Wednesday Whiskers

Miracles do happen, it seems. Despite several hurdles and a legislative calendar that was drowning in debt-related issues, the long-awaited US patent reform legislation passed the Senate vote on Monday. The Leahy-Smith America Invents Act (AIA) was passed unamended by the US Senate with a 89-9 vote (see previous AmeriKat and IPKat posts here). Once signed into law by President Obama, the bill will introduce several changes to the US patent system including harmonizing its first-to-invent system to a first-to-file system and ending fee diversion. AIA has been criticized by many as being overly burdensome to small independent inventors, will increase the number of provisional applications being made to the USPTO and would allow the Appropriations Committee to unduly control the fees generated by the USPTO. USPTO Director David Kappos heralded the passage of the bill, claiming that it will "...drive down the backlog of patent applications, and expedite the issuance of high quality patents - all without adding a dime to the deficit." Director Kappos proceeded to then walk on water.... Joking aside, the AmeriKat is excited about this new act and will be back on Sunday to report on the fall-out and commentary surrounding its passage.



The Rolls Building is nearing its opening day. For those IP litigators, like this Kat, the new £300 million Rolls Building will soon become a home-away-from-home as the Patents Court moves from the resplendent Royal Courts of Justice to its new home. You needn't spend long in the RCJ chambers and filing offices to hear comments about the new building - a mixture of views mostly punctuated by comments of how small the court rooms are, how some are being dragged across to Fetter Lane kicking and screaming and how no one will know where anything is [cue wandering judges and barristers looking for their lost court rooms, Merpel remarks cattily]. Then there is the elevator problem - only 3 public lifts (i.e. fitting only one clerk with the first set of disclosure bundles for your standard Chancery case - promises of e-filing be damned). The AmeriKat is more worried that, as with many new buildings, the air conditioning system will be out of control and set on a level that only pacing barristers can endure. There are rumors floating around about who will be the first IP case to grace the Rolls Building, but no concrete word until the doors first open this fall. The IPKat says that whoever gets there first should give the rest of us tips about managing the new building - flaws, free wi-fi, and all!


8+3 =11 big problems for HathiTurst, a partnership of research libraries and universities, including the University of Michigan . On Monday, the 11 strong contingent of authors' groups and individual authors including the Authors Guild filed a copyright infringement suit in the Southern District of New York against the libraries and universities claiming that their initiative to digitize millions of books without authorization constituted copyright infringement and posting the books online. The claim also objects to the partnership self-designating works as "orphan works" and thus self-permitting the digitization and use of those works. So far 9.5 million books and journals have already been digitized with around 30% of those works being in the public domain. The twist in the story is that the executive director of the partnership, John Wilkin, stated that the digitized works were provided by Google. IPKat readers will remember that last March, Judge Denny Chin rejected the proposed settlement in the Google Books litigation (more here) in a similar dispute. A hearing is schedule for tomorrow in the Google Books case.


On Tuesday, IPR2, better known as the EU-China Project for the Protection of Intellectual Property Rights, between the European Commission, EPO, OHIM and the Ambassador of the People's Republic of China to the EU formally came to a close. The closing ceremony of IPR2 comes at the end of a four-year 16 million Euro joint project. Under IPR2 European and Chinese officials, judges, legislators, experts and academics implemented technical assistance and training activities across China. The parties have agreed to continue their cooperation [what else would you expect?, says Merpel] Would you like to see the what 4 years and 16 million Euros can get you? Well you can't, at least not yet... But while the database is being built, there is a collection of a hodge-podge of documents from the project here.

Many of the IPKat's beloved readers will be in or journeying to Baveno, Italy for this year's annual MARQUES conference (Kat Jeremy is currently stalking the Italian venue.) Today's MARQUES conference agenda, for those Kats and readers who are not so lucky to travel to Italy this week, is premised on "Reality Checks" - reality check on costs, reality check on trends and reality checks on function. The last check is a topic being discussed after lunch entitled "Reality Function" and is promoted as an "update on legal analysis on the trade mark function." For those attendees whose brain activity does not decrescendo following a hearty pasta and foccacia lunch, please let the Kat know what panel suggest is "the trade mark function" in European trade mark law.

EPO: Filings rebound after crisis

The European Patent Office (EPO) announced its statistics for 2010 last Tuesday. After a slump in filings in 2009, the number of filings has rebounded and surpassed the pre-crisis level; in fact, the 235,000 applications received in 2010 constitute the largest number of applications filed ever in the 34-year history of the EPO.

43% of applications resulted in granted patents (obviously not of the applications filed in 2010...).

The number of patents granted per country of residence of the applicant also shows a familiar picture (see the IPKat's take on the 2009 statistics here). The top ten nations in terms of patents granted are Germany (12,553), USA (12,506), Japan (10,580), France (4,536), Switzerland (2,389), Italy (2,287), UK (1,857), the Netherlands (1,725), Sweden (1,467), South Korea (1,392) and Canada (730).

While granted patents are an imperfect measure of the innovative force of a country's economy (and the numbers for Japan and Germany inflated because of peculiar employee-invention laws), it is nonetheless striking how large the differences between similarly situated European countries can be. While France's population (65 million) and Gross Domestic Product ($ 2.5 trillion) are roughly 50% larger than Spain's (46 million and $ 1.4, acc. to CIA Factbook), France was granted 4,536 patents in 2010, while Spain (better: applicants from Spain) received a mere 393. That's less than 10% of France's rate. And don't tell me it's all due to the fact that Spanish is not an official language at the EPO... or compare Norway (4.7 million, $ 413 billion) to Switzerland (7.6 million, $ 522 billion). Both are well-off European nations with a similar per capita GDP. But Switzerland received 314 patents per 1 million inhabitants, Norway 39. Let's hope that oil lasts for a while...

