Category Archives: Designs

Legal responses lagging behind modern biotechnology

DMK-a5BRight now there are three companies gearing up for an epic biotechnology legal showdown. At stake is nothing less than control over what promises to be the core tool of an entire industry for the next decade; one that may be used in everything from medicine to agriculture.

The technology is CRISPR/Cas 9. An outgrowth of research on bacteria, this technology uses a bacterial protein (Cas 9) which can use short pieces of RNA (a single-stranded cousin of DNA) to guide itself to particular spots on the genome. In effect, CRISPR-based systems can be targeted with exquisite precision to where they are wanted and then used to perform a variety of tasks. CRISPR technology is so easy to use, and so good at what it did, that its use has spread like wildfire in scientific circles. Realising the commercial potential for the technology, its principal inventors have now started or joined companies determined to commercialise the technology.

Two things are certain at this point. Firstly, the ownership of CRISPR and its related technologies will take a very long time to sort out. Secondly, and perhaps more importantly, is that a research group which values its funding is not going to wait for things to settle before forging ahead with advancements to what has already been hailed as the biotechnological breakthrough of the decade. As such, this case serves to highlight a strange paradox in modern biotechnology: that advances seem to come ever more quickly while the legal and regulatory responses to them lag further and further behind.

In large part this is because of the nature of modern scientific research. It is now common for universities to demand that researchers produce inventions as well as publications. Equally, it is now much more common for researchers to work as part of large teams with members in multiple institutes. This, combined with the breakneck pressure to publish research (‘publish or perish’ having long since become standard operating procedure at research laboratories) leads almost inevitably to confusion when the time comes to determine who owns what.

In the case of CRISPR/Cas9, Feng Zhang is the first of the parties to participate in the claim. Under the auspices of the Broad Institute, Zhang obtained a very broadly-worded patent on the use of CRISPR/Cas 9 technologies in April 2014. This was subsequently followed by a flurry of other CRISPR-related applications covering aspects of the same technology. Two other researchers; Jennifer Doudna and Emmanuelle Charpentier (both of whom hail from the University of California, Berkeley) have also stepped into the fray by licensing their portions of the intellectual property, generated in groundbreaking work on CRISPR, to other companies. These companies form a tangled web: Editas (which both Zhang and Doudna helped found), Intellia Therapeutics (which has now partnered with Caribou Biosciences, a company started by Doudna), and CRISPR Therapeutics (which Charpentier co-founded). And all of them, moreover, have good cause to consider that they are the ‘real’ owners of CRISPR.

Complicating matters even further is the fact that the Broad Institute’s granted patent (with Zhang as the inventor) was obtained under the old first-to-invent laws governing U.S. patents. Also filed under the old laws is a still-pending application by the Berkeley group, with Doudna and Charpentier being listed among the inventors. Since then the U.S. has changed over to a first-to-file system under the new America Invents Act. As a consequence, the three-way fight over the rights to CRISPR will occur in a confusing legal space, with the old laws and mechanisms being applied in the context of new rules and processes. As of the time of writing, the first blow had been landed by the University of California (representing Doudna and Charpentier’s contributions), which has launched an interference application against ten of the Broad Group’s CRISPR patents.

The nature of modern biotechnological research, along with the nature of Intellectual Property law and the complicated matters of ‘who owns what’ when researchers work across institution and country boundaries, all but ensures that there will be plenty of fights like the one surrounding CRISPR in the future.

For more information please contact:
Thomas Schmidt
Candidate Attorney
Department: Patents
thomass@dmkisch.com
011 324 3031

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Inventions, utility models and designs: the People’s Republic of China and the Law

DMK-a1BSummary and implications of the fourth newly drafted amendment to the Peoples Republic of China Law in regards to inventions, utility models and designs.

China’s patent system became modernized in 1984 under Deng Xiaoping’s Economic Reform Policy.  From 1978, China transformed from a planned economy to a market-oriented economy.  During the 1980s, the Chinese Intellectual Property system was established through a series of laws: the Trademark Law in 1982, the Patent Law in 1984 and the Copyright law in 1990.

At a glance, the fourth newly drafted amendment to the Peoples Republic of China Law seem to aim to bring the Chinese Law further in line with international standards and agreements, such as provided for by TRIPS. The proposed amendments further decentralize the role of the State Counsel, by empowering the Patent Administration Department and creating an All-China Patent Attorneys Association to regulate the industry at pawn level.

Further positive developments would be clarification of the quantum of penalties payable by infringers and a newly introduced type of contributory infringement in the form of joint liability, for internet providers found to be knowingly assisting in the infringement of a patent right.

Turning to some of the proposed amendments, newly amended Article 14 provides for clarification on the determination of a reward for an employment invention-creation. Article 25, being the intrinsic requirements for the granting of patents, provides for an exclusion on the prohibition of the granting of a patent for a method of diagnosis or treatment of diseases where such methods relate to bred animals.

Article 42 introduces the extension of the duration of a design right from 10 years to 15 years. Article 60 introduces empowering legislation for the confiscation and destruction of infringing products and provides said clarification on the quantum of fines. Article 64 seems to introduce the term wilful infringement and Article 65 provides for increased quantum damages for aforesaid wilful infringement.

