The historic patent story of the stent

What is a stent?

A stent is a small mesh tube that is placed in a narrow or weak artery as part of a procedure called percutaneous coronary intervention (PCI) to improve the blood flow, support the inner walls of the artery and help prevent them from bursting. (more…)

The historic patent story of the MRI scanner

Since 1970, Magnetic Resonance Imaging (MRI) has played a key role in the medical world. (more…)

EPO revokes CRISPR patent: Priority isn’t connected to entitlement to the invention

The EPO has revoked one of the Broad Institute’s core patents relating to the CRISPR gene editing technology.

The patent claimed priority from US applications which were filed by a number of joint applicants. The revoked patent omitted one of these applicants and the Broad Institute did not show that any right of priority had been assigned. The Broad Institute argued that since the omitted applicant was not entitled to the inventions in the patent, it should not need to demonstrate that an assignment of the priority right took place. However, the EPO held that the claim to priority was invalid which brought intervening prior art into play.

The decision confirms that the right to priority is a stand-alone right which depends on the named applicants, and not on entitlement to the underlying invention.

The Broad Institute has appealed the decision and released a press release alleging that the EPO’s decision is not in line with a proper interpretation of the Paris Convention (which gives rise to the priority right).

Whichever way the appeal goes, this case highlights the importance of assigning any priority rights before a later application is filed.[:]

European Commission Releases Position Paper on Intellectual Property Rights after Brexit

The UK’s decision to leave the European Union will have significant ramifications for intellectual property rights within not only the UK, but also the remaining 27 members of the EU.  The Withdrawal Agreement, governing the UK’s exit from the EU, will have to deal with the issue of intellectual property.

The European Commission, the EU’s executive body, have recently published a position paper setting out what they see as priorities for intellectual property rights to be dealt with in the Withdrawal Agreement.

Five main principles are outlined in the position paper.  These are:

  1. Continued protection in the UK of intellectual property rights having a “unitary character” after Brexit;
  2. That “procedure-related” rights (e.g. the right to claim priority) are protected when applying for equivalent rights in the UK;
  3. Applications for supplementary protection certificates in the UK made prior to the withdrawal date are completed;
  4. Protection granted for databases under EU law continues in the UK;
  5. “Exhaustion” effective before the withdrawal date is not altered after Brexit.

Of these, points 2-4 are somewhat specialised in nature.  It is likely to be the issues in relation to the fragmentation of unitary rights (item 1) and “exhaustion” (item 5) that will be of more general interest to rights owners.

Unitary Rights

Certain EU intellectual property rights, notably the EU trade mark and the registered Community design have a “unitary character”.  This means that they are single rights, valid across the whole EU, and have equal effect in all EU states.  The Commission’s view is that the holders of such rights should automatically be entitled to equivalent protection provided by a comparable UK right after Brexit.  The paper also asserts that such automatic entitlement should be free of cost for the rights owner, and administrative burden should be kept to a minimum.

Exhaustion of Rights

The principle of exhaustion of rights within the EU (“Community exhaustion”) holds that, once goods have been placed on the market within the European Union, the proprietor of an intellectual property right covering the goods no longer has the ability to restrict their further movement within the EU.  The paper proposes that rights exhausted prior to the UK’s withdrawal date will remain exhausted within the UK and the remaining EU states.

Opinion

The Commission’s proposals contained in the position paper appear to protect the interest of rights owners in a pragmatic and workable fashion.  We will report further developments as negotiations proceed.

Owners of EU rights will wish to be vigilant that such rights give effective and optimal coverage in the UK in the light of the finally agreed mechanism.  Cleveland Scott York will be pleased to discuss any concerns you may have.

Authored by Adrian Bradley

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Leading patent attorney to help Oxford chemists spot the commercial potential of their research

One of the UK’s top patent attorneys is set to lead an interactive workshop on intellectual property and spin-outs at the University of Oxford’s Chemistry Research Laboratory next month.

Dr Adrian Bradley, a partner at Cleveland Scott York, the intellectual property specialists with offices in London, Reading, St Albans and Brussels, will lead the seminar on Tuesday 13 June 2017. Cleveland Scott York was formed last month as a result of the merger between Cleveland IP and Scott & York IP law.

The commercialisation of academic research, technology transfer and spin-outs are a sizeable element of Adrian’s professional practice. At the workshop, he will be encouraging delegates, including post-doctoral researchers, to think about how spin-outs, patents and licensing agreements might apply to their research.

Dr Bradley will then lead a business game in which the group will be split into teams to race for commercial success.

Dr Bradley, who himself holds a first class MA in Chemistry from the University of Oxford, said: “Academic researchers are rightly focused on pursuing their own research projects and being able to take the steps they need to be able to advance in their own careers, such as having articles published and presenting at conferences.

