LICENSING EXECUTIVES SOCIETY

Britain and Ireland

NEWS EXCHANGE
Issue 93: October 2003

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A Step Nearer Equity : IP and Health Improvement in Developing Countries.

The creative management of intellectual property may seem a long way from the front-line of improving health for the poorest, but in its first year of operation MIHR has begun to address the possibility. For many, intellectual property is a cause of problems in health improvement and a contributory factor in the lack of access to medicines for the poor. For others it is seen as being key to future sustainable development.

Current (often heated) debate is centred on whether the system of patent protection strikes the right balance between creating incentives for drug discovery and development and ensuring affordable access to existing and patentable products. When faced with the stark facts it is not surprising that the debate can become polarised. A paper published in the Journal of the American Medical Association in 1999, showed that in more than 25 years of R&D there have been close to 1300 new chemical entities or potential drugs registered in the world. Of those 1300, less than 1% or 11 were developed for tropical diseases of the poor. Similarly, when the cost of the same treatment for tuberculosis represents the income from 500 working hours in Tanzania, 100 in Zimbabwe, 20 in Thailand and 1.4 hours in Switzerland it is hardly surprising that people feel passionate about changing this inequity.

Only a small percentage of developing countries are producers of pharmaceuticals, but all are consumers. The UN Industrial Development Organisation (UNIDO) has calculated that approximately one-third of the developing countries import 100% of the medicines that they consume. While many other factors beside price may impede access to affordable drugs, price is the factor relevant to access that is commonly attributed to patent protection. At the core of the debate on IPRs is whether countries delay the entry of cheaper generic copies into their markets by adopting TRIPS (Trade-Related Aspects of Intellectual Property Rights). TRIPS was introduced at the conclusion of the Uruguay Round of the GATT negotiations in response to the situation where many countries in the developing world did not recognise patents on products or, in some cases, also on processes. The pharmaceutical industry, which was pouring millions of dollars annually into R&D and finding copies of their products emerging from generic manufacturers in the developing world, claimed this to be a major problem. The pharmaceutical industry and others in knowledge-based products in the developed world pushed for a global standard of patent protection to be adhered to by all WTO members. The 143 member countries have signed up to meet compliance by 2006 and, for those countries which are least developed, by 2016.

One of the biggest challenges in advising developing countries on their application of TRIPS is that there is very little evidence on the pros and cons of strengthening IP regimes and the effect that this has on development. Anecdotally, countries such as Taiwan, South Korea, Thailand and Singapore where improved IP regimes have coincided with economic growth, superficially point to a positive effect. The recent report commissioned by the Department for International Development in the UK - the Commission on Intellectual Property Rights - called for more evidence on the impact on developing countries, especially those with the least developed R&D infrastructures. In a working paper for the World Bank, Yang and Maskus, US economists, have concluded through econometric modelling that if developing countries strengthen their IP protection this will lead (under certain conditions) to more licensing from the North and more innovation.

MIHR charts a course of neutrality in this debate and applauds the many efforts which are being made to address short-term access to needed medicines. Drug donation programmes, tiered pricing regimes and the exciting progress of some of the public-private partnerships for drug development, such as the Global Alliance for TB, Medicines for Malaria Venture, and the International Aids Vaccine Initiative, may make important differences. Underlying each of these initiatives is creative management of IP. MIHR seeks to contribute to this world where such inventive management of intellectual property leads to greater access to health products and results in better health for people in developing countries. Working with leading practitioners from public sector research institutions, MIHR is developing a handbook of licensing practices and is in discussion with a number of US universities regarding their approach to licensing early stage technologies with potential for developing countries.

MIHR seeks not only to work within the developed world to influence licensing behaviour and to present a balanced approach to IP, but also to work directly with those in developing countries to enable them to gain the skills and support needed to begin to work with intellectual property on a more level playing field. For example, MIHR is working with the Medical Research Council in South Africa to develop a locally sensitive IP policy which can be used as a template for many institutions, a health products company in Egypt to support its licensing strategy, Senior Fellows of the Wellcome Trust in India and is exploring support to the National Institutes of Health in Mexico. MIHR's activity is focused on making a difference in the medium to long-term by advancing new thinking and bringing about innovative practices in the management and licensing of intellectual property. In developing countries MIHR offers advice on IP policy development, capacity building including education of scientists and officials in public sector health research and development. This support extends beyond training initiatives to ongoing mentoring and coaching.

By working together, MIHR hopes that innovators everywhere will get the chance to help improve the health and the wellbeing of those in most need of it.

