November 2015

1. General 

New Zealand

Hearings Documents Defaulted to being Visible to both Parties
IPONZ has now changed the default visibility setting for uploaded hearings documents so that they are automatically visible to both parties. Where, but only where, confidential evidence is to be uploaded without being available to the other party, this can be done by selecting the new ‘Confidential Evidence’ document type.

2. Patents

New Zealand

Trans-Tasman Patent Attorney Bill Introduced
In November 2015 the Patents (Trans-Tasman Patent Attorneys and Other Matters) Amendment Bill 2015 was introduced to the New Zealand Parliament. The Bill’s primary purposes are to:

• allow for a single patent application and examination process for Australian and New Zealand patent applications – such applications being examined according to the law in each country;
• establish a joint registration regime with Australia for patent attorneys, along with a Trans-Tasman Disciplinary Board.

People who are registered patent attorneys immediately prior to the joint registration regime coming into effect will become patent attorneys under the joint registration regime. Once the joint registration regime comes into effect people who are partially qualified to act as a patent attorney in New Zealand will have 4-years to complete the qualification under the pre-existing criteria, after which they will become subject to the new criteria.
Patent attorneys registered in New Zealand and/or Australia will be subject to the Trans-Tasman Disciplinary Board if they are ordinarily resident within or have a principle place of business within one of those jurisdictions and provide patent attorney services in respect of New Zealand and/or Australian patent law.
The Bill also seeks to remedy a drafting error in the Patents Act 2013, which currently allows applications to be opposed with a unity of invention objection despite such a ground being ruled out as a ground of revocation. The Bill does not specify that this correcting amendment is to have retrospective effect.

Linked Request Cases More Visible
All Patent cases under the Patents Act 2013 which become open to public inspection will now have their linked request cases become open to public inspection as well. This change is retroactive, and will apply to all Patents and Patent Applications to which section 78 (Documents open to public inspection) applies. Request cases cannot be directly searched, but may be viewed by following the hyperlinks under ‘Linked Case(s)’ on a case Bibliographic page.

United Kingdom

Plausibility Easier to Prove than Obviousness
In Actavis Group PTC EHF v Eli Lilly and Co the Judge held that the test for plausibility in regards to sufficiency is easier to satisfy than the test for obviousness.
Eli Lilly have a swiss-form patent for the second medical use of atomoxetine in treating attention deficit hyperactivity disorder (ADHD). Actavis sought to revoke the patent on several grounds, including obviousness and sufficiency. Atomoxetine was already used for treating depression and Actavis argued that it should be found obvious to use for the treatment of ADHD. Actavis also submitted that the minimal disclosure in the patent means there is insufficient basis for concluding that it is plausible that the invention will work with substantially everything falling within the scope of the claim. In particular, Actavis alleges that the patent simply asserts that atomoxetine is effective and safe for the treatment of ADHD.

The Judge rejected the obviousness attack, both on the basis of being used to treat distinct conditions and on the basis that the use of atomoxetine in the treatment of ADHD has fulfilled a long felt want. However, when then considering sufficiency the question was asked whether, as with obviousness, the skilled person should be able to make a fair prediction as to whether or not the alleged invention will succeed. Actavis submitted that it should, arguing that the requirement that it is plausible that the invention will work with substantially everything falling within the scope of the claim is the same as the ‘reasonable expectation of success’ test used for obviousness. Actavis further supported the connection by noting that a general principle underlying the law of both obviousness and insufficiency is that a patent monopoly should correspond to and be justified by the technical contribution to the art. Actavis further argued that a swiss-form claim assumes that the manufacturer knows, or it is reasonably foreseeable, that the product will be used intentionally to treat ADHD.

The Judge found that whether an invention is plausible is fact sensitive and will depend upon the nature of the invention, the scope of the claim, the disclosure of the specification and the common general knowledge. Generally it is easier to establish plausibility for claims of narrow scope, but such claims can still be implausible. Further, plausibility is only an aspect of sufficiency, since a plausible claim can still be insufficient.

