Foreign filing licences at ten minutes to midnight

Most patent attorneys have to file applications from time to time with one or more foreign inventors. This leads to a practical problem if you know little or nothing about the patent laws of the inventor's home country.  Why? Because several countries have restrictions on inventors filing abroad without permission.  If you are faced with a non-negotiable deadline - e.g. it's ten minutes to midnight on the day of disclosure of an invention, you need to know if the filing you are about to make is likely to land your inventor in hot water.

35 USC 184

An inventor may be under an absolute obligation to file first in his or her home country (let's call it Freedonia), or may be permitted to file abroad first provided that a foreign filing licence has been obtained in advance.  Or if you're in luck, you may learn that Freedonia is generous with its technological secrets and takes no interest in where its inventors choose to file.

Some countries only impose restrictions on inventions with military or nuclear importance, while others take an equally dim view if a novelty musical toothbrush is the subject of a patent application filed abroad without permission.

Ernie forgot to check

What happens if you get it wrong? Some countries will allow you to retroactively correct a genuine mistake if you file abroad without permission, while in others there is no pardon for the crime ... and crime it most certainly is: the law will typically provide for both an eye-watering fine and harsh prison sentences for the hapless inventor (15 years in some jurisdictions), not to mention possible invalidation of any subsequently filed Freedonian patent application.

Advice from a competent Freedonian patent attorney is the safest bet, providing that you're not up against an urgent deadline, and time zones permit, and you have confidence that you are indeed asking someone competent.

If for some reason you can't contact a Freedonian colleague, information is surprisingly hard to find. The Freedonian Patent Office website, for instance, may give meticulous detail on all of the charming local filing requirements, e.g. forms notarised to apostille, drawings on Bristol board  (remember that?), and a triple-spaced specification printed on lemon-coloured rice paper in 12.5 point Comic Sans font.  But many patent office and patent attorney websites carry no guidance on whether local laws allow you to bypass their services entirely by filing abroad.

This Kat has been unable to find any comprehensive listing of all the countries that do have foreign filing restrictions or licence requirements, and perhaps more useful, a "whitelist" of the very many countries that have no such restrictions.  The latter might be more useful because if your only foreign inventor is (say) Irish and you can see from a reliable list that Ireland has no foreign filing restrictions - and this Kat can reassure you that Ireland has no such restrictions for its nationals or residents - you're home and dry and can file where you please subject to your local laws.

Some online resources list the better known countries that do have some restrictions, with the USA, UK, France, Germany, China, South Korea, India, Canada and New Zealand all being mentioned as having some level of restriction, though the requirements vary widely. Some of the "whitelist" countries with no restrictions mentioned on the same listings include Japan, Mexico, Taiwan and Australia.

That brief summary has not been verified, and it leaves unmentioned eight of the G20 nations, most of the EU, and the vast majority of the WTO countries - an enormous knowledge gap (represented by the white area on the map below). Enormous for an attorney under pressure perhaps, but surely our readers know of a more comprehensive listing, or collectively the IPKat community can crowdsource a list of which countries do and don't have a foreign filing licence requirement?

Red: restrictions. Green: no restrictions. Blue: very wet. Help colour the map

If you can enlighten the IPKat with either (i) a link to a free, online resource having comprehensive information, (ii) a brief indication of the foreign filing restrictions for a country in which you have expert knowledge, or (iii) a correction to the map above, please do so either in the comments below or by emailing the IPKat with the subject line 'Foreign Filing', and a subsequent post will collate and share the knowledge, and may serve on some future date as a ready reference for despairing attorneys and applicants facing an imminent disclosure with a multinational group of inventors.

A brief history of Freedonia here
Not to be confused with Fredonia here

Bad patents---or bad journalism? A Coda

A bit of an unsteady trigger figger led this Kat to post the blog--"Bad patents--or bad journalism"-- without its concluding points. Readers, especially those who found this post to be of interest, are invited to read on.

1. This Kat simply does not understand what The Economist intends when it urges "greater disclosure requirements of the ownership of patent portfolios", or to what problem(s) this proposed solution is directed. Readers' insights are welcome.

2. As for instituting specialist patent trial courts, the idea is more seductive than convincing. Besides the increased public costs involved in setting up such a system (an unlikely prospect in a Tea Party-driven environment), issues such as the Constitutional status of such courts, their composition, their fields of expertise, and how each such judge, based on his/her expertise, would be assigned to cases, are all wholly unclear.

3. And while we are talking about establishing specialist patent courts, how about setting up a parallel specialist court system to hear disputes involving finanical instruments, lest a non-expert jury be charged with rendering judgment on credit default swaps, mortgage-backed securities and the like. After all, the loss to the U.S. economy due to financial shenanigans is a magnitude of two or three-digit multiples greater than losses due to a less than perfect patent system.

At the end of day, my dissatisfaction with the article is about the failure to match the complexity of the subject-matter with the limitations of the journalistic platform adopted to discuss the topic. Better to focus on one patent issue at a journalistic time than to shoot scatter-gunned in various directions. The magazine's readers deserve no less.

Provision potentially "toothless" and "not very well thought-out": a less than ringing endorsement for s68 PA 1977

The Kat brings news of the decision of the Court of Appeal (Sir Robin Jacob providing a judgment with which Ward and Patten LJJ agreed) in the latest round of the Schütz v Werit dispute ([2011] EWCA Civ 927) – this time on the interpretation of s68 PA 1977. The judgment was handed down on Friday but has not yet made it onto Bailii – it is currently only available via the subscription-based Lawtel service.

Readers may recall the main dispute, handed down on 31 March 2011 ([2011] EWCA Civ 303 – noted by the IPKat here), concerning the “re-bottling” (i.e. replacing the old bottle with a new one from the same manufacturer) and “cross-bottling” (i.e. replacing the old bottle with one from a different source) of intermediate bulk containers (such as the one to the right). The Court of Appeal (Ward, Jacob and Patten LJJ) held the challenges to the patent’s validity failed and that Werit was infringing. However, shortly before the official date at which the judgment was handed down (but after the parties had received the draft judgment) Werit informed Schütz that it would be taking a point under s68 PA 1977.

