Tufty the Cat

"Poisonous divisionals" hypothesis confirmed

noreply@blogger.com (Tufty the Cat) — Wed, 08 May 2013 09:07:00 +0000

A couple of years ago I wrote a post on the question of whether a divisional application could effectively poison its own parent if the priority document became Article 54(3) prior art as a result of a claim to priority being invalid. At the time I thought it was a bit far-fetched, although I could not see any actual reason for the hypothesis to be wrong.

Prompted by a recent decision in the Patents Court (Nestec v Dualit - see paragraph 111, and the IPKat here for more details) in which claims of a European patent were found to lack novelty over its own priority document, I have now been pointed towards a recent decision by the EPO, T 1496/11. In this, the similar but potentially more dangerous "poisonous divisionals" (now a registered trade mark - see below) hypothesis appears to have been put to the test and found to work in practice.

The Board of Appeal found that claim 1 of patent EP0930979, as maintained by the opposition division, did not have a valid claim to priority because it had been generalised to encompass more options than were disclosed in the priority document. As a result, a divisional application became relevant for novelty under Article 54(3), and the claim was found to be anticipated. In this case the problem could be (and was) easily fixed by narrowing claim 1 to again have a valid claim to priority. I expect a fix similar to this would be possible in most cases, although it would probably result in a less satisfactory scope than the patentee was hoping to get. The decision does, however, confirm that the potential prior art effect of divisional application should be carefully considered and not just dismissed as a theoretical possibility. More importantly, it shows that great care should be taken when filing an application from which priority will be claimed, particularly when the priority filing is narrow in its disclosure and needs to be generalised in a later filing. In some cases it might even be worth abandoning a priority filing and re-setting the clock to avoid such a problem.

Update 8 May 2013: See also the news article here from Hoffmann Eitle, K's Law here, and a (typically wordy) article from Avidity here.

Update 9 May 2013: In what seems to me to be a rather strange move, Avidity IP Limited have registered the terms 'poisonous divisional' and 'poisonous divisionals' as a series of trade marks at the UK IPO under class 45 for various intellectual property and other services. Whether they will seek to (or be able to) enforce the marks in relation to the terms being used in a blog post or otherwise is, however, unclear.

Update 16 May 2013: The generally excellent IPCopy blog from Keltie has picked up on the issue here, and added some interesting points about the relevance of Nestec v Dualit., as well as proposing an alternative to the 'poisonous divisionals' trade mark.

UK Divisional Applications - how (not) to get caught out

noreply@blogger.com (Tufty the Cat) — Wed, 10 Apr 2013 10:24:00 +0000

The UK Patents Act 1977 has a particular, and some may say peculiar, way of dealing with so-called divisional applications (which, for the pedants among you, are not referred to as such in the Act but only by reference to section 15(9); see more on the subject here). For those unfamiliar with UK practice, this might on occasion result in an applicant being caught out while prosecuting a parent application, unaware that the deadline has already passed. Instead of having a (reasonably) clear deadline by which a divisional application must be filed, which at the EPO is the latest of the day before the parent application is granted or the end of 24 months from the earliest relevant examination report (Rule 36 EPC), the UK defines the latest date for filing a divisional application with reference to the compliance period of the parent. Specifically, in the case where an application is not allowed straight away, according to rule 19(3) a divisional application must be filed no later than 3 months before the end of the compliance period. The deadline can therefore easily be missed if the applicant is still trying to get the parent application granted towards the end of the compliance period. Given delays in the UK examination system, it is now quite common to have only 12 months from the date of the first examination report to the end of the compliance period, as a result of the extension allowed under rule 30(1)(b), 9 months of which can easily be used up with only a few rounds of correspondence.

Although the compliance period can be extended as of right by two months under rule 108(2), this is clearly not enough if the compliance date is already less than a month away. In such a case, as further extensions can only be allowed if an as of right extension has already been requested, the applicant has to rely on the discretion of the comptroller. This was the situation for Knauf Insulation's application GB1219243.1, filed out of earlier application GB0807777.8, which resulted in a recent decision from the UK IPO, BL O/098/13. The applicant, as represented by a European attorney based in France, filed the new application after the end of the period under rule 19(3)(b) (3 months before the compliance date), following several rounds of examination in which various issues including lack of unity were raised. Shortly after filing the application the applicant requested a discretionary extension of two months to the compliance period under rule 108(3), but the examiner indicated that this would not assist because the extension would not bring the date of filing of the application within 3 months of the extended compliance date, and discretion to allow the late filing under rule108(1) could only be exercised in exceptional circumstances. The parent application was then granted, while search and examination of the new application was deferred pending a decision on whether it could be treated as a divisional application.

The hearing officer indicated that there were two questions to be answered, the first being whether discretion should be exercised under rule 108(1) to extend the date by which the divisional application had to be filed, the second being whether discretion should be exercised to extend the compliance period under rule 108(3) which, under rule 30(3)(b), determined the compliance period for putting the divisional application in order. In relation to whether the comptroller's discretion may be exercised in favour of extensions under rules 108(1) and (3), the hearing officer referred to Ferguson's Application BL O/272/09, which indicated that the test to allow late filing of a divisional application should be consistent with the test for exercising discretion to allow a divisional application to be filed out of time, i.e. that the applicant needed to demonstrate that the circumstances were exceptional and that the applicant had been properly diligent.

The hearing officer accepted the arguments put forward by the applicant that there had been a genuine and serious attempt at all times throughout prosecution of the parent application to progress the application through to grant, and that any delay in resolving objections raised by the examiner was largely inevitable. The circumstances that led the divisional application to be filed so late were therefore considered by the hearing officer to be exceptional, and the applicant should not lose out when serious and consistent attempts had been made to progress the application through to grant. The hearing officer ordered the compliance period to be extended under rule 108(3), and the period for filing the divisional application to be further extended under rule 108(1), with the result that the divisional application had the same compliance date as the parent. A further discretionary extension to the compliance period would be required to put any amendments into effect, which the hearing officer indicated would be allowed.

Although the decision in this case came out in favour of the applicant, it is clearly not a process that is easy or cheap to go through and a positive outcome is by no means guaranteed. It does, however, appear that as long as an applicant pursues their parent application diligently, an apparent schoolboy error of missing the usual deadline for filing divisional applications can be forgiven. I am sure that the attorney in this case will not allow the same mistake to happen again, and will be paying more attention in future to the differences between EPO and UK IPO practice regarding divisionals.

Marks & Clerk come undone

noreply@blogger.com (Tufty the Cat) — Fri, 05 Apr 2013 14:06:00 +0000

When filing and prosecuting patent applications, deadlines are extremely important. There is a deadline for most things, and missing one can make the difference between life and death for a patent application, as well as the difference between a satisfied client and a very large insurance claim. One of the most important, if not the most important, things a patent attorney must have therefore is a reliable system for monitoring deadlines so that none are missed unintentionally.

Not filing a request for examination is one of these important deadlines, the latest date for which is 6 months beginning immediately after the date of publication under section 16 (rule 28), in the case of a direct UK application. The deadline can be extended by two months, but only if a request is made under rule 108(2) in time. More time can be bought under rule 108(3) if a good enough reason is provided. Even more time is available by requesting reinstatement under section 20A up to one year after termination of the application, provided it can be shown that the applicant missed the deadline unintentionally. After this, one would normally think that an application can be considered to be finally dead and buried. Sometimes, however, this does not stop people from trying to resurrect an apparently dead application. A recent decision from the UK IPO (YKK Europe Limited, BL O/006/13) shows how far this can go. It also shows that even well-respected large partnerships of patent attorneys have systems and people that can go wrong from time to time.

Patent application GB0922420.5 was filed on 22 December 2009 in the name YKK Europe Limited (a well known manufacturer of zips and other fasteners) by their patent attorneys Marks and Clerk LLP in Manchester, the application being filed with patents forms 1, 7 and 9 together with the appropriate fees but without a request for examination (requiring patents form 10). No request for substantive examination was made in due time following publication of the application on 30 June 2010, which resulted in the application being treated as withdrawn and terminated with effect from the day following the final date on which the examination request was due.

On 1 March 2012, over 14 months after the end of the 6 month period for requesting examination, the office received a letter from M&C asking when they might expect to receive a substantive examination report. They were informed by the office that the case had been terminated and that it was now too late to request reinstatement under section 20A. M&C then filed patents form 10 together with an explanation that it was intended to be filed in due time but the form had never been mailed, even though M&C's internal records had been updated to indicate that the form had been filed. M&C's main argument to have the deadline extended was that the standard form 10 reminder letter sent by the office and usually received before the end of the 6 month period, had not been received. If it had been it would have alerted them to the omission. This, M&C argued, led to the failure to file the form in time being attributable to an irregularity with the IPO or a communication service. As such, an extension of time under rule 28(2) was requested under rule 107 (correction of irregularities) or rule 111 (delays in communication services). The office indicated that there was no scope under either rule to extend the time limit because a check of the office's records indicated that the letter had been issued and there was no indication an irregularity had occurred. Furthermore, while the reminder letter might have highlighted the failure of the attorneys to file the form 10 it could not be said that the failure to receive the reminder was the main cause of the form not being filed in time.

M&C, represented by counsel Richard Davis, argued that they were entitled to rely on the failsafe of the reminder letter in the event of a breakdown in their own systems, referring to Carrington's Patent, BL O/22/98 and the EPO decision J 23/87, arguing that but for the loss of the reminder letter the form was not filed in time. Witness statements from the M&C's records system manager and the office managing partner explained how their systems worked, of which the form 10 reminder letter formed an integral part, and indicated the specific training given to its patent attorneys in relation to its records systems that would have prompted the attorney to check the correct status of the case in the event a reminder letter was received.

The hearing officer considered that the issue was whether the applicant's failure to file form 10 on time was wholly or mainly attributable to a failure in the postal service which led to the non-receipt of the reminder letter. Only if this was the case would it be necessary to consider whether rule 111 allowed the comptroller to reverse the terminated status of the application. Regarding whether the failure was attributable to a failure of a communication service, evidence showed that M&C's records system had been updated to indicate that it had been filed, which meant that the alerts built into the system were not triggered. Furthermore, official records indicated that two pieces of correspondence were sent by the IPO and there was no evidence to suggest that these were not received. Despite the apparent stringency of M&C's records system, at least two signposts had been overlooked, the last of which should have been the reminder letter. Although the evidence indicated that, on the balance of probabilities, the reminder letter had not been received this was not the sole indicator supplied by the IPO that something was awry, and the hearing officer did not accept that the failure to file form 10 in time was wholly or mainly attributable to the non-delivery of the reminder letter.

In relation to the "but for" test, although the final error appeared to be a failure in the communication service this was not the main reason for the failure as there was at least one earlier failure to file the form. The fundamental failure to file the form in time resulted from the unexplained failure by M&C to send the form when the application was filed and the erroneous entry on their internal records system that the form had been filed. This error was compounded by the fact that two pieces of correspondence were overlooked, whilst a third was not received. None of these would have come into play had it not been for the original error. In conclusion the hearing officer considered that the failure was not wholly or mainly attributable to the failure of communication service, and that the period for filing the request for examination could not be extended under rule 111. The question of whether the rule could allow a terminated status to be reversed did not therefore arise.

It appears that the lesson to be learned from this case, at least for patent attorneys, is not to blindly assume that your own records are correct. Even if nothing appears to be awry, it is always best to check the patent office records to make sure, and it is certainly not good practice to ignore reminders from the patent office about deadlines that might be missed unless you can be sure there is no problem. The fact that M&C were unable, or unwilling, to explain the discrepancy between their own records and those of the patent office, which would have been publicly available online as from the publication date, indicates that there may have been an over-reliance on their own records system. Records are, of course, only as good as the data that is entered into them, and errors can occur. What is important is having a system where errors can be spotted and corrected. This of course requires people who can think about what the piece of paper in front of them actually means, rather than dismissing it as being somebody else's problem.

Schütz v Werit - The UK Supreme Court bottles it

noreply@blogger.com (Tufty the Cat) — Thu, 28 Mar 2013 12:28:00 +0000

It is not always pleasant to see your work criticised in public, but when it comes to patent litigation someone somewhere has to bear the responsibility for writing the patent application in the first place. Courts are usually able to work around minor issues such as clarity by construing claims according to how Lord Hoffmann put it in Kirin Amgen, i.e. what would the skilled person have understood the patentee to have used the language of the claim to mean. As part of this process, when the claimed invention includes various specific features one cannot simply ignore some of them and interpret the invention to be broader than it is.

The case of Schütz v Werit, recently decided at the UK Supreme Court, is not one of those occasions where overly narrow claims resulted in a patent not being infringed. Very oddly, the situation was quite the reverse before the Supreme Court's decision. By having claims that were, according to all conventional patent attorney training, far too narrow, the patent proprietor very nearly got away with a much better result than they would have had their patent application been drafted properly. By 'properly', I mean that claim 1 should ideally have had only those features that were essential to the definition of the invention. How could this have been the case, and how could such a decision make any kind of sense?

