|NEW PUBLICATIONThe Economics of Intellectual Property Rights and Climate Change – Three New Studies Provide a More Scientific Basis to the Debate
|Perceptions of Intellectual Property: a reviewDr Roya Ghafele of the Haas School of Business, UC Berkeley, has reviewed the current discourse around IP; to grasp underlying themes, assumptions and connotations associated with the term „IP“, so that those concerned with promoting a better understanding of IP and its contribution to society and the economy are aware of how it is currently perceived.
|Exploiting University Intellectual Property in the UK
A Report prepared for the UKIPO by Dr Puay Tang, SPRU, Science and Technology Policy Research, University of Sussex
|The Exclusion of Surgical Therapeutic and Diagnostic Inventions from Patentability Under Article 52(4) of the European Patent Convention Florian Leverve and Jeremy Phillips – Report on behalf of the IP Institute
ISBN 978 1 874001 95 9
The scope of the exclusion of surgical, therapeutic and diagnostic inventions from patentability (under Article 52(4) of the EPC) is of enormous economic significance to the healthcare industries. This aspect of patent law in Europe was conceived some three decades ago, during which time medical technology and practice have evolved rapidly. In a new publication from the IP Institute, Florian Leverve (Queen Mary IP Research Institute, London) and Jeremy Phillips (IPI research director and well known to IPI members) have examined the policy behind Article 52(4) exclusions and the manner in which this provision has been applied in the EPO. The report investigates whether the exclusion has been broadly or narrowly applied, and whether it is working to achieve its original aims in a consistent way in today’s healthcare environment.
£30.00 HARD COPY
|Extending Rewards for Innovative Drug Development – A Report on Supplementary Certificates for Pharmaceutical Products
Duncan Curley – Report on behalf of the IP Institute ISBN 1 874001 94 4This report contains an analysis of the impact of Supplementary Protection Certificates for medicinal products since their introduction in 1993. In particular, it assesses whether SPCs are still „fit for purpose“ for the modern pharmaceutical industry. The Report contains a discussion of the aims of the SPC regime for medicinal products. Some of the significant cases for the drug development industry are placed in context, including the recent MIT/Gliadel and Yissum decisions and there is an overview of the new six month paediatric extensions for SPCs. The Report concludes with an assessment of the effect of SPCs on incentives to invest in pharmaceutical
OUT OF PRINT
|Address for Service Requirements and Restrictions on the Provision of Services by Patent Agents in the EU
Daniel Burkitt – Report on behalf of the IP Institute ISBN 1 874001 93 6
REASONS FOR REPORT Recently, the European Commission filed a trade mark application in the UK. They objected to being required by the UK Patent Office to provide an address for service within the United Kingdom. The UK Patent Rules 1995 have now been amended to allow patent applicants to file an address for service anywhere in the EU, although a UK address will be required in respect of contested proceedings unless the comptroller directs otherwise.TMPDF believes that local ‚address for service‘ and related requirements add to applicants‘ costs, and inhibit the development of new types of operation relating to the obtaining of patents, registered trade marks and registered designs.TMPDF has therefore commissioned this report, from the IP Institute, on local ‚address for service‘ and related requirements for obtaining patents in EU States other than the United Kingdom. In this connection, ‚related requirements‘ refers principally to restrictions on persons who can act as agents. Requirements to provide translations into local languages are not dealt with in this report.The report concentrates on patents because (a) patents are more expensive to obtain than trade mark or design registrations; (b) covering trade marks and designs would multiply the issues; and (c) the EU trade mark and design systems already afford companies a practical way of avoiding the national systems, but there is as yet no EU patent system. The report concentrates on countries in which patenting activity is significant.
|ACCA study, supported by the IPI, on intangible assets in small and medium sized businesses
|Protection of Regulatory Data under Article 39.3 of TRIPs: the Indian Context
There is a continuing controversy and accompanying debate about the extent of protection to be provided under the TRIPs Agreement (and in particular Article 39.3) for regulatory data i.e. the extensive and costly proprietary data which must be generated to demonstrate the safety and efficacy of pharmaceutical and crop protection agents before they may be authorised for commercial use. This debate is particularly intense in India and several other developing countries which have yet to finalise their legislative approach and so the IPI commissioned an independent assessment as its contribution to clarifying the issues involved. Shamnad Basheer’s paper is the result and gives his perspective on what is the level of protection required by Article 39.3 of TRIPs and whether Indian law currently complies with Article 39.3.
