EPO Enlarged Board: Rebuff 1/08

Patentanwalt Rainer Boeckelen of TBK-Patent has kindly informed the IPKat of a recent decision of the EPO Enlarged Board of Appeal that has as yet not apparently received much in the way of publicity, at least not via the EPO's own list of decisions of the Board. This might have something to do with its assigned case number R 0001/08 [should we be expecting up to 9998 other decisions this year, perhaps?] which, at least to those familiar with the usual labelling of EPO appeal decisions (T for technical board, J for legal board, G for enlarged board and W for wobble board), might sound a bit odd. This is because the decision is the first to issue as a result of the new EPC2000 provision of Article 112a that allows for a petition for review of a decision of a lower board to the enlarged board but (and it's a big but) only if:

"(a) a member of the Board of Appeal took part in the decision in breach of Article 24, paragraph 1, or despite being excluded pursuant to a decision under Article 24, paragraph 4;
(b) the Board of Appeal included a person not appointed as a member of the Boards of Appeal;
(c) a fundamental violation of Article 113 occurred;
(d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
(e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision."

The petitioner in this case was the proprietor of the patent in question, EP0916347, which had been unsuccessfully opposed but, on appeal, revoked by the technical board of appeal on the grounds of a lack of inventive step in the proprietor's auxiliary request (the main request also having failed). The proprietor complained that they had not been given an opportunity to respond to any allegations of lack of inventive step in the request, and were consequently very surprised when the patent was revoked. In their view, the appeal board was guilty of a fundamental violation of Article 113, partly because, according to rule 111(2), decisions of the EPO which are open to appeal should be reasoned.

The Enlarged board thought otherwise. On reviewing the preparatory documents illustrating the reasoning behind the introduction of Article 112a, it was clear to the board that the review procedure was meant to be "an extraordinary legal remedy the filing of which does not affect the force of res judicata of the decision under attack", meaning that the provisions were to be applied in a strictly limited fashion. It was not the purpose of Article 112a to allow a case to be decided by a third instance (after, in this case, the opposition division and appeal board), but to "provide the right for judicial review founded on a limited number of grounds that have been exhaustively defined by the legislator". The fact that the auxiliary request was not argued (for or against) in the appeal proceedings, partly as a result of the opponent/appellant not appearing in person, did not mean that it was automatically allowable. The proprietor had already been given an opportunity to argue for the validity of the request, and it should not have been surprising to them when the board issued its decision. No provision of the EPC required that the party must be provided with all foreseeable arguments for or against a request in advance, and not to do so was not a fundamental violation of the right to be heard. The enlarged board then unanimously decided that the petition for review was not allowable.

The IPKat can see how this one was always going to be a slim possibility, and suspects the attorneys in this case would have though so too, but he congratulates them (and their clients, of course) for having the nerve and money to have a go anyway. It was reasonably clear from the outset that Article 112a was never going to be particularly useful as a third instance at the EPO, but it is useful for the rest of us to find out just how little use the provision is likely to be, now that we have had the opportunity to read what the enlarged board actually thinks of it.

M-Systems v Trek 2000: USB sticks get stuck

Another judgment from the Honourable Mr Justice Kitchin has just appeared, this time being available in full from BAILII (unlike the one from a couple of days back). The case relates to revocation and (among other things) to whether a patentee should be allowed to amend their patent under section 75.

The patent in question related to high-capacity USB memory sticks, which may now be very familiar to most computer users but which, when the patent was applied for in 2000, were not particularly well known, at least not in the form they are nowadays (above right: a 4GB USB stick available from eBuyer). The granted patent claimed:

A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device.

In earlier proceedings before the Comptroller, M-Systems had been successful in their application to revoke Trek's GB patent, citing various prior art disclosures describing plug-in memory devices. Trek then claimed that their devices were actually much smaller, had higher capacity, were limited to USB devices that replaced CD-ROMs and could be plugged directly into a serial socket rather than requiring a cable. They consequently submitted amendments to work around the prior art in an attempt to maintain their patent in some form. The Hearing Officer did not, however, allow them to amend because their proposed amendments did not address the issues, added subject matter and in any case should not be permitted because Trek had failed to establish why the Comptroller should allow them. The issue of discretion to amend revolved around an unresolved argument as to exactly when Trek had become aware of certain prior art disclosures, and whether as a result they should be given discretion to amend, under the provisions then in force. Trek even tried to argue that to be forced to disclose when they knew about relevant prior art would be contrary to the Human Rights Act 1998 [this is the point where the IPKat's credulity in Trek's arguments started to crumble].