The patent in question was owned by Protechna, a Swiss company, and Schütz was the exclusive licensee. As an exclusive licensee, Schütz had standing, under s67 PA 1977, to bring an action for patent infringement – having “the same right as the proprietor of the patent” in this respect. The problem was this: the license agreement was entered into at some point in 1994, but was only registered at the Patent Office in July 2008, just before the infringement action was commenced against Werit. As readers will be aware, the effect of non-registration of a transaction of this kind is detailed in s68 PA 1977. Section 68 states that:

"Where by virtue of a transaction …[etc] a person becomes the …exclusive licensee of a patent and the patent is subsequently infringed, before the transaction …[etc] is registered, in proceedings for such an infringement, the court …shall not award him costs or expenses unless -

(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or

(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter."

s68 was amended with effect from 29 April 2006 by the Intellectual Property (Enforcement etc) Regulations 2006 – itself required so as to comply with the UK’s obligations under Art 13 and 14 of the Enforcement Directive (2004/48/EC). Prior to this point, s68 prohibited the unregistered exclusive licence holder from being awarded "damages or an account of profits" rather than "costs or expenses". The infringement complained of in the main case covered both pre- and post-amendment periods.

Werit contended that Schütz was accordingly not entitled to financial compensation for any infringement occurring prior to 29 April 2006, and was also not entitled to costs. Schütz, as might be expected, took a different view, arguing that it was too late for Werit to take the s68 point at all, and that even if this was not the case it was still entitled to its costs.

Was it too late?
Werit had argued that s68 provides a complete bar on the court’s power to award costs and so it did not matter whether the point was pleaded in a timely fashion, or not. The Court agreed – as Sir Robin Jacob explained:

[16] “The purpose of the section is to make people register relevant transactions timeously. Any benefit to the defendant is happenstance. The section is not framed in terms of a defence which is there to be taken: the section says “the court shall not.”…

[17] “That being so it is unnecessary to consider whether s.68 had been properly raised.”

The construction of s68

Werit argued that on the proper construction of s68 Schütz were precluded from being awarded costs. It described the section as putting the matter to the patentee's (or in this case, exclusive licensee's) election: “if he wants damages for the non-registration period he must forego costs; if he wants costs then he must forego damages for the period of non-registration.” Accordingly, the argument went that in order to claim costs Schütz must have restricted their claim for compensation to the period following registration. This had not been done and so Schütz must go empty-handed.

The Court did not agree. As a matter of construction, Sir Robin Jacob considered that:

[22] “…You would need extraordinary (sic) powerful words to say that the patentee or exclusive licensee was turned into some sort of outlaw who could never get costs however wrongly the defendant behaved and even though all the defendant’s acts were done after registration….”

The true construction of the section was “much more straightforward”. As the Court explained,

[21] “…It is simply this: if and in so far as a claim covers a period for which a relevant transaction was not registered when it should have been (a “non-registration period”) then any const incurred during that period cannot be recovered. Costs for periods outside a non registration period are recoverable in the same way.”

Adding

[25] “There is nothing unfair about awarding a successful party its costs incurred after it has put its house in order by registering a transaction which should have been registered earlier….”

Werit’s argument that this approach might render s68 ineffective – in that an exclusive licensee who failed to get its licence registered would not lose much in the way of costs provided he remedied this situation by the time he started the action – was not considered to sway the matter. Despite agreeing that this could render the legislation toothless, the Court noted that whilst:

[27] “That is true …the previous legislation in most cases was not exactly toothy and in some cases would be toothless too. If a patentee or an exclusive licensee had failed to register the relevant transaction timeously but did so as soon as he learned of infringement or threatened infringement he would not have lost much, if anything save perhaps where the infringement was surreptitious and on a large scale. In the real world that is a rare event.”

The fact of the matter was that s68 was “not a very well thought-out piece of legislation” in either its current or original form. In respect of the period before amendment of the provision, it was agreed that Schütz was barred from claiming compensation. This said, the Court considered that there was no disability as regards costs in respect of this period. Parliament did not intend to lump one on top of the other when altering the provision.

So Shütz lost some of its costs and some of its damages, but maintained the lion’s share of the former as these would inevitably have been accrued in the run-up to trial (by which time the transaction had been registered).

However, this is not the end of the matter as, for reasons known only to themselves, on 26 November 2009 a further agreement was made between Schütz and Protechna (the patentee) replacing the existing exclusive licence with a further exclusive licence which was then not registered (says Merpel: there's a theme developing here). The Court (reluctantly) adjourned consideration of this issue for argument on the question of costs in the period after this date. We'll be seeing this one again.

Not Nexium OK for Import - Ranbaxy v AstraZeneca [2011] EWHC 1831 (Pat)

The first of two judgments handed down by Mr Justice Kitchin this morning, Ranbaxy v AstraZeneca [2011] EWHC 1831 (Pat) concerns a declaration for non infringement sought by Ranbaxy in respect of its proposed importation of a product for the treatment of complaints caused by excess gastric acid.

AstraZeneca is the proprietor of a patent (EP(UK) 1 020 461) on the use of esomeprazole (right) for the inhibition of gastric acid secretion. It markets this treatment under the trade name “Nexium”. Esomeprazole is the S, or (-), enantiomer of the racemic mixture known as omeprazole (itself marketed since 1988 as “Losec”).

The patent requires the use of magnesium esomeprazole with a high optical purity (expressed in terms of enantiomeric excess (e.e.), i.e. the fraction of the compound present as the major enantiomer less the fraction of the compound present as the minor enantiomer). It was drafted in the “Swiss form”, and claims were directed to the use of magnesium esomeprazole with an optical purity of ≥ 99.8 % e.e. for the manufacture of a medicament for the inhibition of gastric acid secretion.

Ranbaxy is an importer of generic pharmaceuticals. As noted, it sought a declaration of non-infringement in respect of plans to import a pharmaceutical product that it (unsurprisingly given the nature of the declaration sought) considered did not infringe AstraZeneca’s patent. AstraZeneca, for its part, counterclaimed alleging that it did.

