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The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys (also known as patent agents) in the UK. The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 1800 registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 3000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
Ensuring that your trainee patent attorney receives the training that they need can be a valuable but time-consuming task. Base your training programme on the newly-updated CIPA Training Manual, and you have a structured framework of study already prepared.
The Patents Training Manual
Features include: Authoritative chapters written by fellow patent attorneys based on their practice experience Encouragement to the trainee to play an active role in the their learning and tie in their studies with practice in the workplace A training log allowing the both the trainer and the trainee to chart and monitor progress in both study and work experience Suggestions as to further study and links to examination syllabi Real-life scenarios to challenge the trainee Volume 1 covers core patenting tasks, Volume 2 will explore post-grant procedures and Volume 3 will consider international patents.
The Patents Training Manual
The Patents Training Manual
Price ÂŁ75.00
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The Patents Training Manual
2010
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All rights reserved.
No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without prior written permission, except for permitted fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of a licence issued by the Copyright Licensing Agency in respect of photocopying and/or reprographic reproduction. Application for permission for other use of copyright material, including permission to reproduce extracts in other published works, shall be made to the Chartered Institute of Patent Attorneys. Full acknowledgement of author, publisher and source must be given. Š 2008. This Manual is produced and published by the Chartered Institute of Patent Attorneys under licence from the individual authors as copyright owners each of whom has asserted his or her individual moral rights. First printed in 2008, reprinted with updates in 2010. Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-33-2 Printed and bound by Intype Libra Ltd., Wimbledon Cover design by Stealth Communications, Manchester
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Contents Editor’s Note......................................................................................................... 5 Introduction .......................................................................................................... 7 1. History of patents and the patent profession ............................................... 13 2. The role of the trainee .................................................................................... 19 3. Business practice........................................................................................... 31 4. Legislative structure....................................................................................... 69 5. Sources of information .................................................................................. 89 6. Patentability: General issues ....................................................................... 105 7. Patentability: Specific issues....................................................................... 123 8. Other requirements for grant ....................................................................... 139 9. Inventorship: Ownership of inventions and disputes about ownership ........ 153 10. Infringement and claim interpretation ....................................................... 171 11. Structure of a patent application............................................................... 191 12. Drafting a patent ........................................................................................ 203 13. Filing strategies: an Introduction............................................................... 215 14. Filing strategies (UK).................................................................................. 229 15. Filing strategies (EP) .................................................................................. 245 16. Filing strategies (PCT)................................................................................ 267 17. Prosecution through to grant .................................................................... 291 18. Preview of main features of next volume.................................................. 315 Index ................................................................................................................. 319 Training log ....................................................................................................... 326
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Editor’s note to the First Revised Edition Two years on from the concerted team effort of putting the Manual together and here we are again! Although we have not seen huge law changes over that period, the success of the Manual has occasioned a reprint and the chance to update the work with case law and statutory developments. It has also allowed the authors the welcome opportunity to reread without the pressure of deadlines, and with fresh eyes, and we hope that the outcome will be even better for it. Thanks are due again to the various contributors for giving up their time and donating their experience and wisdom, and to CIPA for supporting and continuing to press forwards with this valuable work. Gwilym Roberts Kilburn & Strode LLP
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Introduction Purpose and structure of the Patents Training Manual This manual has been devised to act, primarily, as the focus for dialogue between the trainee patent attorney and those responsible for their training and development. It may, for example, form part of the organisation’s training plan for the employee. Although mention is made of relevant CIPA/ITMA Joint Examination Board papers (UK Papers) and the European Qualifying Examination (EQE), this manual should not be used as the only source of information in preparation for sitting these papers. For more information about these examinations, please refer to www.jointexaminationboard.org.uk and www.epo.org/patents/learning/qualifying-examination.html respectively. Each chapter outlines the material to be covered, the trainee’s learning plan including any pre-reading and the input required by the trainer, and the learning outcomes that are expected. Each author then explores the chapter topic. At the end of the chapter, review questions and scenarios (where appropriate) are given along with an indication of how the trainee can further extend their knowledge in this particular area. An additional feature is the training log, which has been included to allow you to chart your progress and provide suggestions as to further activities to extend your knowledge and experience. If appropriate to your place of work, this can be used to prompt further dialogue between the trainer and the trainee. Various Acts and Conventions are named according to personal taste in the different chapters, for example the UK Patents Act can be called by its bare name or be dated 1977 or 2004. To make things clear, we use the abbreviation ‘UKPA’ to indicate that we are referring to the most recent version. The EPC 1973/2000/Revision Act is similarly abbreviated ‘EPC’ to refer to the latest version. Similarly, references to the UK Patents Rules mean the latest version. The rate of change of laws and procedures at the moment is almost bewildering and even during the writing of this manual there have been numerous developments – it is as up to date as publication deadlines permit and takes into account changes known to be on the cards, but the trainee is advised to cross check against the latest versions of laws where appropriate.