ISBN 1 874001 91 X
|Domain Name Dispute Resolution
Seminar Report of 5 July 2006, David Tatham
The UDRP (Universal Dispute Resolution Procedure) was approved in August 1999 but did not come fully operational until early 2000. It is the brainchild of ICANN (the Internet Corporation for Assigned Names and Numbers) and was an attempt to provide a speedy and inexpensive method for the owner of a right in a name to object when a third party – or cybersquatter – has registered a domain name that was identical or similar to it in any of the Top Level domains (.com, .org. and .net). Thousands of Complaints have been filed in the intervening years and a substantial body of ‚case law‘ has been built up. Similar procedures have also been established in many countries – notably in the UK.
David Tatham is a UDRP Panellist for WIPO, as well as for the National Arbitration Forum in the US, both of which are the principal bodies appointed by ICANN to arbitrate under the UDRP. He is also one of Nominet’s Experts in the .uk domain, as well as being a Panellist for the very recently introduced .eu domain. They all differ and David Tatham described and discussed the different procedures. He also shared some of his experiences.
ISBN 1 874001 92 8
|Artists resale rights. A number of studies were commissioned during the negotiation and implementation of Directive 2001/84EC. The most recent of these being the IPI Scoping Study: Artist’s Resale Right by Dr Kathryn Graddy and ProfessorStefan Szymanski, available at http://www.patent.gov.uk/about/consultations/responses/resale/ipinstitute.pdf.
|Ownership of Employee Inventions and Remuneration: A Comparative Overview
Rajesh Sagar and Aditya Nagarsheth
Rajesh Sagar and Aditya Nagarsheth of the Queen Mary IP Research Institute have reviewed provisions for the ownership of employee inventions across a number of jurisdictions. The paper also includes information on remuneration mechanisms and insight into some important remuneration disputes. The work provides an extremely clear overview of current provisions and will be of wide interest to anyone seeking to manage intellectual property effectively.ISBN: 1 874001 90 1
|A European Perspective as to the Extent to which Experimental Use, and Certain Other, Defences to Patent Infringement, Apply to Differing Types of Research.
Trevor Cook, Bird & Bird
In recent years the application of the statutory experimental use defence to patent infringement in the UK and the rest of Europe to „research tool patents“ and „gene patents“ has been the subject of controversy. At the same time the USA, lacking such a defence, has been exploring the extent to which its regulatory review defence for medicinal products can extend back into early stage research, culminating in a decision last year of the Supreme Court. Against this background Australia and Canada have been investigating introducing their own statutory experimental use defences. The present study considers the extent to which the statutory experimental use defence in the UK and the rest of Europe applies to research away from the context of late stage trials for medicinal and other regulated products in which all the case law has developed, and considers whether, and to what extent, legislative change might be appropriate.
ISBN: 1 874001 89 8
IMPLICATIONS OF THE ECJ AND COURT OF APPEAL JUDGMENTS IN BRITISH HORSERACING BOARD V WILLIAM HILL
Seminar held on 15 March 2006
The first database right case to come to trial in the UK reached the end of the road in July 2005.
The Court of Appeal, in its Judgment of 13 July 2005, applied the guidance provided by the European Court of Justice on 9 November 2005 to the facts found by Laddie J at first instance, and allowed William Hill’s appeal against Laddie J’s Judgment of 14 February 2001. William Hill was, after over five years of litigation, found not to have infringed BHB’s database right in pre-race data by publishing lists of horse running in races on their website.The significance of this case, however, goes far beyond William Hill’s website. The ECJ’s distinction between „creating“ data and „obtaining“ data and the Court of Appeal’s application of this ruling to the facts of this case may have ramifications for all database owners and users.