The product for which Ranbaxy sought its declaration was formed from a starting material of magnesium esomeprazole with an optical purity of ≥ 99.8 % e.e. To this was added a quantity of omeprazole racemate. The resultant product accordingly no longer contained magnesium esomeprazole of that optical purity.

AstraZeneca contended that this was still an infringement – arguing that the product Ranbaxy wished to import “was the direct product of a process in which magnesium esomeprazole with an optical purity of ≥ 99.8 % e.e. is used to make a medicament for the inhibition of gastric acid secretion.”

Ranbaxy, by contrast, contended for a different interpretation – arguing that the product it wished to import was not formulated using, and did not contain, magnesium esomeprazole with an optical purity of ≥ 99.8 % e.e.

It all came down to the interpretation of the claims. Claim 1 read:

“The use of a magnesium salt of (-)-5-methoxy-2[[(4-methoxy-3,5-dimethyl-2-pyridinyl)methyl]sulfinyl]-1H-benzimidazole ((-)-omeprazole) with an optical purity of ≥ 99.8% enantiomeric excess (e.e.) for the manufacture of a medicament for the inhibition of gastric acid secretion.”

Ranbaxy contended that this was limited to use of magnesium esomeprazole with an optical purity of ≥ 99.8% e.e. for the manufacture of a medicament which contains magnesium esomeprazole of that purity. AstraZeneca, however, argued that this was a simple process claim and that as such, it was not limited to the manufacture of specific products but extended to the use of the claimed process to make any product. Accordingly, it stated that the claim covered use of a magnesium salt of esomeprazole with an optical purity of ≥ 99.8% e.e. for the manufacture of a medicament for the inhibition of gastric acid secretion irrespective of whether or not the medicament itself contained magnesium esomeprazole at all.

Following a rather nice potted history of “Swiss form” claims and second medical use (found between [42] and [61]), the Judge addressed the “crucial question, namely what the skilled person would have understood the patentee to be using the words of claim 1 to mean.” Diving into the specification, Kitchin J noted that the skilled person:

[67] “Recognising the teaching of the specification that magnesium esomeprazole with an optical purity of ≥ 99.8 % e.e. is new, he would nevertheless understand claim 1 to be directed to the use of such magnesium esomeprazole to manufacture a medicament which contains that active ingredient.”

This understanding would be backed up by appreciation that the claims themselves fell into various sets

[69] “Claim 1, as a Swiss form claim, and forming as it does the first of a cascade of claims directed to the use of optically pure magnesium esomeprazole to manufacture a medicament for the treatment of different or more specific uses, would … naturally be understood as requiring the medicament to contain the active ingredient for which the claimed use has been found.”

Accordingly, Ranbaxy was entitled to its declaration of non infringement and AstraZeneca’s counterclaim for infringement failed.

Unitary patents: how Spain takes on the rest of Europe

Casually checking the Curia website for signs of excitement on a Monday is usually a bit of a waste of time.  This Kat was prowling around the site in the hope that perhaps some careless bureaucrat had inadvertently posted tomorrow's ruling in Case C-324/09 L’Oréal v eBay a day early. The Kat's curiosity was rewarded -- but not in the way he'd hoped.  Instead he found a real live action brought by the Spanish against our lords and masters in the Council of the European Union itself: Case C-274/11 Kingdom of Spain v Council of the European Union, to be precise.  This is an action to annul Council Decision 2011/167 of 10 March 2011 authorising enhanced cooperation in the area of the creation of unitary patent protection (OJ 2011 L 76, p. 53). The legal substance of the Spanish case runs like this:

"Pleas in law and main arguments 

1. Misuse of powers since recourse was had to enhanced cooperation although the purpose is not to achieve integration of all the Member States - the mechanism having been used instead to avoid negotiating with a Member State, imposing upon it an opt-out solution - and although the objectives pursued in this instance could have been achieved by means of a special agreement as provided for in Article 142 of the European Patent Convention. 

2. Failure to respect the judicial system of the EU in that no dispute resolution system is provided for in relation to certain legal rights subject to EU law. 

3. In the alternative, should the Court find that it is appropriate in this instance to have recourse to enhanced cooperation and that it is possible to establish substantive rules for legal rights subject to EU law without making provision for a dispute resolution system in relation to those rights, the Kingdom of Spain submits that the necessary conditions for enhanced cooperation are not met for the following reasons: 

3.1 infringement of Article 20(1) TEU (that's the Treaty on European Union, not to be confused with ...), since in this instance enhanced cooperation is not a last resort and does not fulfil the objectives provided for in the TEU and since areas are referred to which are not within the scope of enhanced cooperation as they are exclusive competence of the EU. 

3.2 infringement of Article 326 (... the Treaty on the Functioning of the European Union) TFEU, since enhanced cooperation in this instance infringes the principle of non-discrimination and undermines the internal market and economic, social and territorial cohesion, constituting discrimination in trade between Member States and distorting competition between them. 

3.3 infringement of Article 327 TFEU, since the enhanced cooperation does not respect the rights of the Kingdom of Spain, which is not participating in it".

Spain has taken on the rest of Europe before -- winning in commendable style -- but this is different, notes the IPKat: it's not the other bits of Europe that Spain is challenging this time, so much as the rules of the game themselves. Hmm, says Merpel, the politics gets really interesting once you bring football into it.  Spain's prowess is, to a considerable extent, owed to the excellence of a team from Catalonia, the little of the planet that uses the .cat top level domain.

If you think this is big, you should've seen the one that got away... MedImmune v Novartis [2011] EWHC 1669

…Call me Ishmael. Some years ago – never mind how long precisely – having little or no money in my purse, and nothing particular to interest me on TV, I thought I would commence reading some patent judgments and see a bit of the workings of the law.

Chief among my motives was the overwhelming idea of the great whale of a judgment itself. Such a portentous and mysterious monster roused all my curiosity. Then the wild and distant seas of jurisprudence where he rolled his island bulk; the undeliverable, nameless perils of the whale; these, with all the attending marvels of a thousand Patentability and Infringement-related sights and sounds, helped to sway me to my wish. With other Kats, perhaps, such things would not have been inducements; but as for me, I am tormented with an everlasting itch for things remote. I love to sail forbidden seas, and land on barbarous coasts (bordered, no doubt, by the treacherous rocks of prior art). And so I set sail...