After reconsidering the several issues raised during Patent Office proceedings, Kitchin J found that the Hearing Officer had been correct on every single point. On the issue of discretion to amend, however, Kitchin had something else to say that unfortunately (at least for Trek) could have no bearing on the case in point, but will certainly be relevant in the future:

"I have found the proposed amendment is not allowable because it would result in the specification disclosing additional matter. However, the Hearing Officer also rejected it for a further reason, namely that he had not been provided sufficient information to permit him to allow the amendment in the exercise of his discretion. On 13 December 2007, after the conclusion of the appeal hearing before me, the Patents Act 2004 came into force. Section 2(5) amends section 75 of the 1977 Act and reads:

'(5) In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted-

"(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention."

Section 75(5) applies to all patents (whether UK patents or European patents (UK)) and whether granted before or after 13 December 2007 and it undoubtedly radically alters the approach to be adopted to amendment applications. However, this is an appeal by way of review and not rehearing. Accordingly, it cannot possibly have any impact upon the outcome of this appeal unless I conclude that, under the old law, the Hearing Officer wrongly exercised his discretion so that the exercise of that discretion must be set aside."

This radical altering of the approach to be adopted could only mean that the provisions of Article 105a and associated rules of EPC2000 should now be used when considering post-grant amendments under sections 27 and 75. There is no provision in EPC2000 to allow the EPO to exercise discretion to amend, provided the basic formal requirements are met. The new form of sections 27 and 75 would therefore effectively remove all discretion from the courts and Patent Office hearing officers to disallow amendments on the grounds that the patentee knew about prior art and did nothing about it. Could this, the IPKat wonders, allow patentees with 'dirty hands' to get away with a bit more in future?

EPC2000 or bust; London Agreement not so bad for translators

Tomorrow is the big day for the European Patent Office and all those who use it. The new version of the European Patent Convention, EPC2000, will come into force. The EPO is making changes to its website accordingly. Of course, by the time you read this it might have all changed, so the IPKat does not guarantee these links will work. For any who remain puzzled by the changes, a take-away version is available for free here.

According to the status page on the EPO website, Portugal is yet to deposit its instrument (at least as of late on 12 December). Will it make it on time? What happens if it doesn't? IPKat readers at least seem to be generally confident that it will, since less than 10% of the 524 votes received on the IPKat poll went for Portugal being the last one in.

A much larger 27%, however, thought (apparently incorrectly) that Italy would be the last one in. Perhaps this was due to a general cynicism about the Italian system being, on the whole, rather glacial. This is not how fellow blogger and proud Italian Lorenzo Litta sees it. Somehow, ratifying EPC2000 one day later than France results in a victory for Italy in his eyes. The IPKat is a little puzzled at the strange games they play on the continent...

Translators are not all gloomy about the London Agreement coming into force next year (see IPKat post here, and EPO news here), according at least to big player RWS. A recent story in the Scotsman reports that RWS plan on taking a £1 million hit when the agreement kicks in, but don't see this as being much of a problem with a turnover in excess of £46 million. The future is bright, apparently, and the loss of a few German and French translation jobs is nothing to be worried about.

Extra-territorial jurisdiction by the back door?

The IPKat was puzzled by one of the arguments apparently used in a recent High Court hearing (see the recent post here). The point was made, in respect of the current Patent Office practice to reject computer program product claims, that when EPC2000 comes into force a UK court would have the power to force a patent proprietor to limit his patent centrally via the new limitation and revocation procedure under Articles 105a-c EPC2000. Since the EPO practice of allowing such claims continues, a UK court could then (so the argument goes) force the claims to be deleted for all EPC states, even though the claims might only be invalid in the UK.

The IPKat was sceptical about whether this could actually happen, but it was pointed out by an anonymous commenter (here) that there will be a new provision in UK law that could allow it. This is new subsection (4) of section 63 of the Patents Act 1977, which will come into force next week to coincide with the start of EPC2000:

(4) The court or the comptroller may also grant relief under this section in the case of a European patent (UK) on condition that the claims of the patent are limited to its or his satisfaction by the European Patent Office at the request of the proprietor.

This would allow a court or the comptroller to force a patent proprietor to amend his patent to be allowed any damages, if it was held that his patent was only partially valid. The effect would, however, under the limitation procedure be that the patent would have to be permanently limited in respect of all EP member states, not just in the UK (which the equivalent provision of section 63(3) is there for).

The IPKat was unaware whether this new provision was to be a general principle put in place across Europe to harmonise patent law, so he asked fellow blogger and patentanwalt Axel Horns (of the IP::Jur blog). Axel says he is unaware of any clause in German patent law that would resemble what is being put in place in UK law. It also seems that there couldn't be such a clause, due to the separation in Germany of validity and infringement in the courts.

If in fact there is no equivalent provision in German law, then this could cause an interesting conundrum for patent proprietors, if they wish to claim damages for infringement of their patent. Is this another argument for not choosing England as a place to enforce a patent? Regardless of this, is the new provision allowing extra-territorial jurisdiction in by the back door? The IPKat would very much like to see what others think about it.