Going back to the start of the story in the UK, Schütz (U.K.) Limited, an exclusive licensee of European patent 0734967, sued Werit UK Limited for infringement of the patent. There were other issues involved, but the main one for the purposes of this story is that Werit were alleged to infringe the patent by making the patented product, which was a palletised Intermediate Bulk Container (IBC) comprising a plastic bottle in a metal cage on a pallet (like the one shown on the right). Werit were taking used IBCs, taking out the plastic bottle and replacing it with a new one. Schütz claimed that this infringed their patent, because it was more than repairing the product but constituted making it anew. At the High Court, Floyd J was having none of this, and decided that Werit were not infringing the patent because the inventive concept of the patent was wholly embodied in the cage, which Werit did not do anything with other than repair (see paragraph 206 of Floyd J's judgment).

At the Court of Appeal, things turned out quite differently. Jacob LJ, taking the leading role, decided that the inventive concept test was wrong, and that Werit were making the patented product because they were making anew the palletised container of the claimed invention. This decision has now been overturned by the Supreme Court, which has effectively reinstated Floyd J's decision, although with some reservations about the inventive concept test not being the only one to consider (the main reasons being provided on paragraph 78 of the judgment).

As summarised by Lord Neuberger (at paragraph 10), the inventiveness of the patent lay in the idea of flexible weld joints in the cage to increase its strength and durability and, more specifically, in the idea of introducing a dimple on either side of each weld and a central raised portion where the weld is located. This is shown in figures 2 and 7 of the patent (shown below), figure 2 showing a portion of one of the metal tubes forming the cage and figure 7 a cross section of a welded joint between two of the tubes. The tubes were joined with welds at a raised portion 17, with recesses 25, 26 provided on either side of the raised portion 17. According to paragraph 3 of the patent (roughly translated), this configuration would increase the durability of the weld joints at the intersection of the vertical and horizontal bars of the lattice sleeve of the pallet container arising from static and dynamic loads during operation, thereby improving the stacking and transport security of the container.

The patent is not a long document (consisting of 7 pages of text and 3 or drawings in the application as filed; see the EPO register for all the details), and concentrates on the particular form of joints between the horizontal and vertical bars of the cage. The description makes clear that the object of the invention is to improve these joints. Claim 1 of the patent, in line with normal German and EPO practice, includes a characterising clause (“dadurch gekennzeichnet” / “characterised in that”), the meaning of which is clear: the combination of features prior to the characterising clause are known from the prior art, making the inventive concept the bit after the characterising clause.

Claim 1 of the patent (which is unchanged from that as filed except for the inclusion of reference numerals and some minor other changes by the examiner) does not, as a competent patent attorney might expect, claim only the cage but claims the whole pallet container, i.e. a pallet, an exchangeable plastic container for holding liquid, as well as the cage itself. The English version of claim 1 of the patent as approved by the applicant, reads as follows:

Pallet container (1) for the transporting and storing of liquids, having a flat pallet (11), an exchangeable inner container (2) made of plastic material with an upper, closable filler opening (3) and a lower emptying device (5) and also, surrounding the inner container, one outer sleeve (8) which consists of vertical and horizontal lattice bars (9, 10) made of metal which support the plastic inner container filled with liquid, the lattice bars which are configured as tubes being indented at the intersection points (15) to form trough-like, double-walled recesses (16) extending in the longitudinal direction of the lattice bars in such a manner that at each intersection point between the longitudinal edges (18, 19) of the recesses (16) of two lattice bars lying perpendicularly one above the other there arise four contact points (20) with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, and the four contact points of the two lattice bars being welded together at the intersection points, characterised in that the trough-like recesses (16) of the vertical and horizontal lattice bars (9, 10) have a central raised part (17) extending across the cross-section of the recesses, two lattice bars (9, 10) respectively lying one above the other at the intersection points (15) are welded together at the four contact points (20) of these raised parts (17) and the incisions (25, 26) of the recesses (16) of the lattice bars (9, 10) adjacent on both sides to the raised part (17) with the contact and weld points (20) form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part (17) for relieving the weld joints at the intersection points (17) upon application of static and/or dynamic pressure on the lattice sleeve (8).

In my view, if this claim were to be submitted as part of an answer to a patent drafting paper at the EQEs or the UK finals, the candidate would suffer a loss of many marks due to the unnecessary inclusion of features unrelated to the invention, i.e. the pallet and the inner container, as well as other marks due to the lack of overall clarity of the claim, and would probably fail the exam as a result. However, in the strange world of patent litigation, and in particular the even stranger world inhabited by Lord Justice Jacob, the resulting patent was stronger for what the proprietor wanted to use it for than it would have been if it had been drafted properly. It is certainly possible to imagine how the claim might look if it had been drafted to concentrate only on the features essential for defining the inventive concept. Leaving mostly aside the fairly clunky wording, claim 1 re-drafted accordingly would read something like:

A lattice sleeve (8) for supporting an inner container filled with liquid, the lattice sleeve (8) comprising vertical and horizontal lattice bars (9, 10) made of metal, the lattice bars (9, 10) configured as tubes being indented at intersection points (15) to form trough-like, double-walled recesses (16) extending in the longitudinal direction of the lattice bars (9, 10) in such a manner that at each intersection point (15) between the longitudinal edges (18, 19) of the recesses of two lattice bars (9, 10) lying perpendicularly one above the other there arise four contact points (20) with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, the four contact points (20) of the two lattice bars (9, 10) being welded together at the intersection points (15), characterised in that the trough-like recesses (16) of the vertical and horizontal lattice bars (9, 10) have a central raised part (17) extending across the cross-section of the recesses (16), such that two lattice bars (9, 10) respectively lying one above the other at the intersection points (15) are welded together at the four contact points (20) of these raised parts (17) and the incisions (25, 26) of the recesses (16) of the lattice bars (9, 10) adjacent on both sides to the raised part (17) with the contact and weld points (20) form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part (17) for relieving the weld joints at the intersection points (15) upon application of static and/or dynamic pressure on the lattice sleeve (8).

It is perfectly clear where the inventive concept lies in the above claim, which is in the construction of the lattice sleeve and not with the other components of the IBC, which are not claimed. I see no reason why this claim could not have been allowed by the EPO. The question is then whether the same decision would have been arrived at by the Court of Appeal. I think not, because it would be hard to argue that the inventive concept could lie outside the scope of a claim (although the claimant would probably have done anyway). In rejecting the "whole inventive concept" test (see paragraph 72 of the Court of Appeal judgment), Jacob LJ had clearly not looked very hard at the actual patent. If he had, it would have been clear that the inventive concept could not have lay outside the cage, and had nothing to do with the other components of the IBC. It was not "fuzzy and uncertain", as claimed, but the wording of the patent made it quite clear that the feature to be concentrated on lay in the cage and not elsewhere. The fact that the cage in practice operated in conjunction with the bottle, with the improved weld allowing for more flexibility, may have been a factor in considering whether the skilled person would consider the feature obvious, for example when trying to solve a problem relating to IBCs as a whole, but this lay in deciding whether the invention was obvious, not in where the inventive concept lay. It was certainly quite wrong to view the solution to any problem as having anything to do with a component outside the cage, and in particular the welded joints making up the latticework of the cage.

If the Court of Appeal decision had not been overturned, I wonder how far the rejection of the whole inventive concept test would go. Would it be possible for a claim to a car comprising a new and inventive cigarette lighter to have a better scope for protecting against infringers than a claim to the cigarette lighter alone? Perhaps things would not be taken to that extreme, but it might have made claim drafting for UK patent applications more complicated if such an illogical decision had to be taken into account. Thankfully we do not have to, and can carry on drafting patent claims in the way we were taught to.

Intransigent inventors & USPTO formal requirements

noreply@blogger.com (Tufty the Cat) — Fri, 30 Nov 2012 09:41:00 +0000

It is well known among UK patent attorneys that the US patent system operates under different rules, some of which seem designed to make life just that bit more difficult for applicants and their attorneys. No matter how carefully a patent application is prepared and filed, making sure all of the requirements are met according to UK and international requirements, the US still insists on adding its own further requirements to the typically very long-winded task of getting a patent. One of these is the need for the inventor to complete a declaration to the effect that they have seen and approve of the application being filed at the USPTO. The other, which is almost always required when the resulting patent is to be owned a company rather than the individual inventor, is an assignment from the inventor, regardless of the actual status of the applicant under the local law of where the invention was actually made (which in the UK results in most inventions belonging as a matter of course to the inventor's employer, according to section 39).

While it is possible, and in some cases advisable, to have something signed beforehand by the inventor to the effect that they have assigned any rights they might have, this is not typically enough to comply with all the requirements at the USPTO, and further inventor signatures are normally required. It is not usually therefore worth the extra bother of insisting every time on getting something signed by the inventors early on in the process. When the inventors are being compliant this is not a problem, since signatures can always be obtained later on. However, all sorts of things can happen from the time when, for example, a UK priority application is filed, to the time two and a half years later when it comes to filing a US national phase application. An inventor who was quite happy to sign anything put in front of him at the start of this process may no longer be willing or able to sign anything later on. My first exposure to this strange world was as an inventor when, years after I came up with an invention for which a patent was applied for in the UK, I was tracked down by the patent attorney who had prepared and filed the application. The patent attorney sent to me at my home address a couple of forms to sign, and mentioned in a very carefully worded cover letter that they were just formalities and it would be very nice and helpful if I could just sign them because if I didn't it would just cause him a lot of difficulty and expense. I considered this for a few minutes and then (even though I had left my previous employ on less than the best of terms) signed the forms and sent them back, thinking that it was surely not worth putting my previous employer to unnecessary trouble if there was nothing further I was going to get out of it anyway. This is, however, not the way things always go, and a recent decision from the UK IPO illustrates just how much difficulty can be involved in resolving the issue if an inventor refuses to sign some forms.

The decision, Zincometal S.p.A. (BL O/469/12) was issued on 27 November 2012 in relation to a US national phase application filed in February 2010, which in itself shows how long-winded the process can be. The story begins with a UK application filed in 2007 in the name of Sigmala Limited. A PCT application (published later as WO 2009/022090) was then filed a year later. Unfortunately, during the time the application was progressing through the international phase, Sigmala went into administration. The company's assets, including its patent applications, were bought by another company, Zincometal S.p.A., which naturally wanted the patent application to then proceed in their name. This was not a problem for the international application, which was changed on the basis of the fact that the applicant had changed, and was subsequently also not a problem for the European Patent Office, who accepted the change of name and granted the application to Zincometal in January 2012. For the USPTO, however, it was a different matter altogether. Because the two named inventors, who had been directors of Sigmala at the time the invention was made, either refused to sign the required documents or could not be contacted, it was not possible to fulfil the formal requirements for the US application. In parallel with a petition to the USPTO (which is another story altogether), a reference was made to the UK IPO on behalf of Zincometal under section 12(1)(a) requesting an order that would allow their patent attorney to sign the forms on the inventors' behalf. In the normal course of events (according to the procedures under Rule 77), the inventors were notified of the reference by the IPO but no response was forthcoming from either of them. As a result the hearing officer accepted the facts of the case to be those in the supporting documents provided by Zincometal's attorney.

The hearing officer referred to two previous cases where references were made to the comptroller under section 12(1), being Cannings' US application [1992] RPC 459 and British Telecommunications BL O/402/01, which established that it was within the comptroller's power to order an inventor to execute any assignment necessary to effect the determination of entitlement to a foreign application and, if the inventor still refused to sign, to authorise an affected party to sign on the inventor's behalf. The evidence supplied, which was uncontested, provided support for the ownership of the invention having been transferred to Sigmala by virtue of the inventors' positions within the company, and that these rights had been transferred to Zincometal when Sigmala entered administration. Although the inventors had been asked to sign the documentation necessary to put the entitlement into effect in the US, they had either refused or failed to do so. The hearing officer therefore considered that the facts dictated an order in the terms requested was appropriate, and authorised Zincometal's attorneys to execute on behalf of the named inventors a combined declaration and power of attorney form and an assignment of rights in the US application.

Decisions of this type, where the UK comptroller effectively decides on ownership of a foreign application, are comparatively rare, this being apparently only the third one published while the Patents Act 1977 has been in force. This is to me a bit of a surprise, as an order under section 12 should be able to effectively shortcut the process of getting a petition allowed at the USPTO, which can also be long-winded and complicated. An advantage of getting an order under section 12 is that if an reference is uncontested by the inventors and at least a prima facie case is presented that an order would be justified, it is very likely to work. Inventors that simply refuse to cooperate for no reason other than bloody-mindedness can therefore be more easily cut out of the picture once they realise there is no point in contesting. The moral of the case seems to be that sometimes it is unfortunately necessary to use a sledgehammer to crack a nut.