“What they might less frequently attend to is the commercial potential of their research. Yet this is incredibly important as it is one of the quickest and most effective ways for the public to benefit from their cutting-edge research.

“This workshop is a great opportunity to get researchers thinking more about what commercial potential there might be in their research and to let them know about the steps they can take to maximise this commercial potential.”

Dr Bradley plays an active role in a number of initiatives to encourage the dissemination of the benefits of academic research, including advising the Institute of Organic Chemistry and Biochemistry (IOCB), Prague, on the protection and commercialisation of inventions arising from its research activity.[:]

Leading UK patent attorney speaks on technology transfer at international scientific conference in Budapest

A chartered patent attorney from one of the UK’s leading intellectual property firms has presented at a major international scientific conference in Budapest, Hungary.

Dr Adrian Bradley, a Partner at Cleveland Scott York – established this month on the merger of Cleveland IP and Scott & York IP Law – presented on Friday 7 April 2017 at the plenary session of the RECOOP 12th Bridges Annual Scientific Conference.

Dr Bradley presented on ‘Technology Transfer Transfer – so good, they named it twice’. He outlined to delegates his experiences in the technology transfer sector in the UK, and his efforts to transfer this experience to the Czech Republic, where he is a member of the Business Advisory Board to the Institute of Organic Chemistry and Biochemistry (IOCB).

During the talk, Dr Bradley shared his observations about similarities and differences in the two environments, key lessons learned from his work so far, and outlined the possibilities for the future.

RECOOP, the Regional Cooperation for Health, Science and Technology Association, comprises 17 universities and academic institutions from nine countries in Central and Eastern Europe, the UK and the USA. The organisation aims to improve the scientific outputs of its members, to improve responses to major public health problems.

Dr Bradley said: “I was delighted to be able to present on what is a crucial issue for the scientific community as well as for society in general.

“Technology transfer is vital to scientific and technological progress as well as to maximising the wider benefits of scientific research, which is closely related to patent considerations.

“Understanding how technology transfer processes in one country can transpose into another, governed by different rules and conventions, is critical to improving technology transfer processes globally.”

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Leading patent attorney advises University of Cambridge/Royal Botanic Gardens, Kew spin-out combatting antimicrobial resistance

A leading patent attorney is advising a new UK spin-out which has been established to find new ways of combatting antimicrobial resistance.

Adrian Bradley, a partner and chartered patent attorney at London-based Cleveland IP, is advising Polypharmarkos Limited, a spin-out from the University of Cambridge and the Royal Botanic Gardens, Kew.

Polypharmarkos has been established to look for antimicrobially active substances with novel mechanisms of action in natural-product sources of plant, fungal and insect origin and to develop them to address the emerging global antimicrobial resistance (AMR) crisis.

The firm has recently benefited from a £500,000 investment from Cambridge Enterprise and the University of Cambridge Investment Fund to help it pursue this goal.

Adrian said: “I am delighted to be working with Polypharmarkos to help ensure that the intellectual property they develop as part of their efforts to combat this growing problem is protected.”

“Protecting, and effectively commercialising, the intellectual property belonging to spin-outs such as Polypharmarkos is crucial to maximising returns for investors and thus encouraging further investment in support of the fight against AMR.”

Adrian has an extensive track-record of advising on the protection and commercialisation of academic research and is a member of the business advisory board at the Institute of Organic Chemistry and Biochemistry, Prague.[:]

Leading UK Patent Attorney chairs webinar on the patentability of diagnostics in the US

A leading UK-based Patent Attorney has chaired a webinar on ‘the patentability of diagnostics in the US’.

Adrian Bradley, a partner at London-based Cleveland IP chaired the webinar on Wednesday 25 January 2017, organised by the Chartered Institute of Patent Attorneys (CIPA).

The webinar took place after a series of decisions by the US Supreme Court effectively limited the patentability of diagnostics in the US. The speaker, Rachal Winger, Patent Attorney and Partner at US firm Lee & Hayes discussed how applicants can maximise the possibility of success when seeking to patent diagnostic inventions in the US.

Adrian said: “The patentability of diagnostics in the US is a critical issue, not only for the firms looking to protect their intellectual property, but also for doctors and patients.

“Patents provide a legal framework that incentivises investment in innovation and there is nowhere that this is more important than in the medical sector.

“I know the professional participants in this webinar will have found the discussion valuable and useful for their own practice.”

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The Unified Patent Court – how to opt out

The unitary patent, and the Unified Patent Court (UPC) that will have exclusive jurisdiction over it, represent the most significant development in European patent law for some decades. Whether or not they have an interest in making use of the new system, holders of and applicants for European patents must take note of the introduction of the system, since they will be obliged to opt out of it if they do not wish the new Court to have exclusive jurisdiction over their existing, granted European patents.