Finally, the top ten applicants.

Many more tables and graphs on the EPO's website.

Small matter, big problem: the story of the average sized particle

Now where the deuce did that nanomouse go?

The IPKat has frequently been preoccupied with interesting questions that have no obvious answer. Classic examples include "how long is a piece of string?", "where do celebrities go when they want some privacy?" and "why aren't all the Court of Justice opinions and decisions translated into English?" Today he has been pondering a new question, thanks to a decision of a Technical Board of Appeal of the European Patent Office: "how big is an average sized particle?" This was the issue at the heart of T-1819/07 Nanosized catalyst/ GENERAL ELECTRIC, decided on 15 March 2011 but only now disturbing the Kat's grey cells.

Without going into too much detail, it appears that the claims in General Electric's patent application referred to a

"copper catalyst precursor selected from the group consisting of copper metal, copper (I) oxide, copper (II) oxide, copper (I) chloride, copper (II) chloride, copper (I) carboxylates, copper (II) carboxylates, other copper salts, and mixtures thereof, having an average particle size from about 0.1 to about 600 nanometers".

This would have been fine for the Kat, because he's not what the Americans call the PHOSITA (Pussycat having ordinary skill in the art) it's all the same to him where in the range of 0.1 to about 600 nanometers this average particle size happened to be.  However, since the claims did not unambiguously state either the type of average involved (volume, surface, number) or a method for determining it, the examiner was none too impressed and refused the application.

Dismissing GE's appeal, the Technical Board affirmed that the claims were unpatentable for lack of clarity. It rejected the argument that the necessary clarity was provided by a statement in the specification that the preferred embodiment was to use particles prepared according to the method of an identified co-pending patent application, which did contain a description of a method of measuring size. This was because the terms of that reference, relating only to the method of making the particles, did not make the disclosure of the method of measuring the particles' size part of the disclosure of the present application.

Wonders the IPKat. is this one of those miserable cases where we all really know what the applicant means but have to penalise him for not having clearly and explicitly said it? Or is it a case of a crafty applicant trying to gain a little extra edge over anyone putting the invention into effect by being less than specific? Merpel says,   I think this case is only being discussed here because it's about a Katalyst.

Nano stuff here
Nani stuff here
Nana stuff here

Rule 141 EPC: some good news

As from 1 January 2011 Rule 141 EPC, as modified by Administrative Council decision CA/D 18/09, will require applicants to supply search results relating to any priority filings. On the face of it, this adds yet another burden on applicants that they could well do without.  When the IPKat first saw the new Rule, he immediately thought it was quite pointless and unnecessary.  With patent offices around the world becoming increasingly interconnected, wouldn't such an additional requirement being placed on the applicant be a backwards step?  If patent offices can communicate with each other directly, why is there a need to supply information that has been provided by one via (probably at least two) intermediates?  Why not simply cut out the middlemen and send what is required directly, and online?

Fortunately, this does in fact already happen.  In the case of supplying certified copies of priority documents, the requirement under Rule 53(1) EPC for the applicant to supply a copy does not apply where the priority filing was made in Japan, Korea, the US or at the EPO, according to a decision of the President dated 17 March 2009.

Now we can be relieved even before the new year that, in many cases, the new form of Rule 141 will not have any effect on applicants due to another decision of the President dated 9 December 2010.  According to this decision, the EPO will be able to get search results for priority applications filed at the US, UK or Japanese patent office.  The IPKat suspects that others will join, once the relevant agreements have been signed.

The IPKat now wonders what the point was of the new form of Rule 141, if the ultimate aim was apparently to make such a requirement superfluous.  Can anyone enlighten the, now quite puzzled, IPKat?

Broccoli (G 2/07) and Tomatoes (G 1/08): the decision is in

The IPKat reported in a post dated 11 June 2007 of a referral having been made to the EPO Enlarged Board of Appeal (G 2/07) on the subject of whether a process involving crossing and selection of broccoli could be patentable. Another referral was then made relating to a similar type of invention relating to crossing and selection of tomatoes (G 1/08). Now, after a mere three and a half years the Enlarged Board, having combined the two referrals, have issued decisions relating to both.

The questions raised in respect of the broccoli referral were:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The questions raised in respect of the tomatoes referral were:

1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The Enlarged Board has, in both decisions G 2/07 and G 1/08, answered the questions as follows:

1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

There is, of course, much reasoning behind the answers, some of which has already been analysed by the prolific Oliver G. Randl in some detail here. I am tempted, as many others might be, to make comparisons with case law on the 'non-inventions' of Article 52(2) and (3) EPC, particularly by the liberal use of the meaning-free word 'technical' in these decisions. However, other than an apparent surface similarity, the comparison does not seem to bear close scrutiny and is probably not much help, if not misleading. In answering the questions, the Enlarged Board seem to me to be indicating that they are not establishing the same kind of 'technical effect' reasoning that is now well-established in the case law relating to Article 52(2). Instead, the use of the word technical in this case appears to be more about whether there is enough of a deliberate intervention in the crossing and selection process for there to be a new result. I wonder whether a known type of technical intervention would do just as well as a new one, provided the result of the process was new and inventive.

As for the significance of the decisions otherwise I will refrain from commenting further, mainly because cats don't like vegetables.

