Of all the patent lawyers named in the Global Counsel Intellectual Property Handbook, 10 stand out as leaders in their field (see box "Global Counsel Top 10: Patent lawyers"). We asked them for their views on the most important recent developments in patent practice, the areas of global patent regulation most in need of reform and the regulators they most admire.
Don Dunner, of Finnegan Henderson Farabow Garrett & Dunner, sees this case as "in one fell swoop obliterating much of the doctrine of equivalents," which patent owners and lawyers rely on to amend a patent retrospectively after original application and prosecution, in order to extend its claim beyond its literal language.
As a result of the case, Don Martens of Knobbe Martens Olson & Bear says, "the approach to patent claim drafting and prosecution of patent applications in the US has changed dramatically." This view is shared by Dunner's colleague Charles Lipsey and James Haley of Fish & Neave, who adds that "it retroactively limits the enforceability of many US claims already in existence."
European practitioners also gravely criticize the decision taken by the US Federal Court in the Festo case. Dr Bernhard Geissler, of Bardehle Pagenberg Dost Altenburg Geissler Isenbruck, believes that "this abominable decision" should be reversed by the Supreme Court or else the "value of a US patent will severely be reduced, in the majority of cases to zero."
In the UK, Mark Hodgson of Taylor Joynson Garrett draws attention to the recent case GlaxoSmithKline v Generics (UK) Ltd (Unreported: HC 01C04025). The UK patent court's rare grant of an interlocutory injunction will "rekindle enthusiasm among patentees and practitioners to seek such orders," he says, particularly "at a time when a number of key pharmaceutical patents are nearing the end of their term and generic companies are gearing themselves up to enter the market."
In the international arena, Trevor Cook, of Bird & Bird's London office, points to the recent controversy surrounding the status of pharmaceutical patents in developing countries under TRIPS (Trade Related aspects of Intellectual Property Rights), culminating in the Doha Declaration on the TRIPS agreement and Public Health. Seen by some developing nations as a clear victory over the US and several EU countries, the declaration recognised the challenges faced by the WTO's less developed members in coping with the HIV/AIDS virus. It provides them with an additional 10 years (until January 2016) with which to comply with their obligations under the agreement, while reaffirming that TRIPS obligations do not "and should not prevent Members from taking measures to protect public health."
Another significant international development is the establishment of a committee to reform the international Patent Cooperation Treaty (PCT). Peter Dirk Siemsen, of Brazilian firm, Dannemann Siemsen Bigler & Ipanema Moreira, explains that the current treaty, created to aid patent applicants obtain protection in a number of worldwide markets, is considered procedurally cumbersome and has led many to shun the system altogether. To alleviate the workload of the larger patent offices, the committee has therefore proposed the extension of the Chapter One application deadline from 20 months to 30 months to curb the number of duplicate Chapter Two applications (that is, submissions to enter the International Preliminary Examination) by applicants whose real purpose was to gain a further 10 months to enter the national phase.
Putting the onus on local, rather than the International Preliminary Examination Authorities (IPEAs), says Seimsen, should prompt national offices to improve the quality of the service.
Much has been written recently about the patentability of business methods (see: practicallaw.com/A16000, "Business method patents" GC,2000,V(9), 71 and A18804 "IP management: A game of strategy for global players" GC,2001,VI(6), 20). Philip Kerr of Allens Arthur Robinson draws attention to a major development in Australian case law in this area. In Welcome Real-Time SA v Catuity Inc (2001, FCA 445), a single federal court judge held that technology embedded "business methods" (in this case a smartcard system able to process loyalty program information) could be patent protected. The court found against Catuity Inc, which had developed a similar system, stating that it "operated in a way that infringed every integer" of Welcome Real-Time's patent. The case is currently under appeal.
Dr Geissler believes that the reform of the PCT should go further and that international patents should be issued, "not just a bundle of applications and a search report". "We must stop being cowards and simply bite the bullet: A competent examining Patent Office can and will do a decent job, so that the public runs very small risk in a PCT Chapter Two patent system."