The authors Catherine Bonner (Ph.D, CPA, EPA) is a patent attorney at Chapman Molony. Before joining Chapman Molony in 2009 Catherine spent three years working in the intellectual property department of Dyson Technology and has also worked in private practice firms, both large and small. Catherine’s patent practice includes drafting new applications, filing and prosecuting applications worldwide including at the EPO, and representing clients at oral proceedings before the EPO. Her experience includes advising clients on filing strategies and patent portfolio management and review. Catherine specialises in medical technologies, aerospace, low-pressure systems, and in the areas of telecommunications, photonics, displays and TV broadcast. Catherine has also tutored trainee patent attorneys within the CIPA tutorial programme. David Bradley (CPA) was employed by GEC Telecommunications from 1968, rising to Supervisory Development Engineer. In 1978, he joined GEC’s Patent Department as Technical Assistant, giving patents advice to GEC companies and to Marconi Space and Defence Systems, McMichael (consumer goods) and Simplex (agricultural equipment). In 1986, he joined Plessey Telecommunications and Office Systems Ltd as deputy intellectual property manager, qualifying as a patent attorney in 1988. Shortly after, he joined British Telecommunications Intellectual Property Unit, remaining there until 2006 when early retirement enabled him to enter part-time private practice. Patents Training Manual: Volume 1
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David was first elected to Council in 1998 and became Chairman of the Publications Committee (later merged with the Textbooks Committee) and remained Chairman of the Textbooks & Publications Committee until his election as vice-president in 2007. David was CIPA president from 2008-2009. As president and vice-president he was heavily involved in the implementation of the Legal Services Act 2007 and its effects on the operation of CIPA and its Charter. Andrea Brewster (CPA, EPA) qualified as a chartered patent attorney in 1992 and as a European patent attorney in 1993. She has worked in a number of private practice firms, both large and small, and has also practised as a patent attorney within a large firm of solicitors. Since 2000, she has been growing and managing her own practice, Greaves Brewster LLP, with her business partners in the south-west of England. She has considerable experience of building client relationships and of the associated business practices. She is also responsible for her firm’s publications and website content. With a BA in Natural Sciences from Cambridge University, her degree focusing primarily on chemistry, Andrea now handles mainly chemical and mechanical patent work. She has acted for a wide range of different clients, from individual inventors to PLCs, from SMEs and university spin-outs to the venture capitalists investing in them. She has also handled ‘overload’ work for in-house attorneys in several large chemical companies. Andrea runs annual courses introducing the patent system to industrial chemists, and lectures to both existing and potential clients on patent-related issues, in particular patent portfolio management and strategies for smaller companies. In 2010, Andrea was elected to CIPA Council. She is also a member of CIPA’s Textbooks & Publications Committee. Alison Care (CPA, EPA) is a European and UK patent attorney. She joined Kilburn & Strode after completing a PhD in Genetics and a degree in Molecular Biology. Alison has experience in drafting and prosecuting UK, European and international patent applications and has taken part in hearings before the European Patent Office (EPO) in examination, opposition and appeal situations. She has particular experience in the areas of biotechnology (including molecular biology, biochemistry and genetics), bioinformatics and foodstuffs. Alison also liaises with patent attorneys in the US, Australia and other countries to prosecute patent applications under their national systems. Alison advises clients on filing strategies, including when and where to file patent applications. She also assists in the defense of her clients’ patents against opposition by third parties. Alison has lectured on the Queen Mary, University of London European Qualifying Exam preparation course. Tibor Gold, MBE, has a Master’s degree in Physics from Oxford University and a law degree from London University. He is a Fellow of CIPA and an Honorary Fellow of the Institute of Trade Mark Attorneys (ITMA); he has also qualified as a solicitor. While in private practice, Tibor had extensive experience in drafting and prosecuting patent applications in the mechanical and electronic fields as well as IP litigation experience. In the last ten years of his practice managed corporate clients’ large trade mark portfolios. He is a past President of CIPA, a co-editor of The Trade Mark Handbook and The Community Trade Mark Handbook; currently he is the editor of CIPA’s monthly Journal. Tibor is a Visiting Professorial Fellow in IP law at Queen Mary College, University of London. Tibor won the WorldLeaders European IP Awards’ Lifetime Achievement Award in 2006, recognising his ‘consistent and demonstrable track record in the IP sector.’ In the 2007 New Year’s Honours List, he was awarded an MBE by Her Majesty the Queen, in recognition of services to intellectual property. Tibor retired from the partnership of Kilburn & Strode in March 2007.