More on the decisions from the EPO here.

More EPO rule changes - this time it's good news (mostly)

There has been much wailing and gnashing of teeth among patent attorneys and applicants over the new rules that the EPO's Administrative Council has inflicted upon us over the past year or two. Rule changes relating to a new deadline for filing of divisional applications (Rule 36) and to a new requirement to respond to an international written opinion shortly after entering the European regional phase (Rule 161) have perhaps been the most controversial.

In the case of Rule 36, nobody was quite sure what exactly would cause the 24 month period within which a divisional could be filed to start. Even though the EPO issued a communication stating that only communications issued by the examining division would count, this did not really resolve the issue, particularly because communications other than those under Article 94(3) or Rule 71(3) also tended to be confusingly issued "For the Examining Division".

In the case of Rule 161, the one month time period imposed to provide a response was seen by many to be far too short, particularly when applicants who would most likely be affected by this would be from outside Europe and therefore not necessarily warned in advance.

The Adminstrative Council have obviously been listening to these complaints about the apparent uncertainty and downright unfairness of aspects of the new rules, and have now issued some further decisions. These include:

• CA/D 16/10 amending Rule 36, entering into force as of 26 October 2010; and
• CA/D 12/10 amending Rules 161 and 162, entering into force on 1 May 2011.

The first of these addresses the issue of which communications start the two year period by specifying in new Rule 36 that the time limit is "twenty-four months from the Examining Division's first communication under Article 94, paragraph 3, and Rule 71, paragraph 1 and 2, or Rule 71, paragraph 3, in respect of the earliest application for which a communication has been issued".

The second decision addresses the issue of the short period to respond under Rules 161 and 162 by making the period six months instead of one.

If all that wasn't enough to be more cheerful about, the Administrative Council have also issued a further decision CA/D 2/10 that addresses some concerns about what should happen if a communication under Rule 71(3) (a notice of allowance issued by the examining division) is not agreed with by the applicant. A revised Rule 71 and a new Rule 71a, along with revisions to Rules 82 and 95 relating to the equivalent situations for oppositions and limitations, allows for a reasoned response to be made with amendments or corrections, followed by approval by the examiner. These changes do not come into force until 1 April 2012, but will then apply to all communications issued on or after that date.

The IPKat goes to see the President

Last night the IPKat went down to London, not to see the Queen but to see the President of the European Patent Office, Benoît Battistelli at UCL (mentioned here on the EPO website, and now with the full text of the speech). M. Battistelli was in London to ask, and then answer, two questions. (1) How can Europe be a key player at a global level in the patent field? (2) What is the role of the EPO? The IPKat was fairly certain he knew the answer beforehand to the second one, but wasn't quite clear about the first one, and was pleased to have it answered.

M. Battistelli had much to say on the subject of how Europe not only can be a key player at a global level in the patent field but also how the EPO in particular is playing a key role throughout the world at the moment. A selection of facts and statistics were brought out to warm the audience to the theme of what the EPO were all about, including:

• The EPO is a central granting agency that can (theoretically, at least) grant patents that cover up to 40 countries including a total of 600 million people. Language difficulties, however, made getting this maximum protection expensive and complicated.
• 210,000 applications were filed in 2009, down 8% on 2008 but rising again after a 4% increase in the first 10 months of 2010, with growth expected to continue in the years to come.
• Pendency times for search reports with written opinions compared well with other patent offices, with the EPO tending on average to get them out within 6 months for first filings. For second filings the numbers were higher at around 27 months, but compared to between 40 and 60 months for other offices.

What was apparently most important as far as M. Battistelli was concerned was to improve quality, which is a hard thing both to define in patents as well as to achieve. The aim of the EPO was to obtain maximum legal certainty so that patents could be granted that were as legally secure as possible. The EPO was not, and should not be, concerned about the economic value of any particular invention, which was purely the business of applicants. The 'raising the bar' initiative of his predecessor was discussed, a sometimes controversial scheme having an overall aim of being more selective in what was granted through being more rigorous in applying existing patent law, as well as tightening down on some rules (which has certainly caused some controversy among the patent profession recently).

A particular problem the EPO faced, in M. Battistelli's view, was that it could be seen to be acting more for the applicant's side, when what should happen is that a balance between applicants and third parties had to be struck in each case. Economic players were much more likely to be third parties than applicants, even in the case of the large patent filing applicants. As a result, the interests of third parties had to be taken into account, and applications granted only for those inventions that really deserved the monopoly rights that resulted, bearing in mind that such monopolies were an exception to the general rule of free markets.

Costs had to be 'carefully controlled', which meant that applicants should not fear added costs and should also not face unnecessary additional burdens. M. Battistelli added that there was no intention to increase fees, bearing in mind the ability of a monopolist to keep raising their prices (but he unfortunately gave no particular timescale for how long this would apply). The EPO's apparent mission at the moment was to not add unnecessary costs to the already expensive process of granting a patent. [At this point, the patent attorneys among the IPKat's readers might have something to say, given recent developments.]

There was some discussion of current projects that the EPO was involved in, which included those within Europe such as the ongoing discussions regarding an EU patent system (the IPKat is not holding his breath on this one). Languages, of course, were the most difficult issue. M. Battistelli considered that the solution was to use more machine translations. An interesting point made was that there is already a very large database of professionally translated patent documents, which could be used as source material for much improved machine translation systems. The purpose of all this would be to facilitate access to content, which would be useful to examiners as well as other users of the system, particularly as countries such as China become ever more important as sources of prior art.

