26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

26 April 2018 – Unified Patent Court: implications of UK ratification for the UPC

On April 26, 2018, the United Kingdom has deposited the instruments of ratification of the Agreement relating to the Unified Patent Court (UPCA).

The Preparatory Committee of the UPC has confidently declared that this year has begun well, although there remains more work to do before the provisional application phase can commence – not least the outcome of the complaint against the UPCA pending in the German Federal Constitutional Court which will influence the speed of moving to the final stage of the project. See Committee full communication.

Actually, the announcement from the UK Intellectual Property Office and the statement delivered by the Minister for Intellectual Property, Sam Gyimah MP make clear that such ratification triggers another significant issue of the Brexit negotiations, rather than being a positively decisive event for the UPC. Namely, the UKIPO has pointed out that “the unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU” (see full announcement). The Minister for IP has stated that “now we are well placed to make sure we turn the changes – which will be the central part of our exit – into opportunities. One of those opportunities is to make sure we continue to strengthen and develop the international IP framework” (see full statement).

In this regard, even the controversially optimistic opinion on consequences of Brexit for the UPC, given in September 2016 by Richard Gordon and Tom Pascoe (from Brick Court Chambers), pointed out that the UK would be required to accept the supremacy of EU law in its entirety as regards all patent disputes as fall within the jurisdiction of the UPC, and that this may be politically significant.

In fact, Art. 20 UPCA establishes that the Court shall apply Union law in its entirety and shall respect its primacy (see also Arts. 21 and 24 UPCA).

Even the UPCA will need to be amended as to (only apparently) formal provisions. For instance, Art. 1 UPCA establishes that “the UPC shall be a court common to the Contracting Member States and thus subject to the same obligations under Union law as any national court of the Contracting Member States”, but Art. 2 UPCS establishes that “‘Member State’ means a Member State of the European Union” and “‘Contracting Member State’ means a Member State party to this Agreement”. Another noteworthy amendment is required to Art. 7 UPCA, currently establishing that one section of the UPC will be in London.

Therefore, it appears that a Diplomatic Conference would be needed to introduce the possibility for the UK, after having left the EU, to be party to the UPCA.

Provided that the Court of Justice of the EU will not issue any decision against this possibility.

In the end, the ratification by the UK makes the start of the UPC provisional application phase closer, but it does not render the UK participation to the UPC more certain.

Unless the rising voices against leaving (e.g., see among others: Confederation of British Industry, 1, 2, 3; European Movement; Open Britain) will succeed in reversing Brexit.

Andrea Scilletta

01 April 2018 – Euro-PCT applications – Search Fees for supplementary European search

01 April 2018 - Euro-PCT applications – Search Fees for supplementary European search

According to a decision of the Administrative Council of 13 December 2017, from April 1, 2018, the search fee for the supplementary European search for Euro-PCT applications where the international search report was drawn up by the United States Patent and Trademark Office, the Japanese Patent Office, the Korean Intellectual Property Office, the Chinese Intellectual Property Office, the Federal Service for Intellectual Property (Russian Federation) or the Australian Patent Office is no more reduced. The supplementary European search amounts to € 1.300,00.

See full decision

13 March 2018 – EPO Case Law – case T 0018/18 – Decisions of the EPO must be reasoned: it is not sufficient to only refer to the arguments put forward by a party to the proceedings

13 March 2018 – EPO Case Law – case T 0018/18 – Decisions of the EPO must be reasoned: it is not sufficient to only refer to the arguments put forward by a party to the proceedings

According to Rule 111(2) EPC decisions of the European Patent Office which are open to appeal shall be reasoned. The Board of Appeal pointed out that the purpose of this requirement is to enable the party or parties and, if an appeal is filed, the Board of Appeal to examine whether a decision taken by a department of first instance was justified or not. It is the established case law of the Boards of Appeal that, in order for a decision to be reasoned, it must contain, in logical sequence, those arguments which justify the decision. The conclusion drawn from the facts and evidence must be made clear. Therefore, all the facts, evidence and arguments which are essential to the decision must be discussed in detail.

The appeal concerned an opposition decision stating thatthe opposition division agrees with the analysis of the opponent. Claims 1 and 10 of the main request thus introduce subject-matter which extends beyond the content of the application as filed. Hence, the main request as a whole is not allowable”.