The unitary patent will be available, and the UPC will formally come into existence, three months after the date that 13 member states including the UK, France and Germany have ratified the UPC Agreement.   The system also provides the possibility for holders of granted European patents to opt out. A significant proportion of European patent holders are likely to opt out to avoid the risk of central revocation, a possibility provided for by the new system.

Any opt out requests will be processed by the Registry of the UPC. This creates a conundrum because, without a court in existence there can be no registry. This issue had caused some confusion, and has raised the prospect of a deluge of opt-out demands on day 1 of operation of the court.

A potential solution has been provided by the Protocol to the Agreement on a Unified Patent Court (“the protocol”). The protocol will allow some parts of the UPC Agreement to be applied early. This includes final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands. The protocol was signed by representatives of seven participating member states on 1 October 2015, and thirteen signatures are needed for it to be effective.

The practical upshot is that the UPC Registry should be up and running before the entry into force of the new system, and opt-out demands will be recorded by the day it comes into force.

This is the latest step towards bringing the Unified Patent Court into operation. The Preparatory Committee aims to complete its work by June 2016 with a view to the UPC opening at the start of 2017. We will communicate the exact timing as soon as we learn of it.[:zh]The unitary patent, and the Unified Patent Court (UPC) that will have exclusive jurisdiction over it, represent the most significant development in European patent law for some decades. Whether or not they have an interest in making use of the new system, holders of and applicants for European patents must take note of the introduction of the system, since they will be obliged to opt out of it if they do not wish the new Court to have exclusive jurisdiction over their existing, granted European patents.

The unitary patent will be available, and the UPC will formally come into existence, three months after the date that 13 member states including the UK, France and Germany have ratified the UPC Agreement.   The system also provides the possibility for holders of granted European patents to opt out. A significant proportion of European patent holders are likely to opt out to avoid the risk of central revocation, a possibility provided for by the new system.

Any opt out requests will be processed by the Registry of the UPC. This creates a conundrum because, without a court in existence there can be no registry. This issue had caused some confusion, and has raised the prospect of a deluge of opt-out demands on day 1 of operation of the court.

A potential solution has been provided by the Protocol to the Agreement on a Unified

Patent Court (“the protocol”). The protocol will allow some parts of the UPC Agreement to be applied early. This includes final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands. The protocol was signed by representatives of seven participating member states on 1 October 2015, and thirteen signatures are needed for it to be effective.

The practical upshot is that the UPC Registry should be up and running before the entry into force of the new system, and opt-out demands will be recorded by the day it comes into force.

This is the latest step towards bringing the Unified Patent Court into operation. The Preparatory Committee aims to complete its work by June 2016 with a view to the UPC opening at the start of 2017. We will communicate the exact timing as soon as we learn of it.[:ja]The unitary patent, and the Unified Patent Court (UPC) that will have exclusive jurisdiction over it, represent the most significant development in European patent law for some decades. Whether or not they have an interest in making use of the new system, holders of and applicants for European patents must take note of the introduction of the system, since they will be obliged to opt out of it if they do not wish the new Court to have exclusive jurisdiction over their existing, granted European patents.

The unitary patent will be available, and the UPC will formally come into existence, three months after the date that 13 member states including the UK, France and Germany have ratified the UPC Agreement.   The system also provides the possibility for holders of granted European patents to opt out. A significant proportion of European patent holders are likely to opt out to avoid the risk of central revocation, a possibility provided for by the new system.

Any opt out requests will be processed by the Registry of the UPC. This creates a conundrum because, without a court in existence there can be no registry. This issue had caused some confusion, and has raised the prospect of a deluge of opt-out demands on day 1 of operation of the court.

A potential solution has been provided by the Protocol to the Agreement on a Unified

Patent Court (“the protocol”). The protocol will allow some parts of the UPC Agreement to be applied early. This includes final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands. The protocol was signed by representatives of seven participating member states on 1 October 2015, and thirteen signatures are needed for it to be effective.

The practical upshot is that the UPC Registry should be up and running before the entry into force of the new system, and opt-out demands will be recorded by the day it comes into force.

This is the latest step towards bringing the Unified Patent Court into operation. The Preparatory Committee aims to complete its work by June 2016 with a view to the UPC opening at the start of 2017. We will communicate the exact timing as soon as we learn of it.[:]

Cleveland Partner “Highly Recommended” in IAM 1000

Cleveland partner and patent attorney Adrian Bradley has been ranked as “highly recommended” in the most recent edition of the “IAM Patent 1000 – The World’s Leading Patent Practitioners,” a research-based annual guide that lists leading private practice patent professionals and firms in 41 of the world’s key jurisdictions. He was described as having “…an eye for detail. He knows his stuff on patent prosecution in the pharmaceutical and biotechnology fields and is very sensible in his approach.”