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Richard Howson (CPA, EPA) is a European patent attorney and a chartered patent attorney with Kilburn & Strode in London. He is also qualified as a registered Singapore patent agent following a spell practising in that country. His patent practice includes drafting new applications, filing and prosecuting applications worldwide, managing large portfolios, EPO opposition work, and representing clients at oral proceedings before the EPO. In terms of technical subject-matter, Richard specialises in the mechanical and electrical fields. He has knowledge of a wide range of technologies in these fields, but has particular experience of IC engines and associated components and systems, power electrical machines, and flash memory storage devices. Richard is an examiner for the EQE drafting and amendment papers. He also acts as a supervisor on the LLM course in Commercial IP run by Nottingham Trent University, and participates in the CIPA Informals lecture programme. William Jones (BSc, CPA, EPA, RTMA) is Head of Professional Services at ip21 Ltd, a graduate in Mechanical Engineering and a chartered engineer with 30 years’ qualified experience in the patent and trade mark profession. He has built two successful private practices around a combination of direct-client work and a trainee fee-earning staff closely supervised by young qualified professionals. He has lectured in intellectual property law and on the CIPA/TMPDF core skills course for trainee patent attorneys and is currently chairman of the CIPA Textbooks & Publications Committee. He is also a Fellow of the Institute of International Licensing Practitioners. Alexander Korenberg (CPA, EPA, PhD, MInstP) is a chartered patent attorney and European patent attorney at the private practice firm Kilburn & Strode. He works in a wide range of technical fields ranging from mechanical inventions to electronics and IT for a client base including technology transfer, SME and multinational corporate clients. Alexander is particularly interested in life science instrumentation, medical physics and bio-engineering, delivery of entertainment services, wireless communications and the control of electrical machines. Alexander read Physics at Imperial College, London, including a year at the Ecole Nationale Superieure de Physique de Grenoble and the ILL neutron source. He then moved to University College London where he obtained a PhD in Computational Neuroscience in 2002 before joining Kilburn & Strode. As well as writing a number of chapters, Alexander also assisted with chapter 7, with regard to advice on software and computer-implemented inventions. James Legg (MA, MSc, DIC, CPA, EPA) has an MA degree in Natural Sciences (specialising in Physics) from Cambridge University. He also has an MSc in Semiconductor Science and Technology from Imperial College, London. Before joining the London office of patent attorneys at Abel & Imray in 1991, he worked briefly in industry, as an engineer, on superconducting microcircuits. He became a partner at Abel & Imray in 1998. James handles patent cases mainly in the electronics, physics and software fields. In electronics, this has included much digital and analogue circuitry, power semiconductors, telecommunications, networks, semiconductor fabrication, displays (deformable micromirror devices now seen in projectors and TVs), sensors, instrumentation and control engineering, personal computers, and optoelectronic and photonic devices. James has almost 25 years’ practical experience of computer systems and programming (from 1980s assembly language to C#), and has worked on software cases of many kinds from instruction sets for microprocessors and compilers to automated design, bioinformatics and photocopier human interfaces. He was involved in two different sets of litigation in the UK High Court relating to DRAMs. He has filed a very large number of European patent applications and successfully opposed the European patent Patents Training Manual: Volume 1
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for cold fusion. James is an occasional speaker on patent basics and software patents and when a tutor for patent attorney trainees likes the drafting papers. Heather McCann (BEng, PhD, CPA, EPA) entered the patent profession in 1998, first in the in-house IP department of an aerospace company, and then at British Telecommunications. She joined EIP in 2002 and was made partner in 2005; her practice areas include software, business methods, telecommunications and RF technologies. Maria Nichol (EPA, CPA, DPhil) is a European patent attorney and Chartered patent attorney. She read Natural Sciences (Pharmacology) at Cambridge, followed by a D.Phil. in Alzheimer’s disease research at the University of Oxford. She then moved into the patent profession in 2001. Working exclusively in-house for biotech companies, she started at Oxford GlycoSciences, then spent three years at Biotica Technology Limited. Since August 2006, Maria has been the Head of Intellectual Property at Galapagos NV, a biotechnology company based in Belgium that focuses on bone and joint diseases. Her main interest is the process from drug target discovery to novel chemical entities and the IP that arises at each stage. She is involved in filing, prosecution, litigation and freedom to operate, in addition to providing strategic advice in the fields of chemistry and biotechnology. Maria has also lectured on the Queen Mary IP certificate and MSc courses. Gwilym Roberts (CPA, EPA) obtained a BA honours degree in Natural Sciences (Physics) from the University of Oxford in 1990. He qualified as a chartered patent attorney and European patent attorney in 1994. He is also a certified patent agent litigator. He was made a partner at Kilburn & Strode in 1999. His clients range from private individuals and start-ups to large overseas and multinational companies, and he regularly deals with most aspects of patent work in the physics, computing and communications fields including drafting and prosecuting patent applications before the European and UK patent offices, mounting and defending oppositions at the EPO, advising on infringement/validity and preparing for and conducting litigation. Increasingly, his workload includes advising on and implementing worldwide patent filing strategies and Gwilym has a particular interest in the issues facing newly formed companies and the problems of capturing and exploiting IP, and budgeting for the related costs. Gwilym lectures regularly before a range of audiences in Europe, the US and Asia on aspects of patent law including the Queen Mary College, University of London Certificate and MSc courses. He sits on CIPA’s Patents Committee and Textbooks & Publications Committee, and is a CIPA delegate to the Patent Practice Working Group which meets regularly with the IPO to discuss practice issues. He is also a member of the Patents Commission of the UNION of European Patent Practitioners and President of the British Group. His papers on topical issues have appeared in a number of journals including the CIPA Journal, Managing Intellectual Property, Intellectual Property Quarterly and the European Intellectual Property Review. He is editor of the previous edition of the UK Patents Training Manual and his book A Practical Guide to Drafting Patents is published by Sweet & Maxwell. Stella Wong (MB BS, BSc) is a solicitor of England & Wales and a registered medical practitioner in the UK. She graduated from University College London with a degree in Medicine and a Bachelor of Science in Physiology. Stella is an associate in the intellectual property practice of Hogan Lovells International LLP in London. She is particularly interested in patents in the medical, pharmaceutical and biotechnology fields. She joined Lovells in 2005 and has experience in dealing with litigious and commercial matters, mainly in the area of patents. She has worked for nine years as a doctor and still practises on a part-time basis as a general practitioner.
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Stella has published a number of life sciences articles and assists with the production of Lovells’ Life Sciences Newsletter. She is a member of the Medico-legal Society and the Society for Doctors in Law and has qualified as a Member of the Royal College of General Practitioners.