The Board of Appeal disputed such statement, holding that it remained entirely obscure why the opposition division reached these conclusions and, in particular, for what reason the opposition division could not follow the arguments of the appellant-proprietor. A reasoning for its conclusion, in the form of a logical sequence of arguments, taking into account the facts, evidence and arguments essential for reaching it, dealing especially also with those of the party negatively affected by this conclusion, here the appellant-proprietor, have not been given.

Similarly, the opposition decision stated the conclusion of the opposition division with the sentence: “The opposition division could not follow the arguments of the opponent and agreed on the other hand with the arguments put forward by the proprietor”.

Again, the Board of Appeal pointed out that such statement did not constitute adequate reasoning.

Also, the Board held that the failure to provide adequate reasoning in the decision in accordance with Rule 111(2) EPC amounted to a substantial procedural violation.

see full decision

13 March 2018 – EPO Case Law – case T 2328/13 – Selecting which steps are to be executed on different components of a mobile network is not just related to business policy decision

13 March 2018 – EPO Case Law – case T 2328/13 – Selecting which steps are to be executed on different components of a mobile network is not just related to business policy decision

The decision of the Board of Appeal concerns a patent, claim 1 of which recites: a method executed within a base station for registering a wireless terminal with a home agent, comprising:

  • receiving … identifying indicia associated with a subscriber from the wireless terminal when the wireless terminal requests access to a network;
  • providing the identifying indicia to an authentication server;
  • receiving, at said base station, a profile associated with the subscriber, wherein there are a plurality of home agents to which registration information from the wireless terminal could be routed, wherein the plurality of home agents are associated with different mobile virtual network operators, wherein the profile identifies a plurality of home agents that are assigned to a mobile virtual network operator associated with the subscriber in a list, and wherein the profile is received from the authentication server; and
  • routing registration information from said wireless terminal to an identified home agent, wherein routing registration information comprises receiving a registration request at the base station, resolving at the base station which home agent to utilize during registration by selecting one of the identified plurality of home agents in the profile, and transmitting the registration request from the base station to the selected home agent.

The examining division had commented that “the question of whether the network operator accepts to have an entity outside his own network … is a business policy decision as this is not imposed by technical limitations”.

On the contrary, the board held that moving the selection of the home agent to the base station is not just related to a business policy decision, since in a mobile network there will clearly be technical consequences, for example concerned with hand-over from one base station to another which will impact on the various tunneling connections required.

see full decision

1 March 2018 – Validation of European patents in Cambodia (KH) with effect from 1 March 2018

1 March 2018 – Validation of European patents in Cambodia (KH) with effect from 1 March 2018

 

The President of the EPO and the Cambodian Minister of Industry and Handcraft signed an agreement on the validation of European patents in Cambodia.

The validation agreement entered into force on 1 March 2018. From that date it is possible to validate European patent applications and patents in Cambodia, where, after validation, they will confer essentially the same protection as patents granted by the EPO for the now 38 member states of the European Patent Organisation.

 

However, under the Law on Patents currently in force in Cambodia, pharmaceutical products are excluded from patent protection. In fact, Cambodia currently benefits from the WTO waiver allowing Least Developed Countries to avoid granting and enforcing IP rights on pharmaceutical products until 1 January 2033. This waiver will also apply to European patents providing protection for pharmaceutical products for which validation is sought in Cambodia.

In this case, applicants can only benefit under Article 70.8 TRIPS of a so-called “mailbox system” for national patent applications for pharmaceutical products. According to this “mailbox system”, Cambodian legislation authorises the filing of national patent applications for pharmaceutical products, despite the fact that they are excluded from patent protection. These national applications will not be examined as to their patentability until the end of the WTO waiver period. Following that period, protection may be granted for the remainder of the patent term, computed from the filing date of the application.

 

Validation in Cambodia is deemed requested for any European or international application filed on or after 1 March 2018. It is not available for applications filed prior to that date, or for any European patents resulting from such applications.

The validation fee is EUR 180. It must be paid to the EPO within six months of the date on which the European Patent Bulletin mentions the publication of the European search report, or, where applicable, within the period for performing the acts required for an international application’s entry into the European regional phase.

After expiry of the relevant basic time limit, the validation fee can still be validly paid within a two-month grace period, provided that within that period a surcharge of 50% is also paid. If the designation fee has not been paid and further processing is available, the validation fee can still be paid along with the further processing fee concerning the designation fee. If the validation fee is not paid in due time, the request for validation is deemed withdrawn.