When you concluded your last health-related license agreement was "access for the poor" a must have?

For information about how you can help this endeavour, visit the MIHR website www.mihr.org or contact Cathy Garner.

Dr Cathy Garner
Chief Executive Officer
MIHR -The Centre for the Management of Intellectual Property in Health Research and Development


  1. "Patents, pills and public health", Panos Report No 46, December 2002.
  2. Post-TRIPS Options for Access to Patented Medicines in Developing Countries, Commission on Macroeconomics and Health, January, 2001.
  3. Intellectual Property Rights and Global Health: Challenges for Access and R&D, Institute for Global Health, 2000.
  4. "Integrating Intellectual Property Rights and Development Policy", Commission on Intellectual Property Rights, November 2002.
  5. "Intellectual Property Rights, Licensing and Innovation", G Yang and K Maskus, World Bank Policy Research Working Paper 2973, February 2003.
  6. Established by the Rockefeller Foundation in 2002 and supported by the UK Department for International Development and the Wellcome Trust, MIHR, now established with UK charitable status, has begun to work with countries and organisations which are seeking to meet the needs of the poorest in the world from their health-related research.


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President's Diary

September marks the start of a new LES year and the beginning of my second year as LES Britain and Ireland President. We have made a number of changes in the past year and I am in no doubt that these changes will continue as we grow and aim to create a greater number of industry related half-day meetings and generally to take a wider involvement within the licensing business community.

You will notice a few meeting venue changes as we trial a few new locations. The next two London evening meetings will be held at the University of Westminster, 309 Regent Street, just north of Oxford Circus tube station. The university website will give you a link to a more detailed street map (http://www.westminster.ac.uk - look at the Regent Campus).

Following a very successful Healthcare half-day meeting, organised by Steve Mansfield earlier this year, we have decided to hold another meeting on November 25th. The location will be the Gonville Hotel, Cambridge. This is a short walk from the rail station and should be easily accessible to members interested in attending.

When Chris Goodman was President he introduced a number of new committees and these are working successfully. We have decided now to form a Long Range Planning Committee; if you are interested in participating please let me know.

I am pleased to report that Jennifer Pierce has taken over as Chair of the Education Committee. I wish to thank Neil Muttock for the wonderful job that he has done in his role as Education Committee Chair. The group has really moved ahead under Neil's chairmanship.

A few LES members will be leaving shortly for the LES 39th Annual Meeting and LESI International Delegates Meeting in San Diego. This is a packed week of workshops and special interest meetings. Please don't forget that these conferences are open to all LES members. In March 2004 the next LESI International meeting "Licensing in a Controversial Environment" will take place in Paris. If you wish to attend, please book as soon as possible - the fees rise after December 1st. This promises to be an excellent meeting. Full details are available at www.les-europe.org/france.

Christi Mitchell,
President LES B&I


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Sudden Death Of Jim Cain

LES Council Members were very sorry to hear of the sudden death of Jim Cain, who died peacefully on Tuesday 9th September 2003. Jim was Deputy Chief Executive of the Applied Science at NRDC (now BTG plc), under the late Basil Bard, and subsequently Managing Director of NRDC and Deputy chief Executive of BTG. He was very active in LES in the 70s and 80s.

His funeral took place on Monday 22 September at Croydon Crematorium.

LES Council and members send their sincere condolences to his family and friends.


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Administration Changes

You will all now be aware that Renate Siebrasse is retiring as Consultant Director of Administration at the end of September.

Northern Networking has been appointed to take over the Society's administration in Britain and Ireland. Northern Networking has already been working with LES Scotland Region and has been very successful in helping organise meetings, co-ordinating venues, contacting speakers and delegates and taking pressure off the Scottish Committee.

We aim to make the Society a modern, professional organisation for the benefit of our members - Northern Networking are committed to help us achieve our aims. Renate Siebrasse will be advising Northern Networking during the transition period.

All correspondence regarding London meetings, half-day meetings and seminars, the Annual Lunch, the Annual Conference and AGM, renewal of membership and general administration matters should be addressed to Gill Moore (or, if stated on meeting notices, Kirsty Yuille) at:

Northern Networking, (http://www.northernnetworking.co.uk)
1 Tennant Avenue, College Milton South,
East Kilbride, Glasgow G74 5NA.
email: (gill@glasconf.demon.co.uk; tel: 01355 244966).


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Members are now responsible for updating their own details online

Don't miss the January deadline!

All LES members will have noticed that in the past 2 years membership details are now sent from LESI to us on a CD rather than as a paper copy. Next year all members will be responsible for updating their own membership details online.