INTELLECTUAL PROPERTY – THE COMMERCIAL REALITY FOR SME’s (3 DVD’s)
Identifying – Defending – Protecting – Valuing – Exploiting
Seminar held on 27 September 2005
Intellectual Property, like any other asset, is best managed and exploited when its value and potential are fully understood. Understanding and managing the risks associated with these valuable assets, and the company’s exposure them, is also crucial in today’s knowledge-based environment. This seminar brought together a mix of legal, business and accounting expertise, setting out the commercial realities of developing and exploiting intangible assets, with a particular emphasis on the issues faced by the smaller company. Seven speakers, leaders in their fields, address litigation and case histories, risk assessment, valuation, insurance options, and recent changes in legislation. There is real practical advice here on all aspects of IP management and exploitation, even down to how (and when) to employ experts to resolve disputes.
|LIMITING THE PATENTABILITY OF PHARMACEUTICAL INVENTIONS AND
MICRO-ORGANISMS: A TRIPS COMPATIBILITY REVIEW
paper by Shamnad Basheer
India’s amendment of its patent laws at the beginning of 2005 to implement its obligations under GATT TRIPs (Trade-Related Intellectual Property Rights) was a major development in extending effective patent protection to a wider range of technologies such as pharmaceuticals and agrochemicals. However during the adoption of the amendments in the Indian parliament, some concerns were raised by some groups about the extent of protection being provided for pharmaceutical products. As a result, the Indian Government
established a five-member Technical Expert Group chaired by Dr R A Mashelkar (Director General, Council of Scientific and Industrial Research (CSIR), New Delhi) to review the areas of concern. The terms of reference of the Group were to see if it would be acceptable under TRIPS to limit the grant of patents for pharmaceutical substance to new chemical or medical entities involving one or more inventive steps, and also to see to exclude microorganisms from patenting.This is an area of IP law where there has been much argument and debate so the Intellectual Property Institute commissioned Mr Shamnad Basheer, an Indian IP research associate at the Oxford IP Research Centre, to carry out an evidence based study of the specific issues involved for submission to the Technical Expert Group.
Reform of the Patent Laws: The U.S. Experience in Forging Legislation From Disparate Interests
Although the current effort toward reform of the United States patent law continues to move ahead in fits and starts, disparate interests are increasingly weighing in on issues such as injunctive relief, damages apportionment and venue, creating disputes that have overshadowed the traditionally controversial proposed change of the fundamental nature of the U.S. patent system from first-to-invent to first-inventor-to-file. These disputes highlight the dramatically differing perspectives on the role of patents, patent law and patent enforcement in innovation, and foreshadow the clash of similarly disparate perspectives on patents in the international arena.
|Patents for Genetic Sequences: the Competitiveness of Current UK Law and Practices.
A study by the Intellectual Property Institute on behalf of the DTI.
Copy available from Intellectual Property Institute.
|Business Implications of Business Method Patents
Robert Hart and Robert Pitkethly
The decision in the US to allow patents for methods of doing business, affirmed by the crucial State Street Bank decision, is one of the most significant issues in patent law today. It affects businesses all over the world, in just about every sector of activity. As its title suggests, this report examines some of the key business implications of allowing such patents in the US, while excluding these rights elsewhere, including the UK and Europe. As well as providing valuable insights for industry, this work is of great relevance to policy-makers, as they consider whether we can, (should), maintain this difference in the levels of protection afforded in the US and Europe.
|The Scope of Copyright
Charlotte Waelde and Hector MacQueen
This book considers the scope of copyright in light of the digital revolution. It raises important issues about the future shape of the law which are worthy of further investigation. In particular, it argues that much of the reform of copyright law that has occurred during the last decade has (understandably) been driven by the concerns of the entertainment industry. The legal reforms are, however, general in nature, and not confined in their impact to this sector, or even necessarily to digital products. Here, Hector MacQueen and Charlotte Waelde of the SCRIPT Centre at Edinburgh, consider the impact of copyright upon the interests of education and research, and the sectors (public and private) which support them.
|Business Method Patents – A Matter of Convenience
The 2002 Stephen Stewart Memorial Lecture
Professor Sam Ricketson, Professor of Law, University of Melbourne and barrister at the Victorian Bar
The Hon Mr Justice Jacob chaired the meeting
The move by the US to allow patent protection for business methods has been controversial. Indeed, the Institute has recently conducted research for the European Commission on the related issue of software patents, and is currently investigating the business and economic effects of allowing patents for business methods, following the landmark State Street Bank decision. The subject of Professor Ricketson’s lecture could not be more topical.
