necessary to file a German translation of a European patent for which the publication of mention of grant was on or after 1 May 2008.

House of Lords Rule on Obviousness (July 2008)
The House of Lords recently delivered their eagerly awaited judgement in Conor Medisystems v Angiotech Pharmaceuticals, reversing the decision of the Court of Appeal and holding Angiotech's patent for a taxol-coated stent to be valid.

The patent in dispute related to stents (devices for holding open constricted arteries) coated with the anti-cancer drug taxol, for treating or preventing restenosis (re-closing of the artery following insertion of the stent), which often occurs due to tissue damage during insertion.

Conor had argued at first instance that, because the patent did not prove that taxol was effective to treat restenosis, it was not necessary for them to show that it was obvious actually to use taxol for this purpose. Instead, they only needed to show that it was an obvious candidate for testing - i.e. that it was obvious to try. The judge at first instance agreed, finding the patent invalid for lack of inventive step. However, following an unsuccessful appeal to the Court of Appeal, the proprietors were granted leave to appeal to the House of Lords to reverse the decision, particularly as the Dutch courts had reached a different conclusion, and had found that the same patent was in fact valid.

Lord Hoffmann, delivering the leading judgement, dismissed the 'obvious to try' argument as 'an illegitimate amalgam of the requirements of inventiveness and either sufficiency or support'. He pointed out that 'there is no requirement in the EPC or the statute that the specification must demonstrate by experiment that the invention will work or explain why it will work'. In his view, the question of obviousness should be determined by reference to the invention as specified in the claims, not to 'some vague paraphrase based upon the extent of the disclosure in the description' of the patent. On that basis, the proper question to ask in this case was 'whether it was obvious to use a taxol-coated stent to prevent restenosis'. Lord Hoffmann concluded that it was not, and upheld the patent.

UK Court of Appeal follows "settled view" at EPO (JUNE 2008)
The UK Court of Appeal in Actavis v Merck has clarified the novelty requirements for second medical use claims in the UK, and set a precedent for following a "settled view" of the EPO Boards of Appeal. 

Second medical use claims cover new therapeutic uses of known therapeutic substances (e.g. the discovery that a known painkiller treats cancer).  The issue in Actavis v Merck was whether such claims require treatment of a new disease in order to be novel.  The EPO in T1020/03* had held that treatment of a new disease is not required, a new dosage regime is enough, but the Court of Appeal decision in Bristol Myers Squibb seemed to contradict this.

Here the court held that a novel dosage regime can confer novelty on a second medical use claim, bringing the UK courts in line with the EPO in this issue.

Significantly, the court created a new exception to the general rule of precedent that the Court of Appeal is bound by its previous decisions.  The new exception applies when the EPO has formed a "settled view" which conflicts with a Court of Appeal decision, and here it meant that the court was not bound by Bristol Myers Squibb and was free to follow T1020/03.

See related news item below  "EPO re-consider scope of medical use claims under EPC2000" (May 2008)

*Mewburn Ellis LLP partner Adrian Brasnett represented the successful appellants in this landmark  case.  Read our earlier report on T1020/03 here.

ECTA (European Communities Trade Mark Association) Annual Conference 18-21 June (JUNE 2008)
Kerry Moroney, Trade Mark Attorney, will be attending ECTA's 27th Annual Conference in Killarney, County Kerry, Ireland from 18th to 21st June.  Kerry would pleased to meet up with any clients and friends attending so please let her know if you plan to be there.

More information on the event can be found at http://www.ecta.org/conferences.php

BIO International Conference 17-20 June (June 2008)
Mewburn Ellis partners Seán Walton, Simon Kremer, Richard Clegg and Simon Kiddle will be attending BIO International Conference in San Diego, CA USA, on 17-20 June.

They will be pleased to catch up with any clients and friends that are attending. Do let them know if you plan to be there.

For more information on the event you can visit the website at http://www.bio2008.org/  & http://www.bio2008.org/subpage.aspx?pagename=cv08_media_aboutbio

EPO RE-CONSIDER THE SCOPE OF MEDICAL USE CLAIMS UNDER EPC2000 (MAY 2008)
The European Patent Office (EPO) allows claims to new medical uses of known substances where the invention is either (i) the discovery of a new disease against which the substance is effective, or (ii) where the substance is already known to be effective against the disease in question, a new means of treatment (e.g. route of administration). 