A validation fee which has been validly paid is never refunded, including the case where a validation fee has been paid for an application falling within the purview of the exception for pharmaceutical products.

see EPO Communication

5 September 2017 – EPO Case Law – case T 1201/14 – Transfer of right of priority: critical issues, comments and suggestions as to the safest procedure

5 September 2017 – EPO Case Law – case T 1201/14 - Transfer of right of priority: critical issues, comments and suggestions as to the safest procedure

The right of priority is created in a country, where a first application is filed, and can be potentially exploited in one or more other countries, by filing possible subsequent applications claiming priority of the first application.

When the right of priority is to be transferred a number of critical issues arise: when, how and under which law.

In recent case T 1201/14, the board of appeal concerned has issued an interesting decision illustrating the current approach used by the EPO.

The opposed European patent was granted for European patent application D2 that was filed after the publication date of novelty-destroying document A4 (i.e. August 2006).

Application P, from which European patent application D2 claimed priority, was filed on 28 July 2006, before the publication date of document A4. Application P was filed by the inventor. A first transfer of the right of priority from the inventor to Company 1 was validly performed. The appellant-Company 2 was only in a position to enjoy the right of priority from application P if it was the successor in title of Company 1 in respect of P at the filing date of European patent application D2.

Hence, the formal validity of the priority claim of the opposed patent hinged on the question whether the second transfer of the right of priority derived from application P from the then applicant Company 1 to the appellant-Company 2 was validly performed. That is, whether the appellant-Company 2 validly enjoyed the right of priority arising from application P under the EPC.

The board stated that the EPC contains provisions (i.e. Articles 87 to 89 in conjunction with Rules 52 to 54) which form a complete, self-contained code of rules of law on the subject of claiming priority for the purpose of filing a European patent application. The right of priority is defined in almost identical terms in Article 4A(1) of the Paris Convention.

In the board’s view, for a transfer of the right of priority from “any person” to a “successor in title” within the meaning of EPC to be considered valid, the transfer has to have been concluded before the filing date of the later European application claiming that priority. This is because the term “successor in title” in that provision refers to the person who has already filed (“has duly filed”) the first application but not yet the later European patent application (“for the purpose of filing”). The board held that this in turn directly implies that the succession in title must have already taken place when the later European patent application is filed.

Also, the board stated that the “right of priority” derived from a given first application is in itself a substantive property right, which is to be distinguished from the property right to the first application. As such the right of claiming priority from a first application may be transferred independently of the right to the first application up until the filing of the later European application claiming priority from it (at which time it becomes an accessory right to the underlying first application).

Hence, the substantive requirements derivable from the EPC for a valid transfer of the right of priority may be summarised as follows:

The successor in title with respect to the right to claim priority from a first application must prove that it indeed owned,

(i) before the filing of the later European application,

(ii) the right of priority relating to the first application for the purpose of filing the later European application claiming that priority.

The board further stated that, in general, an agreement on the transfer of the right of priority is concluded by means of a contract between the transferor (the original owner of the right of priority) and the transferee (the owner’s successor in title). This requires two corresponding declarations of the contracting parties, whether express or implied, regarding the subject-matter of the transfer. Thus, an implicit transfer of a particular right may be accepted when it is sufficiently clear that the parties formed an agreement and what they agreed.

As the EPC contains neither guidance as to the formal requirements for a valid transfer of the ownership of the right of priority nor conflict-of-laws provisions for that purpose, national law is commonly relied upon by the departments of the EPO entrusted with the procedure. In principle, the following national laws come into question in this context:

(a) the law of the country where the first application was filed (“lex originis”);

(b) the law of the country where the later application was filed (“lex loci protectionis”);

(c) the law of the country which is agreed upon in the relevant contract (“lex loci contractus”);

(d) the law of the country where at least one of the parties to the transfer has its residence (“lex domicilii”).

The board was aware that so far there is no established jurisprudence of the Boards of Appeal as regards the national law generally applicable to the question of the transfer of the right of priority. The formal requirements of different national laws for the transfer of intellectual property rights range from none at all (as e.g. under German law) to strict formal rules (as e.g. under US law).

In conclusion, where the applicants of the first application and the later European application are not identical, it has to be proven that the right of priority derived from the first application and claimed for the later European application was indeed transferred, before the filing date of the later European application, by the applicant of the first application to its successor in title, in accordance with specific formal requirements.