Uttering profound apologies to the memory of Herman Melville for hijacking his text; this Kat believes his quest may be over. Sighted this morning, breaking the surface just off the Strand, the judgment of Mr Justice Arnold in MedImmune v Novartis [2011] EWHC 1669 (Pat) certainly fits the legend.

In characteristic style, the judgment is as comprehensive as one would wish. To be fair, this is not a simple case, dealing as it does with issues of infringement and validity of a family of patents in the field of biotechnology and immunology. The issues covered in the judgment span the gamut from construction and infringement through priority, obviousness and insufficiency to added matter. Nevertheless, containing a little over 71,000 words spread over 578 paragraphs and 161 pages - registering as a full 8.4 on the Arnold Scale - this is no lightweight. It is a judgment that one can almost hear proclaim “this is the law” (in a style redolent, no doubt, of Chris Morris introducing the news in The Day Today (see 0:25 in the clip)), before adding “and there are some factual matters too. Quite a few actually…”

For the budding pharmacologists and biotechnologists amongst you, the judgment commences with a rather nice introduction to the science of amino acids, proteins, nucleic acids, genes and genetic engineering. For those less interested in these matters, the discussion of the legal stuff commences around [91]. First, however, the context.

Background
Evidently, there were some patents. The precise relationship between them requires this diagram (left) to explain. The patents were owned jointly by MedImmune and MRC, who alleged that they had been infringed by Novartis’ sales of ranibizumab, a pharmaceutical product sold under the trade mark Lucentis and is approved for the treatment of an eye condition known as wet age-related macular degeneration. Novartis counterclaimed challenging the priority of the patents, and also threw the invalidity kitchen sink at the claimants by alleging obviousness and insufficiency as well as challenging it on the basis of added matter.The Judge commenced his discussion of the law by identifying the skilled person – a team a team consisting of an immunologist and a molecular biologist with some experience in antibody engineering/protein chemistry/cell biology. He then considered the duties and responsibilities of the expert witnesses, noting that:

[114] “The law reports are littered with cases, including some patent cases, in which judges have criticised expert witnesses for failing to be objective or in other ways. It is regrettably true that from time to time an expert witness does succumb to the temptation of giving partisan evidence, and that is clearly unacceptable. But I wish to emphasise that the lawyers who instruct expert witnesses bear a heavy responsibility for ensuring that an expert witness is not put in a position where he can be made to appear to have failed in his duty to the court even though he conscientiously believes that he has complied with that duty. It is also important that courts should be cautious about criticising an expert witness purely on the basis of omissions from his report unless it is clear that the fault lies with the expert rather than those instructing him, bearing in mind that the court will not usually be privy to the expert’s full instructions (whatever may be the effect of CPR r. 35.10(4), which it is not necessary to go into for present purposes).”

With this in mind, Arnold J turned his attention to the experts in the case. Following some discussion on the matter, all were considered to have complied with their duties to the court.

Construction
Issues of construction are dealt with between [249] and [302]. There is little to report: the summary of the law given in Virgin Atlantic v Premium Aircraft Interiors [2009] EWCA Civ 1062, [2010] RPC 8 was applied and the relevant phrases found within the claims were construed in light of the specification and drawings. No dictionaries were harmed (or even mentioned) in the construction of the claims, which can only be a good thing.

Priority
Moving, then, to the question of priority (see [303] to [345]), the Judge referred to his own earlier opinion in Intervet UK v Merial [2010] EWHC 294 (Pat), which the parties agreed was an accurate summary of the relevant principles. Accordingly, the essential question was whether the relevant patents could find support from matters disclosed in the prior application – in this case a document referred to as PD3 (UK Patent Application No 9 024 503, filed 12 Nov 1990). Following in-depth consideration of the technical disclosure of PD3, Arnold J concluded that Novartis’ attack succeeded: neither of the claims under investigation were entitled to priority from PD3 – the earlier document’s disclosure had not directly and unambiguously given the skilled person what was in the claim whose priority was in question.

Obviousness

When assessing the obviousness of the patents, the Judge applied the tried and tested Pozolli reformulation of the classis Windsurfing test. There were two pieces of prior art over which the patents were claimed to be obvious: the first was a paper referred to as Parmley & Smith, and the second was a conference paper delivered by Professor Smith (of Parmley & Smith fame) in Banbury. Whereas the published paper was not considered to render the claimed inventions obvious, the Judge considered that:

[411] “…there can be no serious dispute that Professor Smith’s talk made it obvious to try phage display of antibodies provided that there was a sufficient expectation of success having regard to the other factors considered above. The only question is whether it would have given the skilled team a reasonable expectation of success within a reasonable time.”

The main issue was accordingly whether it was obvious to try the techniques described in the talk. Mr Justice Arnold explained that his

[412] “…assessment of the evidence as a whole is that the message Professor Smith conveyed was a positive one: he was reasonably confident of success, while recognising that success was not guaranteed because there were potential problems. Furthermore, as the skilled team would have appreciated, his confidence was not the result of blind optimism, but of the work and scientific analysis he had undertaken.”

The Judge continued, noting that:

[420] “Subject to consideration of the secondary evidence relied on by each side, the conclusion which I draw from the evidence is that Professor Smith’s talk at the Banbury Conference would have given the skilled team a reasonable expectation of success within a reasonable time. Not merely did he explicitly propose antibody phage display, but in addition he said that he was going to do the experiment. Furthermore, he addressed the concerns which arose out of Parmley & Smith and gave reasons as to why he nevertheless considered the experiment worth carrying out, as well as explaining potential solutions if problems were encountered. Finally, his tone was one of encouragement.”