What is an embryo?

noreply@blogger.com (Tufty the Cat) — Sun, 23 Sep 2012 18:47:00 +0000

I have taken some interest over the past few years in where the boundary of patentable inventions lies. This has mostly involved consideration of the word "technical" and what it means, which tends to get tiring after a while. It therefore makes a nice change to see something come along about a boundary of patentability that has nothing to do with computers or business methods (except perhaps in a very tangential way). This was a decision from the UK IPO in International Stem Cell Corporation (BL O/316/12), which was published last month. Rather than section 1(2), which has been the subject of a vast number of decisions over the past few years at the IPO, this one related to the less well chartered backwaters of Schedule A2, paragraph 3 of which states:

The following are not patentable inventions:

(a) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;

(b) processes for cloning human beings;

(c) processes for modifying the germ line genetic identity of human beings;

(d) uses of human embryos for industrial or commercial purposes;

(e) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;

(f) any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological or other technical process or the product of such a process.

Two applications were filed in 2006, which were then published as GB2431411A and GB2440333A. The applications were both objected to by the UK IPO examiner under paragraph 3(d), other objections relating to novelty, inventive step, clarity and support having been overcome. The compliance period in each case had been extended in order to await the decision of the CJEU in case C-34/10, OliverBrüstle v Greenpeace, the outcome of which had a direct bearing on the remaining issue to be resolved (see the IPKat here for more on the Brüstle case).

Each application concerned methods of producing human stem cells, in which parthenogenesis (illustrated on the figure to the right; more information is available here) was used to activate a human oocyte, i.e. stimulating the oocyte to divide without having been fertilised by a human sperm cell, resulting in what was termed a “parthenote” to distinguish it from an embryo resulting from fertilisation. The first application related to the production of human stem cells from such parthenotes, while the second related to synthetic corneas derived from parthenotes. The issue to be decided was whether the claimed methods, stem cell lines or resulting tissue constituted use of human embryos for industrial or commercial purposes and were therefore unpatentable under paragraph 3(d). Neither the Act nor Directive 98/44/EC, which Schedule A2 implemented, provided a definition of what constituted an “embryo”. The examiner argued that the parthenotes of the invention fell within the definition of “human embryo” in light of the decision in Brüstle and also the definition provided by Section 1 of the UK Human Fertilisation andEmbryology Act 2008. In Brüstle the CJEU had held that "any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a 'human embyro' within the meaning of Article 6(2)(c) of the Directive" (paragraph 38 of the judgment). The hearing officer considered that on the face of it this statement gave clear and unambiguous direction that the applications should be refused.

The applicant argued that, since the parthenogenetically-activated human oocytes of the invention were not capable of commencing the process of development of a human being, the CJEU's decision was based on a flawed factual basis and should not be binding. In support of this the applicant cited several documents as evidence that a parthenote could never develop to term due to an inherent biological limitation. A set of amended claims was filed to clarify that the stem cells were only derived from parthenotes that could never overcome such limitations. The hearing officer accepted that on the evidence presented, the parthenotes of the invention were incapable of continued development and could never turn into a human being, but did not accept that the CJEU was necessarily wrong in deciding the way it did based on the observations put to it. The UK courts were entitled to disregard a finding of fact made by the CJEU, as they did in Factortame [2000] 1 AC 524 and Arsenal v Reed [2003] EWCA Civ 969. The same principle would also apply to the UK IPO but, as the lowest level of tribunal, the hearing officer considered that the greatest of caution should be exercised before departing from any aspect of the CJEU's decision. Noting the point made in Arsenal v Reed that the operative part of a judgment from the CJEU should always be interpreted in light of the preceding reasoning, the hearing officer considered that the conclusion of the CJEU relating to non-fertilised human ova stimulated by parthenogenesis should not be taken in isolation from the preceding reasoning, which was that patent law should be applied so as to respect the fundamental principles safeguarding the dignity and integrity of the person. The concept of "human embryo" must therefore be understood in a wide sense since parthenogenetically-activated human oocytes were capable of commencing the process of development of a human being. A distinction was made by the hearing officer between commencing and completing the process of development, comparing this with a train entering a tunnel and going through to the other end. Even though the parthenotes of the invention were not capable of completing the process (coming out of the tunnel), the CJEU did not make this distinction and did not take on board comments by the advocate general on this point. The decision of the CJEU on this point could not therefore be ignored. The hearing officer concluded that the invention defined in each of the applications, whether amended or not, defined methods and products that were excluded. The applications were refused.

Although, as the hearing officer noted in this case, on the face of it the CJEU judgment indicated that parthenotes should be considered to be human embryos in the same way that fertilised embryos would, the applicant's arguments do appear to raise an important question as to whether the CJEU was correct in finding this a matter of fact. There appears to be a serious question to be addressed as to whether the CJEU's judgment on this point is something that can be departed from by a national court if the facts of a particular case differ. I look forward to seeing what happens when this question is considered by the High Court, which it will be in due course (a notice of appeal was lodged at the Patents Court on 13 September).

(among other things)

noreply@blogger.com (Tufty the Cat) — Sat, 18 Feb 2012 12:58:00 +0000

Section 1(2) of the UK Patents Act specifies a number of things that are not considered to be inventions. The list is, however, not exclusive, allowing some room for manoeuvre in case an invention doesn't quite fit neatly in any of the categories.

The only case I am aware of where this came into play was in Lux Traffic Controls v Pike [1993] RPC 107 (unfortunately not freely available online), where Aldous J stated, "s. 1(2) of the Act comprises a non-exhaustive catalogue of matters or things which are not patentable. Although not specifically mentioned, I believe a method of controlling traffic as such is not patentable, whether or not it can be said to be a scheme for doing business. The field expressly excluded by the section concerns mere ideas not normally thought to be the proper subject for patents which are concerned with manufacturing" (paragraph 138).

Since 1993, however, the courts and the Patent Office / IPO have not seen the need to consider the words "among other things" in section 1(2) (equivalent to the words "in particular" in Article 52 EPC), probably because it is very rare that an otherwise patentable invention would not fall within one of the categories. A recent decision, BL O/028/12 (William Kostuj), from the IPO therefore grabbed my attention because it raises this issue, albeit only briefly.

The application, a UK national phase of an international application published as WO 2009/007918, related to a method of establishing a golfer’s grip and swing in order to change or improve the golfer’s performance, in which the golfer performed a swing using a grip with no club present (as in the images above), and the grip and swing were analyzed. Claim 1 of the application as filed read:

"A method of developing a golf swing and fitting/making golf equipment to said swing, comprising:

forming a secure golf grip using only a body's limbs, whereby a golf swing can be performed absent any extraneous, swing-influencing elements, including but not limited to golf clubs and other golf equipment;

developing a limb-only golf pre-swing and/or swing of any style using said golf grip, whereby said pre-swing and/or swing can be developed absent any extraneous, swing-influencing elements, including but not limited to golf clubs and other golf equipment, that can affect the movement(s) and/or position(s) of said pre-swing and/or swing;

fitting/making at least one golf club and/or other piece of golf equipment in accordance with the characteristic(s) of the developed pre-swing and/or swing, whereby at least one part and/or specification of the at least one golf club and/or other piece of golf equipment is selected and/or adjusted to reproduce the limb- only movement(s) and/or position(s) as accurately as possible when using the at least one golf club and/or other piece of golf equipment; and

further fitting/making said equipment by means of ball travel and/or other non- swing-influencing aspect(s) of golfing performance."

The international searching authority (the Korean intellectual property office) considered there was no problem with the application, citing three background relevance documents and stating that the claimed invention was novel, inventive and possessed industrial application (raising some questions about either the competence of the Korean examiner or the popularity of golf in Korea). The UK examiner, however, objected that the invention was not patentable, lacked industrial application, sufficiency, novelty and inventive step, and had been amended to add matter. The applicant was unable to persuade the examiner, so a hearing was held.

The hearing officer focused on what were considered were the main issues to decide, namely whether the claims satisfied sections 1(2) and 14(3). In relation to sufficiency, the hearing officer noted that only a general paragraph provided support for one of the claims and no examples were provided of what might constitute activities other than golf, given that the claim in question was not limited to any particular activity. The claim was considered to be broad and speculative in scope and did not satisfy section 14(3). In relation to whether the claims were patentable, the hearing officer considered that the contribution provided by the claimed invention (following the four-step Aerotel/Macrossan test) was a method of producing a golf swing comprising, without the use of a golf club, forming a limb-only golf grip and performing a limb-only golf swing, using that as a reference for further improvements, the limb-only established swing being used for the fitting or making of golf equipment. This contribution was considered to be no more than a scheme for training an individual to improve their golf skills, and was therefore excluded as a method for playing a game. The contribution was also considered to be caught by the mental act exclusion, although this would not apply if any hardware was included. The contribution was further excluded as a method of doing business, since the activity lay in the business aspects of sport.

Although there were clearly plenty of grounds on which to refuse the application, the hearing officer also considered that the contribution could be caught under the phrase “among other things” in section 1(2), in the event that it was argued that the subject matter did not fall squarely within any one or combination of the specific excluded areas. The hearing officer stated:

"The structured process of establishing a limb-only swing, and using that as a basis for further improvements and/or fitting or making of sporting equipment such as golfing equipment is not, in my opinion, suitable subject matter for patent protection. In so far as it could be argued that this does not fall squarely within any one or combination of the specific excluded matters discussed earlier, I consider that the invention is very closely analogous to a scheme, rule or method of performing a mental act, playing a game or doing business and so would be caught under the phrase “among other things” in section 1(2)." (paragraph 41)

The contribution was further considered not to be technical, as it did not belong to any field of technology. The hearing officer did not feel the need to consider novelty, inventive step, clarity or added matter, although the invention was considered not to be one that could be made or used in any kind of industry and therefore lacked industrial application. The application was refused.

A Sad Announcement

noreply@blogger.com (Tufty the Cat) — Wed, 04 Jan 2012 21:09:00 +0000

With great sadness this weblog regrets to inform its readers of the death of the real Tufty the cat. Tufty, who spent several happy years at his owners' country home after being rescued in 2006, died suddenly this morning after a suspected heart attack.

Tufty, who took a great interest in the legal papers that one of his owners kept bringing home, was the inspiration for the pseudonymous writer of many items on the IPKat weblog, from his first appearance in August 2007 (here) through to his departure from the IPKat in January 2011 to begin this weblog in order to pursue his own path among the esoterica of patent law. His proudest moment was being mentioned by Lord Hoffmann in relation to the amicus brief Tufty submitted to the EPO on G 3/08 (details of which can be found here and here). He was also proud of his more minor contribution to the UK IPO opinions service.

In real life, Tufty was a very loving cat and was often to be found obscuring papers and computer monitors at his home, looking for affection. His favourite food was fresh baby rabbits (caught by himself), and he loved a vigorous head rub from his owners.

Tufty's owners would like to express their gratitude to the charity Cats Protection for looking after Tufty and his friend Pod while they were waiting to be homed and for providing them with such a special cat. He will be greatly missed.

Sandvik v Kennametal: the dangers of armchair examples

noreply@blogger.com (Tufty the Cat) — Tue, 20 Dec 2011 16:38:00 +0000

An important part of getting a valid patent is that it needs to disclose the invention in such a way that it can be reproduced without undue effort by a nominal 'skilled person'. This requirement is enshrined in Article 83 EPC, which simply states:

The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

This requirement is normally not something that can be tested during examination. It is often therefore just taken as read that whatever is described in a patent application could in fact be carried out by a skilled person simply following one or more of the examples in the description. There should, of course, be at least one example in the description that results in a product, or follows a process, that lies within the scope of the claimed invention.

In some cases the applicant may be so confident the invention will work as planned that examples are provided setting out how to make a product according to the invention without this having in practice being done when the application is filed. This is normally nothing to be too worried about, but the applicant should always be aware of the potential fatal flaw in the application if the example does not in fact work.

Such a fatal flaw was revealed in a recent judgment by Mr Justice Arnold in the case of Sandvik v Kennametal, available from BAILII here. Sandvik had obtained a European patent, EP0603144, relating to an alumina-coated cutting tool (similar to those shown in the picture on the right). The key feature of the claimed invention was that the alumina coating had a particular texture, i.e. a preferred crystallographic orientation relative to the cutting face. The claims specified a 'texture coefficient' (TC) of larger than 1.3 in relation to one particular orientation, which meant that this orientation would be preferred over the others. The claims also specified how the texture coefficient should be measured, which was by using standard X-ray diffraction data patterns.

Unfortunately for Sandvik, when an experiment was carried out following one of the 'armchair examples' (as Arnold J put it: paragraph 147), the resulting texture coefficient was much less than expected. The best that could be done was a TC of 0.84, which related to the particular orientation being less preferred rather than more preferred. Sandvik tried to argue that the skilled person would be able to get to the required result specified in the claims by doing a few trial runs, as they had done when optimising the process. However, the key feature that allowed the claimed texture coefficient to be obtained, relating to the supply of gases during deposition of the coating, was not disclosed in the patent and was even admitted by Sandvik not to have been discovered until after the priority date of the patent.