The appellant-Company 2 submitted a number of lines of arguments.

First, the appellant-Company 2 relied on the lex originis, i.e. US law, and submitted exhibit E5 as evidence that the transfer of the right of priority derived from US provisional application P had been concluded after the filing on 27 July 2007 of European patent application D2 but that the parties had defined the effective date of the transfer as 24 July 2007 by way of a so-called nunc pro tunc assignment (i.e. a contract concerning the transfer of a right, which contract is concluded later in time than the contractually stipulated effective date of the transfer).

In the board’s judgment, however, even if a retroactive transfer such as the nunc pro tunc assignment under US law invoked by the appellant-Company 2 was allowable under US law, it would not be acceptable under EPC provisions, because any natural or legal person can only then be considered a “successor in title” for the right of priority within the meaning of EPC provisions if it obtained that right from its previous owner by a transfer agreement concluded before the filing of the later European patent application, as also confirmed by the established jurisprudence of the Boards of Appeal and several decisions of national courts of the EPC Contracting states.

Given that the right of priority confers on its owner a benefit of an exceptional kind, it is of the utmost importance for third parties to have certainty as early as possible so as to be able to determine the patent application’s effective filing date and the relevant prior art, with its crucial effect on patentability. To allow a retroactive assignment of the right of priority would put individual parties in a position to change, at will and for the past, the effective date at which a substantive right arises. This, however, would not be in the public’s interest.

Even if US law somehow allows for a retroactive transfer, the board emphasised that this does not necessarily mean that the same is true for the EPC provisions: a provision of national law which is contrary to the EPC cannot be acknowledged by the EPO.

Also, the appellant-Company 2 submitted a second line of arguments based on an implicit transfer by virtue of a general policy under German law.

The appellant-Company 2 submitted that a general policy had been established between Company 1 and Company 2 and had been followed by both parties. By executing this policy the right of priority for the patent in suit was transferred to the appellant-Company 2. As means of evidence the appellant-Company 2 filed a number of affidavits (the content of which was contested by the respondent) signed by chairmen of Companies 1 and 2, a general counsel and a patent engineer of Company 1 almost five years after the filing date of European patent application D2, as well as a number of exhibits relating to emails and communications sent by Taiwanese and US representatives of Company 1 to employees of the same Company 1 and emails and communications sent by Taiwanese representative of Company 1 and the European representative of the appellant-Company 2 to employees of Companies 1 and 2.

As regards the applicable rules for assessing the evidence adduced, the board concluded the following: the burden of proving a valid transfer of the right of priority lies with the patent proprietor (appellant-Company 2) since it is the one claiming that right. This rule is all the more applicable taking into account that the patent proprietor (appellant-Company 2) alone has access to the relevant evidence when it asserts a concluded transfer of rights. Given that the appellant-Company 2 submitted no other – in particular no contemporaneous documentary – evidence, the board accepted the later-executed affidavits filed as admissible means of evidence. As to the standard of proof to be applied, the board held that the circumstances of the case required a proof “beyond reasonable doubt” (rather than a proof based on “balance of probabilities”). This is because practically all the evidence regarding the general policy lies within the knowledge and power of only one party to these inter-partes proceedings, i.e. the patent proprietor (appellant-Company 2) here, whereas the other party (respondent) was not in a position to present any counter-evidence.

As regards this second line of argument, the appellant-Company 2 relied on the lex loci protectionis, here the law of Germany as one of the Contracting States to the EPC. The board first accepted that German law allows for an implicit transfer of the right of priority, and that thus no transfer in writing is necessary. Yet, even assuming that German law was the applicable national law as regards the formal requirements for the transfer of the right of priority, and that thus no transfer in writing was necessary, the board nonetheless held that the appellant-Company 2 has not proven beyond reasonable doubt that it was the valid successor in title under the EPC.

In fact, the board was not convinced that the general policy covered the transfer of the right of priority for applications, as application P, which were already pending at the date when the general policy entered into force.

Also, the board was not convinced that the filing policy had always been complied with, since it was apparent to the board that it was not necessarily followed by the employees of both Companies 1 and 2 in every case.