Further acknowledgements Thanks are also due to Nicholas Pope (CIPA institute manager), Iain Ross (CIPA publications manager) and Emily Cieciura (CIPPM co-ordinator, Bournemouth University) for their contribution to the compilation of the manual. The authors would also like to thank Jeremy Smith, trainee patent attorney, for his review of the manual from the trainee’s perspective. The following individuals have provided assistance to the authors: •
Wendy Beresford, Kilburn & Strode, for additional assistance with the completion of the manual;
•
Matthew Critten, Abel & Imray’s Bath office, for his assistance in reviewing chapter 10;
•
Gareth Fennell, Kilburn & Strode, for his assistance with chapter 7; and
•
Emily Phillips, Kilburn & Strode, for her assistance in checking the contents of chapters written by Gwilym Roberts.
In addition, the following have provided help and support throughout the drafting of this manual: •
Liz Dawson, CIPA’s Education Committee;
•
Mike Jones, EPO examiner;
•
Christoph Machwirth, Head of User Associations epi/EQE, for supply of information relating to EQE examinations;
•
Sharon Mitchell, CIPA and ITMA’s Joint Examination Board; and
•
Kate Rawlins, Chapman Molony.
Disclaimer The contents of this this training manual are for educational purposes only and do not constitute legal advice. If you need legal advice please contact the Chartered Institute of Patent Attorneys (CIPA) for a list of registered patent attorneys who provide services direct to the public; or see www.cipa.org.uk. The opinions expressed in the chapters of this training manual are those of the individual writers and do not necessarily reflect the views of CIPA or the organisations that the writers are employed by. CIPA does not guarantee the accuracy of the information included in this training manual and accepts no responsibility for any consequence of its use.
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History of patents and the patent profession
Outline This chapter deals with the history of patents and the profession associated with it, patent attorneys (or as they were first known patent agents). It is intended to help you to explain to clients the origins of the system of patents for invention and to help them to gain confidence in patent attorneys as their source of professional guidance, when seeking protection for their inventions. It will also help you to gain an insight into the basic tenets of patents and how the law developed.
Learning plan Prerequisites: There are no prerequisites for this chapter. Legal documents: Please look at the Acts that are mentioned in the text. Trainer’s input: Discuss the company’s own history in relation to the development of the patent profession. Syllabus link: None. Time allocated: Two or three hours.
Learning outcomes By the end of this chapter you will have knowledge of the background of our profession; skills which will allow you to appreciate just what a great job it is.
1.1 Historic origin of letters patent Literae Patentes or ‘open letters’ were originally grants by the monarch of rights and privileges to individuals, who had been selected by the monarch to perform certain tasks and duties. They were referred to as open letters because they were not sealed up with a wax seal, as a common letter would be, but had a seal (the Great Seal) attached to the document to confirm its authenticity as a grant of monopoly by the Crown. Thus, the document could be read without breaking the seal and such documents are still provided by the monarch to those performing major services to the monarch such as the Governors of Crown Colonies. There is little room for digression in this book, but a brief look at how one of history’s great diarists found the system is worthwhile. Samuel Pepys’ Diary for 1660 is much concerned with this latter type of letters patent and obtaining his patent to become ‘Clerk of the Acts’ to the Navy Board takes up much of his time and effort between 28 June and 13 July 1660. For example, on 29 June Pepys writes:
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So to my Lord to give him an account of what I had done. Then to Sir Geffery Palmer (Attorney General) to give them to him to have bills drawn upon them – who told me that my Lord must have some good Latinist to make the preamble to his patent, which must express his late service in the best terms that he can...1 Then to White-hall where I was told by Mr Huchison at the Admiralty that Mr Barlow my predecessor, Clerk of the Acts, is yet alive and coming up to town to look after his place… At night told my Lord thereof and he bade me get possession of my patent…
Over the next several days, Pepys records going about obtaining a patent for Lord Mountagu, his own patent and comments on the patents being obtained by all of the members of the Board then being formed. In practice, the Navy Board was established by order of the Privy Council on 4 July, the patents of the Treasurer (Carteret), Comptroller (Slingsby), Surveyor (Batten) and Commissioner (Pett) were issued on 4 July, that of Pepys on 13 July and the other two Commissioners (Berkeley and Penn) not until the 18 August. In practice, all of them were paid from the 25 of June. On 9 July, Pepys visited the Temple ‘to further my bills being done’ and the following day went to the Attorney General to collect the same and then arranged for it to be sent to the King for signature. The 11 July saw Pepys collect his signed bill and take it to the Privy Seal, the 12 July to have it perfected at the Privy Seal and at the Signett. Pepys was then directed to have his patent engrossed in ‘Chanceryhand’ but could find no-one available to do it despite visiting all six ‘clerks’ offices’ in Chancery Lane. At 11 o’clock that evening he finally found a Mr Spong who agreed to write the patent out for him. After much argument with Mr Beales, who was angry that he had not been given the task of writing Pepys’ patent (despite not having been available to do so), Mr Beales eventually provided the required docket apparently in exchange for £2, and later returned to collect the patent document made ready for sealing. This occurred later on the same day when Pepys accompanied Mr Beale to the Chancellor’s office where the Seal was attached, Pepys later collecting his letters patent from Mr Beale, handing over a further £9. Thus, obtaining his letters patent proved a complex process involving much chasing around after different people and a great deal of expense. In fact on Sunday 15 July Pepys writes: My patent hath cost me a great deal of money, about £40, which is the only thing which doth trouble me much.