The EPO has over the years developed its own system for searching and examining applications, and has been successfully exporting these systems both within Europe to national offices and to the rest of the world. Various IT tools for examination developed at the EPO were being used at the national offices in Europe, and the EPO was exporting the European model elsewhere, one notable case being China, where the system developed at SIPO over the last 25 years was largely based on following the European model.

Finally, mention was made of the recent and ongoing fashion for patenting 'green' technology, to which the EPO has contributed their assistance. In particular they helped out at last year's Copenhagen summit to try to defuse the argument about whether patents helped or hindered development of such technology [an argument that was largely had, as far as the IPKat could gather, between people who knew very little about patents and even less about real science]. The answer was, of course, a mixture of both and that patents were not the problem but were part of the solution. There was a strong concentration of patents in large industrial hands, which was to be expected, but there were some surprise findings in the EPO's recent report on the subject, such as the level of innovation from countries like Brazil, China and India. The EPO has now created a new class for green technology, specifically relating to energy. Whether this means anything in the long run is yet to be seen, in the IPKat's view.

In conclusion, M. Battistelli's main point was that the duty of the EPO was to ensure that the economic tool of granting patents for inventions was delivered as efficiently as possible.

The IPKat thinks that M. Battistelli came across as a President with a very clear idea of a central mission for the EPO, which certainly sounds like a good thing. The IPKat does not necessarily agree with every initiative that the EPO comes up with and, along with one or two others in the audience, thinks that the process leading up to rule changes in particular could be made a bit more transparent and consultative. He does, however, think that M. Battistelli should do well in his time as President and wishes him the best of luck.

T 784/06 - "technical effect" reaches bioinformatics

The IPKat has been prompted by the EPLAW Patent Blog to read a recent EPO decision, who in turn have been prompted by none other than Stefan Steinbrener.  This name will be familiar to all those who have been keeping a close watch on developments at the EPO leading up to the recent Enlarged Board decision of G 3/08 (commented on by Tufty here, among many others).

The decision, T 784/06 (currently available via the EPO register for application 95906094.8), relates to an application that was originally filed in 1994 for a method of automatic genotype detection.  The method used probability distributions to determine a particular genotype at a locus within genetic material obtained from a biological sample. The actual invention, however, was really all about a mathematical method carried out on a computer, which allowed the probability distributions to be assessed and a result obtained.  If this is all starting to resemble the invention in Vicom, you are already on the right lines.

(Right: the code in question. Can you make any sense of it?)

As a result of the mixture of 'technical' and 'non-technical' features in the claimed invention, the Board took into account the type of analysis normally carried out for computer-implemented inventions.  The applicant argued that the mathematical parts of the claim contributed to the technical effect of the invention, and should therefore be taken into account when assessing inventive step.  The opponent, however, argued that the mathematical parts "did not require any further technical considerations" and were to be disregarded in the assessment of inventive step.

The Board considered that the correct assessment to be made was that from decisions such as T 641/00 (Comvik) and T 154/04 (Duns Licensing), both of which related to computer-implemented inventions.  The question to be answered was whether the claimed invention in the field of biotechnology having a mix of technical and non-technical features could be inventive.  Non-technical features such as mental activities could be taken into account when assessing inventive step, provided they "interact with the technical subject matter of the claim for solving a technical problem and thereby contribute to the technical character of the claimed subject matter" (reasons, point 4).  For assessing inventive step therefore, the question was whether the mental activity steps of the claimed invention interacted with the technical activity part to yield a tangible technical result.  The applicant argued that they did, and the opponent that they did not.

All this was, as far as the IPKat was concerned, quite conventional and straightforward.  The Board, however, then threw something of a googlie in deciding that the non-technical steps were only generally formulated and not well described in the specification.  The specification did not provide a reasonably complete and sufficient description of the software, and this was not remedied by the mathematical formulae or the extract of code provided.  As a result, no interaction could be established between the mental activity steps of the claims and the technical part, and these steps could be ignored when assessing inventive step.  The claimed invention therefore lacked an inventive step, since the technical part was disclosed in documents cited during proceedings. The patent was revoked.

(Left: Or perhaps the real invention was just too simple?)

The IPKat thinks that this is decision is an important one, but perhaps not as important as it could have been.  The Board's reasoning relating to the non-technical parts of the claims being insufficiently described seems to be a bit unusual, and tends to put the whole decision in a strange light.  The IPKat suspects that the Board had decided that the claimed invention should not be allowed but were struggling to find sound reasons to reject it in light of the arguments presented. However, the decision highlights at least two important points.  Firstly, that the case law relating to computer-implemented inventions can certainly be applied to the field of bioinformatics.  Just because an invention is classified in the biotech field does not mean that the invention has to be assessed according to the case law relating only to that field.  Secondly, if an invention is to rely on computer-based processing steps including mathematical methods then the disclosure needs to be as full as possible, and preferably described in a way that makes it understandable to someone outside the field of software coding.  A few lines of impenetrable computer code and a couple of equations does not necessarily amount to a sufficient disclosure of the invention.  The IPKat, who also could not make much sense of the invention as disclosed in the specification, wonders whether a different outcome could have been obtained if it had been more fully described or simply better explained.

Friday Foghorn

In addition to marking the 42nd anniversary of the foundation of NASA, today is also the day that the EPO gains its 38th Member State as Serbia accedes to the European Patent Convention. An extension state since November 2004, Serbia deposited its instruments of accession on 15 July 2010 and started the final steps towards becoming a full-blown member of what the EPO proudly proclaims to be "the largest transnational patent system in the world".