Arnold J considered that this missing information was fatal to the patent. Without the skilled person being informed of how to get the required texture, it was not possible for the claimed invention to be sufficiently disclosed because the information on what to do and why was not part of the common general knowledge. As Arnold J put it, when following the example outlined in the patent "the skilled reader would not appreciate that he was doing something that he was not supposed to do" (paragraph 137). The patent was therefore found to be invalid on the ground of insufficiency. It was also found invalid for being obvious, but this was something of a moot point (unless the insufficiency finding is overturned on appeal).

The main lesson to be learned from this case is fairly obvious, which is that examples of how to perform an invention should be sufficiently described in enough detail for someone else to be able to do it. It is dangerous to assume that the skilled person can fill in any gaps, as these could be too wide when it comes down to proving it.

Similar is not enough

noreply@blogger.com (Tufty the Cat) — Tue, 20 Dec 2011 14:59:00 +0000

As if to illustrate my point, following my last post on self-represented applicants another opinion has been recently issued by the UK IPO relating to a patent obtained by just such an applicant. The patent in question, GB2324605 (unfortunately available online only in the pre-grant 'A' format), was granted to the applicant and inventor Mr Alan Mackinder in 2001. Mr Mackinder has since then requested and had issued two opinions under section 74A regarding infringement of his patent, the first (opinion 04/05) issued in January 2006 and the second (opinion 18/11) on 6 December 2011. Unfortunately for Mr Mackinder, both opinions have not gone the way he wanted them to.

Claim 1 of the patent as granted goes some way to explaining why Mr Mackinder has so far not succeeded. The claim read as follows:

1. A vehicle speed limit enforcement method, utilising an integrated electronic unit using satellite positional information, for detecting, on a worldwide basis, when a vehicle exceeds a legally enforceable speed limit with levels of accuracy demanded by the law enforcement agency and on doing so will transmit a signal to the appropriate law enforcement agency indicating that the speed limit has been exceeded, the speed of the vehicle, the time the speed limit was exceeded, the date the speed limit was exceeded, the name of the driver, the location where the speed limit was exceeded, the registration number of the vehicle, the make of the vehicle and the model of the vehicle.

In his request for an opinion, Mr Mackinder alleged that an apparatus known as the "Smartbox" offered by co-operative insurance (CIS) infringed his patent. This device, based on GPS tracking technology, would, when installed in a vehicle, monitor how the vehicle was being driven and allow an insurance premium to be calculated on a 'pay-how-you-drive' basis. The device therefore had some similarities with Mr Mackinder's patented method in how it worked in practice. The examiner, however, considered that similarity was not enough. Claim 1 required an infringing device to do several things in response to exceeding a speed limit, most of which CIS argued quite reasonably the Smartbox did not do. Given that Mr Mackinder had, as the examiner put it, "the ultimate responsibility for the words chosen to define his monopoly", there was no doubt that the skilled addressee would understand him to have intended to limit his monopoly by including the essential feature of transmitting a signal to an appropriate law enforcement agency (which CIS clearly was not). For this, and various other reasons relating to the claim's other restrictions, the examiner did not consider the Smartbox or its method of use to constitute an infringement of the patent.

The question that inevitably comes to my mind at least is whether Mr Mackinder would have fared any better if he had been represented when prosecuting his application. It appears that the key feature of the invention was automatic enforcement of legal speed limits, so even with professional assistance it seems unlikely that he would ever have been able to enforce his patent against an insurance company. Some better claim drafting, even without the benefit of hindsight, might however have got a patent granted with a more useful scope. Unfortunately for Mr Mackinder, who has now spent in the region of £2000 in renewal fees and £400 in opinion fees on his patent, it is all now far too late. When it comes to deciding on the actual scope of a granted patent, the IPO is apparently much less willing to accommodate any weaknesses in a self-represented patentee's case than it is when the applicant is prosecuting his application. Is this a good thing? I think it most certainly is, although such applicants may not feel the same way.

Self-represented applicants

noreply@blogger.com (Tufty the Cat) — Sun, 18 Dec 2011 16:51:00 +0000

It is said (although I'm not sure who said it first) that he who represents himself in court has an idiot for a lawyer and a fool for a client. Thoughts like this can often come to mind when reading some of the decisions that come out of the UK IPO relating to self-represented applicants. These decisions are, of course, an entirely unrepresentative sample of how self-represented applicants get on. I am sure many of them manage quite well and end up getting a patent out of the process, although usually with the assistance of a helpful examiner. How useful and enforceable such patents are, however, is another matter (see Opinion 06/06 for a good example of why such patents can be less than ideal).

It is well known that examiners at the UK IPO tend to be remarkably patient and accommodating with applicants without a representative. You only have to see the difference between how an examiner addresses such an applicant and how the same examiner addresses a representative. Examiners tend to do helpful things like explaining the law on novelty, inventive step, clarity, added matter and the like, which would be unnecessary to any qualified patent attorney. They also, thankfully, tend to advise such applicants that they might like to consider getting themselves a qualified representative, typically pointing them in the direction of CIPA.

Sometimes, however, the self-represented applicant just doesn't get it and refuses to engage with the examiner in any kind of constructive way. A couple of recent cases help to illustrate this point. The first of these relates to an application filed by VB UK IP Limited, as represented by the inventor Mr Paul Scanlan, the decision relating to which, BL O/415/11, was issued on 23 November 2011. In his application, Mr Scanlan claimed he had invented a method and apparatus for "determining changes in distance of visual fixation of a person by use of input from the person's respiratory function data" (as stated in claim 1). The idea behind the invention was described in the application in the following way:

"As discovered by the inventor, the respiratory system directly influences the visual system. The inventor discovered that pressure from the respiratory system presses on the rear of the eyeball, changing the eyeball's length from front to back, thereby altering the focus of the eye. Increased pressure from the respiratory system pushing on the back of the eyeball reduces the length of the eyeball for better distance vision. A decrease in this pressure increases the length of the eyeball for better close-up vision. Thus when a person changes from viewing an object in the distance to instead viewing an object close-up, there is a corresponding change in pressure in the respiratory system" (page 2, lines 16-17 of the application as filed, published as GB2440966).

According to the inventor, this relationship could be used to enable auto focus functions on cameras (as shown in the illustration on the left) and for landing aeroplanes, among many other applications. One problem, however, was that the examiner did not think that the invention was patentable because it related to a scientific discovery as such under section 1(2)(a), lacked industrial applicability under section 4(1) (being contrary to well-established physical laws), and the application contained insufficient information for a person skilled in the art to perform the invention, according to section14(3). The applicant disputed all of these, and argued at the hearing that his theory was correct. The following paragraph of the decision paints an interesting picture of what went on before the hearing officer:

“To demonstrate his theory, Mr Scanlan hummed while looking from one finger to another, the fingers positioned at two different distances from his eye, and the tone of his hum changed. This, he asserted, showed a link between the respiratory system, and the distance of visual fixation.”

The hearing officer was, unsurprisingly, not persuaded and considered that this did not provide evidence that there was in fact any link.

Not to be put off, Mr Scanlan also provided evidence in support of his theory, which included a reference to a contestant on the ITV show “Britain’s Got Talent”, Antonio Popeye (pictured right). As the hearing officer put it,

“This is a gentleman who appears to be able to make his eyeballs “pop” out of his skull. This effect, according to Mr Scanlan, is achieved by Mr Popeye having excellent control over the pressure in his respiratory system and how it affects his eyes. Again, there is no evidence that this effect is not simply down to good control of the facial muscles and/or extrinsic eye muscles.”

Considering all the applicant’s evidence, the hearing officer concluded that there was no “credible evidence to support the applicant’s theory over and above what are considered to be well established medical principles” (paragraph 24), and there was therefore no reasonable prospect of Mr Scanlan’s proposals being accepted even under trial conditions with experts available to give evidence (a reference to the requirements for refusing an application on section 4(1) grounds following the decision in Blacklight Power). The application therefore lacked industrial applicability.

The hearing officer also found the application to be insufficiently disclosed, under section 14(3), “due to a lack of information concerning the apparatus which should be used to obtain respiratory function data, the conditions under which that data should be obtained, and a lack of information concerning how any data obtained would then be used to derive a visual fixation distance” (paragraph 32). The application was, unsurprisingly, refused.

It appears to me that Mr Scanlan’s invention would be doomed to failure even if the applicant was represented by a qualified attorney (and had enough money to take his application through to a hearing). In another recent example, however, I am not so sure that the eventual outcome would have been the same. This was the case of Henri Duong, BL O/422/11, this decision being issued on 25 November 2011.

Mr Duong filed his application in January 2008, claiming priority to three previously filed UK, French and US applications. The application (published as GB2448392) related to an automatic braking system for preventing a vehicle from colliding with obstructions (an exemplary embodiment illustrated on the right). The claimed invention was drafted in what could be described as an unconventional (not to say incomprehensible) style, claim 1 as filed reading as follows:

1. The basis of inventing and materializing Detectable anti-collision automatic braking device invented for stopping collision/traffic accident in transportation during running; comprising sensor(s)/ radar(s) or similarity is for installing in/on engine/motor-vehicles, automobiles, cars, trucks, buses, vans, trains, high speed trains, underground trains, tanks, motorcycles, airplanes, ships, helicopters, submarines and all moving transportations connecting on "standby" for front and rear detecting at specified distance on the road, on railway, on air route and/or at sea, automatic braking being operated automatically during running based on both functions of sensor(s)/radar(s)/any operative device(s) detecting against obstacle at its detecting zone and of structural automatic braking unit being installed and connected electrically switching on by sensor(s)/radar(s) that motor-vehicle and transportation being stopped running to avert collision grounds, comprising installing as parts of the invention with detecting device in/on all transportation for safe driving, disconnecting function period, automatic water switch, speedometer switch unit, structural operational links & automatic braking unit(s)/ motor(s), automatic brake locking & releasing unit, automatic brake pedal, automatic safety system, operating lamps/similarities on indicator and electrical circuit connection in function grounds as well for adapting automatic traffic stop lamp device in use, including: [sic]

The examiner identified several prior art documents relating to automatic braking systems, and objected that the claims were unclear in several ways and that the invention as claimed was not new. There then followed what the hearing officer described as a “vast amount of correspondence between the examiner and the applicant which has not done much to progress the application towards grant”. In this correspondence the examiner repeatedly raised fundamental objections to the application, which were repeatedly ignored by the applicant. Along with the original clarity and novelty objections, added matter objections were raised, as a result of the applicant filing new claims having no clear basis from the application as filed. The examiner's report from March 2009, responding to the applicant's three previous replies, is a model of calm restraint combined with helpful advice:

"In your letter of 14 November 2008 you state that adding matter to your application should be allowed. My job is to guide you through the law so that you can obtain a valid patent. Whether you or I agree with the law doesn't matter, the important thing to note is that a patent that does not comply with the law will not be granted. Added matter is not allowed and as such I am unable to grant a patent containing any information that was not present at the date of filing. [...]

You need to submit a response to the report I sent you on the 12 May 2008. You should read though all of the patents I sent you and find a feature of your application (as filed, not adding any matter) that is not shown in any of these documents and put this feature at the end of claim 1 that you filed on 26 February 2008. Then you should write me a letter discussing each of the patents I have listed and telling me why your new claim 1 is different from these patents (this need not be longer than a few sentences for each patent listed). This will be the first step in the process of obtaining a granted patent for your application, but until this step is made I am unable to grant you a patent."

Unfortunately, Mr Duong failed to respond constructively to any of the advice offered. To add to the clarity, novelty and added matter objections, the applicant then prompted a further one of plurality of invention through making more amendments. After another couple of reports, the examiner then suggested that he might like to consider seeking advice from a patent attorney. Yet further amendments then prompted the examiner to add insufficiency to the growing list of objections. Going above and beyond the call of duty, the examiner even suggested a draft set of claims that he considered would overcome all existing objections. The applicant, unsurprisingly by that point, failed to take up the offer and a hearing was then held, although without the applicant appearing in person.

The hearing officer reviewed the outstanding objections and agreed with the examiner, concluding that "it is abundantly clear to me that a patent cannot be granted for it in its present form". The compliance period had by then expired, so the hearing officer considered whether it would be worth offering the applicant a further opportunity to amend the application to overcome the objections. He concluded, however, that "the application has not moved in the right direction and nor has Mr Duong shown any inclination to heed any advice on how to advance it towards grant despite the countless opportunities that have been given to him. I do not consider it appropriate to offer him a further opportunity to do so now". As a result, the application was refused for failure to comply with the requirements of sections 14(3), 14(5)(b) and 76(2) at the end of the compliance period.

It is clear that Mr Duong could have obtained a granted patent even without the help of a representative if only he had paid attention to the assistance offered by the examiner. I can only wonder therefore whether he even realised what he was trying to do, as all opportunity of getting a patent in the UK for his invention now appears to be lost (assuming that no appeal is being filed). I am not sure what, if any, lessons there are to be learned from this case, but it does appear to me that sometimes the IPO goes beyond what could be considered to be reasonable in providing help to applicants without asking for anything in return, although even their patience does eventually run out. The inevitable question as I see it is whether the IPO is doing the right thing in treating unrepresented applicants so differently. Since everyone has to comply with the same legal requirements, whether or not they are represented, is this entirely fair?