Following discussion of the secondary evidence – some of which was alleged to suggest that the claimed inventions were not obvious (including Professor Smith’s own work in which he expressed disappointment with the results of some relevant experiments (see discussion at [431]), the reaction to the invention ([437])), and some the opposite (that other people had the same idea at around the same time (see [438] to [455])) – the Judge concluded that the claimed inventions were obvious in light of the prior art. He noted that:

[457] “…the Opposition Division rejected the allegation that 877 was obvious over Professor Smith’s talk at the Banbury Conference. This was on the ground, however, that “the contents of the oral disclosure by Dr Smith in April 1990 have not been sufficiently substantiated”: see [17.2]. It appears that the only evidence before the Opposition Division on this point was a declaration of Dr Plückthun (which is not in evidence before me) and Professor Smith’s grant application. By contrast, in the present case I have had the benefit of detailed evidence from Professor Smith. Furthermore, in the light of that evidence, MedImmune did not dispute the content of the disclosure.”

Insufficiency

Moving on to the question of insufficiency, the Judge explained that

[458] “A patent is invalid “if the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art” (section 72(1)(c) of the 1977 Act). Unlike section 32(1)(f) of the Patents Act 1949, the 1977 Act does not provide that it is a ground of invalidity that “any claim of the complete specification is not fairly based on the matter disclosed in the specification”. This is because no such ground is provided for by the EPC. Nor has the position changed in this respect following the coming into force of EPC 2000.”

Nevertheless, the House of Lords had considered, on no less than three occasions, how an overly broad claim might be struck down if mistakenly granted (in Biogen Inc v Medeva plc [1997] RPC 1; Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9; and Generics (UK) Ltd v H. Lundbeck A/S [2009] UKHL 12, [2009] RPC 13 – a useful summary of the findings of the last case is found at [475]).

Turning to the facts before him, Arnold J explained (at [485]) that the relevant claims were “method claims of fairly broad scope, and not claims to a single product.” To this extent, he noted, the facts were “much closer to Biogen v Medeva and Kirin-Amgen v Hoechst than it is to Generics v Lundbeck”.

He concluded that MedImmune was –

[491] “… correct to characterise the invention disclosed in the Patents as a principle of general application. At its core, it is a technique for selecting a binding molecule of interest from amongst a potentially large population of other binding molecules. The technique does not depend on the precise identity of the binding molecule. On the contrary, part of the usefulness of technique is that it can be applied to a diverse range of binding molecules, fragments and derivatives. Nor does the technique depend on the precise application which the user has in mind. Nor does implementation of the technique for the purpose of a new application involve undue burden on the part of the skilled team….”

Accordingly, the relevant claims were not invalid on grounds of insufficiency.

Added Matter
A patent is invalid, according to s72(1)(d) PA 1977 if “the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed”. Lord Justice Jacob had summarised this (when Jacob J) in Richardson-Vicks’ Patent [1995] RPC 568 at 576 (this wording being subsequently adopted by the Court of Appeal in Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10) as follows:

“I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.”

Applying this to the facts, Mr Justice Arnold was of the opinion that the specification as filed contained clear disclosure of the relevant material and the claims of the patents in issue accordingly did not disclose any new matter.

Infringement
Turning finally to the issue of infringement, MedImmune had alleged that the process by which Novartis manufactured ranibizumab fell within their claims, and that accordingly the ranibizumab so produced was a product obtained directly by means of that process. This was important as the process in question was carried out in the U.S. and therefore s60(1)(b) could not bite (it requiring that the process be used in the UK). This left only s60(1)(c).

Novartis denied that the ranibizumab it produced was made by the patented process. The Judge agreed. Accordingly, there could be no infringement, but Arnold J nevertheless went on to consider the meaning of “product obtained directly” within s60(1)(c). He noted that the leading English authority on the section was the decision of the Court of Appeal in Pioneer Electronics Capital Inc v Warner Music Manufacturing Europe GmbH [1997] RPC 757. This he stated (at [539]) had “decided that a product could be obtained directly from a claimed process despite further processing provided that there was no loss of identity, there being no such loss where it retained its essential characteristics.” Rejecting Novartis’ arguments to the contrary, the Judge therefore concluded (at [549]) that if Novartis’ ranibizumab had been produced by a process falling within the relevant claims of MedImmune’s patents then it would have been a product obtained directly by means of that process, infringing under s60(1)(c). This conclusion was not affected by Art 8(2) of the Biotech Directive.

And thus, the whale is beached.

Hargreaves in the wild: The Top 10 Recommendations

Drum-roll please: the Report that we have all been waiting for since a cold November morning on a roundabout in Shoreditch has entered the wild. Entitled “Digital Opportunity”, complete with a picture that Adobe tells me is “cover image showing digital studio” (although it fails to mention that this has been mixed with what looks like a photo of the inside of a PC - still, it beats a lightbulb), the Report weighs in at 130 pages, split into 11 chapters and four appendices.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

For those short of time, the Executive Summary begins on page 3 and ends on page 9. There are 10 recommendations (pages 8 & 9) running the gamut from International Priorities through Copyright issues to Patent Thickets and the Enforcement of IP.

The Executive Summary notes that:

“Taken together, the Review proposes a clear change in the strategic direction of IP policy direction designed to ensure that the UK has an IP framework best suited to supporting innovation and promoting economic growth in the digital age. This change is modest in ambition and wholly achievable.

The Review’s specific recommendations would support growth of the UK’s increasingly intangibles intensive economy. This requires:

• an efficient digital copyright licensing system, where nothing is unusable because the rights owner cannot be found;
• an approach to exceptions in copyright which encourages successful new digital technology businesses both within and beyond the creative industries;
• a patent system capable of preventing heavy demand for patents causing serious barriers to market entry in critical technologies;
• reliable and affordable advice for smaller companies, to enable them to thrive in the IP intensive parts of the UK economy;
• refreshed institutional governance of the UK’s IP system which enables it to adapt organically to change in technology and markets.”

So what, I hear you ask, are these recommendations? Well, apart from a couple of rather bland statements that: the “Government should ensure that development of the IP System is driven as far as possible by objective evidence”, as opposed, for example, to simply making things up; and “The UK should resolutely pursue its international interests in IP, particularly with respect to emerging economies such as China and India, based upon positions grounded in economic evidence”, the unified EU Patent Court gets a significant endorsement – the Report stating that the Government should “attach the highest immediate priority” to achieving this aim.

