02 August 2015

Turf Wars! Why Owning a ‘Plant Patent’ Does Not Grant Control of the Variety Name

Sir Walter Turf‘Sir Walter’ is a variety of buffalo grass that has proven to be extremely popular in Australia.  It was developed in around 1996 and is described as ‘a grass that was more resilient to disease, pests and fungus than other grasses.  It was drought resistant, thrived in shade and sun and stayed green and lush throughout the year.’

The Sir Walter variety is protected by Plant Breeder’s Rights (PBR’s), granted under the Plant Breeder’s Rights Act 1994 (the PBR Act).  Australian PBR’s perform a similar function in Australia to Plant Patents in the US.  Generally speaking, PBR’s are rights granted to the breeder of a new variety of plant that provide exclusive control over propagating materials, such as seeds, cuttings, divisions, tissue culture, and so forth, for up to 20 years (25 years in the case of trees and vines).

Protection for the Sir Walter variety under the PBR Act will expire on 27 March 2018.  Until this date, Buchanan Turf Supplies Pty Ltd (the company that owns the PBR) essentially controls all production and sale of Sir Walter turf in Australia.  After that date, other traders will be free to cultivate, reproduce and sell the Sir Walter variety in competition with Buchanan Turf Supplies.

Over the time it has had exclusive rights to the Sir Walter variety, Buchanan Turf Supplies has marketed it strongly.  It owns the Internet domain ‘sirwalter.com.au’, and had advertised through just about every applicable medium, including television, radio, print, fixed and mobile signage, and point-of-sale (i.e. nurseries).  All of this promotion has prominently featured the Sir Walter name, and educated the public as to the benefits of the variety.  Recently, Buchanan Turf Supplies has sought to register the name SIR WALTER as a trade mark.

There is just one (big) problem with this.  When used in relation to grass, ‘Sir Walter’ is not a trade mark, it is a variety name.  And while ‘a rose by any other name would smell as sweet’, we would have some difficulty conducting a conversation about the fragrance of the rose if we were unable to agree on a common name to signify the flower in question.  Which is why – as Buchanan Turf Supplies is finding out the hard way in Federal Court – you cannot ‘own’ a variety name, even if you were the one to coin it, and have effectively had control over its use for the better part of 20 years: Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756.

A better strategy is to have two different names: one for marketing purposes; and another for the common name of the variety.

26 July 2015

Judge in Australian ‘Software Patent’ Cases Has No Issue With Gaming Claims

Pace Kitty Slot MachineAustralian Federal Court Justice John Nicholas has issued a decision in which he declares himself ‘satisfied’ that claims directed to the awarding of prizes by casino gaming machines satisfy the ‘manner of manufacture’ requirement for patent-eligibility in Australia (Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited [2015] FCA 735).

Justice Nicholas is one of three judges – the other two being Justices Bennett and Kenny – responsible for deciding the appeals in the Research Affiliates and RPL Central ‘software patent’ cases.  The Research Affiliates appeal has already been decided, with the court determining unanimously that a computer-implemented scheme for generating a financial index is not patent-eligible in Australia (see Australia’s ‘Alice’: Appeals Court Denies Business Method Patent).  The RPL Central appeal was heard on 7 May 2015, and a decision is keenly awaited (see ‘Software Patents’ Back Under the Appeals Court Microscope).

As regular readers will already be aware, I am involved in the RPL Central case, and was present at the hearing in May.  It appeared to me that, of the three judges, Justice Nicholas was the most sceptical of the patent-eligibility of the claims in that case.  Having spoken to others who were also present, I do not believe I am alone in this view.  I am therefore a little surprised at how uncritical the judge has been of the claims in the Aristocrat case.  The Full Court in Research Affiliates referred positively the US Supreme Court’s decision in Alice Corporation v CLS Bank, and yet I do not think that Aristocrat’s claims would be considered patent-eligible in the US under the Alice standard.

Perhaps Justice Nicholas is not as sceptical of ‘software patent’ claims as his apparent criticisms during the RPL Central hearing might suggest?

11 July 2015

CRISPR – Will This Be the Last Great US Patent Interference?

Duelling PistolsOn 9 November 2014, Berkeley Professor of Chemistry Jennifer Doudna and her collaborator Emmanuelle Charpentier, currently at the Helmholtz Center for Infection Research in Germany, attended an awards ceremony at NASA’s Ames Research Center in Mountain View, California.

Not only did Doudna and Charpentier – dressed to the nines, and looking more like glamour queens than the usual white-coated scientist stereotype – mingle with celebrities including Benedict Cumberbatch, Cameron Diaz and Jon Hamm, while enjoying a live performance by Christina Aguilera, they also received the 2015 Breakthrough Prize in the life sciences category.  The award, which was sponsored by Facebook’s Mark Zuckerberg and other tech billionaires, included prize money of US$3 million apiece.

