Brexit and IP

The UKIPO issued a release summarising their position on Brexit which didn’t contain anything new, so the position remains as set out in our last Brexit alert. I attended a working party at the UKIPO last week looking at options for the UK in terms of unregistered design right protection post-Brexit, so we will update you when there is something further to report.

Lack of industrial applicability, sufficiency and patents

The High Court has allowed an appeal in finding that a patent was valid because if the therapeutic effect of a homeopathic remedy was plausible, then it was capable of industrial application and of being performed, and it was not necessary to explain the mechanism for the plausible effect (the Epshtein case).

Tenders and freedom of information requests

The First-tier Tribunal (Information Rights) ruled that the Department of Work and Pensions could rely on the commercial interests exemption to refuse to reveal the amount of discounts offered by a contractor under a tender, because disclosure would damage the commercial interests of both parties (Jackley v Information Commissioner). Competitors sometimes try to use Freedom of Information Requests to obtain confidential information contained in tender documents.

Costs budgets and IP cases

Cost budgeting (where the Court agrees the amounts each party can spend on a case near the outset) is now required in most High Court IP cases (the Shorter Trial Procedure and IP Enterprise Court cases being notable exceptions). Marks & Spencer had its £700,000 costs budget cut down in a patent case involving a simple patent relating to elasticated cuffs on children’s shirts. The Court held that whilst £700,000 may have been the average costs of certain patent litigation in the Patents Court, this was a much simpler case than usual and the fact that the defendant’s own costs budget was less than half that amount was a relevant factor. Just because a claimant choses to sue in the Patents Court rather than the cheaper IP Enterprise Court does not mean they are automatically entitled to claim higher costs if those costs are not proportionate.

Obviousness and patents

For a High Court case which considered the “obvious to try” criteria, see Actavis v Ely Lilly, where the judge found that whilst it would have been obvious to try a particular dose of a drug, there would have been no reasonable expectation that the particular dose claimed in the patent would have had any clinically relevant effect or one with minimal side effects. As such the patent was valid.