|Exploiting Patent Rights & a New Climate for Innovation in Japan
Edited by Dr Ruth Taplin £35.00 or US$50.00
For the first time in the English language, leaders in the field of IPR in Japan explain how the IP scene for technology based business is changing there. The contributors who are experts in the field include Prof. Katsuya Tamai who founded the number one technical licensing organisation in Japan at Tokyo University called CASTI and explains the beginnings and the process of building it into a profitable enterprise. Other contributors who deal with pharmaceuticals, the privatisation of the universities and the growth of entrepreneurship, include Quentin Vaile who is a Licensing Executive responsible for licensing technology including Japan at the UK company QED Intellectual Property Ltd. He gives a frank assessment of his company’s dealings with Japan.
This book edited by a Japanese specialist, Dr. Ruth Taplin, provides up-to-date information on current IP practices as well as cultural and infrastructural changes that should interest anyone in high technology business operating or looking to operate in the region. Specialists in the field, lawyers, management consultants and anyone that plans to do business in Japan and wishes to understand the nature of changing risk factors will find this book invaluable.
|THE COMMUNITY PATENT
Thierry Stoll, Mike Barlow and Henry Carr
A Seminar held jointly by the IP Institute and the British Institute of International and Comparative Law, 28th June 2002
The Hon. Mr Justice Jacob chaired this event which examined the Commission Proposal for a Regulation on the Community Patent. Thierry Stoll (Director, DG Internal Market) was joined by Mike Barlow of BP, and Henry Carr QC, to examine the many issues that will need to be addressed to succeed in establishing a workable right, from the viewpoint of the lawmaker, the law user and the litigator.
|„COPYRIGHT – WHOSE FLEXIBLE FRIEND IN THE INFORMATION SOCIETY?“
IP Forum – 23 November 2001
Vanessa Marsland, Professor Chris Reed, Chris Barlas and Dr Uma Suthersanen
The impact of new information, communication and reproductive technologies on IP regimes is considerable. It is a major issue for legislators, regulators and businesses, and particularly in the copyright arena.
Under the Chairmanship of our President, The Hon. Mr. Justice Jacob, this IP Forum aimed to promote knowledge and understanding in this complex field by bringing together people from a range of backgrounds and experiences, and stimulating debate between them. The event examined developments in copyright law in the US, and the policy implications for Europe. It then explored reprographic and e-licensing by collective administration in the UK.
|Have National Trade Mark Laws a Future in the European Union?
A Debate – 7 June 2001
Evie Kyriakides and Christopher Morcom QC
Mr Justice Laddie’s provocatively entitled Burrell lecture in February 2001, „National IP Rights – A Moribund Anachronism in a Federal Europe?“ prompted this important debate on the future of national trade mark law in Europe. In light of provisions currently available under the EC Directive, the Madrid Agreement and Protocol, the Community Trade Mark and TRIPs, this debate questioned whether we should continue with the national route for trade mark protection, or follow the CTM route with our eye to a global trade mark system in the future.
Views were put forward by two eminent speakers in the field: Evie Kyriakides, of the Mars Inc., and Christopher Morcom QC. Mr Justice Neuberger moderated the debate.
£10.00 HARD COPY
|The 2001 Stephen Stewart Memorial Lecture
Berne without Borders: Geographic Indiscretion and Digital Communications
Jane C Ginsburg, Morton L Janklow Professor of Literary and Artistic Property Law, Columbia Law School, New York City.
In this lecture, Professor Ginsburg gives a fascinating insight into the development of copyright law throughout the 19th Century, an era of hugely increasing commerce and communication, thanks to new technology such as photography. From this background, Professor Ginsburg discusses how the Berne Convention, despite its border-muting goals, in fact relies upon the persistence of national frontiers. She goes on to address the challenges that digital communications pose to the Berne Convention in a new era of great commercial and technological change.