This was not Pepys’ final dealings with his patent because there was the matter of Mr Barlow’s patent to deal with, because despite the fact that Pepys patent revoked the life appointment of Thomas Barlow, it was necessary to come to an agreement with Barlow to avoid a long dispute. Thus on 17 July Pepys records: There came to my house before I went out, Mr. Barlow, an old consumptive man and fair-conditioned – with whom I did discourse a great while; and after much talk, I did grant him what he asked – viz £50 per annum if my salary be not increased and £100 per annum in case it be to £350; at which he was very well pleased to be paid as I received my money, and not otherwise.1
In fact, the arrangement lasted until Barlow died in 1665 and since Pepys’ salary was almost immediately increased to £350 per annum, it could be assumed that Barlow received some £500 for not attempting to enforce his patent. Many of the elements of modern patent prosecutions are demonstrated by Pepys’ experience in 1660. Firstly, it can be a long, complex procedure which needs to be handled properly. Secondly, it can be expensive to obtain proper protection and even when you have your patent in your hand it may be subject to dispute and you may have to negotiate with a holder of a senior right.
1.2 Development of the modern patent system Patents are still a grant of monopoly by the Crown although, nowadays, in respect of inventions, this grant is handled by the patent offices of the various countries, which may appear with different names
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and responsibilities. For example in the UK, patents are examined and granted by the Intellectual Property Office (IPO). Patents for importation were granted to merchants who managed to locate new articles in overseas territories and presented them to the monarch who would then grant the merchant a monopoly to encourage further importations. Soap, spices and such like often attracted a monopoly because the monarch liked the imported good and the merchant would be unwilling to divulge his source. Such granted monopolies were often considered to be an abuse by the monarch and, in particular, grants by Elizabeth I and James I were often made to favourites for known commodities. Such abuses by the Crown, and in particular the so-called ‘Book of Bounties’, a proclamation made in 1610, led to dissatisfaction with the system with such clamour that both houses of Parliament agreed a Bill which was passed as the Statute of Monopolies on 25 May 1623.2 This declared many of the previous letters patent void, caused the granting of patents for known commodities to be void ab initio but allowed future patents to confer exclusive rights to an inventor for a period of 14 years. There was provision for any patent to be tried at common law and, in practice, most of the patent litigation around this time was conducted before the Privy Council since all patents contained a provision to allow that body to revoke it. The Privy Council exercised this right until around 1753 from which time patent litigation was conducted in the Court of Chancery and before the Queen’s (King’s) Bench.3 One of the earliest invention patents believed to have been granted was for the manufacture of stained glass windows, as installed at Eton College, but many inventors were granted patents for their inventions around this time. The real development of modern patent law and practice dates from around 1795, when cases on the construction of the Statute of Monopolies began to be reported. The consideration for the grant was that the patentee must work the invention and must teach British workmen how to do it and it was on that basis that such patents were to enrich the knowledge of society. This is still the bargain on which patents for invention are granted (apart from the fees necessary to run the system) – that is, the patentee is granted a monopoly for a period of time in exchange for teaching the invention. Before 1800 it was usual for a patent to be granted on its title alone, but the grant was conditional on a specification being filed in the Court of Chancery within six months. The purpose of this was to show that the invention actually existed and conformed to the title. Its value as a teaching document did not actually come into being until the passing of the 1852 Patent Law Amendment Act, which saw the printing and sale of specifications for the first time. The 1852 Act first laid down the requirement for a specification to be filed at the time of application and established the Patent Office and The Register of Patents. Whilst the patentee was allowed to file a provisional patent application at this time and delay filing the so-called complete specification until six months after the grant of the patent, the delay of granting of patents, until they had been examined by the Patent Office, did not occur until the passing of the Patents, Designs and Trade Marks Act of 1883. Official searches of prior patent specifications were not introduced until 1905 but the fundamentals of patent specifications and prosecution were now established and the Seal of The Patent Office replaced the Great Seal of the Kingdom. The development of patents and patent offices around the world generally followed a similar course to that of the UK and it would be hard to find a developed country without a patents system now. The next major change in patent law occurred with passing of the 1949 Patents Act, the law having remained unchanged since 1907. This Act introduced the concept of grounds of opposition so that patents which had little chance of proving valid in the courts could be refused or revoked without the need for a hearing outside the Patent Office, the system of dating was improved and various other anomalies in the system were cleared up. The 1977 Patents Act further tightened the examination of patents and allowed the Patent Office to refuse patents for want of an inventive step, something which, previously, they could not have done. Under the previous Act only a lack of novelty was grounds for refusal. (Both of these concepts are Patents Training Manual: Volume 1
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discussed later in this manual). This Act also introduced the publication of specifications of patents applied for but not yet granted at 18 months after the priority date of the application. The 1977 Act derived from the Banks enquiry report on The British Patent System published in 19704. This Act also allowed the UK to enter into international agreements for the establishment of the European Patent Office (EPO) and Patent Co-operation Treaty (PCT), for example. Treaties relating to patent rights internationally include the Paris Convention of 1883 which established inter-alia the right to priority. This was the first international agreement on intellectual property rights. There have been many revisions of the Paris Convention since then, for example, the agreement to establish ICIREPAT.5 The Convention on International Classification of Patents was ratified by the UK in 1954 but it was not until 1965 that the UK became a member of the IIB (International Patent Institute) founded under a diplomatic agreement between Belgium, France, Luxembourg and the Netherlands in 1947. One of the most significant international treaties has to be that establishing World Intellectual Property Office (WIPO), now a United Nations Agency. This treaty was signed at Stockholm in July 1967 and was subsequently amended in 1979. This aided the conclusion of the Patent Co-operation Treaty in 1970, a treaty which has now been signed by over 130 sovereign states. The European Patent Convention (EPC) was signed in May 1973 and established the EPO, allowing for the examination and prosecution of a single application to the point of grant and then granting a ‘bundle’ of patents which could be ratified in the individual countries designated on filing the application. This is just one of several regional jurisdictions for the granting of patents, others of which will be mentioned in later volumes of the training manuals. We should not of course confuse the EPC with the Community Patent Convention signed by the nine original member countries of the European Economic Community as far back as 1989. Regrettably, despite many attempts, the Community Patent is yet to become a reality.