Moreover, the board held that it was not clear whether the transfer from Company 1 to the appellant-Company 2 of the right to apply for a patent based on those applications did in fact include the transfer of the right to claim priority from them. Given that the right to apply for a patent based on an application and the right to claim priority from that application are independent and thus separable rights, the mere transfer of a pending application from one party to another does not necessarily mean that the associated right of priority is transferred between those parties too.

In particular, the board found that the mere fact that patent attorneys receive instructions from companies to file patent applications does not automatically demonstrate that the right to claim priority from a first application was already validly transferred between the parties before the filing date of the later application. Similarly, the mere ticking of the box in EPO Filing Form for the purpose of a declaration of priority with respect to application P at the same time as (rather than before) the filing of application D2 does not in itself constitute proof of a valid transfer of the right of priority. Rather, the filing of the declaration of priority in respect of a European patent application is an entirely formal requirement with the aim to duly informing the EPO and the public that priority had been claimed for the purpose of prosecuting the application in terms of search and examination. This, however, may not provide any guarantee regarding the validity of the claimed priority.

Moreover, the appellant-Company 2 submitted a third line of arguments based on a “direct transfer” of the rights associated with a US non-provisional application D1 from the inventor to the appellant-Company 2 on 27 July 2007 under US law, as evidenced by two inventor’s transfer declarations.

The board held that the mere fact that those rights (“entire right, title, and interest”) relating to a subsequently and independently filed application such as D1, which claimed priority from application P, were “directly” transferred to the appellant-Company 2 cannot establish that this necessarily included, for the European patent application D2, the transfer of the right to claim priority from application P.

Finally, the appellant-Company 2 submitted a fourth line of arguments based on an implicit transfer by virtue of a general policy under Taiwanese law.

In particular, the appellant-Company 2 submitted this fourth line of argument, along with related exhibits, for the very first time in its response to the respondent’s letter of reply, i.e. long after filing its statement setting out the grounds of appeal.

The board recalled that the Rules of Procedure of the Boards of Appeal establishes that a board’s discretion in admitting any amendment to a party’s case (including late-filed arguments) “shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”. The board pointed out that, taken as a whole, the Rules of Procedure of the Boards of Appeal make it clear that the parties’ complete case must be submitted at the outset to ensure fair proceedings for all concerned and to enable the board to start working on the case on the basis of both parties’ complete submissions. Hence, the board held that this new line of argument could and should have been presented with the statement setting out the grounds of appeal, given that the applicability of Taiwanese law was already discussed in the opposition proceedings.

As to the substance and prima facie relevance of this fourth line of argument, the appellant-Company 2 relied on the lex domicilii, i.e. Taiwanese law in this case.

The board held that, even if Taiwanese law were to be accepted as the law governing the assessment of the general policy and the formal requirements for a valid transfer of the right of priority, the outcome of such an assessment would not be different from that of the appellant’s second line of argument, as a result of a lack of substantiation regarding the content of the underlying evidence. This is because (a) the general policy failed to cover the transfer of the right of priority for application P or (b) the general policy was not always complied with. Moreover, (c) the general policy did not indicate the transfer of the right of priority for “pending applications” such as application P. As to observation (c), the board held that even assuming that the right of priority and the right to file a later patent application claiming that priority were indeed inseparable rights under Taiwanese law, this could not override the substantive requirement according to which the right of priority relating to a first application can be transferred independently of the right to that first application. Hence, the board found that the fact that a certain patent application (such as application P) has been transferred on the basis of the alleged general policy does not necessarily mean – in the absence of any express or implied indication – that this transfer includes the right of priority derived from that application.

Consequently, the board decided not to admit the fourth line of argument.

In conclusion, the board judged that – irrespective of the issue of the applicable national law with regard to the present transfer of the right of priority – the appellant-Company 2 was not able to sufficiently establish that the right of priority arising from application P was validly transferred to the appellant-Company 2 before the filing of European patent application D2. Thus, the priority claim for European patent application D2 was invalid, and A4 belongs to the prior art thereof causing the related European patent to be revoked due to lack of novelty.

The author of this article deems that the law applicable to the transfer of the right of priority is not the one of the country where priority is then claimed, because the right is constituted by the filing of the first application and must be transferred before being exercised, i.e. before the filing of the subsequent applications claiming the priority of the first application, and the transferor and transferee generally have no relationship with the country where priority will be claimed. In addition, it would be impractical to sign a priority right transfer agreement for each country where the transferee will have the right to exercise the priority right that meets both formal and substantive requirements of each single country concerned.