If you need to update your details, it's essential that you change them online as soon as a change takes place. The cut-off date for inclusion of your accurate details on the next membership CD will be January 31st 2004. We are told that this deadline will be strictly adhered to.

To access your online details please use your member pass and visit the LESI website http://www.lesi.org or use the links from the LES B&I website http://www.les-europe.org/gb-ireland/

NB: Please notify Gill Moore at Northern Networking too so that we may keep LES B&I records up to date!


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Jones Returns to London!

Nigel Jones has completed his two year secondment to his firm's Cologne office, and returned to Linklaters' London office in August. He remains global head of the firm's Intellectual Property Practice and its Healthcare Group. From the LES perspective, he remains chair of LESI's constitution committee, and an active member of LESI's European and Healthcare committees. He has rejoined the Council of LES Britain and Ireland, and taken back the reins of our EC/Laws committee - with thanks to Susan Singleton for standing in for him over the last two years.

Nigel summarised his views on his secondment to Cologne in this way:

"It was tremendously rewarding, professionally and personally. I learnt a new language, began to understand another culture, and learned how misleading national stereotypes can be.

Cologne is a wonderful city: open-minded, fun-loving (particularly over Karneval) and extremely welcoming to foreigners. It also has a functional, comfortable and cool public transport system; something I will sorely miss!

I also learnt the importance of observing differences, without rushing to judge which way of doing things is better; and to see things from other people's perspective, particularly in linguistic and cultural matters.

I hope to use the lessons I have learnt for the benefit of LES in the coming months and years."

Nigel would be interested in hearing from LES members who would like to join the EC/Laws committee. Please contact Nigel on email: njones@linklaters.com


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IPR in business

  1. WTO decision (30 August 2003) removes final patent obstacle to cheap drug imports, making it easier for poorer countries to import cheaper generics made under compulsory licensing.

  2. The Recording Industry Association of America (RIAA) launched its long anticipated legal assault on file swappers by filing 261 civil lawsuits (8 September 2003) against individuals accused of illegally distributing copyrighted music through peer-to-peer (P2P) networks.

  3. Eolas Technologies Inc has won its browser lawsuit against Microsoft (August 2003), which has been ordered to pay USD520.6 million in damages for infringing patents owned by University of California and licensed to Eolas Technologies.

  4. The European Commission clears Philips/Sony CD licensing program (IP/03/1152 7 August 2003).

  5. Peer International Corporation v Thermidor Music Publishers Ltd [2003] EWCA Civ 1156, CA (30 July 2003). Initial assignment agreements made with Cuban composers were effective to transfer title to the UK copyright in the musical works.

  6. Jordan Grand Prix Ltd v Vodafone Group PLC [2003] EWHC 1965 (Comm) 4 August 2003. A claim for breach of an alleged sponsorship contract was dismissed as no binding agreement existed.

  7. Dutch electronics firm Philips became the first applicant to file a fully electronic international application (25 August 2003) under the Patent Cooperation Treaty (PCT) with WIPO as receiving office using PCT-SAFE (Secure Applications Filed Electronically) software.

  8. WIPO will consider future directions in the area of traditional knowledge, folklore and genetic resources during its General Assembly that will take place from 22 September to 1 October 2003.

Monitored by Dr Hayley French

For further information on all of the above please go to www.bi.les-europe.org


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The "Substance" of the Technology Transfer Block Exemption

Important changes have been proposed to the laws relating to technology licensing agreements. Essentially, and in line with other areas such as agency and distribution, the new law will concentrate on the actual effect of the agreement entered into, rather than its form. Economic concepts such as market share tests will become relevant, with all the difficulties these will entail. This means that while the law should be more effective in catching anti-competitive agreements, assessing whether the law is complied with will be more difficult.

Competition law prohibits agreements which prevent, restrict or distort competition within the EU, subject to the exception that agreements will be allowed where their technical and economic benefits outweigh the anticompetitive effects. As it currently stands, this exception can be invoked by either (a) applying for an individual exemption to the Commission, or (b) drafting to fall within a "block exemption", being an exemption available to people who are willing to only include certain mild restrictions on competition in their agreements. In the great majority of instances, technology licensing agreements are drafted to fall within the block exemption which currently governs this type of agreement, the Technology Transfer Block Exemption ("TTBE"). The current TTBE is widely regarded as being a simple regime to use, as it allows practitioners to be fairly certain that the agreements they have entered into comply with the relevant law.