An Appeal Board at the EPO have now asked the EPO's Enlarged Board of Appeal to consider whether second medical use claims should be limited to the former situation and, if not, whether the latter type of claim should be permitted where the new means is a dosing regime.

Although EPO case law seems to have established medical use claims for new routes of administration are allowable, the Board in T1319/04 felt that the area of dosing regimes required clarification, notwithstanding the landmark case T1020/03, in which Mewburn partner Adrian Brasnett was involved, where such claims were held to be permissible.  Our earlier report on T1020/03 can be found here. 

INTA (International Trademark Association) Annual Meeting 17-21 May 2008
Mewburn Ellis partners Roger Grimshaw, Nigel Hackney and Sofia Arenal, together with trademark attorneys Kerry Moroney and Alastair Rawlence will be attending INTA’s 130th Annual Meeting in Berlin, Germany on 17-21 May.  Joining them will be Philip Fujii, our Japanese business liaison manager.

They will be pleased to catch up with any clients and friends that are attending. Do let them know if you plan to be there.

For more information on the event you can visit the website at http://www.inta.org/

AIPLA (American Intellectual Property Law Association) (MAY 2008)
Partners Stephen Gill and Nick Sutcliffe will be attending the AIPLA Spring Meeting in Houston, Texas from 14 to 16 May and hope to catch up with any clients and friends that are attending.

Stephen will talk on the London Agreement in the IP Practice in Europe Committee Educational Session on the afternoon of Thursday 15 May.  Nick will be speaking at the Biotechnology/Emerging Technologies (Joint Meeting) on 15 May on Patentable subject-matter under the EPC.

ERBI’s BioPartnering Exchange Cambridge 7-9 May(MAY 2008)
Mewburn Ellis partners Nick Sutcliffe and Hilary King, and patent attorney Jonathan Wills are attending ERBI’s BioPartnering Exchange in Cambridge on 7 - 9 May and would be pleased to catch up with any clients and friends that are attending.  For more information on the event you can visit the website at http://www.erbiconference.co.uk/

CIPA prizes for outstanding exam results at Mewburn Ellis LLP (APRIL 2008)
Well done to Julie Carlisle, Patent Attorney, on being awarded the “Proxime Accessit prize” by the CIPA council.  The prize has been given to Julie for obtaining the second highest overall marks in her exams for qualification as a UK patent attorney.   Julie was only one mark behind the winner of the “Gill Prize”, which is given annually to the candidate achieving the highest aggregate marks in the four Advanced Level Papers taken in one sitting.

Another admirable performance at Mewburn Ellis comes from Emily Hayes, Patent Assistant, who has been awarded the “Michael Jones Prize” by the CIPA council for the candidate passing the patent amendment paper with the highest mark.

Congratulations to both of them on their notable achievements!

NEW PARTNERS (APRIL 2008)
The partners of Mewburn Ellis LLP are happy to announce that Rebecca Tollervey, Jeremy Webster, Richard Johnson, Hilary King and Lindsey Woolley have joined the partnership.  They are also pleased to welcome Simon Parry to the firm and to the partnership.  Simon, who joins us from Forresters, will be based in our Manchester office and brings with him a wealth of experience in a wide range of engineering fields.    

THE END OF AN ERA............. (MARCH 2008)
Marilyn Rippon, the longest serving employee of the firm, retires at the end of this month after 44 years of employment. The Partners and staff at Mewburn Ellis LLP wish Marilyn a very happy retirement and would like to thank her for all her hard work and commitment to the firm over the years.

INTELLECTUAL PROPERTY FOR JEWELLERS (MARCH 2008)
On Wednesday 12 March 2008, Mewburn Ellis LLP's Eddie Walker will be giving a talk, on behalf of ChangeActShare, aimed at Jewellers.  The talk will cover all aspects of Intellectual Property, but will focus on copyright and design rights in particular.  Further details can be found here.