1.3 History of patent attorneys and CIPA As we learned earlier, Pepys’ experience of obtaining his patent showed how complex the procedure was. In the early days of obtaining patents for invention, many inventors relied on ‘consulting engineers’ to help them to implement their ideas. Some of these engineers became adept at obtaining the requisite bits of paper and various signatures to obtain patents and so became ‘patent agents’. Among the first of the patent agents was William Newton, a partner in his father’s firm J & W Newton, Globe Makers. He started in practice in about 1820 with one Miles Berry who later left the firm, William Newton continuing in practice with his sons, William Edward and Alfred Vincent at 66 Chancery Lane and also at Breams Buildings. William Newton was also described as a land surveyor, mechanical draughtsman and civil engineer and a bust of this gentleman may be seen in the Chartered Institute’s Hall. The inaugural meeting of the Institute of Patent Agents was held on Wednesday 29 November 1882 at 57 Chancery Lane under the first President, John Henry Johnson. This followed on from a meeting of patent agents held on 4 April of that year, at which it was determined to set up an organisation to promote the education and professional standards of patent agents and, between those two dates, a draft Memorandum and Articles of Association were drawn up between George Shaw practising in Birmingham, St. John Vincent Day practising in Glasgow and Messrs Wilson, Bristows and Carpmael of London. This resulted in a draft scheme which was submitted to the Board of Trade which granted a licence to allow the incorporation of the Institute of Patent Agents on 12 August 1882. It was determined that no person would be admitted as a Fellow of the Institute unless he were known to and recommended by an existing Fellow who would vouch for his good repute and capability, a practice which continues to this day.
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The Council comprised a President, a Vice-President and eight members, of whom the President, Vice President and two senior Council Members were to retire at the AGM to be held in the following May. A similar practice to this continues, although Council now comprises 24 Fellows of the Institute, one third of which retire annually but are eligible for re-election. In 1882, there were some 52 members, one Associate and 22 Foreign Members whilst in 2006 the Chartered Institute of Patent Attorneys had 1,821 Fellows, 587 Associates and 140 Overseas Members. In 1891, by which time membership had reached 68 Fellows, 28 Associates and 66 Foreign Members, the first Charter was granted and the Institute of Patent Agents became the Chartered Institute of Patent Agents, a name which survived several supplemental Charters but was changed in 2007 (by another supplemental Charter) to the Chartered Institute of Patent Attorneys (CIPA) to better reflect the work carried out by the members and the esteem in which the British professional is held throughout the world. The original seal of the Institute of Patent Attorneys, three of the muses, was updated to the current logo in 1992 and Coat of Arms was granted to the Institute in 2000. The motto on the Coat of Arms is Respice Finem which translates as ‘Look to the End’, something which we as patent attorneys must always do when advising clients or drafting specifications. It will, of course, be realised that the Institute is now a graduate entry profession in which most of the entrants have a first scientific degree and often a postgraduate qualification in intellectual property law. This is not, of course, the end of their education and learning, since over the years, the CIPA has developed and evolved a system of examinations which test the students’ ability to serve adequately the public and their employers. Initially, these examinations covered ‘manufactures’ papers to ensure that all candidates for entry to the profession adequately understood how such simple mechanical devices as a sewing machine were made and how they operated. Of course, as technology and educational standards have moved on, so have the examinations. Nevertheless, the examinations, now organised on behalf of CIPA and the Institute of Trade mark Attorneys by the Joint Examination Board, still ensure the quality of persons entering into practice by testing skills in patents, trade mark, design and copyright, some to a greater extent than others, so that all Fellows of the Institute can advise clients on most situations, whether it is drafting, specifications, prosecution of patent applications or dealing with matters of infringement or validity of patents post-grant, including some elements of overseas law. With this proud history, CIPA looks forward to your qualification and hopes that you will find this training manual helps you to get to grips with day-to-day problems which your clients and employers will bring to you.
Chapter review Patents for invention have developed over 600 years and provide protection to inventors in exchange for disclosing their new methods of manufacturer and new or improved goods. Today, apart from
Notes and references 1. The Diary of Samuel Pepys, a new and complete transcription, Robert Latham and William Mathews, Bell & Hyman Limited, 1970-1983. © The Master, Fellows and Scholars of Magdalene College, Cambridge, Robert Latham and the Executors of William Mathews 1983 2. Oxford Reference Dictionary declares the Statute of Monopolies to have passed in 1623 3. These notes are partially derived from Terrell & Shelly on Patents (9th Edition, 1951) published by Sweet & Maxwell 4. The British Patent System, Report of the Committee to Examine the Patent System and Patent Law. HMSO July 1970 5. International Co-operation on Information Retrieval between Patent Offices
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patents obtained through the IPO, it is also possible to file patent applications under the EPC and the PCT. The Institute of Patent Agents, founded in 1882, became the Chartered Institute of Patent Agents in 1891 and changed its name to the Chartered Institute of Patent Attorneys in 2007.