However, and in line with changes to block exemptions in other areas, the Commission believes that the TTBE is more concerned with form than substance. Thus, while it has been successful in allowing practitioners a degree of certainty in their agreements, it has not always been successful in addressing the "mischief" it is aimed at. By concentrating on form rather than substance, some agreements without anticompetitive effects have been caught, while agreements with anticompetitive effects have slipped through the net.

As mentioned above, it is currently possible to apply to the Commission for an individual exemption to be granted in relation to an agreement. However, the ability to seek individual exemptions is being withdrawn as from 1 May 2004. It will now be incumbent upon the parties to an agreement to decide whether or not their agreement has technical and economic benefits, which outweigh anticompetitive effects. Therefore, parties will have to be more careful than ever to try to fall within the TTBE.

A number of important points should be noted about the draft proposals, which are to be discussed during the autumn with a view to implementation on 1 May 2004.

The scope on the block exemption

The new TTBE is likely to be broader in scope than the existing one. In particular, it should be noted that the existing TTBE only deals with patent and know how licences (and of combined patent and know how rights), while the new TTBE will deal with licences of computer software and of design rights. There had been discussion about extending the block exemption to cover multi-lateral agreements, but it appears that the new TTBE is only likely to apply to bilateral agreements.

The distinction between competitors and non-competitors

The new TTBE will distinguish between competitors and non-competitors, with the idea being that agreements between competitors are much more likely to pose competition law issues. This being the case, agreements between competitors will need to be more closely policed. This distinction - between those who are competitors, and those who are not - is understandably difficult to draw. The draft TTBE defines competitors as undertakings that compete on the relevant technology and/or product markets. The published guidelines attempt to explain in some detail exactly what these markets are, but each case will have to be closely examined on its facts.

The introduction of market share tests

The introduction of market share tests is perhaps the single most controversial part of the proposals for the new TTBE. Agreements will only be exempted where the market shares of the parties fall below certain levels. (The levels are a combined market share of 20% for agreements between competitors, and 30% for non-competitors). Above this point, the TTBE will not be relevant and exemption will only be available if the agreement gives the sort of economic and technical advantages which previously allowed for individual exemptions to be granted.

Along with the introduction of the distinction between competitors and non-competitors, the market share tests bring technology licensing close to the mainstream of competition law. Licensing practitioners will now require a detailed understanding of some of the core concepts of competition law. The key issues will be establishing what the markets are, what the parties' shares of the markets are, and whether the parties are competitors, rather than simply whether the restrictions were permitted under the TTBE.

Hardcore restrictions

Provided that the market share tests are complied with, the new TTBE will be available to parties to ensure compliance with competition law provided no hardcore (severe) restrictions are included. Again, there is a distinction between how agreements between competitors on the one hand, and agreements between non-competitors on the other, are treated. Greater restrictions will be permitted in agreements between competitors than are allowed in agreements between non-competitors. The substantive changes to be effected under the new TTBE are fairly technical, but are broadly to be welcomed. For example, the 10 year time limit on know-how licences will be removed, and licensors will no longer need to licence their own improvements to licensees in return for a licence-back of licensee improvements.

Actions

Although expressed as being proposals, the new TTBE is likely to be implemented in substantially its current form. As such, parties will need to consider the implications of how the new TTBE will affect them: not least because all technology licences will be required to comply with the new TTBE by 31 October 2005, at which point the fact that the agreement complied with the old TTBE will cease to be an excuse. Those involved in technology licensing will need to understand that the goalposts have shifted, and that competition lawyers tools will be needed as well as technology licensing tools in determining whether the law is complied with.

Graeme Colquhoun
McGrigor Donald


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The Ham and Cheese Dilemma

The "interesting" decision of the European Courts of Justice to ban Asda from selling Parma ham, which has been bought in Italy but sliced and packaged in Wiltshire rather than Parma, makes one wonder whether the same rule would apply to a cheese vendor buying Stilton in the UK but slicing and packing it in another European country…

Both Stilton and Parma ham are registered under Protected Designation of Origin (PDO).


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Problems In Exploiting IP Rights In Research Tools: Is It The End Of The Road For The "Reach-Through" Claims?

A number of inventions in the field of biotechnology relate to research tools that can be used to identify agents with efficacy in the treatment of particular diseases and disorders. For example, where a research team has identified, for the first time, a role for protein X in the aetiology of a disease Y, patent protection may be sought for a method of identifying a compound with efficacy in the treatment of disease Y comprising screening candidate compounds for an ability to modulate the function of protein X. In such circumstances, it is not uncommon for a patent application to be filed before examples of such active compounds have been identified using the screening assay, not least because of the high costs involved in screening a large number of candidate compounds.

