Ipkat Invitee Blogger Of The Month

Each calendar month Ipkat invites a prominent fellow member of the intellectual belongings community to contribute a invitee blog. Our kickoff invitee blogger is London-based barrister Ashley W. Roughton of Hogarth Chambers. Ashley’s do covers a broad multifariousness of IP topics too he is a co-author of The Modern Law of Trade Marks. He has lately appeared inwards Arsenal 5 Reed. Ashley’s chosen dependent plain is file wrapper estoppel, a U.S. of America legal concept which is existence spoken of inwards U.K. courts alongside increasing frequency. If yous receive got whatever comments on Ashley’s invitee blog, delight mail them to us at theipkat@yahoo.co.uk.

File wrapper estoppel (where a patent applicant is absolutely fountain past times representations made to the Patent Office) is unknown inwards the UK. However it seems incorrect that an applicant tin give the axe larn his patent past times telling the Patent Office that his patent specification or claims hateful i affair too after enjoin the courtroom something quite dissimilar inwards social club to select handgrip of an alleged infringer. How much, asks the law, tin give the axe this variety of behavior enlarge the defendant’s rights? In the U.K. the answer is non at all: it is non the defendant’s rights which are enlarged but those of the claimant which are diminished. Influenza A virus subtype H5N1 patent claim non drafted inwards expert organized religious belief too inwards demand of a narrowing amendment may non live amended without the discretionary permission of the court, which takes into account, amid other things, shifts inwards the applicant’s position. But at trial the applicant is non held to his representations to the Patent Office. There is around sense inwards this: if file wrapper estoppel becomes a U.K. doctrine, the overall patent specification essentially comprises the lastly granted claims too specification equally good equally the Patent Office file held inwards Newport and, possibly, whatever oral representations which tin give the axe live established inwards evidence. So instead of having i document to assay too construe, yous receive got 2 too perhaps around hearsay. The Comptroller is non obliged to keep her files but exactly to keep the register.

Imagine immediately that the CEO of Largeco, a pharmaceutical company, announces that "our latest patent volition halt nobody producing hurting killers containing proprionic acid derivatives". Smallco produces a proprionic acid derivative hurting killer too Largeco sues. Smallco argues that (i) what the CEO said is a world declaration that strict legal rights volition non live enforced, which Smallco relied upon to its detriment (a classic estoppel situation) too (ii) that what the CEO said amounts to a licence. The instant declaration is hard because a bare licence tin give the axe live withdrawn on reasonable notice, say vi months, when Smallco wants to produce. The kickoff defense forcefulness is, however, upheld. Plenty of regime back upwards this proffer too many defences receive got succeeded along these lines, though U.K. courts volition non construe a patent’s claims too specifications past times reference to what others say virtually it - fifty-fifty if those others ain it.

Now, what is the departure betwixt the CEO making his declaration world or writing it downward on newspaper too depositing it inwards a publicly accessible Patent Office file? Superficially the answer seems to live none, though U.K. constabulary mightiness non regard this equally estoppel unless Smallco shows it read that document earlier it embarked upon production. Estoppel arises because what is said is exactly a declaration that Largeco volition non insist upon its strict legal rights ― but it must live clear too unequivocal too it must live intended that Smallco volition human action upon it. The departure betwixt this too file wrapper estoppel is huge. The latter imposes no apparent requirement of reliance ― the doctrine tin give the axe live relied upon fifty-fifty if the prosecution file was non read earlier the infringing acts took place.

Do nosotros demand file wrapper estoppel inwards the UK? Mr Justice Jacob inwards the lately reported Celltech Chiroscience illustration justifiably advises caution. The European prosecution file would live inwards whatever i of iii languages and, if U.S. of America sense is anything to boot the bucket by, many U.S. of America patent infringement proceedings are taken upwards alongside arguments virtually what the prosecution file genuinely meant. Conversely U.K. courts receive got faced footling existent criticism of the manner they construe patent claims too specifications.