Given the lack of relationship of the right of priority with a specific territory, it is our view that the law applicable to the validity of a transfer of the right of priority can be identified in the same way as provided for by the EU Regulation Regulation 593/2008 of 17 June 2008 (Rome I) concerning the law applicable to contractual obligations. In other words, the transfer of the right of priority should be governed by the law chosen by the parties or, in the absence of choice, by the law of the country of residence of the applicant for the first application, i.e. the transferor of the right of priority.

However, in view of the lack of certainty about the law applicable to a transfer of the right of priority, some practical guidance is necessary.

The author of this article deems that the safest procedure is to transfer the right of priority through a written agreement expressly mentioning the right of claiming priority of the first application (and possibly the countries for which it is transferred), signed by the transferor(s) and the transferee(s) before the filing date of any subsequent application claiming priority from the first application, and expressly indicating the law applicable to the transfer agreement.

Andrea Scilletta, IP attorney – see Full decision

22 August 2017 – EPO Case Law – case T 1028/14 – Reputation-based method and system for determining a likelihood that a message is undesired: Identification of technical and non-technical features

22 August 2017 – EPO Case Law – case T 1028/14 – Reputation-based method and system for determining a likelihood that a message is undesired: Identification of technical and non-technical features

Claim 1 of application EP07816059.5 reads as follows:
A method of determining a likelihood that a received message is an undesired message, comprising the steps of:
(i) receiving a message at a messaging system;
(ii) forwarding to a reputation engine a pre-selected set of identifiers relating to the origin of the message, the pre-selected set of identifiers including an IP address from which the received message originated, a tuple of a domain at which the received message allegedly originated and the IP address from which the received message originated, and a tuple of a user who allegedly originated the message and the IP address from which the received message originated;
(iii) checking databases at the reputation engine to determine previously determined reputation metrics for the forwarded identifiers and returning any previously determined reputation metrics to the messaging system;
(iv) making a first determination at the messaging system of a likelihood as to whether the received message is undesired using a first set of criteria including the returned reputation metrics; and
(v) marking the message as being either desired or undesired in accordance with the first determination.
The examining division refused the European patent application on the ground of lack of inventive step, considering features (i) to (iv) of claim 1, leaving aside the terms “messaging system”, “reputation engine” and “IP address”, represented non-technical features merely relating to “a scheme for processing data”.
The board did not agree.
The established jurisprudence of the Boards of Appeal considers that a non-technical feature of a claim is a feature relating to non-inventions within the meaning of Article 52(2) EPC (including schemes, rules and methods for performing mental acts or doing business, and programs for computers) and does not contribute to the solution of any technical problem by providing a technical effect, even when interacting with the technical features of the claim; it can thus be ignored for the purposes of assessing inventive step.
According to the application of this case, the problem to be solved by the invention is to provide a reputation-based system and method for determining a likelihood that a message is undesired which permits finer granularity in tracking reputations. Given that the whole application is concerned with telecommunication messages and that undesired messages correspond to spam messages, the board deemed that the underlying problem to be solved is indeed a technical problem and that features (i) to (v) of claim 1 do in fact contribute to the solution of that technical problem, for the following reasons:
By feature (i), an apparently technical unit, i.e. a “messaging system”, receives a message including identifiers such as IP (Internet Protocol) addresses.
Through feature (ii) the messaging system forwards those identifiers to a unit, named “reputation engine”.
By feature (iii), that unit checks its databases to determine some metrics relating to the “reputation” of the identifiers forwarded and sends them to the messaging system.
Through feature (iv), the messaging system calculates the likelihood that the received message is an undesired message (i.e. spam message) based inter alia on the metrics delivered by the reputation engine.
Lastly, by feature (v), the messaging system marks the message as desired or undesired.
Thus, by the use of those features, a more fine-grain assessment of whether or not a spam message has been received may indeed be achieved. Moreover, the method steps according to features (i) to (v) are indeed part of the functional computer system and do not merely relate to a “scheme for processing data” (which is in any event not mentioned in the list of non-inventions in Article 52(2)(a) to (d) EPC).
In conclusion, the board held that all the features (i) to (v) are technical features which consequently are to be considered in full in the assessment of inventive step. Therefore, the question is not whether a notorious networked computer system is able to perform the method steps of features (i) to (v) but whether the skilled person in the field of data processing would come up, without exercising inventive skills, with a solution enabling such a “networked computer system” to perform all those steps.
The board deemed that the examining division provided only an inadequate and flawed assessment of inventive step, citing only document D1 as evidence of the notoriety of a “generic networked computer system”. Therefore, the board did not consider itself in a position to assess the correctness of the examining division’s assessment of novelty and inventive step, or to pass final judgment on that issue for the very first time in the appeal proceedings. Accordingly, the board deemed that it could not accede to the appellant’s request for allowing the claims at this stage and decided to remit the case to the examination division for further prosecution, having regard to the pertinent prior art – whether cited in the application as originally filed or in the examination proceedings or to be identified following an additional search.
Finally, the board decided that the decision to remit the case to the department of first instance did not adversely affect the appellant, and could therefore be taken without having to appoint oral proceedings before the board. – Full decision