Copyright is, as expected, singled out for more extensive developmental opportunity, to coin a phrase. Appointment of a senior figure to oversee the design and implementation of a “cross sectoral Digital Copyright Exchange” framework is suggested (nominations in the comments section please), as is Government support of moves by the European Commission to establish a framework for cross border copyright licensing.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

Orphan works are also included in the review, with suggestions that the Government should establish extended collective licensing for mass licensing of orphan works, and a clearance procedure for use of individual works. Copyright clearance clearly being the name of the game as far as the Report is concerned.

Continuing the Copyright theme, the Report also suggests that the “Government should deliver copyright exceptions at national level to realise all the opportunities within the EU framework, including format shifting, parody, non-commercial research, and library archiving. The UK should also promote at EU level an exception to support text and data analytics.” For those that are wondering, the wholly fictitious Parody Act of 1852 gets nary a mention (much to Merpel’s consternation).

In the Patent field, the problem of thickets and other obstructions to innovation are the focus of the Report’s ire. With this in mind, the Government is advised to take “a leading role in promoting international efforts to cut backlogs and manage the boom in patent applications by further extending “work sharing” with patent offices in other countries. It is also advised to be vigilant in ensuring that “patents are not extended into sectors, such as non-technical computer programs and business methods, which they do not currently cover, without clear evidence of benefit” – ‘not just for the sake of it’ is a theme running throughout the Report. Finally on the patent side of things, if the Government acts on the proposals then it looks like fees are to rise, as the Report advises the Government to:

“investigate ways of limiting adverse consequences of patent thickets, including by working with international partners to establish a patent fee structure set by reference to innovation and growth goals rather than solely by reference to patent office running costs. The structure of patent renewal fees might be adjusted to encourage patentees to assess more carefully the value of maintaining lower value patents, so reducing the density of patent thickets.”

Designs are not neglected either. The Report suggesting that the IPO should, in the next 12 months, “conduct an evidence based assessment of the relationship between design rights and innovation, with a view to establishing a firmer basis for evaluating policy at the UK and European level”.

The work of another Hargreaves –
which is the more apt descriptor of the report?
The choice is yours…

Despite coming at number 8 in the list, the section on Enforcement of IP rights is noted to contain some “urgent” recommendations. The enforcement regime set out in the Digital Economy Act 2010 (DEA), that much-beloved piece of legislation swept out of Parliament’s door in the wash-up just before its dissolution last year, is targeted for specific monitoring when it comes into force next year. Hargreaves noted that this is “urgent and Ofcom should not wait until [the provisions enter into force] …to establish its benchmarks and begin building data on trends.” The Report also suggests the introduction of “a small claims track for low monetary value IP claims in the Patents County Court” in order to support rights holders in enforcing their rights.

The final two recommendations concern suggestions that the IPO seek to facilitate improvements in the accessibility of the IP system for small companies, and that it “be given the necessary powers and mandate in law to ensure that it focuses on its central task of ensuring that the UK’s IP system promotes innovation and growth through efficient, contestable markets”, including the power to provide “statutory opinions where these would help to clarify copyright law.”

If the recommendation is followed, we can also expect to see an impact report on the measures advocated by the review at some point in 2013.

Summary over, this Kat is now off to read the report in a little more detail.

Update: as the IPKat's friend Mary-Ellen Field has pointed out, the fictitious Act of 1852 is not the only thing to have nary a mention in the Report: she notes that "the words 'trade' and 'marks' are not mentioned" either.

GIPI3: how do you rate?

Recently this Kat was fortunate to attend the launch of the Third Report of the Global Intellectual Property Index (GIPI) at the London office of European law firm Taylor Wessing. After a helpful introduction by team leader Roland Mallinson, there was then a lively discussion of the findings of the survey, with key team members from Taylor Wessing on hand to answer specific questions.

For those unfamiliar with the concept of GIPI, it is an evaluation of the attractiveness of 24 national jurisdictions for obtaining, exploiting, enforcing and attacking the key IP rights (trade marks, patents, copyright and designs). In a new twist, this year the survey also considers personal data requirements for the first time. The survey combines and weights 43 instrumental factors from 14,000 individual responses. It functions to give a better insight on doing business in a particular jurisdiction rather than relying on anecdotal evidence such as ‘trials of patents in Country A take years’ or ‘it is quick to register a trade mark in Country B than Country C’. In doing so, it hopes to create a melting pot of empirical evidence to encourage better laws for doing business in those jurisdictions.

In theory, five kinds of rights, across 24 jurisdictions according to 43 instrumental factors would be enough to strike fear into the hearts of most Kats. However, to their credit, the team at Taylor Wessing has produced a highly readable report. In particular, it provides a number of tables which group jurisdictions into five tiers of competitiveness for each individual right as well as an interesting commentary on significant changes since GIPI2.

The key table is:

Some important insights from this table include:

· Germany scored three 1st positions in the individual IP indices but last for the personal data index.· Russia has pulled away from the other BRIC countries.
· Common law countries made up seven of the top 11 jurisdictions.
· India ranked last overall in three of the five indices.
· Apart from Australia, all six of the top tier jurisdictions ranked consistently well for all individual IP indices except for the personal data index. This in turn raises the concern that data regimes in these countries are weighted too much against business.

In addition to the detailed discussion of the individual IP rights, some general overarching themes also emerged from the survey. These include:

• 62% of respondents said that they had spent more time on IP issues over the last three years.
• 60% of respondents felt that IP law needs updating to keep up with technological and online business developments.
• Value for money is increasingly important for businesses in choosing where to litigate.
• There are improved perceptions of EU harmonisation: 8% decrease in variance between the lowest and highest ranked EU Member States.

The IPKat says that the team at Taylor Wessing are to be congratulated for collating, analysing and presenting such an important and accessible report. He looks forward to GIPI4 to see whether the laws of individual jurisdictions have responded to the interesting questions raised in GIPI3.

Merpel wonders whether the UK could score as highly in the Eurovision Song Contest as it does in the GIPI3.

Why do Chinese academics file so many patents?