In relation to the European market, Hodgson remarks that the industry has long requested a viable pan-European single patent and patent litigation system, and regards the becalming of the Community patent initiative as unfortunate. He hopes, though, that the European Patent Litigation Protocol will be realised. Cook shares the same view, and feels that the European Commission may be out to sabotage the initiative by claiming sole competence in this area. However, in Germany, Dr Geissler sees realistic development towards a Europe-wide patent litigation system that ultimately will be "more important for the IP driven economy than the introduction of the Euro".
Pierre Lenoir, of Andersen Legal in France, also speaks of the need for harmonisation, particularly with regard to software patents. With an eye on the broader picture, Kerr comments that a fundamental tenet of reform must be "the adoption of global uniform laws so that both patent owners and users of technology can predict outcomes across territories."
Siemsen puts the global deceleration in reaching this objective down to the current incapacity of the larger patent offices to cope with increased workload. He firmly believes that bringing about harmonisation under the auspices of the WIPO should be actively encouraged and "an additional effort should be made in order to reach a consensual solution for all aspects in discussion, rather than leaving certain controversial issues outside, because some countries refuse to move from their current systems".
Dunner, Lipsey and Martens echo this sentiment. In Martens words: "Our global economy needs a globally harmonised patent system. The ultimate efficiency of a single worldwide patent probably will not happen for decades, but we need to continue making whatever strides we can toward that ultimate goal."
When asked to consider which individual they consider to have made the most valuable contribution to patent regulation in recent years, Hogdson and Cook chose Jan Willems, formerly a Patents Judge in The Netherlands and now on the EPO Board of Appeal, whom they commend for his hard work as part of an intergovernmental committee drafting the extensive and detailed European Patent Litigation Protocol.
Dunner and Martens both agree that Arpad Bogsch, as Director General of the WIPO, deserves particular mention for his contribution to patent regulation on an international level. "He has guided the creation of the most valuable patent treaties such as the PCT," says Martens. Dunner focuses on his "tireless and effective" approach in drawing countries together "with a goal of harmonising the many different approaches to patent protection and enforcement."
Siemsen chooses Bogsch's second in command, François Curchod, the Deputy Director General of the WIPO. He praises him for his dedication to the role and for his valuable contribution in the development of the Patent Law Treaty and the PCT. "Despite his intense activities he has always shown to be an accessible and receptive person."
Haley picks out two regulators from the US Patent and Trademark Office, John Doll, Director of Technology Center 1600, and Stephen Kunin, Deputy Commissioner for Patent Examination Policy. "Both," he says, "have been instrumental in developing and implementing sensible guidelines and practices for the examination of biotechnology patent applications." Haley cites Doll's enthusiastic support for the Patent Office's partnership with the public and bar, while Kunin, also chosen by Lipsey, is particularly singled out as "a moving force in the US behind the trilateral agreements and harmonisation of examination and practice."
To order additional copies of the Intellectual Property Handbook 2002, please contact Alvaro Fornazini on +44 20 7202 1246 or at email@example.com
Bird & Bird
Finnegan Henderson Farabow Garrett & Dunner
Washington DC, USA
Dr Bernhard Geissler
Bardehle Pagenberg Dost Altenburg Geissler Isenbruck
James F Haley Jr
Fish & Neave
New York, NY, USA
Taylor Joynson Garrett
Allens Arthur Robinson
Finnegan Henderson Farabow Garrett & Dunner
Washington DC, USA
Knobbe Martens Olson & Bear
Newport Beach, CA, USA
Peter Dirk Seimsen
Dannemann Siemsen Bigler & Ipanema Moreira
Rio de Janeiro, Brazil
These links can be found from this article which is at www.practicallaw.com/A21380
Rights in design www.practicallaw.com/T672
Intellectual property: international joint ventures (2001)
Overview of patents (2001)
Overview of collaborative R&D agreements (2001)
Protecting innovations: From patents to trade marks (1997)
Pan-European intellectual property strategies (1998)
IP Management: A game of strategy for global players (2001)
Consultation of software patents (2001)
Publishing patent applications (2000)
Community patent follow up (1999)
Business method patents (2000)
The Global Counsel Top 10 Life Sciences lawyers (2001)