However, the real commercial value of the invention lies not in the screening assay per se, but in the compounds identified using the screening assay and the use of those compounds. For this reason, it is very desirable from the patentee's perspective to seek and exploit rights in relation to such downstream products and uses. For this reason, "reach-through" claims are often included in a screening assay patent application, so-called because they "reach-through", beyond the core invention (i.e. the screening assay), to such downstream inventions. For example, in the case of a screening assay invention, "reach-through" claims may be directed to 'a compound identified by' the screening assay and/or "use of a compound identified by' the screening assay in medicine.

However, a recent decision of the US District Court would appear to raise serious doubts as to the value of "reach-through" claims, at least in the US.

University of Rochester v. G.D. Searle & Co., Inc. et al(1).
The patent in issue (US 6,048,850) related to an in vitro screening assay for identifying new anti-inflammatory agents which, unlike existing non-steroidal drugs such as aspirin, do not cause stomach irritation and gastrointestinal bleeding. The invention stemmed from the finding that a particular isoform of the enzyme cyclooxygenase, termed COX-2 (or PGHS-2), is upregulated at sites of inflammation. The inventors postulated that compounds which were able to selectively inhibit COX-2 could reduce inflammation without causing the unwanted side-effects associated with existing non-steroidal drugs. To this end, the inventors produced a stable cell line expressing COX-2, which could be used in a simple in vitro screen for inhibitory activity.

Significantly, US 6,048,850 failed to disclose any examples of compounds for use in humans which could selectively inhibit COX-2. Nevertheless, the patent contained a "reach-through" claim directed to "a method for selectively inhibiting PGHS-2 [COX-2] activity in a human host, comprising administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product to a human host in need of such treatment".

On the day of grant of the patent, proceedings were commenced against several pharmaceutical companies, including Searle and Pfizer, for alleged patent infringement. The defendants responded by applying for summary judgement on the grounds that the patent failed to disclose any selective COX-2 inhibitors and, hence, was invalid for lack of enabling disclosure.

The District Court, finding in favour of the defendants, held that putting the invention as claimed in US 6,048,850 into practice awaited someone actually discovering a necessary component of the invention, namely a selective COX-2 inhibitor suitable for clinical use. The Court further held that the patent was non-enabling because such a compound could not be found without undue experimentation.

Bayer AG and Bayer Corp. v. Housey Pharmaceuticals Inc (2).
More recently, in August of this year, the US Court of Appeal dealt a further blow to patentees seeking to exploit rights in relation to the downstream products of screening assay inventions. Unlike in the Rochester decision, above, the issue in question in Bayer v. Housey was the extent (if any) to which patent protection was conferred on compounds identified by a claimed screening assay by virtue of 35 U.S.C Section 271(g).

Section 271(g) states, in part, "Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer ....35 U.S.C. sec. 271(g) (2000)" (emphasis added).

In brief, Housey was the owner of several U.S. patents directed to "a method of screening for substances which specifically inhibit or activate a particular protein affecting the cultural or morphological characteristics of the cell expressing the protein". Bayer used the drug screening method of the Housey patents outside the U.S. to identify potential drug compounds.

Housey argued that import into the US, by Bayer, of research data or information obtained using the patented screening assay constituted infringement under Section 271(g). Housey further asserted that sale in the US, by Bayer, of a pharmaceutical composition containing a substance identified using the screening assay also constituted infringement. Thus, Housey argued that both the information obtained using the screening assay and the compound developed on the basis of that information constituted the product of a patented process, for the purposes of Section 271(g).

However, the Court of Appeal, in upholding the earlier decision of the District Court and dismissing Housey's claims for infringement, confirmed that Section 271(g) applied only to physical goods resulting from a method of manufacture and, hence, did not apply to the information generated by a screening assay. Moreover, in relation to the sale by Bayer of a compound identified by Housey's screening assay, the Court of Appeal held that there was no infringement under Section 271(g) since the patented process was not used in the actual synthesis of the drug product.

The situation in Europe
In Europe, the EPO is becoming increasingly reluctant to allow "reach-through" claims in the absence of examples in the patent specification of active compounds identified by the claimed assay (see trilateral EPO/JPO/USPTO report (3)). Such claims are typically refused on the grounds of lack of enablement (insufficiency of disclosure), lack of clarity and/or lack of novelty.