22 August 2017 – EPO Case Law – case T 671/12 – Announcement of non-appearance at scheduled oral proceedings: board’s discretion to maintain the oral proceedings or not

22 August 2017 – EPO Case Law – case T 671/12 – Announcement of non-appearance at scheduled oral proceedings: board's discretion to maintain the oral proceedings or not

After having received a negative preliminary opinion from the board, the appellant patentee announced that it would have not attended oral proceedings and requested that the proceedings take place in its absence.

According to established case law, if oral proceedings are appointed as a result of a party’s request for such proceedings on an auxiliary basis, and if that party subsequently states that it will not be represented at the oral proceedings, such a statement should normally be treated as equivalent to a withdrawal of the request for oral proceedings.

The appellant patentee’s request for oral proceedings in the present appeal was unconditional. This difference, however, does not matter because the essence of established case law is that there is no point in holding oral proceedings if a party aware of the board’s negative opinion informs the board that it will not attend oral proceedings and will not present additional arguments – such a party has no legitimate interest in pursuing its request for oral proceedings. Rather, under these circumstances and irrespective of whether or not the party explicitly maintains its request for oral proceedings, it is at the board’s discretion to decide whether the scheduled oral proceedings are to be maintained or to be cancelled, since it cannot be the purpose of Article 116 EPC (establishing that oral proceedings shall take place under certain circumstances, including at the request of a party) that a party can oblige a board to hold oral proceedings in its absence.

The board therefore concluded that, taking into consideration the submissions of the parties in the written proceedings, the board’s preliminary opinion and the subsequent appellant patentee’s letter, it is in a position to take a final decision without holding oral proceedings. – Full decision

13 July 2017 – The Debate at the US House of Representatives on the US Patent system: brief report and comment from the other side of the Atlantic Ocean

13 July 2017 – The Debate at the US House of Representatives on the US Patent system: brief report and comment from the other side of the Atlantic Ocean

The House Subcommittee on Courts, Intellectual Property and the Internet held a hearing on “The Impact of Bad Patents on American Businesses”, particularly focused on software industry and patent trolls. Testimonies by Mr. Thomas Lee (Mapbox), Judge Paul R. Michel, Mr. Sean Reilly (The Clearing House Payments Company L.L.C.) and Ms. Julie Samuels (Engine) were heard.

In our opinion, although we agree with few of their opinions, especially on the negative impact of patent trolls for economic growth of innovative companies, the underlying meanings of the statements by Mr. Lee, Mr. Reilly and Ms. Samuels are all questionable. Also, the significance of their statements is doubtful when considering the “biased” and consequently limited experiences from which they come: Mapbox is an open source company that owns no patent, The Clearing House Payments Company L.L.C. is a company that owns only few patents all relating to business models, and Engine is an organization supported by hundreds of startups across the US that voices loud for an open Internet and substantially against IP (e.g. see Ms. Samuels’ article “Hacking the Patent System“).

We deem that the wide and uncontrolled oscillations of the “pendulum” of the US patent system concerning software and business model inventions, that in the last decades unpredictably lurched between acknowledgement and denial of eligibility and patentability, will be difficult to mitigate by listening to radical opposite views.