£10.00 HARD COPY
|THE SOCIAL & ECONOMIC EFFECTS OF COUNTERFEITING
A Scoping Study
The IPI has just published this study, which examines the nature and extent of counterfeiting activity, particularly in south east Asia, and its social and economic consequences. The work is intended as an overview, rather than an in-depth piece of research, but it nevertheless delivers some useful insights for both business and policy-makers.
£15.00 HARD COPY
|THE INTERNET AND THE UNIVERSAL DOMAIN NAME DISPUTE RESOLUTION POLICY
Seminar Report – 12 December 2000
Mr David Tatham
In its short life, the Internet has produced a number of intellectual property problems, not the least of which has been the activities of cybersquatters in registering existing names and trade marks in the hopes of being able to sell them on at a profit. The Court of Appeal established that this constituted an infringement in the UK by its decision in the „One in a Million“ case.
However, since January 2000, the owners of trade mark rights have had access to a comparatively cheaper and certainly much speedier method for resolving disputes with cybersquatters than recourse to the courts. This is the Universal Dispute Resolution Policy, or UDRP, of the International Corporation for Assigned Names and Numbers (ICANN), who is the ultimate administrator of the Internet.
Hundreds of disputes have already been submitted for resolution under the UDRP, and the numbers show no signs of decreasing. Indeed, as ICANN prepares to introduce several new Top Level Domain Names, in 2001, usage of the UDRP is sure to increase.
£10.00 HARD COPY
|2000 Stephen Stewart Memorial
TRADE MARKS, DESCRIPTIONS OF ORIGIN AND THE INTERNAL MARKET
What Lies behind the Silhouette?
Judge David Edward
A capacity audience attended the 2000 Stephen Stewart Memorial Lecture, delivered by Judge David Edward under the title „Trade Marks, Descriptions of Origin and the Internal Market: What Lies Behind the Silhouette?“ This apparently enigmatic title encompassed a judicial tour of European Court of Justice decisions on the territoriality of trade mark rights and the doctrine of exhaustion, from the earliest days of Sirena v. Eda and HAG I to the controversial 1998 Silhouette case.
It was not solely as a member of the European Court of Justice that Judge Edward was able to guide his audience through the conflicting interests of trade mark owners and their competitors. This was apparent when he drew on his personal experiences as an advocate in two Scottish cases: the important Harris Tweed certification mark litigation and the entertainingly-depicted battle between the mighty Coca-Cola Inc. and Struthers Brothers over the right to sell KOALA COLA. As to the Silhouette case, Judge Edward observed that this was a decision which had been misunderstood both by lawyers and by the popular press. Indeed, one Scottish paper had branded him a „fuddy-duddy“ for banning cheap foreign imports without appreciating the full import of that case and its value in the protection of consumers‘ values.
£10.00 HARD COPY
|Raising the Standard? The Interaction of Intellectual Property Rights with Competition Law in the Context of Standard Settings in the Software and Telecommunications Sector.
Seminar Report – 27 October 1999
Gary LeaThis report, based upon a paper by Gary Lea of Queen Mary & Westfield College, examines the nature and formation of standards, with particular emphasis on the implications of standards setting in the telecoms and software industries. The impact of IPRs on standards setting in these industries is discussed, along with an examination of the relevant features of US and EC competition law.
|Comparative Advertising Directive
Seminar Report – 29 September 1999
Dr Ansgar Ohly and Dr Michael SpenceA dissection and examination of the Comparative Advertising Directive by Ansgar Ohly of the Max Planck Institute and Michael Spence of St Catherine’s College, Oxford.
|The Industrial Use of Genome Resources in Europe
Seminar Report – 10 December 1998
Dr Sandy M ThomasThe Seminar Report consists of the Discussion part of the Seminar plus a copy of the full text of the speaker’s paper contained in the European Commission Community Research Report.
|Economic Aspects of Limitations and Exceptions to Copyright
Seminar Report – 21 January 2000
Mrs Ruth TowseIn this seminar, Ruth Towse examines fair use and fair dealing in the analogue environment, and the potential for charging and the reduction of fair use in the digital environment. The arrangements for charging for reproducing copyrighted material for educational use in the UK are described, and estimates are made for the value of revenues lost to authors and publishers by fair dealing.