Patents Events at IBIL, University College London

Nestled within the IPKat's upcoming events pages, it is now possible to find two irresistible nuggets of patent-interest (pronounced with either a long or short 'a' as the mood takes) from UCL's Institute of Brand and Innovation Law.

The first up is also a first of other sorts, as the IPKat can exclusively reveal (although unfortunately cannot yet provide the exact details of) the fact that on the 8th of November 2010, Benoît Battistelli (right), the new President of the European Patent Office, will be giving a public lecture at UCL - his first in the UK since stepping into his new role. The event will be held in UCL's Cruciform Lecture theatre, exact details are yet to be finalised (and will be posted by the IPKat when they are), but for those with an interest in patents it's a date for your diaries.

The second event in UCL's November patent-fest, is the Institute of Brand and Innovation Law's annual Innovation Seminar. This year, the event is to be held on the 17th of November. Things start a little later than usual, with drinks before the event rather than after. Refreshments are available from 5:45, with the event commencing proper at 6:15.

The title is Patent Claim Interpretation. Speakers are:

• Professor Dr. Peter Meier-Beck: Presiding Judge at the Bundesgerichtshof, Karlsruhe, Germany, and Honorary Professor at the Heinrich-Heine-Universität, Düsseldorf;
• Professor Dan Burk: Chancellor's Professor of Law, University of California, Irvine;
• Dr Matt Fisher, UCL IBIL

Daniel Alexander QC, of 8 New Square is in the chair.

For the Innovation Seminar on Patent Claim Interpretation, click here: but be warned - places are going fast!

It's EP divisional crunch time

The IPKat should not need to be reminding his patent attorney readers about this, but tomorrow 1 October 2010 is the final day in many cases for filing divisional applications at the EPO (see the IPKat's previous post here for a good starting point), as a result of the EPO Administrative Council decision CA/D 2/09.

Even though applicants and attorneys have had over a year to prepare, there will inevitably be something of a last minute rush to make sure all those divisionals that might be needed are on file by midnight tomorrow.  Will the EPO's fax machines and online system manage to cope with the load?

The IPKat knows that many hard-working people both at the EPO and within patent attorney firms will be struggling at the moment to cope with the excessive load of applications, and would like to express his sympathy for all those adversely affected.  He would be interested to hear any stories of how things are going (or not, as the case may be).  If you have the time, please chip in using the weblog's comment facility (anonymously, if necessary).

As a final tip, according to the Notice of the President dated 12 July 2007 (Special Edition No. 3, OJ EPO 2007), applications can be filed at the EPO's offices in Munich, The Hague or Berlin, in particular at the following fax numbers:

Munich
+49 (0)89 2399-4465
The Hague
+31 (0)70 340-3016
Berlin
+49 (0)30 25901-840

Other things to do in Munich on 1 October here.

1 October 2010 Update: Thanks to a comment, the IPKat has been pointed to this notice from the EPO, which states:

"The European Patent Office (EPO) has been informed of an email containing a hoax announcement purporting to be from the EPO in which the public is given the impression that the Office's fax and online filing services will not be available from 30 September 2010 to 6 am on 4 October 2010, due to maintenance and updating of the Office's telecommunication facilities.

The European Patent Office informs all concerned that this notice is completely false and that all electronic filing facilities at the European Patent Office (online and fax) are fully available.

The Office reserves the right to take legal steps against the person(s) who disseminated this false information."

The IPKat, who has not had sight of this email, is intrigued. Can anyone shed any further light?

G 1/09: When is a patent application pending?

Once a patent application has been filed, and before it has been granted, refused or withdrawn, the application is considered to be "pending", i.e. awaiting some further action before a final decision is taken.  One thing that can only be done while a European application is pending is filing of a divisional application.  If the application has already been granted, or has been refused or withdrawn, or if the two year period under Rule 36 has passed, it is too late.  Or is it?

A strange situation arises in the case of an application that is refused at the end of oral proceedings at the EPO.  At that point, one would think, the application becomes no longer pending and, consequently, it is no longer possible to file a divisional.  However, if an appeal is then filed against the decision the application miraculously becomes pending again, because otherwise a final decision by an appeal board could not be taken.  

The question then is: is a European patent application that has been refused at oral proceedings still pending during the time allowed in which to file an appeal?  Does it even matter if an appeal is filed to make the application pending again? 

This was the situation for EP application 01102231.6, which was refused by the examining division in oral proceedings held on 23 November 2005.  On 14 December 2005, the applicant filed a divisional application, i.e. within the time allowed for filing an appeal against the decision. They did not, however, file an appeal in time.  

The EPO then took the view that, because the pending earlier application has been finally refused, the application could not be processed as a divisional.  The EPO issued a decision to this effect, which the applicant then did appeal against.  

In decision J 2/08, the board of appeal decided that they could not decide on the meaning of the word "pending", and instead decided to refer the following question to the Enlarged Board of Appeal:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(2) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

At this point, the IPKat thought that there were good arguments either way, and could not decide himself which way the question should be answered.  It did seem, however, a bit odd that an application could be considered to have been pending only in retrospect, which would be the inevitable result of the EPO's apparent view in 2006.