Newly added Article 70 introduces internet service provider joint liability, if the internet service provider fails to take the necessary measures after it has received eligible and effective notification of same. Newly introduced Article 76 mandates the Patent Administration Department to promote the exploitation and utilization of patents and to regulate the services of marketing activities and/or operation. Newly added Article 78, provides for a back door for an inventor of an employment invention-creation to obtain a licence should such institution fails to carry out exploitation of the resulting granted patent.

In conclusion, the proposed amendments certainly hint at positive developments in Chinese law and may be seen as to promote increased enforceability of patent rights and further promote self regulation of the industry.

For more information please contact:
Allan John Rabie
Professional Assistant
Department: Patents
ajr@dmkisch.com
011 324 3032

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.

Bridging the functionality divide: Chespak v MCG

DMK-a3BAn earlier report by the writer in respect of a Supreme Court of Appeal decision (BMW AG v Grandmark International (Pty) Ltd 2014 (1) SA 323 SCA) adopted a cautious view on the effect of that judgment on the OEM industry seeking to compete in the South African market. Happily, a further decision (August 2014) on similar subject matter (Chespak (Pty) Ltd v MCG Industries (Pty) Ltd 2014 JDR 1734 (GP)) is now to hand which brings much needed certainty on the question of functionality as this may apply to registered South African designs.

The case concerned an appeal from an a quo decision that granted an interdict against infringement of a registered aesthetic design by a local manufacturer. Two main issues drove the appeal, namely that if any feature of the aesthetic design registration performs any function, that feature is functional in nature and has to be excluded in determining aesthetic design right merit. This applies the moreso, so the argument went, if the design rights holder opted to use a so-called omnibus type definitive statement in defining its monopoly. This type of claim typically reads:

“the features of the design for which protection is claimed reside in the shape and/or configuration and/or ornamentation and/or pattern as applied to article X, substantially as shown in the accompanying illustrations”

The appellant’s contention was that the use of an omnibus type definitive statement identified no specific feature to enable the general public to identify what the scope of protection is, thereby making the right itself a nullity. Further, the appellant contended that the absence of certainty in relation to the claimed monopoly meant that it had to consider every feature resident in the design, which in its view afforded it a basis on which to pry open its argument on functionality of each individual feature.

A three bench sitting of judges of appeal disagreed. In disposing of the appellant’s criticism of the use of omnibus type definitive statements, reference was made to the dictum of Laddie J (as he then was) in Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 at 422, which was applied with approval by a sitting of the Full Bench in the Supreme Court of Appeal in Clipsal and Another v Trust Electrical 2009 (3) SA 292 at 7, which accepted the omnibus type statement in local practise. Laddie J’s reasoning which was accepted by the present judges included that the omnibus type statement does not isolate any aspect of the design with the object of claiming novelty or originality in any particular feature and that the proprietor can choose to assert the design right in respect of the whole of the design or part thereof. This is as broad as one can permissibly construct the monopoly under the South African Designs Act 193 of 1995.

The Court then turned to deal with the functionality argument. Accepting that any court in determining the scope of a design right, must not consider solely functional features of a design in the context of an aesthetic design registration, the Court put paid to the argument by casting a light over the use of the word “solely” by the Legislature. The Court reasoned that the scope of functionality exclusion within the aesthetic context does not extend to features serving a functional purpose but also having aesthetic appeal. The mere fact that a feature of a design or the design itself performs some function is not decisive. The real test is whether the function which the design or the article to which the design is applied performs, dictates or necessitates its shape or configuration. In other words, the Court in deciding the question must have regard to whether the feature is included as part of the article (or the design) solely or purely for the reason that it performs a function, or if that article or feature has added aesthetic appeal. The fact that the mentioned feature could have been manufactured to look differently added to the Court’s reasoning in finding against the functionality argument.

On the question of infringement, the Court re-stated earlier authority (Brudd Lines v Badsey (2) 1973 (3) SA 975 (T)) that the criterion is one of an impact made on the eye by the whole of the design. A minute analysis for such differences as there may be between the design and the infringing product (in the context of omnibus statements) is inappropriate. No doubt there would be differences in the infringing product as any infringer would attempt to camouflage plagiarism by introducing a difference here or there. If the design, when viewed as whole, shows unmistakeable similarity beyond argument, infringement would be established.

The present decision should bring comfort to the workshops of OEM designers in that it has provided certainty, albeit where such certainty already existed under the cited authorities, in a convenient manner that strings together relevant considerations of the functionality v aesthetic designs argument in a single case. One would indeed be hard pressed to find an aesthetic design that is not completely free of the performance of any function, whether such function is to provide support, embellish or merely look pretty. It is a good decision and in line with our comments made in the BMW case supra.

For more information please contact:

Muhammed_BlogMuhammed Vally
Director
Department: Patent
Tel: +27 (0)11 324 3080
Email: muhammedv@dmkisch.com

Author: Muhammed Vally

This article is a general information sheet and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact your legal adviser for specific and detailed advice.