Further study Information on the history of the Chartered Institute can be found at www.cipa.org.uk as can details of the Charter and By-Laws. The CIPA Journal is also a useful source of information on patents, trade marks, designs and copyright law and practice. The EPC and the PCT will be mentioned frequently in the training manual and will be covered in greater detail in later volumes. The ‘Black Book’, The CIPA Guide to the Patents Act (Sweet & Maxwell), also contains further information on the history of the patents acts.
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The role of the trainee
2 Outline
This chapter prepares the trainee in the basics of dealing with his or her new working environment. It outlines the way in which all fee-earning work is handled, who contributes their various skills to the process, and how to manage the concurrent pressures of time, legal deadlines, and personal interactions both within and without the working unit to produce the practical usable work that our clients want from us. In this chapter the following key concepts are introduced: 2.1 2.2 2.3 2.4 2.5 2.6 2.7 2.8 2.9 2.10
Your new environment The need to contribute Outearning your costs Mastering office procedures The trainer-trainee team Acquiring the essential analytical skills Producing practical, usable work Time management Dealing with colleagues and clients Coping with professional exams
Learning plan Prerequisites: Begin by consulting any office manual or induction training documentation your employer has given you and/or you discover is available generally. Then study the CIPA/IPReg Rules of Professional Conduct and the guidelines published with them. Make sure you know your firm’s standard terms of business. Legal documents: There are no legal documents required to study this chapter. Trainer’s input: Enlist your trainee’s help whenever possible in dealing with clients, assisting you in meetings, sending reminder correspondence and so on in order to encourage the trainee to grasp quickly the essential business context against which we all work. Involve him or her in drafting as wide a range of different documents, for different purposes and to different types of addressee as you can. Discuss why you handle clients and their files in the way you do. If feasible, encourage the trainee to spend time with all divisions of your unit (especially accounts and formalities departments) to see the way your systems operate and how they interact with fee-earning staff. Stress from the outset the need to produce, as soon as possible after induction, work which reflects a real contribution to the unit’s output and which is produced in a way that generates goodwill inside and outside the unit. If you have local or regional groups of trainees such as the Informals, or know of similar self-help units operating outside yours, encourage your trainee to make contact with them. Patents Training Manual: Volume 1
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Syllabus link: This chapter is not directly linked with any of the qualifying exams, but will have an immediate impact on your ability to do a good job in a real-life context. It introduces themes which are taken up and expanded in chapter 3, which you should read and regard as a natural follow-on to the points outlined here. Time allocated: Two half-days.
Learning outcomes By the end of this chapter you should have a broad initial framework of the relationships between trainees and their supervisors, colleagues, and clients whether in private practice or within your employing company unit; and how to optimise the day-to-day attitudes, procedures and practices around which everything we do revolves.
2.1 Your new environment You are likely to be one of a number of trainees employed in your working unit. Some of them will be ahead of you in your common career training path. Others, if you are lucky, will be arriving simultaneously or very nearly so with your own start date. All of you share one common objective and that is to fit in as quickly as possible to the overall fee-earning team and to become, again in the shortest practical time, a useful member of that same team. The quicker you become cost-effective, and really good at the job, the better prepared you will be for the exams and ready to enjoy your career as a qualified attorney. Nowadays there are a number of routes by which you might have arrived in your present job. You could be a graduate in his or her early twenties. You could have transferred from another department in the same company. Or you could be a mid-life career changer with the right qualifications to start a new professional training path. Whatever your background, you face a broadly common training regime over the next four or five years. And you will find that, whatever your working unit, its organisation and the way you are used as that programme proceeds is remarkably similar throughout the profession. The aim of this chapter is to make you aware from the outset of the things you can do, within your own unit’s procedures, to contribute quickly and effectively to the team’s efforts.
2.2 The need to contribute Full professional qualification is some years away, and everyone around you will already be using jargon with which you are not yet familiar. This can be daunting and you may feel distinctively inadequate in the early weeks. Don’t be put off; we all felt that way on day one. With humility and diplomacy you are a highly qualified intelligent team member with a great deal to offer from the outset. You will have a relevant qualification to at least first degree level in the technology that your unit handles. To get this far, you will have developed skills which, with further training, will enable you to operate around and in many cases, beyond that technological speciality. You will be surprised at how quickly you can begin to do this if you are determined to learn the skills of analysis and crossexamination which form the core part of your new work. Whilst you may feel at times like a long-term apprentice, aim from the start to be given work which simultaneously develops these skills and, with proper supervision, enables you to share the workload billing early and effectively.