Whether the UK patent courts will adopt a similar approach to the US courts in infringement and validity proceedings relating to screening assay patent remains to be seen. However, evidence suggests that this may be the case. Thus, following the decision of the UK Court of Appeal in American Home Products v. Novartis Pharmaceuticals UK Ltd (4) , "reach-through" claims risk being considered mere invitations to carry out a research project (and, hence, invalid on the grounds of a lack of enablement).

Although both the UK Patents Act (5) and the European Patent Convention (6) provide protection for products obtained directly by means of a patented process, it also remains to be seen how the UK courts will interpret these provisions in relation to screening assays.

Conclusions
In summary, the decisions in Rochester v. Searle et al. and Bayer v. Housey suggest that inventors of research tools, such as screening assays, will find it increasingly difficult to obtain and enforce rights in relation to downstream products and uses derived from those research tools, at least in the US. The patentee's position will be improved if they are able to include in the patent application examples of active compounds identified by such screening assays and data supporting the utility of those compounds in the treatment of particular diseases and conditions.

In the absence of such examples and evidence, the patentee should consider seeking wide territorial scope of protection for the screening assays themselves, since claims covering the assays will, in principle, be perfectly valid and enforceable. In addition, the patentee should consider licensing the research tools as an alternative to trying to claim downstream products and uses prematurely.

Stephen E Smith, Associate, Eric Potter Clarkson


  1. see www.nywd.uscourts.gov/decision/20030305_00cv6161_larimer.pdf
  2. see www.ll.georgetown.edu/federal/judicial/fed/opinions/02opinions/02- 1598.html
  3. see www.european-patent-office.org/tws/report/B3b_report_pdf/ B3b_reachthrough_text.pdf
  4. see [2001] R.P.C. 159
  5. see Section 60(1)(c) of The Patents Act (1977)
  6. see Article 64(2) EPC

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News from the Regions

LES Scottish Section - News

The Counterfeit Challenge (Scotland)

Thursday 6th November 2003
6:00 - 8.00pm at Radisson Hotel, Glasgow,

Counterfeit: to imitate without authority…a hot topic, which has the potential to affect all businesses with devastating consequences!

The LES Scottish Branch Autumn meeting is stacking up to be an informative and really quite scary look into the world of the counterfeiter and the disadvantages for business - and for society. This evening will be of relevance to staff from universities, the health service, public sector and commerce who are looking to develop and refine Intellectual Property management strategies - and any of us within travelling distance of the Barras or Ingleson market!

To help us better understand the potential risk from counterfeiting and how to address it, LES Scottish Branch will be joined by 3 expert speakers with considerable knowledge of the strategies and tactics of the counterfeiter.

First, Ian Macdougall of Finance Self Service Solutions of NCR will speak on international currency counterfeiting, the visible and invisible methods employed to maintain the quality of currency in circulation and the work his organisation does to investigate currency counterfeiting.

Robert Howat, Company Secretary of Celtic Football Club Ltd, will speak on his role in protecting and licensing Celtic's Intellectual Property.

Finally John McGowan, Senior Investigator from FACT (Federation Against Copyright Theft), will speak about Intellectual Property theft using optical disc piracy as a chilling case study.

Thanks are due to the Radisson Hotel, Glasgow for sponsorship-in-kind of this event which is open to both LES members and non-members/ guests alike - LES members £20, non-members/guests £28- including post-presentation buffet. Please contact Northern Networking (1 Tennant Avenue, College Milton South, Glasgow G74 5NA, email: LES@glasconf.demon.co.uk) to confirm your attendance and to make payment - LES Scottish Branch events are extremely popular so an early response is advised.

We look forward to seeing many of you in November, at an event which is regarded by many as both a valuable educational experience and an excellent networking opportunity!! Accordingly, the bar will remain open after our formal finish!

Cathy Rooney
Secretary LES Scottish Branch


LES Irish Section - News

Yvonne McNamara has recently taken over from Barry Moore as Chair of LES Irish Section.

The first LES event in Ireland this autumn will be the AGM preceded by a half-day seminar: Protecting your Web Identity;

Tips and Pitfalls for Online Branding

Thursday 9th October 2003
9.00 - 2.30pm The Shelbourne Hotel,
St Stephen's Green, Dublin

Brian McGurk of Bradley McGurk will lead a session on Establishing and Promoting Brands Online. He will consider the following questions:

  • How is online branding different?
  • Are brands more important than ever?
  • Brand selection; what's in a domain name/trade mark?

Conor Moran of Irish Domains Ltd will discuss Effective Management and Policing of Domain Names. He will cover the following topics:

  • What and where to register
  • Identifying infringing sites, and tracking down infringers
  • Management and maintenance of domain name portfolios
  • Renewal, expiry and recovery of domain names

Mary Bleahene of F.R. Kelly & Co will consider Trade Mark Strategies for Protecting Online Brands.