The Judge noted that the fair expectation of success criterion for obviousness is not satisfied by being obvious to try. Were obviousness to be satisfied by the latter there would be insufficient incentive for research and development, since many approaches may be obvious to try without any real idea of whether they will work. By contrast, plausibility is satisfied by a disclosure that is credible, which is akin to the obvious to try test and easier to satisfy than the fair expectation of success criterion. The purpose of the plausibility criterion is to exclude speculative patents based on mere assertion where there is no real reason to suppose that the assertion is true. The EPC does not require claims to be supported by data or experimental proof. Provided they are plausible, claims unsupported by such material can stand without needing to have a fair expectation of success.

3. Trade Marks

New Zealand

Geographical Indications Act to be Amended
The Geographical Indications (Wine and Spirits) Registration Act 2006 was assented to on 21 November 2006, but has yet to commence. It repealed the Geographical Indications Act 1994, which itself never commenced. However, renewed interest in bringing the 2006 Act into force has resulted in the introduction of the Geographical Indications (Wine and Spirits) Registration Amendment Bill 2015. Once the Bill comes into force it specifies that any provisions of the main Act that are not in force by 18th July 2018 will commence on that date.

The Bill also introduces enduring geographical indications and makes other geographical indications subject to a 10-year term and renewable for further 10-year terms. The specified enduring geographical indications are New Zealand, North Island, and South Island. It will also provide a basis for preventing registration of geographical indications that are likely to be offensive.

To be registrable as a geographical indication a sign must identify a wine or spirit as originating in the territory of a country, or a region or locality in that territory, and the given quality, reputation or other characteristic of the wine or spirit must be essentially attributable to its geographical origin. For wines with a New Zealand origin the Act currently requires that at least 85% of the wine is obtained from grapes harvested in the relevant geographical origin. The Bill amends this requirement by specifying that the remainder must be harvested in New Zealand.

United Kingdom

Disclaimers Held Incapable of Avoiding Infringement
In Flynn Pharma Ltd v Drugsrus Ltd a Judge of the High Court held that disclaimers on a parallel imported generic medicine would not defeat trade mark infringement claims.
Flynn Pharma has UK and EU registrations for FLYNN for pharmaceutical preparations. Flynn also has a licence agreement with Pfizer, who manufacture the off-patent Phenytoin Sodium and market it under the brand name Epanutin. Under the licence agreement Flynn would have sole marketing authorisation in the UK for Pfizer’s Phenytoin Sodium in capsule form, which it markets under the generic name ‘Phenytoin Sodium Flynn’. This arrangement allowed a higher price to be charged for Phenytoin Sodium as it circumvented the price controls of the pharmaceutical price regulation scheme (PPRS).

Flynn seek to restrain Drugsrus from importing into the United Kingdom Pfizer’s Epanutin product, which it bought in other EU member states and affixing to them the generic name ‘Phenytoin Sodium Flynn’. Drugsrus wanted to use the generic name so that pharmacists could use the product to fulfil prescriptions written for ‘Phenytoin Sodium Flynn’, rather than only for prescriptions written for ‘Epanutin’ or for the INN ‘phenytoin sodium’. 

Under EU law parallel importation within the EU is valid, if, in the case of pharmaceuticals, it is derived from the same point of control. However, the Judge effectively found that the arrangement between Flynn and Pfizer was at arms length, with Pfizer needing to manufacture product for the UK according to Flynn’s direction and Flynn having no control over Pfizer’s manufacturing of product for the remaining EU market. Consequently, there was no exhaustion of trade mark rights and so use by Drugsrus of the generic name ‘Phenytoin Sodium Flynn’ would amount to infringement of Flynn Pharma’s trade marks. In particular, consumers will perceive the word FLYNN to be a mark of origin since they will interpret it as being an indication of the holder of the marketing authorisation of the product.

However, Drugsrus also offered to include on the outside of the pack and in the patient information leaflet a statement that the product is not distributed by Flynn Pharma but that it is therapeutically equivalent and manufactured at the same site as the Phenytoin Sodium Flynn product marketed in the UK by Flynn Pharma Limited. The Judge, though, rejected that proposal, holding that the deceptive use of FLYNN in naming the product cannot be remedied by small print explaining that the product has not been made or marketed by the entity which owns the rights to use that name.