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Innovate: patents newsletter

David Knight


United Kingdom

Read Innovate, Fieldfisher's patents newsletter, on

Welcome to the spring 2011 issue of Innovate, the patents newsletter from Fieldfisher.

We hope that you will find it an interesting and enjoyable read. If you have any questions or comments on the topics discussed, or patent matters in general please get in touch; any feedback also always is much appreciated.

As you may be aware earlier this month we opened two new offices in Düsseldorf and Munich with a focus very much on patents. You can expect to see contributions from our new colleagues flowing through into the next edition of Innovate.

Since the last edition of Innovate we are pleased that Mark Hodgson has joined our London based team. Mark is a leading patent litigator, particularly in the pharmaceutical and life sciences field. Mark has conduct of the first patent case to go before the new UK Supreme Court this summer - we anticipate reporting on this later this year. In the meantime you can read more about Mark in the 'Meet our Lawyers' feature.

In this edition of Innovate topics discussed are as follows:

  • Does Grim[m]e pay?: Court of Appeal provides guidance on the application of the contributory infringement provisions under section 60(2) Patents Act 1977. Read more >
  • Reality trumps hypothesis - Court of Appeal overturns test for calculating the compensation to be paid to an employee inventor: The Court of Appeal has ruled that where an employer transfers the rights to an invention to a connected company, compensation to the employee inventor should be calculated according to the actual assignment that had occurred, and not on some hypothesis of what might have been. Read more >
  • Court of Appeal fails to see clearly in contact lens patent dispute: The Court of Appeal has upheld a ruling that a patent for extended wear contact lenses was invalid due to insufficiency where the claims were ill-defined and contained subjective tests. Read more >
  • No rest for Virgin’s flat-bed patent disputes: The Court of Appeal has issued two judgments in a long-running dispute concerning Virgin’s European patent for its Upper Class flat-bed seats, which is being played out before the English Courts and the European Patent Office, and which demonstrate the interrelationship between rulings made in these two court systems. Read more >
  • Smith & Nephew in a Vacuum - Court of Appeal construes patent claim with literal interpretation: The Court of Appeal has overturned parts of a High Court ruling on the validity and infringement of patents relating to apparatus to assist wound healing, and has also applied its recent decision on the test for contributory infringement. Read more >
  • IPCom too slow to amend: The Court of Appeal has reaffirmed the principle that proposed amendments to a patent must be brought before the court at an early stage so that they can be dealt with fairly at trial. Read more >
  • Cephalon fail to wake the Court to grant an Interim injunction: A judgment in the High Court is a good demonstration of how the balance of convenience test can prevent the award of an interim injunction. Read more >
  • Requirement for technical effect: Two recent cases demonstrate the UKIPO’s hard line approach on requiring a technical effect in software and business method related inventions. Read more >
  • Restoration on condition: The UKIPO has held that the reinstatement of a patent should be conditional upon the imposition of certain terms to protect potentially affected third parties. Read more >
  • EU patent encounters major set back: Although the European Parliament has recently given the go-ahead for use of the “enhanced co-operation procedure” enabling an EU patent system to be created in those EU member states that wish to participate, this progress may be permanently stalled by a ruling of the Court of Justice that the proposed judicial system for Community and EU patents is not compatible with EU Treaties. Read more >
  • The Dutch Court considers crossing its borders - Is there still scope for cross-border injunctions in European patent infringement cases?: The District Court of The Hague has asked the Court of Justice of the EU for guidance on cross-border injunctions in cases of infringement of a European patent. Read more >

Other news

  • Other news: including the UK Patent Box moves a step closer and a date is set for the introduction of a £500,000 damages cap in the Patents County Court. Read more >

Meet our lawyers

We hope you enjoy it. The next edition of Innovate will be sent out in the summer. In the meantime, please feel free to contact us if you would like to discuss in greater detail any of the issues raised, or indeed any patent issues. We also would welcome your feedback on the format and content of Innovate, so please feel free to email Louisa Albertini.

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