A few weeks ago this Kat published her first report from the Global Forum on Intellectual Property. This report included a summary of Professor Williamson's (University of Oxford) presentation which showed a variety of pie charts, one of which that indicated that as much as 23% of patents applied for were from academic institutions in China, compared with only 7% in the US. This Kat, now fervently watching the academic patent debate with the Stanford v Roche patent battle now before the Supreme Court (reports here and here), asked whether readers could explain why there was such a higher per cent of academics filing patents in China. The IPKat called and her lovely readers answered in the form of Michael Lin of Marks & Clerk (Hong Kong). Writing from his personal opinion and not in his professional capacity, Michael says this:

"The reasons why you are seeing such a large increase in Chinese Patents filed by Academics is that for them 1) it's free and 2) they get academic credit for it. Filing patents is encouraged by the Chinese Government and Academia. The Chinese Government has given Universities (as well as local companies) funds for filing patents in order to spur innovation - one measure of which is the number of patents filed by China, as a country. Also, the Chinese Universities are ranked against each other according to how many patents they've filed. As a result, Chinese Universities have adjusted their tenure requirements and expectations such that professors who want to advance are virtually required to file patents as well as to publish papers. In one specific University I know of, filing a patent is "worth" 3 published papers. This practice has been around for at least 2.5 years. Thus you are seeing (proportionally) a very large number of Chinese Academics filing patent applications in China.

Notice all of this relates to filing patent applications - there is no discussion above about actually getting them granted, or any other such matters.

This is also a major factor as to why there is such an amazing increase in Chinese Patent filings (in the Chinese Patent Office) in 2008-10, while filings everywhere else in the world were dropping."

The reason for these incentives could be tri-fold. Economically the programs of incentives are part of China's 50-year technology plan which is confirmed by the National Patent Development Strategy released a few weeks ago (click here to see the English translation). Politically, being able to show an increasing number of patent filings to the rest of the world can be seen to legitimize China's dedication to IP and IP protection - an area which they are oft-criticized. The third reason is that socially, the Chinese Government realizes that it is essential to shift from a manufacturing economy to a research & development economy, which may help pacify rising dissent in the countryside. By increasing, or at least showing, an increasing level of innovation this may also instil in the Chinese public a sense of pride and nationalism (see, the Beijing Olympics).


What is missing from the data, and as the IPKat identified during Professor Williamson's speech is how many of these filings result in grants? Further, how many of those grants enter countries via the Patent Cooperation Treaty (PCT)? Do such numbers exist?

And what do UK and US academics think about a system where their academic standing can be judged by how many patents one files?

The IPKat would like to thank Michael for his e-mails and invaluable insight into an area that many of us on this side of the world seldom have an opportunity to explore.

Lord of the Flies buttons down ill-drafted statute provision

This handy device is useful for
dealing with unwanted flies in court ...

When one sees the words "fly" and "Shanks" in a shared context, many a reader may involuntarily summon up an unsavoury image of annoying insects hovering around a leading brand of bathroom fixtures,  However, this is far from the case with today's post.

Back in December 2009, in the Patents Court for England and Wales, Mr Justice Mann gave a ruling in Shanks v Unilever plc and others [2009] EWHC 3164 (Ch), noted here by the IPKat.  The case was a dispute over Professor Shanks' claim for compensation as an employee inventor. The Patents Act 1977, sections 39-42 provides a set of rules for dealing with employees' inventions, as well as for rewarding those inventors whose patents are particularly beneficial to their employers.. Anyway, Mann J's decision hinged on the interpretation of the Patents Act 1977, s.41 which provides, in relevant part:

"An award of compensation to an employee ... in relation to a patent or an invention shall be such as will secure for the employee a fair share (having regard to all the circumstances) of the benefit which the employer has derived, or may reasonably be expected to derive, from the patent or from the assignment, assignation or grant to a person connected with the employer of the property or any right in the invention or the property in, or any right in or under, an application for that patent ...

(2) ... the amount of any benefit derived or expected to be derived by an employer from the assignment, assignation or grant of–(a) the property in, or any right in or under, a patent for the invention or an application for such a patent; or

(b) the property or any right in the invention; to a person connected with him

shall be taken to be the amount which could reasonably be expected to be so derived by the employer if that person had not been connected with him" (emphasis added)

So what were the facts? Shanks' invention led to a patent for measuring activities which was later used in blood testing kits for diabetics. In June 1984 his employer, Unilever Central Resources, transferred the patent to a related company Unilever plc for a nominal consideration. After an initially slow start, Unilever plc licensed its use to various persons and derived licence royalties of around £23m [Enough to buy a reasonably good soccer star, notes Merpel, but not to pay his wages].

Having commenced proceedings for compensation under the Patents Act 1977, s.40, Shanks applied to admit a supplementary statement of case that required consideration of the true interpretation of the words 'that person'. According to the hearing officer, 'that person' referred back to a connected person, and thus referred to that specific person, modified only by considering what that specific person would have done if such a person had not been connected with the employer. He explained his reason thus:

"If a hypothetical person had been intended, the legislator could have said "a person" instead of "that person". As a matter of English, the use of the word "that" would seem to clearly indicate that the specific person previously identified is the one referred to".

He then refused the application.  Shanks' appealed successfully to Mann J.  The judge was asked to consider whether the 'deemed counterparty' to the hypothetical transaction was the actual counterparty with the connection element removed, but with all the other attributes of that person in place, or whether it should simply be treated as being a normal unconnected arms-length purchaser with no special attributes.  In his view Parliament, in using the formulation in question, had intended to refer to a notional non-connected counterparty operating in the appropriate market at the appropriate time. That understanding was not inconsistent with the assumption, in the case of other actual transactions leading to benefits, that an employer was likely to want to exploit the patent properly and not give away its benefits, even though the words used did not impose a positive obligation on the employer to do so. The words 'that person' could not sensibly be taken as being the actual purchaser: to do so would risk introducing absurdity into the hypothesis, leading to absurdity in the result. He said:

"42. I therefore conclude that the hearing officer's final formulation of the meaning of "that person" in section 41(2) is wrong. One does not treat that person as being the precise real person with all the same characteristics (commercial warts and all) as that person has but simply without the connection. I consider that in using the formulation that it did, Parliament was, perhaps a little clumsily, intending to refer to a notional non-connected counterparty operating in the appropriate market at the appropriate time. This is not inconsistent with its assumption (in the case of other actual transactions leading to benefits) that an employer is likely to want to exploit the patent properly and not give away its benefits, albeit (as I have observed) that it did not impose a positive obligation on the employer to do that.".