  • International clearance/searching of brands
  • Organising an international trade mark registration program
  • Infringement and enforcement

Christian Wichard of WIPO Arbitration and Mediation Centre and Niall Rooney of Tomkins will tackle the difficult issues in Domain Name Dispute Resolution.

  • ICANN/WIPO's domain name dispute resolution procedure
  • How to effectively prepare and file a complaint
  • Recent case-law and statistics from WIPO
  • IEDR policy and procedures

A question and answer session and discussion will bring the seminar to a conclusion.
Lunch is at 1.00pm followed by the LES Irish Section's AGM.
The fee of €85.00 includes seminar, lunch and wine.
To register for the seminar please contact Mary Bleahene, c/o F.R. Kelly & Co., 27 Clyde Road, Ballsbridge, Dublin 4. For further details email: Yvonne.McNamara@mccannfitzgerald.ie


North East Region - News

The Patents County Court - 2 Years On

14 October 2003
Malmaison Hotel, Sovereign Quay, Leeds
18:00 for 18:30 hours

We are delighted to be able to welcome Judge Fysh as our speaker.

Judge Fysh was called to the bar in 1963 and studied at Grenoble University, France and obtained a degree in Chemistry from Oxford University.

He was appointed Queen's Counsel in London (1989) and in Northern Ireland shortly thereafter. He was appointed Senior Counsel in Ireland (1994) and Trinidad and Tobago (1990). He was called to the Bar in New South Wales, Australia (1975) and was enrolled as an advocate in India (1982) and Pakistan (1987). He has also acted as an advocate in Singapore, Malaysia and Hong Kong in single cases.

Judge Fysh became Head of Chambers at 8 New Square, Lincoln's Inn (1993) and has been involved in all aspects of Intellectual Property work and numerous major IP litigation at all levels (as well as in the Privy Council) and overseas. He has also been involved in arbitrations both as an advocate and arbitrator. Judge Fysh appears frequently at the European Patent Office in Munich.

He was elected a Bencher of the Inner Temple (1999) and was appointed judge of the Patents County Court for England and Wales (2001). He also sits, as required, as a Deputy Judge of the Patents Court in the High Court. In 2003, Judge Fysh was appointed to sit in the Technology and Construction Court.

Judge Fysh has acted as an expert for WIPO, Geneva and UNDP and was Editor of the Reports of Patent Cases and the Fleet Street Reports for many years. He has written and edited a number of legal text books. Judge Fysh was a member of the Bar Council of England and Wales, International Relations Committee from 1994 until 2000 and served on its Pakistan Bar Twinning Program.

The venue of the meeting is the MALMAISON HOTEL, which is one of the leading contemporary hotels in the heart of Leeds. A private room has been arranged for the meeting, so numbers are limited. There will be a drinks reception on arrival and three course dinner, plus vegetarian option. Wine will be provided during the meal followed by tea or coffee.

Solicitors please note: 1 hour CPD - Law Society CPD reference CBL/LESO
For further information contact Gemma Noon: ggn@walkermorris.co.uk


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LES Meetings Planned for Autumn 2003

LES B&I have a number of meetings planned for the autumn. The October London meeting is the first at Westminster University, 309 Regent Street (see www.westminster.ac.uk for location details). We have decided to trial new venues this year and consequently we will be interested to hear your opinions on the facilities and the catering.

Our joint meeting with CIPA is a timely opportunity to consider the impact of the proposed revision of the Technology Transfer Block Exemption.

The second half-day Healthcare meeting will be held in Cambridge at the Gonville Hotel, very close to the railway station. The excellent line-up of speakers makes this a MUST for your diary if you are in any way associated with the healthcare and pharma businesses!

October London Meeting

On Thursday 16th October 2003, Mary-Ellen Field, Head of Brands and Licensing at WJB Chiltern, will talk about Royalty Rates:

  • Factors to look for in finding and adjusting comparables
  • Royalty rates for uncontrolled and controlled transactions
  • Royalty rates and the centralised management of intellectual property
  • The need for independent advice

Mary-Ellen has 20 years experience in licensing, she specialises in the management of intellectual property rights from a commercial background, working with both lawyers and accountants. She is particularly interested in managing these accounts within large corporations and the problems that arise from lack of communication between the various "owners" within those organisations.

She has worked in a variety of industrial sectors including: cosmetics, oil, pharmaceuticals, beverages and luxury goods.