After a mere 16 months of deliberation, the Enlarged Board have now issued their decision, which is available via the EP register for the divisional application 05027368.9, and presumably shortly to appear on the EPO decisions page.  To cut what is a long story short (there is much pontification in the decision, which the IPKat's readers can peruse and comment on at their leisure), the Enlarged Board concluded:

"[U]nder the EPC a patent application which has been refused by the Examining Division is thereafter still pending within the meaning of Rule 25 EPC 1973 until the expiry of the period for filing an appeal and, on the day after, is no longer pending if no appeal is filed.  The same conclusion applies to Rule 36(1) EPC 2000 both in its former and its current version."

Or, in other words, in answer to the actual question raised: yes.


We can all now breath a sigh of relief, and get back to all those divisional applications that have to be filed by Friday.  


The IPKat thanks Simon Roberts (BT) for the tip.

Facts, Figures, Tools and Widgets

It seems that September is rapidly turning into the month of facts, figures, tools and assorted widgets. Last week the Kat reported on WIPO’s publication of their World Intellectual Property Indicators 2010. Earlier, he brought you the United States Patent and Trademark Office’s enthralling Data Visualization Center, and the World Economic Forum's titillating “Global Competitiveness Report”.

Now the Kat brings news of another webtool that is so good it required two press releases this morning. Thus, WIPO has today announced the launch of WIPO Lex, described as:

"an on-line global intellectual property (IP) reference resource which provides up-to-date information on national IP laws and treaties. This centralized search facility, which offers a user-friendly interface and functionalities, is in line with one of the Organization’s strategic goals, namely to serve as a world reference source for IP information and analysis."

WIPO Lex claims one-stop access to all of the IP legal texts for over 60 countries (67 by this Kat's count) with substantial coverage for a further 100 legal systems. WIPO explains:

"WIPO Lex will be integrated into WIPO GOLD which was launched earlier this year and provides quick and easy on-line access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, and IP classification systems."

A dip into WIPO Lex will be sure to fulfil the IP desires of even the most fact obsessed. Tidbits from the toolshed include the fact that Greece apparently has the most national IP laws of any of the 67 countries for which a complete listing is available, with a whopping 230 in total (most are ministerial decisions relating to geographical indications). The UK is next with 150, followed by China (135) and Ireland (134). However, if you have a burning desire to find out what it is about the laws of Puerto Rico that caused it to appear at number 8 in the World Economic Forum's "Global Competitiveness Report" ranking of the states offering the best IP protection, then you will be sorely disappointed, as it does not appear as a separate entity in WIPO's database and instead falls under the United States' mighty umbrella.

The Kat also brings news of the EPO's publication last week of the regional breakdown of the origin of the European applications filed in 2009 for the EPC contracting states and other major countries. The file arrives in a modest 230(ish)KB Excel spreadsheet, optimised for offline digital manipulation, and is available here.

The remainder of the statistics for 2009 are to be found here.

Earlier this month, the UKIPO also released a web-based tool to assist applicants in assessing the likely timeframe in which they can expect to receive an examination report.

Noting that “we are acutely aware that our levels of unprocessed patent examinations are higher than they should be”, the IPO offers a tool that operates along vaguely the same lines as the USPTO’s patent dashboard (although it must be said that it suffers from classic British understatement when compared to the USPTO’s rather jazzier offering). The IPO explains that: “The calculator … gives an indication of when you might expect to receive your first examination report. Information is available only for applications where examination has been requested (Form 10 filed) and the application has been published. Applicants requiring information about unpublished applications should contact the IPO.”

So the wait to find out how long you might reasonably be expected to wait before wondering whether you have been waiting for too long, is finally over…

Find the tool here

Blogs and EP Oppositions

Once a patent has been granted by the European patent office, Article 99 EPC allows for a nine month period when anyone can oppose it. Oppositions are filed on only a small fraction of patents that are granted by the EPO. Most are granted unnoticed by everyone except the people concerned. Even for those who do pay attention, the cost of filing an opposition will act as a fairly strong deterrent to all who do not have deep pockets or a strong case (preferably both), together with the nerve to see the process through to its, often protracted, end. This should be borne in mind when reading the following.

European application 01309765.4, filed in 2001 by Open Business Exchange Limited (later changed to OB10 Limited), was granted as EP1220114B1 by the EPO on 29 October 2008. According to the EPO Register, this is the only patent that OB10 have had granted by the EPO, and is also the only application they have filed (and which has been published). The patent relates to a way of translating electronic invoices from one format to another, using software that translates an incoming invoice into a standard format and then translates the invoice from the standard format into another format for output. This allows businesses to issue invoices in their own format and ensure that whoever receives the invoices gets them in their own chosen format.

On May 30 2009, a blog post was written about the patent, claiming that the patent was invalid because it was an "attempt to patent an old pattern [sic] known from middleware products and VANs". As well as citing some prior art known to him, the author of the post, Mikkel Brun, mentioned that there was a 9 month period for opposition (helpfully providing a link to the appropriate form) and stated the following:

"I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard! I have been told that an opposition has to be made for each individual country covered by the patent [IPKat comment: this is wrong - one is enough], so it is not a trivial task lying in front of us."

Mr Brun then followed up with another post on 6 June 2009 detailing further references and comments about why in his view the patent was invalid.

A total of 19 notices of opposition were subsequently filed against the patent, between 10 July 2009 and the final date of 29 July 2010. Thirteen of these were filed in the last 3 days which, though slightly risky, is common practice for attorneys used to working towards tight deadlines. Except for one notice filed by Certipost NV, all were filed by European patent attorneys on behalf of their clients. Only one has since been withdrawn. Most, if not all, of the opponents must therefore have been willing to spend substantial sums of money (most likely thousands of Euros) in getting proper advice and having their notices filed for them, together with paying the official opposition fee in each case.

