UK: IP Snapshot - September 2011

Last Updated: 6 October 2011
Article by Nick Beckett, Lucy Kilshaw, Jeremy Morton and Tom Scourfield

Bringing you regular news of key developments in intellectual property law.

PATENTS

Warner-Lambert v Teva and others, 22 July 2011, High Court

Mr Justice Floyd has granted an application for an expedited trial in favour of Teva, in circumstances in which, if Teva succeeds in invalidating Warner-Lambert's patent, Teva may obtain an advantage over other generic manufacturers of the drug atorvastatin, marketed by Warner-Lambert as Lipitor, one of the world's most successful drugs with an annual turnover exceeding £350 million. However, Teva has had to accept as a condition of the order that there would be no disclosure.

Teva launched generic atorvastatin, without notice to Warner-Lambert, on 20 June 2011.  They launched in this manner, rather than seeking the revocation of Warner-Lambert's patent in advance, in order to obtain an advantage over other generic companies.  The judge accepted that during the period of so-called duopoly, in which the patented product plus only one generic competitor are on the market, the original price of the drug can be maintained.  However, when further generic competitors enter the market, the price drops more rapidly.

Floyd J granted an interim injunction restraining Teva from making further sales of generic atorvastatin on 21 June 2011 and Teva sought an expedited trial, to come on in November 2011. 

Floyd J gave a helpful summary of the principles to be applied in considering whether to grant an application for expedition. To name a few, he stated that the grant of expedition is a matter for the discretion of the judge, there must be an objective urgency to deciding the claim, and "urgency" does not necessarily mean the need for the case to be heard in the immediate future; a case may be urgent in that a decision is needed by some deadline, which may be months away.

For the full text of the decision, click here

Premium Aircraft Interiors Group Ltd BL O/281/11, 10 August 2011

An IPO hearing officer has refused to remove Virgin's European patent covering aircraft seats, from the UK patents register. Premium Aircraft Interiors Group Limited ("Premium") had argued that the patent should not have been issued because Virgin had attempted to exclude the GB designation in its original application.

Virgin had checked the box on the application form stating that "All states which are contracting states to the EPO at the time of filing of this application are hereby designated" but in a separate section of the form a note had been added to state "GB is expressly NOT designated in this application".

Premium had already taken this argument to the EPO where it was held that it was not necessary to correct the decision because although there was an ambiguity, there was no explicit withdrawal of the GB designation, the designation fee for GB had been paid and the EPO was bound by good faith having accepted the GB designation through examination proceedings.

The IPO hearing officer refused to remove the patent from the register. He concluded that Premium was essentially asking the IPO to review the procedural decision of the EPO at a national level. If this were possible, it would defeat the object of having a centralized patent application system.

For the full text of the decision, click here  

Schutz (UK) Ltd v Werit UK Ltd and another [2011] Court of Appeal, 29 July 2011

The Court of Appeal has ruled on the interpretation of section 68 of the Patents Act 1977 following an appeal from the recent High Court decision where it was held that Werit UK Ltd was infringing Schutz (UK) Ltd's patent rights.

The Court of Appeal held that section 68 should be read to mean that, in so far as a claim covered compensation for a period in which the transaction was not registered when it should have been, any costs relating to that period (where it was not registered) were not recoverable. All other costs were recoverable in the usual way. This construction was consistent with Article 14 of the Enforcement Directive.

This decision further reduces the impact of a recently weakened section 68. This decision demonstrates that one will still be able to claim damages for all infringements regardless of registration of an exclusive licence and recover costs from the date of registration. Nevertheless there is still value in registering licences and assignments in order to put third parties on notice.

DATABASE RIGHTS

Beechwood House Publishing Ltd v Guardian Products Ltd and Precision Direct Marketing Limited, 20 June 2011, Patents County Court

The Patents County Court have found that database right was infringed in a database of 43,000 doctors and nurses when a competitor sent a mail shot to 6,000 nurses using 4,783 records which were identical to those contained in the claimants' database.

From 1994, the claimant had published a database of individuals associated with GPs' practices, known as the Binley database.  The Binley database contained "seeds", being fictitious entries with addresses linked to the publisher, planted with the intention of catching infringers.  The claimant became aware from one of its seeded addresses, and later from a second seed, that the first defendant had sent a mass mailshot to GPs and nurses, which must have relied on the fifth edition of the database. 

In October 2010 the claimant applied for summary judgment which was refused on the grounds that the claimant had not proved substantial extraction, use of single seed being insufficient proof.  Summary judgment was given on the issues of title and subsistence of database right.  

Database right infringement was proved at trial. The claimant proved satisfactorily that there was sufficient investment in the obtaining, verifying and presentation of database contents. This proved a sensible decision with some practical pointers in assessing the meaning of "substantial part".

For the full text of the decision, click here  

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 30/09/2011.

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