This week on MIP: EPO publishes G2/21, UK High Court backs Gilead

Patent owners can rely on evidence of inventive step published after a patent application has been filed but only where a technical effect is evident in the original filing, the EPO’s Enlarged Board of Appeal ruled yesterday, March 23.

The key question in the case, known as G2/21, was to what extent patent owners and applicants can rely on evidence published after the filing of a patent application.

According to the EBoA, the relevant standard for assessing inventive step was what the skilled person would have understood on the filing date as the application’s “technical teaching”.

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Gilead won a major victory at the England and Wales High Court on Tuesday, March 21, when a judge cancelled two biotech patents owned by rival NuCana.

However, Mr Justice Richard Meade criticised both parties for not providing enough information on the timeline of a parallel proceeding at the EPO concerning one of the patents.

The patents in question cover compounds that NuCana used in potential cancer treatments. The compounds include sofosbuvir, an active ingredient in Gilead’s new class of blockbuster anti-viral drugs used to treat hepatitis C.

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A copyright suit filed by major publishers against the Internet Archive threatens the future of online book lending, the non-profit’s lead trial counsel told Managing IP on Tuesday, March 21.

Joe Gratz, partner at Morrison Foerster in San Francisco, said that the rise of digital technology shouldn’t give copyright owners more power over cultural works than they already had.

“Control shouldn’t be handed to publishers over the technical accident that, to lend digitally, you need to make copies,” he said.

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Senators introduced legislation on Thursday, March 16, to ensure that safety standards do not lose copyright protection if they get incorporated into a law that references their name – so long as the standards remain freely available online.

The Protecting and Enhancing Public Access to Codes Act of 2023 was introduced by Democratic senators Chris Coons and Sheldon Whitehouse and Republican senators John Cornyn and Thom Tillis.

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Other articles published by Managing IP this week include:

InterDigital v Lenovo ruling prompts SEP owner rethink

Weekly take: SCOTUS should limit Lanham Act reach

Green tech and SME support top JPO chief’s agenda

Tech IP counsel wary of overreaching Amgen v Sanofi ruling

What India’s legal market opening means for foreign IP firms

Paul Lin, former head of intellectual property at Xiaomi, has joined Dolby subsidiary Via Licensing as a strategic adviser, it was announced yesterday, March 23.

Lin said: “I am delighted to work with Via Licensing, a highly reputable, transparent patent pool with such a long track record of successfully delivering IP solutions for the market."

More than 2,000 budding patent attorneys from 58 nationalities sat this year's European Qualifying Examination (EQE), the EPO announced yesterday, March 23. Almost 40% of the candidates were women. The EQE is the exam attorneys must complete in order to appear at the EPO. The exams were held from March 6 to 13. Since the digital EQE was introduced in 2021 candidates have been able to complete electronic exam papers from anywhere.

BlackBerry agreed the sale of patents covering its mobile devices to IP monetisation company Malikie Innovations, the former handset maker announced on Tuesday, March 21. Malikie will pay $170 million in cash on the deal's closure, and another $30 million three years later. BlackBerry said it will also get annual cash royalties from the profits generated from the patents, adding that these could be worth up to $900 million.

The US Supreme Court heard oral arguments in two trademark cases this week.

On Tuesday, March 21, the court heard Abitron Austria v Hetronic. The case hinges on whether damages should be recoverable in the US for conduct that happened overseas. Then, on Wednesday, March 22, parties presented their arguments in Jack Daniel's Properties v VIP Products, which centres on the applicability of first amendment protection for expressive works.

The UK government said it is seeking views from SMEs on how they use the standard essential patents (SEP) framework. In a notice published on Tuesday, March 21, the government said it wanted to make the right decisions for the long term and ensure the country’s IP framework is fit for the future. The consultation forms part of the government’s call for views on SEPs, which closed in March 2022.