Scientific Heresy

noreply@blogger.com (Tufty the Cat) — Wed, 09 Nov 2011 17:43:00 +0000

While there is nothing much that is going on in European and UK patent law to interest me sufficiently to write a blog post about, here is something else that has been interesting me for a while. Those of you who follow me on Twitter will probably already know what this is about. Others can read on and find out for themselves.

One of the things that impressed me most while I was training to be a patent attorney I found from Paul Cole's book "Fundamentals of Patent Drafting" (which can be ordered from CIPA here). On page 2 of the introduction is a footnote referencing an article titled "Cargo Cult Science" by the physicist Richard Feynman. Paul Cole identified this as being required reading, so I duly went away and bought the book, although it turns out the article in question is also freely available on the internet (here). The book is certainly worth buying anyway, because it is full of all sorts of strange and funny stories from Feynman's life, including how he picked the safes holding the secrets of the atomic bomb while working on the Manhattan project.

The cargo cult science article, which was derived from an address Feynman gave to students at Caltech in 1974, aims to get across what is probably the most important idea that any scientist must understand if they are to do science properly, which is to learn not to fool yourself. Feynman is also quoted as saying that science is "the belief in the ignorance of experts" (see here), which is another important and strongly related idea, since experts in particular can be very prone to fooling themselves, particularly when they get together for a common purpose. In brief, although I would recommend you go and read it yourself, what Feynman was trying to say is that to do science properly you should take nobody's word for it, not even your own. If you see a result and think it was caused by one thing, you must then make every effort to rule all other possibilities out before settling on the idea that you know the cause and effect relationship. Only once everything else has been ruled out can you confidently say that you know what the cause was and why the effect was what it was, and even then you must leave open the possibility that there could be something you have missed. Otherwise you run the very real risk of falling to what is known as confirmation bias, which is to only seek out things that confirm your preconceptions, rather than what you should do which is to actively seek out anything that might go against your current best guess. Only by doing the latter, and then being unable to come up with anything that could otherwise explain your results, can you stand any chance of narrowing down what it is you are after, which is of course the truth. And if you don't think there is such a thing as objective truth, then science (or indeed the real world) is not for you. Try religion instead.

The philosopher Karl Popper considered that the way in which science must work was that any scientific theory must be falsifiable for it to be a theory at all (see here for more), otherwise it was just useless. The theory of gravity is a valid theory not just because all everyday observations support it but more importantly because it could be disproved by, for example, something falling (or not falling) contrary to what the theory predicted. The theory of evolution, which has great explanation power for how life forms change over time, could also be disproved, for example by the existence of rabbits in the precambrian. Other ideas, however, cannot be properly classified as scientific theories if there is no way they could be disproved, or are so vague as to be able to cover every eventuality, especially if they do so retrospectively (astrology, for example). Such theories are useless, largely because they have no predictive power and explain nothing. Another philosopher Bertrand Russell came up with the idea of a celestial teapot as an example of a theory that could not be disproved because no matter where you looked it could always be said that you hadn't yet found it. The burden of proof for any such non-falsifiable theories must therefore fall on those who make such claims, and not on those who consider them to be false.

In what I think of as effectively an update on Feynman's cargo cult speech, Matt Ridley (author of the excellent book The Rational Optimist) recently presented a lecture on 'scientific heresies' at the RSA in Edinburgh. This lecture has been reproduced here and here (with pictures), and has been noted on Richard Dawkins' website here (although Dawkins does not necessarily agree with Ridley's conclusions). It is also available, with images, in the form of a pdf here. I cannot underestimate, or overemphasise, how important it is for anyone who thinks they know how science works to read this. If there is only one thing you read about the subject in question (and after reading it I doubt that this will remain the case), then this should be it. Once you have read it in full, please feel free to come back and tell me why, and how, he is wrong.

Protecting Kids The World Over, while chipping away at the Section 1(2) exclusions

noreply@blogger.com (Tufty the Cat) — Tue, 01 Nov 2011 18:10:00 +0000

Not so long ago, I wrote about a recent decision from the Patents County Court, Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), in which HHJ Birss considered that the exclusion under section 1(2) relating to methods for performing mental acts should be viewed narrowly rather than broadly, as the UK-IPO had been doing. This was all very helpful for applicants faced with such problems at the IPO with their applications, but I was then concerned about what would happen as a result. Would the IPO simply switch to using the exclusion of programs for computers as a backstop? It turns out that my pessimism was not necessarily fully justified, as another decision has now arrived that follows Halliburton and deals with exactly this issue.

The applicant, strangely named Protecting Kids The World Over Limited (or PKTWO for short), appealed against a decision of a UK-IPO hearing officer (BL O/439/10) refusing their application (GB 0723964.3, published as WO 2006/094335 A1) relating to a system for monitoring electronic communications. The hearing officer had found the claimed invention to be excluded from patentability because it related to a computer program and to a method for performing a mental act as such.

The application claimed a system for monitoring electronic communications, in which packets of data were analysed for expressions matching with a stored hash table of expressions (right: a small sample of an XML arrangement of some of the less offensive expressions, as taken from the published application). An alert score was assigned according to matching expressions, and a raised aggregate alert level triggered a notification to an administrator. A response from the administrator could result in one of a number of actions, including terminating the communication and shutting down the user equipment.

The hearing officer had considered, following the four-step test from Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371, that the invention did not make a technical contribution because there was no increase in the speed or reliability of the computer that was independent of the program running or the data being processed, and that the invention did not operate at the architecture level of the computer but at the application level.

Prior to the appeal hearing, the UK-IPO indicated that the mental act exclusion was no longer being relied on, in light of the recent decision in Re Halliburton. The objection relating to the application being excluded for being a computer program was, however, maintained.

Floyd J, following the judgment of HHJ Birss in Halliburton, considered whether generation and transmission of an alert notification was a relevant technical process for being assessed as part of the contribution of the invention. The IPO argued that it was not, while the appellant argued that it was, particularly when considering the claimed invention as a whole. Referring to Gemstar-TV Guide International Inc. v Virgin Media Ltd [2009] EWHC 3068 (Ch), in two out of the three patents considered in that case the contribution related to information being simply displayed on a screen, which was judged to be not technical. In the present case, however, in which an alarm alerted a user at a remote terminal to the fact that inappropriate content was being processed within the computer, the contribution was considered by Floyd J to be qualitatively different (paragraph 34). The contribution did not simply produce a different display, nor did it rely on the output of the computer and its effect on the user. The effect of the invention, when considered as a whole, was judged to be an improved monitoring of the content of electronic communications, which was said to be technically superior to the known prior art. The contribution had the necessary characteristics of a technical contribution outside the computer itself, and was therefore not excluded for being a computer program as such. The appeal was allowed, and the application remitted to the IPO.

The decision appears to be another blow to the IPO's way of considering excluded matter, which they have been insisting follows the reasoning of the string of Court of Appeal cases of Aerotel, Symbian et al. It is certainly going to provide some useful ammunition for applicants and their attorneys in trying to get over objections from examiners where the same old familiar material is wheeled out. As Floyd J states, however, in following Symbian "Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned" (paragraph 12). There is consequently still plenty of wriggle room for IPO examiners to continue arguing their case. I would not be surprised if the IPO left their practice notice on computer programs largely unchanged as a result.

Halliburton: construing mental acts

noreply@blogger.com (Tufty the Cat) — Mon, 24 Oct 2011 20:01:00 +0000

If an invention is claimed as a series of method steps, does it make any difference in what form the claim is presented as far as patentability is concerned? If so, is the question about form over substance or is it more complicated than that? The answer, according to the judgment of HHJ Birss QC in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), appears to be the latter.

The case relates to an appeal from the IPO, the facts of which were outlined in my post from earlier this year here. In brief, three of Halliburton's UK patent applications relating to methods for designing drill bits using computer modelling were refused at the IPO, all on the grounds of the assessed contribution being a mental act (section 1(2)). A fourth application was refused for the same reasons in a separate later decision. All four applications were combined in the appeal. In the appeal, as with the IPO decision, one representative application was chosen because the others, defining very similar inventions, would stand or fall on the same grounds.

To summarise a fairly long and complicated decision, the judgment in the end came down to whether a method claim, which did not result in anything physical and, although not specified in the claims, would inevitably need to be implemented on a computer, should be considered to be excluded for being a mental act. According to the Court of Appeal in Fujitsu, it might. According to Jabob LJ's (arguably obiter) comments in Aerotel/Macrossan, however, it might not. The hearing officer at the IPO had considered that the broader view of Fujitsu should be taken, and effectively ignored Jacob LJ's doubts in Aerotel about the width of the mental act exclusion.

HHJ Birss, placed in the difficult position of being bound by both precedents from the Court of Appeal as well as having represented the IPO in Aerotel, managed to steer a careful path through the precedents towards the goal of correcting what was a clear discrepancy between UK-IPO and EPO practice (see here for more details; this particular rift between the IPO and the EPO has been in place for the past few years). He firstly dealt with the question of whether it would be inevitable that the claimed method would be performed on a computer, even though this was not explicitly claimed. At paragraphs 21-23,

"In my judgment the skilled reader would understand perfectly well that the simulations referred to in claim 1 are computer simulations from reading the specification as a whole. I also note that the simulations being "computer simulations" is expressly referred to from p21 line 30 - p24 line 23 in the specification. Moreover the reader would understand that "outputting" to a "resource" is something computers do, not people. Accordingly I find that claim 1 (and its brethren) are limited to carrying out the simulations on a computer. They are computer implemented methods."

That disposed of the argument relating to whether the scope of a claim could realistically cover an actual mental act, i.e. a calculation carried out by a person, if the processes involved were ones that humans simply would or could not do.

The judge also tackled the question of whether the contribution to the art was technical in nature (steps 3 and 4 of the Aerotel test). After considering Symbian, he considered that the question to be considered was "what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such" (paragraph 32). A task that fell within excluded matter, such as a business method (a securities trading system, for example, as in Merrill Lynch) would be not patentable because the result itself is a "prohibited item" (paragraph 33). However, when the task represented "something specific and external to the computer" (paragraph 38), the circumstance is likely to indicate that the invention is patentable.

In conclusion HHJ Birss decided that the balance of the case law was in favour of a narrow scope for the mental act exclusion, referring with apparent approval the EPO decision of Infineon (T 1227/05) that established the latest IPO/EPO rift, arguing that the reasoning was the same as that in Kapur. This was enough to overturn the hearing officer's decision to refuse the applications, finding it to be ill-founded.

The judge did, however, then go on to establish whether the claimed inventions would in fact pass the Aerotel test. The contribution did not fall within excluded matter for being a mental act, but would it be excluded instead for being a computer program? HHJ Birss thought not, and disposed of the matter quite briefly:

" Is it more than a computer program as such? The answer is plainly yes. It is a method of designing a drill bit. Such methods are not excluded from patentability by Art 52/s1(2) and the contribution does not fall solely within the excluded territory. Drill bit design is not a business method, nor a scheme for playing a game nor (as I have held) is this claim a scheme for performing a mental act." (paragraph 71)

This very short passage is, in my opinion, the key feature of the judgment. Although the bulk of the judgment relates to whether the mental act exclusion would apply, this would all be completely irrelevant if an examiner could then change tack and state that the method was in any case excluded for being a computer program as such. I would therefore have liked to have seen more on this aspect. As it is, at least for Halliburton, it seems that their applications will be rescued from being refused and will most likely all now be granted once they have been past the examiner again. I wonder, however, whether this will also apply to other applications that have been facing similar difficulties. I have my suspicions that the IPO will indeed change tack and, given the lack of clear indications from this case, decide to refuse such applications on the computer program exclusion instead. This suspicion is, I believe, confirmed by the way the IPO have now indicated that they will change practice in light of this decision. In a new practice notice, the IPO state:

"Following the decision of HHJ Birss QC in Halliburton's Applications [2011] EWHC 2508 (Pat) examiners will now take a narrow view of the mental act exclusion. In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act."

There is no indication in the notice that IPO practice in relation to the computer program exclusion will be changing. Indeed, the new notice states that it replaces the guidance given to patent examiners only in paragraph 8 of a previous notice relating to patentability of computer programs. As a result, I strongly suspect that, except for applications specifically relating to drill bit designs, life will continue to be difficult at the IPO for computer implemented inventions that do not output a physical result. But then, maybe I am just overly cynical. We shall see.

Changes to the UK Patents Rules

noreply@blogger.com (Tufty the Cat) — Sat, 01 Oct 2011 09:43:00 +0000

As from today (1 October 2011), the Patents Rules 2007 are amended by The Patents (Amendments) Rules 2011 to correct a drafting mistake. Time periods in the Rules that were defined as "beginning with" a particular date are now to be defined as "beginning immediately after" that date. These changes have been made apparently in light of Rigcool v Optima Solutions, which concerned the correct way to calculate the two year period for initiating entitlement proceedings under Section 37(5) (although this period is not being being altered by these changes). The resulting anomaly in how the Rules were interpreted was noted in my post on the subject here.