Today the Court of Appeal, in [2010] EWCA Civ 1283, disagreed.  Lord Justice Jacob, with whom Mr Justice Kitchin and Lord Justice Longmore noddingly concurred, said

"31. The Judge only departed from the "natural meaning" of "that person" as meaning the actual assignee because he thought it could produce uncommercial results. But that was predicated on the basis that one is to exclude the known facts about exploitation. Once one brings them in the uncommercial results fall away. And in any event the Judge's conclusion can lead to equally uncommercial results the other way [as Jacob LJ demonstrates earlier in his judgment].

32. In truth this is one of those provisions which is so ill-drafted ... that one has to be guided by its evident purpose (ascertainable from the paradigm case) to ascertain its meaning. My old head of Chambers, Thomas Blanco White QC, used to call this approach to construction of an ill-drafted provision "sewing the fly buttons on the statute"".

The IPKat wonders how many young readers are even familiar with the fly button, the cause of many a problem for whose with poor dexterity or whose fingers were numbed by lack of central heating.

Merpel notes that the term "fly buttons" has somewhat changed of late.

Old Levi's Fly Button commercial here
Lord of the Flies here

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.

EU Patent Stumbling Again?

The EU Patent. Three words (if you’ll accept the acronym) that have promised much, but delivered little, over the many years that have passed since the idea of a unitary European patent was first floated.

For those unversed in the twists and turns of patent law’s development within Europe, it is probably worth mentioning that the EU Patent differs significantly from the “European Patent” that is administered and granted under the European Patent Convention (EPC) by the European Patent Office (EPO) in Munich. The latter provides a system of centralised application, examination and grant of “European Patents”, but upon grant these fragment into national rights (imagine the mincing machine (right) with application in at the top and patents out at the side and you’ll get the idea). The EU Patent, on the other hand, has as its goal a single patent for all member states of the EU (i.e. the same model of protection adopted by the Community Trade Mark).

The EU’s (or, strictly speaking, European Economic Community’s (EEC), as it was known then) involvement in patent law began in the late 1950s with but one clear goal: providing for the unity of the Common Market. Its rationale was simple: the territorial nature of the patent grant, amongst other things, was seen as a potential stumbling block to free-trade within the EEC and therefore attention was directed to remedy this. Thus a move towards what Van Empel describes in his classic analysis of the European Patent Convention – The Granting of European Patents, (Sijthoff, Leyden, 1975) – as the creation of a “unitary and autonomous European Patent for the Common Market as such, governed by Community law proper and dealt with by Community Institutions” was begun.

However, this initial work on an EEC patent ground to terminal halt in 1965 due, primarily, to a lack of agreement on the advisability, or otherwise, of permitting external states (including the UK as a (then) non-EEC member) to participate in the process. In many respects this first EEC attempt at a Draft European Patent Law tried to do too much by attempting to provide both a Common Market strategy which included the possibility of association on the part of non-members, and an international patent for an unspecified number of countries, under one roof. Tensions rose: the French, for example, following President De Gaulle’s infamous grand ‘non’ to the UK’s proposed entry into the Common Market in 1963, were less than content with any proposal to open the doors of an EEC patent to third states that would inevitably include the UK. Thus, the tension created by “incompatible objectives” eventually resulted in a decision to divide European patent law into two parts, the Common Market themes being catered for under the Community Patent Convention, leaving the non-EEC elements to be dealt with under what became the EPC.

To cut a long story short(ish), the Council of Europe’s proposals for a harmonised system of application, examination and grant eventually came to fruition in 1970s when the EPC entered into force. The drive towards a unitary European Patent has, however, been a far bumpier ride.

And it's not getting any smoother.

Whilst the agreement reached in December 2009 [press release here: Agreement here: [.pdf alert], during the Swedish presidency of the EU, mapped out many of the main issues, a big one was left out. Therefore, in much the same way as the coffee creams get left until the end of a box of chocolates, it left the thorny question of language to be determined at a later date. [Update: for some reason this paragraph disappeared when this was first posted. Sorry]

Enter the Belgian presidency, cue a commitment to finish the process [which, notes Merpel, given the history, is a bold move indeed!], and round 2 has kicked off.

The Commission proposal (link to proposal: here [.pdf alert]. Link to press release accompanying proposal: here), as it currently stands, would require EU Patents to be “examined and granted in one of the official languages of the EPO – English, French or German. The granted patent will be published in this language which will be the authentic (i.e. legally binding) text. The publication will include translations of the claims into the other two EPO official languages.

"No further translations into other languages will be required from the patent proprietor except in the case of a legal dispute concerning the EU patent. In this case, the patent proprietor may be required to provide further translations at his or her own expense. For example, the proprietor may have to supply a copy of the patent into the language of an alleged infringer, or into the language of the court proceedings when this is different from the language of the patent.”

The proposal also sets out accompanying measures to be agreed “in order to make the patent system more accessible to innovators.” Prominent amongst these is the suggestion that “high quality machine translations of EU patents into all official languages of the EU should be made available.” In addition, where applicants come from EU Member States that have official languages outside of the official three, they “shall continue to have the possibility to file applications in their own language. The costs of the translation into the language of proceedings of the EPO will be eligible for additional compensation, beyond what is currently already in place for European patents, including financial and technical assistance for preparing these translations.”

However, Italy and Spain are widely reported as being the most doggedly opposed to the trilingual proposal, preferring either multi-lingual or monolingual regimes (the latter using English as the language of choice).

If reports such as that on as Euractive.com, which proclaims that “A final deal on the EU patent was still being held hostage by divergent national interests”, are to be believed, then it would appear that the dreaded language issue may, once again, derail the process. Belgium certainly has its hands full with this presidency.

Thanks to Lisa Peets (Covington & Burling LLP) for the pointing out the EurActive article.

Lost in translation: here, here and here

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?