COMMUNITY TRADE MARK OFFICE TO CHARGE FOR NATIONAL SEARCHES (MARCH 2008)
Form 10 March 2008 OHIM is charging a separate fee for national searches, which become optional. There will automatically continue to be a search for potentially conflicting prior CTMs.

It is not possible to select individual national searches; if they are requested they will be for all 17 national offices that carry them out. The searches must be requested on filing.

Our recommendation is that national searches are not requested as we consider them to have limited value. In many cases it will be appropriate to have independent searches carried out. The extent and timing of these will depend upon a number of factors, in particular the expected time scale for putting the mark into use. We will be able to advise you as to the appropriate strategy in a given situation.

STOP PRESS!!  LONDON AGREEMENT TO ENTER INTO FORCE ON 1 MAY 2008 (January 2008)
We are very pleased to announce that France deposited their instrument of ratification of the London Agreement on 29 January, paving the way for reduced costs for translating European patents granted on or after 1 May 2008.  

Currently, a European patent must be translated after grant into the national language of every country in which protection is sought.  Failure to do so results in the patent being deemed void in that country.  Translation costs are high and typically account for up to 40% of overall patenting costs in Europe.  Signatory states to the London Agreement will waive, entirely or largely, the requirement for translation of patents into their national language.  

Our information sheet on the London Agreement explains more. 

EPO FEE INCREASES (AND HOW TO AVOID THEM!) (January 2008)
Most EPO official fees will increase by about 5% on 01 April 2008.  However, some fees (claims fees and renewal fees) will increase substantially.  The new rates will apply to fees paid on or after 01 April 2008.  We suggest you consider paying some fees early in order to avoid the increases.  Please do contact us if you want to take any action.

Additional changes to EPO official fees (including claims fees, pages fees, and designation fees) will take effect on 01 April 2009 but we concentrate here on the April 2008 changes to claims fees and renewal fees.

Claims Fees
Currently, claims fees are payable for each claim more than 10, at a rate of 45 Euros per claim (and so a claim set with 20 claims currently invites claims fees of 450 Euros).  From 01 April 2008, claims fees will be payable for each claim more than 15, at a rate of 200 Euros per claim (and so a claim set with 20 claims will invite claims fees of 1000 Euros).  

Consequently, where possible, it may be desirable to pay claims fees early, before the new (increased) rates take effect.  

For example, for international (PCT) applications approaching the normal deadline for entering the European regional phase (31 months from the earliest priority date or the international filing date if no priority was claimed), it may be sensible to enter the regional phase early and pay the associated claims fees, before the normal deadline, and before 01 April 2008, in order to benefit from the current (lower) rates.  Similarly, it may be sensible to file direct European patent applications (and pay the associated claims fees) early, before expiry of the normal 12 month priority period, and before 01 April 2008, in order to avoid the increased fees.

Renewal Fees
Renewal fees will increase by as much as 56%.  Furthermore, the surcharge for paying a renewal fee late (within a six-month additional period) will increase from 10% to 50% of the late renewal fee.  

Consequently, you may wish to consider paying renewal fees early, before 01 April 2008, in order to benefit from the current (lower) rates.

Renewal fees may be paid up to one year in advance, and so it is possible to pay renewal fees which are due on or before 31 March 2009 before the increased fees take effect on 01 April 2008. 
   
AIPLA (JANUARY 2008)
Partners Robert Watson and Stephen Carter will be attending the AIPLA Mid-Winter Institute in Phoenix, AZ, January 23-26, 2008 and hope to catch up with any clients and friends that are attending.  Do let Robert or Stephen know if you plan to be there. 

Training Course on the European Patent 2008 (JANUARY 2008)
We are pleased to announce that our Summer Course on the European Patent will run again from 2nd to 13th June 2008. 

Our two-week course provides an in-depth study of the legal and practical aspects of working with the EPC and EPO, with optional additional workshops on other aspects of intellectual property. Our delegates consistently comment that the practical exercises are particularly valuable and we have expanded this aspect of the course still further for 2008.   Because the course was oversubscribed in 2006 and 2007, we have introduced a limit of two members per organisation for the 2007 course.  This is intended to preserve the intimate teaching style of the course, which we consider to be essential.

Please click here for further information.