The changes, which are numerous, have already been made in the (unofficial) version of the Rules available on the ukpatents wiki. One small point to note is that these changes are not a straightforward find-and-replace job, as there are some places where the old wording is maintained, such as in Rule 18(1) where both the start and end of the relevant period (ironically relating to missing parts) are defined.

The IPO Welsh Language Scheme: Yn llwyddiant?

noreply@blogger.com (Tufty the Cat) — Tue, 30 Aug 2011 12:43:00 +0000

Since 17 December 2007 it has been possible to file and prosecute a UK patent application in Welsh as well as English. This was a result of the changes to the Patents Rules that came into force on that day, the main change allowing this being newly worded Rule 14, which reads:

(1) The contents of all documents (including annotations to drawings) contained in an application for a patent must be in English or Welsh.

This is in contrast to the old Rule 20 of the 1995 Rules, which stated:

(1) All documents (including drawings) making up an application for a patent or replacing such documents shall be in the English language.

Other changes were also made in Rules 113, 25, 12, 17, 65 and 9 of the 2007 Rules.

The IPKat wondered at the time what the point of this change was, given that it didn't seem to be mandated by anything in particular, and the possibility of there being a demand for applications being prosecuted in Welsh seemed to be quite small (see here for more information). He even went as far as to make a request under the Freedom of Information Act to find out how many applications had in fact been filed in the first year the scheme was up and running. The results in January 2009 were not promising: not one application had been filed in Welsh.

It has now been nearly four years since the scheme came in, so I thought I would get an updated answer on how many applications have been filed. An updated FOI request was made via the email address given on this page of the IPO's website. Within a matter of a few days I received the following very helpful reply:

Thank you for your request dated 24 August 2011 asking about Welsh language patent applications.

This is not information that we would record centrally within the Intellectual Property Office, but having checked with all the work sections of the IPO that process patent applications at an early stage, I can report that none have any record of handling one filed in Welsh.

If we did get one it would certainly be noticed and remembered as requiring translating or processing by a Welsh speaker.

So, can someone remind me again what the point of it all was?

Changes to the Patents Rules 2007

noreply@blogger.com (Tufty the Cat) — Thu, 25 Aug 2011 16:38:00 +0000

As has been already mentioned by me to the IPKat here, it has been brought to my attention (thanks to this anonymous comment) that the UK-IPO has arranged to have some changes made to the Patents Rules 2007, as a result of what what can only be fairly described as a bit of a cock-up in legal drafting. The 2007 Rules were prepared in the form of a complete re-write of the old 1995 Rules, which were considered by the IPO to be too complicated and over-amended. This caused the IPKat some consternation at the time, as it involved learning a whole new set of rule numbers and new terms to replace the ones that he had only recently memorised and been examined on. However, they gradually started to become accepted and are now part of the regular IP furniture.

One thing that wasn't objected to at the time, which now seems a bit surprising, is that there were many instances of the term "beginning with" to define time periods, where different wording had been used in the 1995 Rules. We have recently been reminded, in the recent decision in Rigcool v Optima Solutions (commented on by me here), that when this wording is applied to a period in years or months, the last day of the period must be considered to be the day before the anniversary date. The UK-IPO have, however, been operating all this time on the assumption that all such dates in the Rules expired on the anniversary day instead, and have been advising applicants and their representatives accordingly. The IPO have therefore been implementing their own Rules incorrectly for nearly four years.

As a result of this, the IPO this week issued a new Practice Notice, in which a new Statutory Instrument is mentioned. The Patents (Amendments) Rules 2011, SI 2011 No. 2052 will have the effect, when it comes into force on 1 October 2011, of changing all instances of the phrase "beginning with" to "beginning immediately after". This applies to the following parts of the 2007 Rules:

Rule 5(2) (International Exhibitions)
Rule 8(5) (Filing of priority documents to support a declaration under section 5(2))
Rule 10(3) (Mention of the inventor)
Rule 12(3) (Applications for the grant of patents under sections 14 and 15)
Rule 12(9) (Applications for the grant of patents under sections 14 and 15)
Rule 18(2) (Missing Parts)
Rule 18(7)(a) (Missing Parts)
Rule 18(7)(b) (Missing Parts)
Rule 19(3)(a) (New applications filed as mentioned in section 15(9))
Rule 20(3)(a) (New applications under sections 8(3), 12(6) and 37(4))
Rule 20(3)(b) (New applications under sections 8(3), 12(6) and 37(4))
Rule 21(1)(a)(i) (Extensions for new applications)
Rule 21(1)(b)(i) (Extensions for new applications)
Rule 22(3) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(a)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(a) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 24(2) (Correcting a declaration made for the purposes of section 5(2))
Rule 26(1) (Publication of application)
Rule 28(2) (Request for substantive examination under section 18)
Rule 28(5)(a) (Request for substantive examination under section 18)
Rule 28(7) (Request for substantive examination under section 18)
Rule 30(2)(a) (Period for putting application in order)
Rule 30(2)(b) (Period for putting application in order)
Rule 30(3)(a)(ii) (Period for putting application in order)
Rule 30(4) (Period for putting application in order)
Rule 31(4)(a) (Amendment of application before grant)
Rule 32(2)(a) (Reinstatement of applications under section 20A)
Rule 32(2)(b) (Reinstatement of applications under section 20A)
Rule 32(8) (Reinstatement of applications under section 20A)
Rule 37(3)(a) (Renewal of patents: first renewal)
Rule 37(4)(a)(i) (Renewal of patents: first renewal)
Rule 40(7) (Restoration of lapsed patents under section 28)
Rule 43(4) (Application for, and cancellation of, an entry that licences are available as of right)
Rule 51(2)(b) (Restrictions on inspection of documents)
Rule 52(4) (Request for information where section 118(4) applies)
Rule 53(3)(a) (Confidential documents)
Rule 57(6) (Corrected translations)
Rule 58(3) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 58(4) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 59(1) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 59(3) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 60 (Request for substantive examination following a direction under section 81)
Rule 66(1) (Beginning of national phase)
Rule 66(2) (Beginning of national phase)
Rule 66(3) (Beginning of national phase)
Rule 67(2) (International exhibitions)
Rule 68(2)(b) (Altered prescribed periods)
Rule 68(3)(b) (Altered prescribed periods)
Rule 68(4)(a) (Altered prescribed periods)
Rule 68(4)(b) (Altered prescribed periods)
Rule 71(4) (Directions under section 89(3) and (5))
Rule 76(2)(a) (Starting proceedings)
Rule 76(2)(b) (Starting proceedings)
Rule 77(8) (Notification of the parties)
Rule 90(1) (Licences following entitlement proceedings)
Rule 90(2) (Licences following entitlement proceedings)
Rule 91(2)(b)(ii) (Period prescribed for applications by employee for compensation)
Rule 96(7) (Submission of observations and observations in reply)
Rule 98(1) (Review of opinion)
Rule 99(4)(a) (Procedure on review)
Rule 99(4)(b) (Procedure on review)
Rule 104(2) (Failure to furnish an address for service)
Rule 108(2)(c) (Extension of time limits)
Rule 113(6) (Translations)
Rule 116(2)(b) (Supplementary protection certificates)
Schedule 1, paragraph 3(3)(a)(i) (The first and second requirements)
Schedule 1, paragraph 3(3)(a)(ii) (The first and second requirements)
Schedule 1, paragraph 3(3)(c) (The first and second requirements)
Schedule 1, paragraph 6(5)(b) (Restriction of availability of biological material to experts)
Schedule 1, paragraph 7(4) (Request for a sample to be made available to expert)
Schedule 5, paragraph 7(6) (Patent applications filed before 7th January 1991)

The effect of all this will be (assuming of course the IPO have got it right this time) that all the relevant periods will now expire on the same day of the month on which the periods start. Until 1 October, the IPO will, where relevant, be using the get-out clause of Rule 107(3) to extend any period to what they thought it would have been had the Rules been drafted correctly in the first place. Periods as set out in the Act, however, will not be altered, and must presumably be interpreted accordingly.

As I mentioned in my earlier post, something seemed to be wrong. It now seems that this has been recognised and something has been done to fix it, even if it is all a bit of a fudge.

Virgin v Premium - yet another chapter

noreply@blogger.com (Tufty the Cat) — Fri, 12 Aug 2011 16:58:00 +0000

The dispute between Virgin Atlantic Airways and Premium Aircraft Interiors has been rattling along for a while now, and has been keeping various patent attorneys, solicitors, barristers and bloggers quite busy. Other chapters of the story involve decisions from the High Court and the Court of Appeal (a good starting point if you are interested in finding out more is this IPKat post), as well as proceedings before the EPO. Even the Supreme Court will apparently be having a go at the matter, having granted Premium leave to appeal earlier this year.

The story relates to European patent EP1495908 concerning an aircraft seating system (right). The patent was granted in 2007 to Virgin and designated the UK, along with various other European countries. The patent was opposed by Cathay Pacific, Airbus and Premium. The patent survived the opposition and subsequent appeal proceedings, although in an amended form. A decision to maintain the patent as amended was issued yesterday following the decision by the appeal board in T 1259/09, and a B2 publication is due to appear soon.

One argument raised by the opponents during the EPO proceedings was that the European patent should not have been granted with a GB designation, because the request for grant included the following statement (click for a larger version):

The examining division had nevertheless allowed the application to proceed to grant with the GB designation intact. Both the opposition division and the appeal board concluded that there was nothing they could do, since the ability to correct any such errors was only in the remit of the examining division, and since Premium was not a party to the proceedings before the examining division and not entitled to appeal. The GB designation therefore stood. There was nothing further the opponents could do, so the only options left for them was to fight the patent in each country, which at least Premium continues to do.

Premium have now had another go at trying to get the GB designation removed, this time through the unusual step of applying for a correction under Rule 50 of the UK Patents Rules 2007. A decision relating to this request, which resulted in a hearing at the IPO, has now been issued: BL O/281/11. Premium argued that, since the UK was expressly excluded as a designated state by the applicant, no European patent (UK) ever existed and therefore the UK register should be corrected to reflect this. According to Premium, nothing that Virgin or the EPO did subsequently could change the fact that there had never been a GB designation, and any suggestion that there was an EP(UK) was an error that should be corrected insofar as it appeared on the UK register. They put forward the case of Arrow v Merck [2007] EWHC 1900 (Pat) in support of their argument, as this related to a correction being made to remove a GB designation following grant by the EPO. However, as the hearing officer noted, in that case the EPO had realised there had been a mistake and issued a corrigendum afterwards.

The hearing office pointed out that the difference in this case was that the EPO had not considered there was anything it could or would do, even if it considered that there had been a mistake. For the comptroller to come to a conclusion that any error had been made that could then be corrected, it would be necessary to look afresh at the facts considered previously by the EPO examining division and effectively come to a view on the validity of what had been done. This would, the hearing officer considered, amount to a review of a determination by the EPO which, particularly in the context of an ex parte request for correction of the register, was not open to him. In contrast to the provisions governing revocation on patentability grounds, the comptroller had been given no power to review decisions made by the EPO, and the hearing officer could not see how he could have any sort of power to do so under the UK Act and Rules. Because there was no basis on which a correction could be made, the request was refused.

Getting an Examination Fee Refund - Nullius in Verba*

noreply@blogger.com (Tufty the Cat) — Thu, 11 Aug 2011 16:41:00 +0000

According to Article 94(1) EPC, a request for examination has to be accompanied by an examination fee for the request to be deemed filed. The fee, according to RFees A2.6, is currently set at 1480 Euros, or 1645 Euros for the case of an international application where no supplementary search is drawn up by the EPO. In either case this is, to many people, a not inconsiderable amount of money.

Since examination at the EPO is considered to be separate from search (even though they are nowadays increasingly merging together), RFees Article 11 allows for the situation where a refund of the examination can be made if the application is withdrawn, refused or deemed withdrawn before examination begins. A full refund can be made if this happens before the Examining Division (ED) assumes responsibility, while a 75% refund is made if the ED have assumed responsibility but substantive examination has not begun.

According to Rule 10(2) EPC, the ED becomes responsible from the time when a request for examination has been filed. There are therefore not many cases where a full refund would be made, although there may be many more where a partial refund could be made, for example once a search has been done and there is clearly little chance of getting anything worthwhile granted. If the refund is more important to the applicant than the application itself (in which case there is very little point continuing anyway, but that is a different story), a letter could be sent to the EPO withdrawing the application but only on condition that a refund of the examination fee is possible. This does, however, beg the question of whether the applicant should take the ED's word for it if they state that examination has begun but the examiner has not quite finished preparing the examination report, and therefore no refund will be made.