To put that in perspective, had the two scientists received a Nobel Prize last year, they would have shared 8,000,000 Swedish Kronor, or about US$1 million, between them.  Of course, it is not all – or even mostly – about the money, and the prestige attached to a Nobel prize is undoubtedly greater.  And it seems to be odds-on that the discovery for which Doudna and Charpentier received the 2015 Breakthrough Prize – and which has been called ‘the biggest biotech discovery of the century’ – will one day be the subject of a Nobel Prize as well.

All of this fuss is about a technology called CRISPR/Cas9, which is essentially a DNA ‘editing’ tool that Doudna and Charpentier developed in (around) 2012, as a result of their research into a system used by bacteria to defend themselves against viruses.  Doudna has described the CRISPR/Cas9 (which stands for Clustered Regularly Interspaced Short Palindromic Repeats/CRISPR associated protein 9) tool as a ‘molecular scalpel for genomes’.  She and Charpentier demonstrated how it is possible to synthesise molecules, consisting of an engineered RNA and a ‘cutting’ protein, that can precisely target a short gene sequence within a genome, and slice the DNA open at that exact point.

Bacterial cells – in which the mechanism was first discovered – are simpler than the cells of higher organisms (known as ‘eukaryotic cells’).  However, in January 2013, Doudna and Charpentier took the next step, successfully cutting out and replacing a selected section of DNA in human cells.  In the same month, a team led by Feng Zhang at the Broad Institute, Inc and MIT reported similar success using CRISPR to edit human genes.

Which brings me to the main topic of this post.  Because, while Doudna and Charpentier have been collecting the public accolades, rubbing shoulders with the rich and famous, and banking the – doubtless well-deserved – proceeds of their success, it is Zhang who has been awarded the first patent on the basic CRISPR technology – US Patent No. 8,697,359, ‘CRISPR-Cas systems and methods for altering expression of gene products’, issued on 15 April 2015.  And that could ultimately be worth much more than $3 million!

This is now shaping up as a major battle over who will own the most basic, and potentially valuable, patent rights in relation to the CRISPR technology, and possibly the last great priority dispute of the ‘first-to-invent’ era of US patent law.

05 July 2015

Patenting Swiss-Style, In Australia and the UK

Swiss FlagLast week I wrote about the ways in which medical treatments – including pharmaceutical compounds and therapeutic methods – are protected using a variety of different forms of patent claim.  One of these is the so-called ‘Swiss-style’, ‘Swiss-type’, or simply ‘Swiss’ claim, which takes the form ‘[compound] for use in the manufacture of a medicament for treatment of [new condition].’  I explained that Swiss-type claims are treated as if they cover any and every method of making a medicament of any kind that includes the compound as an active ingredient, and with the intention of it being used to treat the new condition.

By sheer coincidence, on 29 June 2015 Justice Yates, in the Federal Court of Australia, handed down a ruling in Otsuka Pharmaceutical Co., Ltd v Generic Health Pty Ltd (No 4) [2015] FCA 634, in which he has a great deal to say about Swiss-type claims.  Furthermore, the previous week the England and Wales Court of Appeal issued a decision in Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555, which also involved Swiss-type claims.

It is interesting to compare the two decisions, particularly because, in my view, the UK court managed to completely undermine the European prohibition on patents for methods of medical treatment and must surely, therefore, be wrong!

28 June 2015

Patenting Medical Treatments – An Overview

PharmaceuticalsHealthcare is one of the most economically-important areas in which patents are granted.  In no small part, this is due to the great expense and risk involved in discovering, developing, trialling, gaining regulatory approval for, and ultimately commercialising new drugs and other forms of therapy. 

For better or worse, governments in the developed world have largely abdicated responsibility for research and development in this area, in favour of allowing private enterprise to bear the cost and risks.

In exchange, the patent system fulfils the role of ensuring that the companies taking on these risks are able to gain a commensurate economic benefit if, and when, their efforts pay off.  In fact, special treatment is provided in the patent laws of various countries for therapeutic inventions in particular, to ensure that the rewards outweigh the risks, including:
  1. granting broad protection for new chemical compounds that have been shown to have at least one therapeutic use;
  2. granting protection for known chemical compounds when they are first discovered to have at least one therapeutic use;
  3. permitting further periods of more-limited protection for known chemical compounds when shown to be useful for a second, previously unknown, therapeutic purposes; and
  4. extended terms of patent protection to compensate for time required to obtain regulatory approval to actually commence marketing of a therapeutic product (I have written about extensions of patent term on many previous occasions, and will not be covering them again here).
One aspect in which there is far less international uniformity is whether or not patents should be available for methods of treatment and/or diagnosis that are practised on the human body.  Indeed, in most countries medical treatment methods are considered unpatentable on policy grounds. 

As has been recently confirmed by the High Court, however, methods of medical treatment are patentable in Australia.  Such methods have also long been considered patentable in the US, although there has recently been concern that the decision of the Supreme Court in Mayo Collaborative Services v Prometheus Laboratories, Inc has imposed significant limitations on the types of treatment methods that can be patented.

The purpose of this article is not to get into the details, but rather to provide an overview of how patent laws protect (or not) medical treatments for readers who may be unfamiliar with this topic.

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