As a result, at the latest count, the prosecution file runs to 7833 pages. This is a lot of material to get through, and would make dealing with and defending the oppositions somewhat time-consuming. In their letter of reply to the oppositions, the proprietor's attorney stated:

"It is believed that the large number of oppositions is due to a blog created by one Mikkel Hippe Brun which can be seen at http://blog.schemaworks.com. For example, the blog has EPO Form 2300 available as a download to enable opponents to launch an opposition [IPKat comment: this is wrong - the blog only provides a link to Form 2300 hosted on the EPO's website, and provides no clues as to how it should be filled in].

Whilst it is accepted that any person may give notice of opposition under Art. 99 EPC, it is submitted that setting up a blog to inundate the proprietor with oppositions is an abusive process which puts the proprietor as a relatively small company at a significant disadvantage. The proprietor requests that the Opposition Division bears this in mind during the opposition procedure, particularly with regard to requests for extension of time and an award of costs, if deemed appropriate."

I can see how such a large number of oppositions being filed against a patent could make its proprietor a bit annoyed, but I fail to see how anyone could be held to blame for this merely as a result of publicising the fact that i) a patent has been granted and ii) an opposition could be filed, together with some ideas that might be useful in opposing the patent. If that was the case, then perhaps the IPKat himself should be worried, after he pointed out the possibility of an opposition in another case, after which several oppositions were filed.

The main function as far as I see it of the opposition procedure is to provide a way of getting patents that should not have been granted off the register before they become much harder to remove once they become purely national rights. The EPO examination procedure, thorough though it is, is not perfect, and cannot be expected to always pick up the sort of prior art that someone working in the field of technology in question would know of. This seems to be one of those cases, and I would not be surprised if the patent does not survive being opposed. It may be hard on the proprietor, but if you play the game you have to face the possibility of others playing it too.

Rule 141 and further EPO obstructions

As if things weren't complicated enough already, what with all the rule changes this year and the looming 1 October deadline for divisional applications, the EPO will be making things a little bit more difficult for applicants as from 1 January 2011.  Changes to Rule 141 and a new Rule 70b EPC, announced in the EPO Official Journal late last year (here) will then be coming into force.  These will require applicants to provide the results of any search that has been carried out on an application from which an EP application claims priority.  Although this will add only a small further burden on the applicant or his attorney, this is in the IPKat's view another sign that the EPO is seeking to put yet further responsibility on to the applicant rather than taking the opportunity to make the system simpler and more efficient. 

Fortunately, at least one patent office is taking this as an opportunity to be a little bit more helpful to applicants for European patents.  In response to a recent notice from the EPO, the UK IPO has announced that they plan to automatically transfer to the EPO the results of any search carried out by them, relieving the applicant of the need to do this themselves.  The IPKat would like to know if any of his readers outside the UK are aware of any other similar systems being planned or put in place. 

The IPKat thinks that, in an age of increasingly interconnected worldwide computer systems, putting a new burden on the applicant to make sure that results from one patent office are provided to another is a backward step and does nothing to help the system become simpler and more efficient, which should surely be one of the main aims of the EPO (although it appears from recent experience not to be).  What the EPO and other offices (including India: see here for an example of what these kinds of requirements can end up resulting in; and don't forget the threat of 'inequitable conduct' in the US for not meeting similar requirements) should be doing instead is working behind the scenes to ensure that systems are in place to allow different offices to know what each other is doing, and not making the files of patent attorneys and patent offices over the world even more cluttered with extraneous communications about fact finding and checking just to make sure that silly little formal requirements are met (comments are to be expected regarding the word 'silly'; please go ahead). The IPKat looks forward to the day when the EPO announces that Rule 141 is to be abolished because they are able access all other patent office searches themselves, though he suspects that the rule, and equivalent rules in other countries, will be with us for some time to come.

EPO: hearings in "broccoli and tomato cases"

German newspapers today report of protests outside the EPO building in Munich yesterday relating to a Broccoli patent? What is going on? News reports state that farmers and Greenpeace activists were among those protesting arguing that patents covering "vegetables should never have been granted and must be stopped" (read reports from Deutsche Welle here and Bloomberg here and the IPKat's earlier post here)

A look at the EPO's website helps to clarify what is at stake. At hearings relating to the so-called "broccoli and tomato cases" (G 2/07, broccoli case and G 1/08 tomato case, more info can be found on the EPO's website here) relating to "essentially biological processes", the EPO's Enlarged Board in Munich is currently looking at the question of

".... whether marker-assisted selection is a biological breeding process or is a technical method and therefore patentable. Its decision on the interpretation of the relevant passage in the EPC and the definition of criteria to be applied in the patent grant procedure is likely to be published by the end of the year, but the judgment is unlikely to be announced immediately after the hearing. The patentability of plants and animals will not be discussed."

The following questions have been referred to the EPO's Enlarged Board and a decision is likely to be taken towards the end of this year.

"1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?"

More information on the EPO's website can be found here (helpfully in English). German consumers are traditionally very skeptical when it comes to anything that sounds like it might be genetically manipulated or otherwise "unnatural". Some further background relating to the Broccoli patent controversy can be found on the website of German Die Welt (in German).

This Kat wonders whether our readers feel as strongly about this as German politicians appear to?

