Journal Article

Setting the threshold for industrial application: the UK diverges from Europe

Robert Fitt and Edward Nodder

in Journal of Intellectual Property Law & Practice

Volume 5, issue 8, pages 560-565
Published in print August 2010 | ISSN: 1747-1532
Published online June 2010 | e-ISSN: 1747-1540 | DOI: http://dx.doi.org/10.1093/jiplp/jpq061
Setting the threshold for industrial application: the UK diverges from Europe

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Legal context

The requirement for industrial application under Article 57 of the European Patent Convention has been considered by the Court of Appeal in the UK and by the Technical Board of Appeal of the EPO for the same biotechnology patent.

Key points

The industrial application of a biotechnology invention must be reasonably plausible to those skilled in the art. It is important for national courts and the EPO to co-operate at all stages of procedure and, where possible, opposition proceedings should be speeded up in commercially important cases. Although it is settled law in the UK that any principle of law clearly laid by the Technical Boards of Appeal of the EPO should be followed, national courts are free to apply their own evaluation to the facts before them rather than give deference to the assessment of the Technical Boards of Appeal.

Practical significance

The UK and Europe appear to be setting different thresholds for assessing industrial application for biotech patents. Patentees may in future decide to wait for ‘wet-lab’ experimental data to back up their claims before filing biotech patents.

Journal Article.  4156 words. 

Subjects: Arbitration ; Intellectual Property Law

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