For most applicants, the easiest and cheapest approach when trying to get a refund would simply to be to take what comes, as any fight is bound to be more expensive than the potential refund. For some, however, it may be a matter of principle. This appears to be the case for Medtronic Vascular, Inc., who found the ED's statement that examination had begun unconvincing when asking for, and being refused, a refund. After requesting and receiving a decision on the matter, in which the refund was still refused, the ED's decision was appealed. A decision of the legal board of appeal in case J 25/10 has now issued, in which the board comprehensively castigates the ED for not behaving properly. The decision is due to appear in the Official Journal of the EPO.

The board noted that there was "no indication whatsoever in the file showing, by reference to objective criteria, that the Examining Division had performed a concrete act of any kind which could be regarded as a start of substantive examination in the regional phase after the request for examination had been filed" (reasons point 6). The main points in the board's decision are in the following paragraphs:

10. The only point on which the refusal for the partial refund was then based was "that the primary examiner confirmed that he started already with substantive examination"(point 3 of the Reasons). This is no more than an unsubstantiated assertion. Article 11(b) RFees establishes clear conditions which must be fulfilled in order for a partial refund of the examination fee to be made. Whether these conditions have been fulfilled in any particular case is a question of fact. If the request is to be refused on the basis that these conditions have not been met, the Examining Division must give reasons why the conditions are not met, having established what the facts are. It is not sufficient simply to assert that a condition of a provision is not met without reference to underlying facts which objectively demonstrate that this is so. To do so would amount to an arbitrary decision which is not verifiable and goes against all legal certainty. In G 3/08 (OJ EPO 2011, 10) the Enlarged Board of Appeal said that "the predictability and verifiability of all state action are indispensable elements of a democratic legal order", these being amongst the principles which the EPO must support (point 7.2.1 of the Reasons). The Board further said: "Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness" (point 7.2.3. of the Reasons). A mere assertion that a condition laid down in a legal provision is not met, without sufficient substantiation by reference to the underlying facts, violates these principles.

11. As the appellant points out, without factual information relevant to the criteria of when substantive examination began, the date of this event cannot be objectively determined. In the present case this resulted in the determination appearing to be at the discretion of the Examining Division. The appellant points out that the Examining Division had been asked for the exact date of the start of substantive examination and the criteria applied to its assessment. However, no such information was provided. Without such information, the appellant could not determine the correctness of the decision. The Board would add that without such information it also cannot determine whether the decision that substantive examination had begun was correct or not. The decision was therefore neither predictable nor verifiable, contrary to the principles set out in G 3/08 loc. cit., above.

12. It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based.

13. In conclusion, it cannot be accepted as established in this case that substantive examination had already begun when the application was withdrawn.

As a result, the applicant had the decision to refuse the refund set aside, and had their appeal fee and 75% of their examination fee refunded.

I admire the tenacity of the applicant in this case, in what appears to be an appeal based on the principle of fair play, in that if the ED is to make any kind of decision that affects an applicant it must be reasoned and objectively supported. This is a theme that has been playing out in other recent decisions relating to reasons for refusing applications and other requests (other examples being T 1442/09 and T 933/10), where appeal boards have also found in favour of applicants where they have found divisions of the EPO not substantiating their reasons properly. This can only be a good thing. If applicants and their representatives are expected to follow the increasingly rigidly defined rules of the EPC, then surely the EPO divisions should themselves do the same.

*Roughly translated as "Take nobody's word for it", being the motto of the Royal Society (although they don't really follow it any more).

Free beer and covert viewing

noreply@blogger.com (Tufty the Cat) — Wed, 10 Aug 2011 16:02:00 +0000

When an invention is defined in a claim in terms of a result to be achieved, it is often termed a 'free beer' claim, in the sense that the invention would be a good thing but the claim does not define how it is actually achieved. When the patent specification as a whole does describe at least one way of achieving the result, the problem is one of a lack of clarity, rather than sufficiency, and can be resolved by amending the claims so that they define something the applicant has contributed to the art rather than a mere wish list of features. At the European patent office, any free beer is typically objected to (even during Oktoberfest), and examiners will tend to require more technical features to be imported. At the UK patent office, however, at least small amounts of free beer are more typically allowable, usually as part of a functional statement at the end of a claim, although in some cases more extensive functional language can be allowed. Too much, however, and a UK examiner will object on grounds of lack of clarity. This was the case for application GB0904563.4 (previously published as WO 2008/035107), which has led to to the recent decision BL O/243/11, the applicant being The Secretary of State for Defence. Claim 1 of the application as-published read as follows:

1. A lens arrangement, suitable for looking through pinholes comprising a converging eyepiece type lens apparatus used without a conventional objective lens and arranged such that the lens arrangement projects a "virtual" aperture to a point in object space beyond a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, such that the virtual aperture limits the pencil of rays passing into the lens arrangement, wherein the lens arrangement contains no integral physical lens stop.

There are a number of obvious problems with this claim, one of which is clarity. Following rounds of correspondence with the examiner, the claim was amended to read:

1. A lens arrangement, adapted for looking through a remote pinhole comprising a plurality of lens elements designed and configured to operate without the presence of an integral physical lens stop, such that in use the lens arrangement defines a “virtual aperture” in a pre-determined plane in object space remote from a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, wherein the virtual aperture acts as a remote entrance pupil in object space beyond the first end of the lens arrangement and defines a pencil of rays that passes through the lens arrangement.

The examiner considered that, even after amendment, there was too much free beer in the claims. He maintained objections that the claimed invention was unclear and was not supported by the description because the claims defined the invention in terms of the result to be achieved (i.e. a stopless lens) rather than the technical features of the lens arrangement that achieved the result, and the embodiments described did not support such a broad claim. The applicant did not manage to overcome the objections, and the matter went before a hearing officer at the IPO.

Before the hearing officer the applicant argued that, following the decision in No-Fume v Frank Pitchford & Co. Ltd. 52 RPC 231, there were many ways the invention could be implemented and the claims should not need to be limited to only one set of specific parameters. According to the applicant, conventional thinking was that a physical lens stop would be required. The lens arrangement of the invention made this redundant through the creation of a virtual aperture in the object space of the arrangement. The hearing officer accepted that the meaning of the term "virtual aperture" was sufficiently clear, but then went on to point out that the application outlined the features of the invention as being equivalent to using a conventional converging telescope eyepiece in reverse (as for example in the above figure).

As a result, the apparatus claims did not define the invention sufficiently to avoid reading directly on to an already known telescope eyepiece. The fact that the claims indicated that the lens arrangement was adapted for looking through a remote pinhole only specified how the lens arrangement could be used in practice, but did not distinguish the arrangement over a conventional telescope eyepiece. Specifying that the arrangement was designed and configured to provide the desired effect would, following Kirin-Amgen, only be allowable if the product itself was novel and inventive. The claimed invention did not therefore meet the requirements of section 14(5)(a) and (b) in that it did not define the invention and was not clear.

Although the claims in the form discussed were not allowable, the hearing officer allowed the applicant another opportunity to submit further amendments by extending the compliance period. As of today, it looks (thanks to the IPO's Ipsum file inspection service) like the application is still not quite finished.

As far as I can see, the lesson to be learned is to be careful with relying on functional definitions unless you have plenty of backup definitions that are more grounded in technical features of the invention. It is probably not enough to have a myriad differently defined specific embodiments unless you have some overarching technical definitions to tie at least some of them together because the only option you might end up with could be a single narrow one. It is easy with hindsight to see this being a problem; the clever trick is to spot it in advance.

Rule 126 EPC & deemed delivery

noreply@blogger.com (Tufty the Cat) — Thu, 04 Aug 2011 07:29:00 +0000

As part of my day job in the real world I have been looking into how Rule 126 EPC is interpreted, and in particular what is meant by Rule 126(2), which states:

"Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be."

It would be impolite of me to go into the particular details of why this is of interest, at least while the issue is still alive (an appeal is currently pending). I shall just say that someone has been attempting to put a somewhat unconventional interpretation on Rule 126(2) in an apparent attempt to get themselves out of a hole. Fortunately this someone does not work where I do.

The conventional interpretation of the "ten day rule", as it is usually known, is that the deadline for responding to a communication from the EPO where Rule 126(2) applies (i.e. a due date that is specified as running from notification of the communication) is calculated by first adding 10 days to the date on the communication, then adding the appropriate number of months (bearing in mind Rule 131), then taking into account whether the resulting day is one on which the EPO is not open for business (see Rule 134, together with the EPO's holidays for 2011 here) and finally determining the actual final day on which the act required can be done, whether this is responding to an examination report, decision to refuse or whatever.

So far, so easy. If the rule is followed to the letter, there should be no doubt about what the final due date will be. Some people do, however, still get it wrong (see here for a good example of why it is very important to do the calculations in the right order), the results of which can be catastrophic, or at least expensive and/or embarrassing.

One interesting way of getting it wrong is, as I have discovered, interpreting Rule 126(2) to mean that the notification is only effected when the actual person to whom the communication is addressed sees it. This would normally be the patent attorney representative for the application. Could it possibly be the case that the date from which a due date is calculated is when the representative first sees the communication, for example when he gets back from holiday? This is what was argued in T 743/05, which resulted from a grounds of appeal being filed late, at least according to the conventional way of interpreting Rule 126(2) (corresponding to Rule 78(2) EPC1973). The representative argued that, since the decision to revoke the patent was first seen by him on 24 May 2005, this was the date on which the four month period for filing the grounds of appeal started, even though the decision dated 12 May 2005 had been received by the representative's office on 16 May 2005. The representative argued that the wording in Rule 78(2) "delivered to the addressee" should be interpreted as "delivered to the person to whom the notification is addressed", which was himself. As an auxiliary, however, the representative requested re-establishment of rights under Article 122 (or restitutio in integrum, as it was then called) since, by applying the literal meaning of Rule 78(2) the representative had taken all due care and there was no reason to believe that the provision should be interpreted otherwise.

Unsurprisingly, despite the representative's valiant attempt the board of appeal was having none of it and dismissed the appeal. The main reason behind not taking the "literal meaning" of the rule was that this "would lead to an inextricable situation which would have as a consequence uncertainty for all the users of the European patent system. The answer to the question whether notification has effectively taken place could in that case depend entirely on the honesty, goodwill or organisational skills of the professional representative" (reasons, 1.7). The request for re-establishment also had to be refused because the claimed interpretation, being a mistake of law on the part of the representative, could not be excused given the requirements for becoming a qualified representative (all grandfathers should take note, as it unlikely they would be given any different treatment to those who have taken and passed the EQEs). All due care had not therefore been taken by the representative.

What I wonder now is whether, given exactly the same kind of fact situation, i.e. a letter being received by a representative's office within 10 days but the named representative not actually seeing it until later, it could ever be the case that the due date for responding could be any later than the usual 10 days + x months (+r134 extra days, as required). I think not, and would expect a referral to the enlarged board if a board of appeal was minded to decide otherwise, but would like to see what others might think if they were placed in this situation. Any ideas?

Rigcool v Optima Solutions - some confusion over dates

noreply@blogger.com (Tufty the Cat) — Mon, 13 Jun 2011 12:07:00 +0000

How do you calculate a "period of two years beginning with the date of grant"? Does this period include the anniversary date of the date of grant or not? This was the essence of the recent case of Rigcool Limited v Optima Solutions Limited, which resulted in a pair of decisions issued on 5 May (BL O/149/11) and 1 June 2011 (BL O/182/11). Following these decisions, the period may well not be what you previously thought it was. This could have rather interesting (if not worrying) consequences for other periods specified in the UK Patents Act and Rules.

Applications were made by Rigcool (which was termed the pursuer because the hearing was held in Scotland by request of both parties) under sections 37 and 72 on 27 August 2010 in relation to a GB patent granted on 27 August 2008 to Optima (the defender). The issue to be decided was whether the applications had been filed out of time, because both sections specify a time limit of "the end of the period of two years beginning with the date of grant".

However, according to section 130(7), both sections were framed to have, as nearly as practicable, the same effects as Article 23.3 of the Community Patent Convention (CPC), which states that legal proceedings "may be instituted only within a period of not more than two years after the date of grant". The defender submitted that the two year period ended on the day before the second anniversary of grant, which would mean the applications were filed out of time. The pursuer did not disagree, but argued that the wording of the CPC should be worked from directly. The hearing officer agreed that, if the CPC were to be followed, the anniversary date would be included.

The pursuer argued that applying the CPC directly was consistent with Bristol Myers Squibb v Baker Norton Pharmaceuticals [1999] RPC 253, in which Jacob J (as he then was) stated that "save in the rare event of a specific contention that a provision of the 1977 Act has a different meaning from a corresponding provision of a Convention, it will be better [...] to work on the basis that the corresponding provisions of the Conventions are of direct effect" (paragraph 4). From this, however, the hearing officer considered that the case was in fact one of those rare events where the UK Act did have a different meaning from a corresponding provision in the CPC. The CPC did not therefore have direct effect.