EPO: English version of notice concerning communications under amended Rule 161 EPC

The European Patent Office has issued today an English version of its notice of 29 June 2010 (previously available only in German) concerning communications under amended Rule 161 EPC (thank you, Birgit Clark and Simon Roberts, for the pointer!). The notice concerns the calculation of the time limit according to Rule 36 EPC, brought in on 1 April 2010 (noted on IPKat here, here, here, here, here, here and here). Under Rule 36, divisionals must be filed within two years from a non-unity objection or from the first communication from the Examining Division. The question is: what is a communication from the Examining Division, namely, is a communication under Rule 161 a communication in the sense of Rule 36? The short answer is no:

A communication under Rule 161 EPC (both in its amended form as well as in the version applicable until 31 March 2010), despite emanating from the examining division in compliance with Rule 10 EPC, is not a substantive communication within the meaning of amended Rule 36(1) EPC and therefore does not cause the time limit for the filing of voluntary or mandatory divisional applications to start.

Practitioners are advised to read the notice in full here.

Another referral to the EBO: Allowability of disclaimers

There has been another referral to the EBO, and this one is not even on the EPO's website yet (thank you, Simon Roberts, for the pointer!). This one promises to be interesting - it concerns the much debated topic of disclaimers. In G 01/03, the EBO ruled that an amendment to a claim by the introduction of a disclaimer may not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim have a basis in the application as filed. Undisclosed disclaimers are (at least) permissible to restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC, to restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC and to disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons.

In appeal T6810/07-3308, the TBA is now asking the Enlarged Board of Appeal:

Does a disclaimer infringe Article 123(2) EPC if its subject-matter was disclosed as an embodiment of the invention in the application as filed?

One could call this G01/03 in reverse - the allowability of disclaiming an explicitly disclosed embodiment. The referral can be found in the minutes of the oral hearing in T6810/07-3308.

European patents and patent applications - statistics 2009

The EPO last week published its statistics on patents applied for and granted in 2009. The top ten applicants in 2009 were:

Rank	Company	Count
1.	PHILIPS	2556
2.	SIEMENS	1708
3.	BASF	1699
4.	SAMSUNG	1337
5.	ROBERT BOSCH	1284
6.	LG CORP.	1221
7.	PANASONIC	1020
8.	QUALCOMM	969
9.	TOYOTA	926
10.	SONY	913

You can find the rest of the top 100 applicants here.

The following chart shows the country of residence for the patentee of patents granted in 2009:

The chart shows a clear decline in granted patents from all major applicant countries, namely Germany, Japan and the US (the chart colours of Germany and the UK are almost undistinguishable, but a look in the corresponding table shows that Germany is the top line. Sorry, UK readers). All together, applicants from Germany, the U.S. and Japan received 61% of the patents granted in 2009. South Korea is the only one of the major filing nations that seems to (almost) hold its number of applications. The full chart is here, corresponding table here.

There is also a table on patent applications by technical field and country of origin. Unfortunately, like the rest of the statistics, it's a PDF, which makes the analysis very hard. May I suggest publishing such data as a spreadsheet in the future, allowing further processing?

Update: This graph from the annual report compares number of applications to granted patents, which is quite interesting (clicking on it will lead to a larger version which actually allows you to read the text):

G 3/08 (Software Patents) decision is out - Tufty the Cat vindicated

Back in October 2008, the IPKat reported on a referral that had been made by the EPO President Alison Brimelow to the Enlarged Board of Appeal on the subject of patents for computer-implemented inventions (or software patents for short). The issue has been commented on extensively, both here and elsewhere, and many observations (or 'amicus briefs', if you prefer) were filed in response to the referral.

At least two of the IPKat's amanuenses, including myself, as well as some more eminent people including Lord Hoffmann (see here and here) came to the conclusion that the referral was inadmissible, for the simple reason that there was in fact no divergence in the current EPO case law.

The Enlarged Board has now issued their decision, as announced on the EPO website here, with the full decision available here.  Unsurprisingly (to me, at least), they have found the questions to be wholly inadmissible.  The decision in full runs to 61 pages, but the key points are in the headnotes, which state (with some of my comments and emphasis added):

"1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112(1)(b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time [This refers to the refusal by the previous EPO President, Alain Pompidou, to consider the questions raised by the UK Court of Appeal in Aerotel/Macrossan.  For more on this, see the IPKat's post here].

2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112(1)(b) EPC.

3. As the wording of Article 112(1)(b) EPC is not clear with respect to the meaning of “different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112(1)(b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112(1)(b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified [Tufty says: This is the key point.  As the Technical Board has stated, in for example T 1227/05, they need to be able to take into account technical developments to develop their case law on patentability.  This does not mean that later decisions become "conflicting" just because they depart from older case law, a point that the President did not seem to realise at the time of the referral].

5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112(1)(b) EPC.

6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC."

After reading the headnotes, it seems that there is no need to go any further.  There is, of course, some extensive discussion about why the questions raised are inadmissible.  The EBA have arrived at the same conclusions, although via slightly different routes and at much greater length, to me.  A further key point, however, is made at 7.2.7, where the EBA states:

"Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, Section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over."

As many in the 'FOSS'/anti-patent world would undoubtedly say, perhaps it is now time for the legislator to take over. However, I would have very serious doubts about whether it will be possible to come to any sort of agreement among the member states of either the EU or the EPC that would stand any chance of resolving the issue once and for all.

The IPKat is happy that the EBA have settled this particular matter (or have they?), but he and Merpel are both quite confused by the passage about Alice Through the Looking Glass.  What is the name of the song? And what have haddock's eyes got to do with software patents?