Changes to UKIPO Manual of Patent Practice

Updates incorporated into the April 2014 version of the UKIPO Manual of Patent Practice (MOPP) include:

• updates to better reflect IPO practice in relation to exclusions from patentability under s.1(2) (see 1.07-1.40.4);
• clarification to practice relating to inventions that may be combinations or a collocation (see 3.17);
• a claim of a patent is not entitled to priority if the disclosure of the priority document is too broad or too specific, in view of Hospira UK Generics (UK) Ltd (t/a Mylan) v Novartis AG [ 2013] EWCA Civ 1663 (see 5.23.1);
• an update relating to the scope of the Comptroller’s powers under r.50, in view of Virgin Atlantic Airways Ltd v Jet Airways Ltd [2013] R.P.C. 10. The Patents Court held that the procedure under r.50 was only suitable for corrections of the kind likely to be agreed with the proprietor of (or applicant for) the patent (see 32.14.1);
• an update to s72(1) to reflect the Court of Appeal’s decision that Article 6 does not extend to creating substantive rights to challenge the validity of a patent where none already exist. The only grounds available to challenge the grant of a patent are therefore those under s72 and s74, in light of Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd & Ors [2013] EWCA Civ 1713 (see 72.03);
• an update to s77(1) to reflect the Court of Appeal’s decision that the EPO is factually and legally independent of the IPO and, since s77(1) makes European patents directly effective in domestic law from the date of publication in the Bulletin, the Comptroller’s function in the process is purely administrative, in light of Virgin Atlantic Airways Ltd v Jet Airways (India) Ltd & Ors [2013] EWCA Civ 1713 (see 77.03.1);
• details about the factors to be considered when deciding whether to exercise discretion to allow an opportunity to amend have been provided, in view of Monkey Tower Ltd v Ability International Ltd [2013] EWHC 18 (Pat).
• questions have been referred to the CJEU in Forsgren v Österreichisches Patentamt C-631/13 to determine if a product may be considered an active ingredient if it is covalently bonded to other active ingredients but nonetheless retains its own activity, and if the product may attract an SPC if the marketing authorisation does not concern the activity of the product but relates to that of the other active ingredients, and also if the product being referred to as a carrier in the marketing authorisation means that it can be granted an SPC (see SPM1.04.1);
• the CJEU has established that an SPC is to compensate for delay in marketing “the core inventive advance” of a patent. The court has also determined that a functional definition may suffice for a product to be protected by a basic patent if “the claims relate, implicitly but necessarily and specifically to the active ingredient in question” (see SPM3.02.6).

A summary of all changes can be found here.

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