Reference was also made to the judgment in Yeda Research and Development v Rhone-Poulenc Rorer International Holdings [2007] RPC 9, in which Jacob LJ stated that the court should construe section 37(5) to have the same meaning as the provision in the CPC about bringing entitlement more than 2 years after grant. In that case, however, the hearing officer noted that the argument was not about the precise start and end date of the two year period, and any difference did not appear to have been considered. The hearing officer therefore concluded that, once such a difference had been identified, the court must take a different view of the draftsman's re-writing. The wording of the Act should therefore be followed rather than the CPC in relation to the end date of the two year period. It followed that the pursuer's applications had been filed out of time, resulting in a need for the revocation action to be ruled inadmissible and no order being possible as a result of the entitlement proceedings.

The hearing officer allowed the parties to make further submissions on the question of whether, in this case, rule 107 should apply, i.e. whether the comptroller should extend the period by one day for the purpose of the proceedings. In the subsequent decision the hearing officer then considered whether the conditions for exercising discretion under rule 107 applied. According to the Court of Appeal in M's application [1985] RPC 249, the applicant had to show that the Office was guilty of an error, default or omission, that this had contributed to the failure to meet the time limit, and that the contribution played a significant part in the applicant's failure. The pursuer argued, in light of previous decisions by the Office and the Office's litigation manual and manual of patent practice, and the fact that practice in relation to trade marks had been revised in 2010 in relation to the same issue, that the Office had contributed to a general understanding that the period included the anniversary. The defender argued against the discretion being used, since there had been no error on the part of the Office and, as the manual of patent practice stated (MPP 123.10), the power should not be applied too readily but only in cases where it was warranted and only in accordance with the case law.

The hearing officer considered that the passages cited from the litigation manual and MPP did not support the pursuer's argument as much as they proposed, but neither did they support the defender's view, with the result that the manuals did not clearly point out that the second anniversary date was excluded. The hearing officer accepted that it had not been clearly Office practice to regard the second anniversary date as being outside the two year period. The Office had therefore contributed in part to the failure of the applications being filed out of time. The irregularity could therefore be rectified by extending the period by one day in the particular case. The hearing officer ordered accordingly.

It is fairly clear from this case that the IPO will need to revise their stated practice to indicate clearly that the two year period expires on the day before the anniversary date, so as to prevent this sort of thing happening again. The issue does, however, seem to raise the fundamental question of whether the IPO have got their calculations right for other periods, because the same form of wording is used in several other places in the Act and Rules. Here are a few examples:

Section 2(4): 6 month period for a breach of confidence disclosure;
Rule 30: the compliance period;
Rule 12(3): provide name and address;
Rule 12(9): file a translation into English (or Welsh);
Rule 28(2): request substantive examination;
Rule 32: request reinstatement;

If the IPO is correct in their interpretation of the 2 year period under Section 37(5), does this mean that the same interpretation should apply to all the other periods where the same wording is used? If so, why does the IPO not follow this rule in practice (an example being the date given for requesting examination)? If not, how can the same wording be interpreted differently for different purposes? Alternatively, is the IPO wrong in their calculation of the 2 year period? Either way, something serious seems to be wrong and needs to be sorted out.

Update: Thanks to Filemot for pointing me to the trade marks tribunal practice notice that was referred to in the first of these decisions. This states in part:

"4. The term 'beginning with' requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA [1967] 2 QB 899 and Zoan v Rouamba [2000] 2 All ER 620, at paragraph 24.

5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury's Laws of England that:

"When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month."

6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a."

The inference from this, as applied to all other periods in the Patents Act where the words "period beginning with" are used, is that almost all are interpreted wrongly as a matter of course, in particularly by the UKIPO themselves.

Update 1/7/11: As expected, the Manual of Patent Practice for section 37 has now been updated (see here). New section 37.20.1, in relation to the two year period under s37(5) now states:

"The reference must be made by, at the latest, the day before the second anniversary of the date of grant. This was confirmed by the Hearing Officer in Rigcool Ltd v Optima Solutions UK Ltd BL O/149/11. In this case, the reference was made two years to the day (27 August 2010) from the date of grant (27 August 2008). The Hearing Officer held that the words “the period of two years beginning with the date of the grant” meant that the period included the date of grant, and ended the day before the second anniversary of the date of grant – i.e. 26 August 2010 in this case. This is consistent with the way the Office interprets the words “beginning with” in s.25(1), relating to the term of the patent (see 25.04.1). However, the corresponding Art.23(3) of the CPC [1989] provides that entitlements proceedings may be instituted only “within a period of not more than two years after” the date on which the patent is granted. The Hearing Officer held that the plain meaning of this provision of the CPC is that the period would end on the second anniversary of the date of grant, rather than the day before. He decided that in this case where there was a clearly different meaning of the Act compared with the corresponding provision of the CPC, he was obliged to follow the wording of the Act".

There is, however, no mention of what this means for all the other places where the same wording is used.

Musion v Activ8-3D - tea making and joint tortfeasance

noreply@blogger.com (Tufty the Cat) — Wed, 01 Jun 2011 16:32:00 +0000

Once enmeshed in a patent dispute, it can be very difficult to extract yourself from it, even if the validity of the patent in question is illusory and you only admit to making the tea and doing a bit of light stapling rather than infringing the patent. This is something that all of the parties are in the process of finding out in the case of Musion Systems Ltd v Activ8 -3d Ltd & Ors, an interim decision relating to which was recently handed down by HHJ Birss in the Patents County Court.

The patent in question, GB2427708, related to a variation on a very old trick known as 'Pepper's Ghost', the principle of which dates back to Victorian times. The variation claimed in the patent related to a way of generating an illusion by projecting an image on an inclined and tensioned transparent screen (rather like in the picture shown on the right). The patentee, Musion Systems, alleged that the four defendants, which included their rivals Activ8-3D, along with one of their directors, had been infringing the patent by making and selling systems falling within its scope. All parties had at one point worked together but, through one reason or another, had fallen out with each other. To add to the complications, the defendants had also fallen out with each other and gone their separate ways in producing and selling projection systems.

Two of the defendants (C2R Limited and David Dutton) did not dispute that they had done the acts claimed by the patentee, while the other two (Activ8-3D and Simon Humphreys, one of their directors) denied infringement. Systems argued by Musion to fall within the scope of the patent had been made and installed at various times, but not necessarily by all of the defendants in each case. It was arguable in at least some of the cases whether there had been an "offer for disposal" or the product had been made, in accordance with section 60(1)(a). The issues to be decided, as far as HHJ Birss was concerned, were whether the defendants were working together and whether two of them (Activ8 and Simon Humphreys) were liable for the acts of the third (David Dutton), but not whether the reverse was true.

A large amount of material in the form of witness statements and other evidence was gone through, which I will not go into in detail. One key point was that David Dutton had worked with Activ8, but had then (surreptitiously, as it appears to have turned out) gone off to make and sell products under his own new company, C2R. The question was then whether Activ8, in particular through the actions of their director Simon Humphreys, could be said to be a joint tortfeasor with Mr Dutton through assisting in the installation of any of the products argued by Musion to be infringements. In relation to one particular installation (the 'Trilogix' installation), Mr Dutton had been assisted by Mr Humphreys, who apparently helped with some woodworking, light stapling and tea making. HHJ Birss found that, although the installation was directed by Mr Dutton and invoiced by his company, the acts relating to the relevant Pepper's Ghost systems "were carried out pursuant to a common design between David Dutton, Simon Humphreys and Activ8" (paragraph 97 viii)). The idea that the installation was independent of Activ8 and Mr Humphreys made no sense to HHJ Birss, and he rejected it. As a result, the acts were carried out such that Activ8 and Mr Humphreys would be liable as joint tortfeasors if these acts turned out to be torts (which, of course, depended on the patent being valid, which was left to be decided).

All of this inevitably led to the defendants being unfortunately unable to extricate themselves from the question of whether they could be liable for infringement, leaving them with little option but to attack the patent itself for being invalid, which I gather they will be doing in the near future. Fortunately for them, the patent, which has as yet not been tested, appears to be on ground that is not entirely steady. For those interested in delving further, it is worth noting that a corresponding European application granted last year with narrower claims than the earlier granted GB patent has now been opposed by Activ8. It will be interesting to see what happens once validity comes into play in the UK. Given HHJ Birss' track record, it seems likely that the matter will be disposed of before the EPO get going. I suspect that this is one I will be coming back to after not too long.

Thoughts On The EP Limitation Procedure

noreply@blogger.com (Tufty the Cat) — Sat, 02 Apr 2011 11:06:00 +0000

Since the introduction of EPC 2000 on 13 December 2007, it has been possible for a proprietor to limit the claims of their granted European patent, an option that was previously only available if the patent was opposed. The limitation procedure seems, at least on the face of it, quite straightforward. A request is made by the proprietor (or their representative) under Article 105a. Provided the limitation fee is paid and the request complies with the other requirements of Rules 90-96 EPC, the request will be accepted and a new published patent published as a B3 specification.

A question immediately then comes to mind: how long does it take for a request for limitation to be allowed? Patentees will not do such a thing on a whim, but will have a good reason for needing to amend their patent, probably to overcome a potential flaw due to prior art discovered after the patent was granted. Without limiting the patent, it might be more difficult and more expensive to use the patent against others. In such cases, infringement proceedings may already be in the proprietor's mind. Speed may therefore be of the essence.

To try to get an idea of what the answer might be, I looked at the EPO's publication server, and searched for all B3 specifications published from the end of 2007. There have to date been 110 such publications. Going through the Register entries for each of them, I entered the dates on which the request was made, when it was allowed and when the decision was made to limit the patent, after which the B3 specification would be published.

The results, shown in the chart below, are a little surprising. The average time taken between a request for limitation and the date on which the request is allowed is 202 days, with a standard deviation of 151 days. Taking into account the time taken between allowing the request and the date of the decision to limit the patent, the average time lengthens to 324 days, with a standard deviation of 170 days. A typical case might therefore take a year or so before a decision is made on limitation. This seems quite a long time, given that there is no substantive examination of a limitation request, only that it has to be a limitation of the scope of the patent.

The shortest time taken between request and allowance was for EP 1242105, which took only 33 days to be allowed. This was, however, a request for a very simple limitation to the claims. Perhaps this was why it didn't take very long to assess. Unfortunately, this alone does not seem to give much of a clue as to how to get a request for limitation allowed quickly. The longest time taken between request and allowance was for EP 1177920, which took a remarkable 987 days to be allowed, and 1056 days to be finally decided. This one was also fairly simple, so might just have fallen down the back of a filing cabinet for a couple of years before anything was done. Who knows.

The requests in between these extremes have all sorts of other interesting features, some of which lengthen the procedure due to the proprietor's actions, others due to the EPO being slow. The only conclusion I can reach at this point seems to be that, if you want to get your limitation allowed quickly, make it simple and straightforward to see what the limitation is (preferably by amending the B1 publication itself, so the examiner can see what you have in mind), and follow it up if nothing is heard for over a month. Other than that, it seems to be down to the usual whims of the EPO how long it will take. Don't be surprised if it takes a year or more to get it done.

The spreadsheet used to generate the chart can be accessed via Google Documents here.

Gemstar v Virgin Media - a missed opportunity?

noreply@blogger.com (Tufty the Cat) — Thu, 31 Mar 2011 17:18:00 +0000

Back in January 2008, the IPKat commented on the pending case involving Gemstar and Virgin Media relating to three of Gemstar's European patents. All of the patents related in some way to electronic programme guides (EPGs) for TV set top boxes. The IPKat thought at the time that the issues would be interesting ones to follow, because they might just shed some further light on the exclusions of Section 1(2). However, this has unfortunately not turned out to be the case.

Fortunately for Virgin, and unfortunately for Gemstar, all of the patents were found by Justice Mann in the High Court invalid for lack of novelty or inventive step (see here for the judgment, and here for a brief IPKat comment and a rather longer one from someone involved with the case itself). The issue of whether the 'contribution' following the Aerotel/Macrossan test was 'technical' or not was not the deciding factor, although was thrown in for good measure (see paragraph 33 onwards of the judgment).

This has now been emphatically confirmed by Jacob LJ in the Court of Appeal, in a judgment that issued earlier this week, with the full title of Gemstar- Tvguide International Inc & Ors v Virgin Media Ltd & Anor [2011] EWCA Civ 302. One of the patents, EP0969662, was taken out of play and not disputed further. The others, EP1377049 and EP1613066, had been found by Mann J to be not novel, which Gemstar appealed against. Jacob LJ, in a fairly short judgment that was approved by the other two Lords Justice, then proceeded to agree completely and dismiss the appeal.

For those of us who would like to see some sensible developments in UK patent law, it is unfortunate that the patents turned out to be so lacking in substance, as it would have been nice to see Jacob LJ get to grips again (for perhaps one last time?) with the issue of excluded subject matter, after making what turns out to have been such a hash of it with the earlier judgment in Aerotel, and following the decision of the Enlarged Board in G 3/08. For better or worse, the four-step test lives to fight another day, and we will just have to wait until the right case comes along before it gets demolished in favour of a proper test based on European patent law. Any ideas on what this case will be?