Second medical use patents backed
Following a debate on Sunday, delegates agreed a 14-point resolution on “Second medical use and other second indication claims” (Question 238), which states: “A second medical use should be patentable if it meets the patentability requirements of novelty, inventive step (non-obviousness), and utility or industrial applicability.”
The detailed resolution goes on to say: “Exceptions to patent eligibility for methods of medical treatment of the human or animal body should not preclude the patentability of second medical uses. Where such exceptions exist, claim formats for the protection of second medical uses that are compatible with those exceptions should be available.” And also: “Exclusions from patentability should not depend on the type of second medical use”
The resolution provides considerable detail on the protection that should be afforded to second medical use patents, on infringement and on relief. It also states: “The fact that a pharmaceutical does not contain label instructions specifying the patented second medical use should not per se exclude the finding of infringement of a patent for the second medical use.”
Basic mark abolition rejected
Yesterday, the question of the basic mark requirement under the Madrid System was debated. Despite the strong views of some national groups, the delegates resolved not to support an abolition of the basic mark requirement, and not to support an abolition or freeze of the dependency on the basic mark.
However, they did support “a reduction of the dependency period from five years to three years, as such would provide a more even balance between the interests of the trademark owner on the one hand (providing an earlier level of certainty) and third parties on the other hand”.
Copyright exhaustion defined
Finally, delegates voted yesterday on Exhaustion issues in copyright law (Question 240), which has become an important issue in the light of recent cases such as Kirtsaeng in the US and UsedSoft v Oracle in Europe.
It was resolved that “exhaustion” should be defined as “the loss of the copyright holder’s right to exercise control of a copy of a copyrighted work, following the first sale or other transfer of ownership of that copy, with the authority of the copyright holder”.
The resolution further states that the legitimate first sale or other transfer of ownership of tangible copies should be subject to exhaustion, but only the right of distribution should be exhausted. It adds that there should be no exhaustion in the case of streaming.
The resolution also rejects international exhaustion of rights, while leaving it to jurisdictions to provide for regional exhaustion (such as exists in the EU).
Finally, the resolution states: “Even if distribution right is exhausted for goods which are copyrightable works, whether recycling or repair of such goods constitutes infringement of (i) the right of reproduction of the copyright holder, (ii) the right of adaptation, arrangement and other alteration of the copyright holder and (iii) the moral rights (right to integrity) of the author should be examined independently.”
This year’s fourth working question concerns IP licences and insolvency. A further question on prior user rights, which followed last year’s resolution on a grace period, was debated on Sunday and will also be before the General Assembly today.