This is not the case of the sharp and balanced testimony by Judge Michel, former Chief Judge of the US Court of Appeals for the Federal Circuit, with whom we agree.  In particular, he stated that “Eligibility law under the Alice/Mayo regime has become highly uncertain and unpredictable. And results have been as inconsistent as unpredictable”. In this regard, Judge Michel’s opinion is that, in Alice, Supreme Court decision holding that “if a claim “is directed to” an abstract idea (whatever that means) it is ineligible despite claiming a “machine”, as Congress explicitly allows, seems highly inappropriate as an apparent invasion of the Constitutional prerogatives of the Legislative Branch” (during the oral hearing, Judge Michel solicited an intervention by the Congress to clarify the issue of eligibility and to foster technical training of judges). Also, he significantly stated that the effort to root out invalid patents caused the efficacy of patent system to be diminished or destroyed for the majority of owners who are responsible actors: “abusers can be punished and deterred by surgical means and weakening the entire system is surely unnecessary and unwise”. Judge Michel’s went on by saying that the myths that most asserted patents are “bad”, that most suits are frivolous, and that the courts are unwilling or unable to deal with the limited number of actual abusers of the patent system are false. He wisely concluded that “if in the interest of further combatting the relatively few system abusers, we further dismantle the system itself, our country will be committing economic suicide”.

full hearing testimony docs available here

12 July 2017 – UK Supreme Court Judgement: reformulated questions for assessing direct patent infringement by equivalents (broadening the scope of protection of a patent)

12 July 2017 – UK Supreme Court Judgement: reformulated questions for assessing direct patent infringement by equivalents (broadening the scope of protection of a patent)

In a case concerning the issue of whether three products manufactured by the Actavis group of companies would infringe patent EP1313508 whose proprietor is Eli Lilly & Company, the UK Supreme Court has reformulated guidance on assessment of direct patent infringement by equivalents.

By excluding a literal infringement of the claims, the Court held that “the Protocol on the Interpretation of article 69 as amended in 2000 (“the Protocol”) is crucial to Lilly’s contention that the scope of protection afforded by the Patent extends to the Actavis products”.

More specifically, two points appear to be clear from the Protocol. The first … is that the scope of protection afforded to a patentee is not to be limited by the literal meaning of the claims… I do not consider that the last part of the first sentence of article 1 only enables the description (ie the specification) and the drawings to be taken into account when interpreting the claims, in cases where the claims would otherwise be ambiguous. Any doubt about this must be put to rest by the second and third sentences… However, it is very hard to be confident how far they were intended to permit a court to go beyond the actual language of a claim when interpreting a claim. Secondly, it is apparent from article 2 that there is at least potentially a difference between interpreting a claim and the extent of the protection afforded by a claim, and, when considering the extent of such protection, equivalents must be taken into account, but no guidance is given as to precisely what constitutes an equivalent or how equivalents are to be taken into account”.

Any patent system must strike a balance between the two competing factors referred to at the end of article 1 of the Protocol, namely “a fair protection for the patent proprietor [and] a reasonable degree of legal certainty for third parties””.

A problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not. Such an approach complies with … the Protocol… Issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence”.

Issue (ii) involves not merely identifying what the words of a claim would mean in their context to the notional addressee, but also considering the extent if any to which the scope of protection afforded by the claim should extend beyond that meaning. As Sir Hugh Laddie wrote in his instructive article Kirin-Amgen – The End of Equivalents in England? (2009) 40 IIC 3, para 68, “[t]he Protocol is not concerned with the rules of construction of claims” but with “determining the scope of protection”.

Issue (i)… involves solving a problem of interpretation… In the present case, there is no doubt that, according to normal principles of interpreting documents, the Actavis products do not infringe the Patent

However, the second issue poses more difficulties of principle: what is it that makes a variation “immaterial”?

the question is whether the variant achieves the same result in substantially the same way as the invention. If the answer to that question is no, then it would plainly be inappropriate to conclude that it could infringe. If, by contrast, the answer is yes, then it provides a sound initial basis for concluding that the variant may infringe, but the answer should not be the end of the matter”.

the second question is better expressed as asking whether, on being told what the variant does, the notional addressee would consider it obvious that it achieved substantially the same result in substantially the same way as the invention … on the assumption that the notional addressee knows that the variant works to the extent that it actually does work. That… would be a fair basis on which to proceed in terms of balancing the factors identified in article 1 of the Protocol, and it is… consistent with the fact that the notional addressee is told (in the patent itself) what the invention does”.

these questions are guidelines, not strict rules… while the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows:

  1. i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
  2. ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
  3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no””.

full UK Supreme Court Judgement