If you would like to attend this meeting please contact Kirsty Yuille at Northern Networking. Tel: 01355 244966; Fax: 01355 2499959.

Joint CIPA/LES Meeting
On Wednesday 29th October 2003 LES and CIPA are holding a joint half-day conference entitled, "Multiparty Licensing and the Revision of the Technology Transfer Block Exemption". The meeting will be held at CIPA Hall, 95 Chancery Lane, London WC2.

As Graeme Colquhoun has shown in his article on page 4 of this edition of News Exchange, the revision of Technology Transfer Block Exemption (TTBE) will need careful consideration and this is an opportunity for you to discuss the implications with the experts.

The conference starts at 12.30 with a buffet lunch.
Jennifer Pierce, of Charles Russell, LES B&I Council member and new Chair of the Education Committee will chair the meeting.

Professor Robert Lind of Charles River Associates will give an economist's view: an explanation of the findings in his report on multiparty licensing and other matters relating to the proposed revision to the TTBE.

Aidan Robertson of Brick Court Chambers will give a legal perspective: multiparty licensing and other aspects of the draft TTBE.

There will be a speaker giving the European Commission's view of its proposals for revision of the TTBE and Simon Davies of D Young & Co will discuss multiparty licensing in the computer industry - Rambus and other practical examples.

The cost of the conference is £110.00 + VAT (£129.25) per person and payable in advance.

Please contact Keeley Scott, Education Support Administrator, CIPA, 95 Chancery Lane, London WC2A 1DT for further details and a registration form.

2nd Half-Day Healthcare Meeting

Following the great success of our Healthcare meeting on 1st May our second Healthcare meeting is planned for Tuesday 25th November 2003 at the Gonville Hotel, Cambridge starting at approximately 12.30.

  • Graham Hind, Chief Executive of Bioprogress plc, will be presenting a case study from Bioprogress' recent portfolio
  • Dan Mahony, senior biotechnology analyst with Morgan Stanley, will put the question " Is there a future for European biotech? - an investor's perspective"
  • Andrew Gottschalk will discuss negotiation techniques
  • Cambell Wilson, Director of Discovery Alliances, Astra Zeneca, will talk about aspects of licensing in the field of oncology
  • Roger Harrison, VP, Head of Oncology SBU at BTG plc, will talk about "Building an oncology licensing business"

For further details of this meeting please contact Gill Moore at Northern Networking email: gill@glasconf.demon.co.uk.


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Put Yourself in the Picture

Greg Dyke, Director General of the BBC, announced at the Edinburgh Festival that: " We intend to allow parts of our programmes, where we own the rights, to be available to anyone in the UK to download so long as they don't use them for commercial purposes. Under a simple licensing system, we will allow users to adapt BBC content for their own use."

As software is now available to superimpose one face on another, Greg has opened up the prospect of making yourself, or whosoever you select, to be part of your favourite BBC TV programme!

This contrasts strongly with the US where, recently, a film was stopped for copyright infringement shortly after its release because a chair in the film resembled a sketch of similar furniture. Similar copyright issues disrupted the release of "The Devil's Advocate" and "Batman Forever" because a sculptor claimed his work appeared in the background, and the batmobile drove through an alleged copyright courtyard!

P Michael O'Connor


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39th LES International Meeting

39th LES International Meeting was held in San Diego, California on 26th & 27th September. The international meetings are packed with workshops and special interest groups. They are open to all LES members and are to be recommended, not only for the learning experience but for the business and networking opportunities. You would be surprised to find how many "deals" are done at these meetings.

The next LESI meeting is in March 2004 in Paris, check the LES France website for further details:
www.les-europe.org/france


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New Members

Council has been please to welcome the following new members to the Society:

  • Dr Elizabeth Fletcher, Business Manager, University of Southampton;
  • Dr Christopher Harrison, Intellectual Property Manager, University of East Anglia;
  • Mr Idwal Jones. Head of Technology Sourcing and Formulation, Boots Healthcare International;
  • Mr John McKinlay, Partner, DLA; Dr Keith Morris , Head of Technology Valuation & Audit, CELS Ltd.;
  • Dr Keith Morris , Head of Technology Valuation & Audit, CELS Ltd.;
  • Mr Mark Robinson, Associate, Latham & Watkins;
  • Mr Geoff Smith, Consultant, GES Intellectual Property Services;
  • Ms Sheila Wallace, Partner, Lloyd Wise;
  • Dr Nicholas White, Director, Rouse Patents;
  • Mr Gordon Woodrow, European Business Manager, Codexis Inc.



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