Key recent developments in the United Kingdom and Europe relating to patents and the pharmaceutical sector

In this edition we cover several important UK decisions relating to Standard Essential Patents (SEPs) and FRAND licensing, including the UK Supreme Court decision in Unwired Planet, a subsequent decision concerning jurisdictional issues in FRAND proceedings and a decision striking out of a claim for worldwide damages in relation to SEPs. We also report on an important decision in the context of patenting AI inventions in which the High Court hearing an appeal refused to allow an AI system to be named as inventor on two patent applications. From a UK perspective, we also provide an update on changes to the judges at the UK Patents Court and report on a couple of decisions on confidentiality provisions, and a decision finding that a vaccine patent was obvious. From a European perspective, we provide two important updates from France, a decision of the Technical Board of Appeal of the European Patent Office on entitlement to priority in relation to certain CRISPR patents, a decision of the General Court of the European Union refusing to allow Glaxo to trade mark the colour purple and an update on the Unified Patent Court.

1. UK Supreme Court stays the course in Unwired Planet and Conversant – confirming the approach to FRAND adopted by the lower courts

We cover the long awaited decision of the UK Supreme Court, which confirms that a global licence can be FRAND and that the UK courts have the jurisdiction to determine the terms of such a licence.

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2. Human Says No: AI Can’t Be Patent Inventor, Rules High Court Judge

We update on the UK High Court’s decision to dismiss an appeal against a decision of the UK Intellectual Property Office that an AI system could not be named as inventor on two patent applications.

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3. Updates from France

We cover an appeal decision on the merits finding that an SPC was invalid and a first instance finding that a patent covering pemetrexed was valid and infringed.

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4. Approach to assessing entitlement to priority unchanged – TBA in the CRISPR case confirms

We report on a decision of the Technical Board of Appeal of the European Intellectual Property Office which concerned whether or not the Broad Institute’s patent relating to CRISPR gene editing technology could validly claim priority from several US provisional applications.

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5. Jurisdictional tussling: the UK is open for business on FRAND

Following the Supreme Court decision we consider an important decision on jurisdiction from the High Court refusing a stay of a FRAND licence determination.

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6. Glaxo’s purple inhalers fail to get trade mark protection

We update on a decision of the General Court of the European Union upholding a refusal to allow Glaxo to register the colour purple in relation to its inhalers as a trade mark.

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7. Can a patentee claim a royalty for non-UK acts of infringement?

We provide analysis of a case in which a patentee’s claim for worldwide damages, potentially running into hundreds of millions of pounds, was struck out on the basis that there was not sufficient connection to UK acts of infringement.

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8. Confidentiality clubs in English proceedings

We cover two decisions relating to confidentiality arrangements surrounding documents disclosed in UK proceedings. In one case the court refused to restrict access to outside counsel only, while in the other certain documents were permitted to remain within that designation.

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9. Obvious and narrow: Wyeth’s patent for a pneumococcal conjugate vaccine lacks inventiveness and Merck’s V114 vaccine falls outside of a narrow claim construction

In a case concerning a vaccine for the prevention of pneumococcal disease the judge found Wyeth’s patent obvious and that the claims would not have been infringement in any case.

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10. The Unified Patent Court – preparations now back in motion

We provide an update on the status of the Unified Patent Court, including Milan’s bid to host the Life Sciences Seat of the Central Division.

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11. Changes at the UK Patents Court

We update on some recent changes to the judges at the UK Patents Court.

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12. Table of recent patent decisions relating to validity and/or infringement

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13. Table of other recent decisions

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Jonathan Turnbull

Jonathan Turnbull
Partner, London
+44 20 7466 2174

David Webb

David Webb
Associate, London
+44 20 7466 2629

Monika Klajn

Monika Klajn
Senior Associate, London
+44 20 7466 7604

Rachel Montagnon

Rachel Montagnon
Professional Support Consultant, London
+44 20 7466 2217