Canadian Lawyer InHouse

Intellectual Property By Timothy C. Bourne Five key changes in patent laws worldwide Changes with European patents kicked in Jan. 1. C hange is a constant in patent law. Here are five recent developments that have occurred in key jurisdictions that may impact innovative enterprises: 1. The Leahy-Smith America Invents Act After several false starts, the United States overhauled their patent act in September 2011. One significant change was to eliminate the "first to invent" rule whereby the first person to have made an invention could be awarded a patent even if he was not the first to file a patent application. The U.S. is now more or less aligned with the rest of the world in awarding patents to the first person to file a patent application for an invention regardless of when it was invented. It is now more important than ever to file a patent application early in the life of an R&D project. Another change was to introduce an opposition procedure in which a third party may request a review of a patent within nine months of its issue date — this provides an additional opportunity to challenge patents outside the judicial system. 2. Unitary European patents Timothy C. Bourne practises intellectual property law in Ridout & Maybee LLP's Ottawa offices. European patents are presently processed with a hybrid system: Patent prosecution occurs centrally within the European Patent Office, followed by "validating" the granted patent within the 38 countries of the European Patent Convention. This can require translation fees in each country as well as other steps. As of Jan. 1, applicants will be entitled to a "unitary patent" which will have effect within 25 European countries. Translations are not required for these countries if the patent is in English, French, or German. A single fee is required for the unitary patent, rather than fees for each country. Enforcement of the unitary patent will be centralized within a single court. The unitary patent has the potential to simplify European patents and reduce costs, although there is some debate as to the extent of any such savings. 3. Billion dollar damage awards for IP infringement 2012 was a banner year for patent litigation. Three patent infringement cases in the U.S. resulted in awards of over one billion dollars to Carnegie Mellon University, Apple Inc., and Monsanto Co., although these awards are being somewhat reduced during various appeals. Damage awards elsewhere were more modest but growing in size: the French company Schneider Electric SA was awarded $48.5 million in a Chinese case involving a utility model patent; Merck & Co. was awarded $119 million against Apotex Inc. in Canada. The significance of these cases goes beyond their monetary value; the possibility of large damage awards against infringers enhances the value of patents as a strategic resource for innovative companies. The large "secondary market" for patents developed by innovative companies will likely continue and expand into countries outside the U.S. 4. Patentable subject matter 1: "business methods" In 2010, the U.S. Supreme Court ruled a patent directed to a method of "hedging" financial risks was too abstract to be patentable. However, they also opened the door to a flexible approach to assessing patentability of other "business methods." Since then, U.S. courts have granted patents on a wide range of computerimplemented methods and systems. In Canada, a similarly flexible approach was taken by the Federal Court of Appeal, resulting in a patent for Amazon.com Inc.'s "one-click" online shopping method. 5. Patentable subject matter 2: Biotechnology In a closely watched decision, the U.S. Supreme Court denied a patent to Myriad Genetics Inc. for a method of detecting a form of breast cancer using an isolated segment of naturally occurring DNA. However, they stated synthetic DNA could be patented. This ruling has created considerable doubt on the patentability of a range of diagnostic tools and could impact innovation in this area. There are no significant decisions to date that have considered this topic in Canada. IH canadianlawyermag.com/inhouse February 2014 11

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