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2.3 Outearning your costs This concept of turning your working day into billable time underpins the way the whole profession operates. If you are in private practice then you will quickly become familiar with it. But industrial departments are nowadays viewed as cost centres in their own right and they operate on fundamentally the same philosophy. Even as a trainee your starting salary will be higher than most of the non-professional people working in the team around you. That cost is exacerbated by the investment in training time and planning for the future that you, and not they, will receive. Don’t think that any unit can in any sense carry you and your salary for very long. Many unit managers today expect their first-time trainees to be outearning their base salary costs well within the first year of starting on a training programme. Don’t be put off by that last statement. Your core fee-earning power in a profession like this one is enormous. Even as a new trainee you will notionally, if not actually, have a charge-out value placed on your time and that value will initially astound you. Take that the right way. It is a true measure of your worth to the team even at what will seem like a junior level, in the early months. Multiply that figure by, say, 1000 potential billable working hours’ contribution a year and you will see what is meant by the potential power of your contribution. 1000 hours a year is only just more than four and a half hours each working day of a five-day working week if you take off from the full 52-week year the eight weeks needed for personal and public holiday entitlement and average illness occurrence. Find out from your trainer exactly what the billing expectations are at an early stage, and develop the discipline to meet them as early as possible. The practicalities of billing are explored in greater detail in section 3.8.
2.4 Mastering office procedures Whatever your working unit, whether it be in private practice or company department, as a professional fee-earner you will be in a minority. The fee-earner support team by way of procedural administrators, secretaries, and accounts personnel will outnumber you noticeably. Dealing with them politely and professionally is not only important for office morale, you will work more efficiently the sooner you master the procedures laid down for the smooth running of your own unit. Begin by defining your aims in this context. Your overall aim of course is to be able to produce, as quickly as possible, first-rate intellectual property work within the time limits imposed on you and at the level allowed you by your immediate manager. But in the office procedure context you want to do this in a way which builds goodwill within the team. Decide how you think that should be achieved. Then set about obtaining agreement on it from above and from those around you. You will find that office procedures and practices will be well systemised and should also be well documented. The work we turn out to our clients or for our employers couldn’t be handled otherwise. You may begin to question some of these procedures at a fairly early stage. By all means ask why systems are the way they are but be careful about denouncing them – after all years of experience and thought have gone into them. It won’t be long before you find out how best to handle this and, in the meantime, you need to master thoroughly any existing systems before you can criticise them however diplomatically you try to do it. To that end, aim to use all your resources efficiently. There are people working around you who will always be better than you are at their own jobs. Use them. Learn from them in the process. Communicate. Explain what you are trying to achieve, overall as well as in the short term, to the people working with you. Encourage them to help you achieve it. Having made those latter points, it is worth emphasising that you must, of course, be willing to lend a hand with such things as photocopying, file finding, and the like. If you organise your career progression correctly you will be in a position soon enough to do only that work which you alone can do better than anyone else at the moment. Don’t delay that state of affairs by appearing too arrogant to Patents Training Manual: Volume 1
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muck in, in the early months. This may sound terribly basic but it is surprising how easy it is for those of us with a first-rate education and an analytical mind to give that impression to people on whose good will you will depend from the outset. And the procedures which underpin this whole job are so important that it is essential that you master them and learn their implications even if, ultimately, others will be carrying them out for you. Useful suggestions are made in sections 3.6 regarding file maintenance and 3.7.4, where your relationship with the records department is considered.
2.5 The trainer-trainee team It is likely that for at least the first two years of your training you will be taught and your work will be supervised essentially by one person who is your immediate line manager. This personal style of training responsibility on his part is a prerequisite for your eventual entry on any of the individually regulated professional lists of qualified representatives. It may seem to you like the most old-fashioned form of craft apprenticeship, but it is necessary because of your unit’s liability for everything it produces. Your trainer’s likely goal is to make you better at the basic job than they, initially, were. They probably have multiple responsibilities and may not even be doing much of what they qualified to do any more. Many trainers will be running the personnel in a team, and helping to run a commercial business. As they must now also find time to train you personally, they need your understanding and co-operation. As you progress, you may find that you disagree with some of your trainer’s aims, style and judgement. This does not mean that you cannot continue to work together; use the opportunities to discuss alternative approaches. Your trainer may well learn from you in these circumstances, but always respect the experience and knowledge he or she has.
2.6 Acquiring the essential analytical skills There are two broad ways in which your trainer can choose to use you. One is to do the unashamed legwork on his own cases. The other is to give you quickly an altogether more responsible role. Each has its points and you must be prepared for a good deal of the first category because everything that goes out from your unit constitutes effectively a work product for which the unit as a whole is responsible. You can’t expect to start drafting any part of any document without detailed supervision and, in the meantime, you will learn a lot from purely internal tasks too. Try, nevertheless, to look at all the work you are given in these early stages in a broad context because everything can help you acquire the two essential skills you are going to need throughout your career in this profession. The first skill is one you may well think you have acquired already in gaining the formal qualifications that have got you this far. It is the ability to take a given situation, analyse it correctly, and then distil from its essence a recommended way forward. The second skill is one that you may or may not have had to practice to date. That is the ability to put that recommendation into compelling form, whether verbal or written, in order to persuade others to accept it and act on it. As a new member of an established working unit, you will find information and precedents all around you in the files you are given to work on. Read them. Whilst your time is valuable, you will never again be given as much leeway for personal study during the working day as most trainers willingly give you in the first one to two years. See how your predecessors have drafted their patent claims and their formal and informal opinion letters and then question your trainer as to why things were done in that way. If you are taking up too much time then he or she will quickly tell you. They are far more likely to encroach on their own time allowance by going out of their way to explain to someone who is clearly so keen to learn. There is a strong subconscious teaching capability in most individuals in this profession and, like teachers everywhere, they respond to unusually enquiring pupils.
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2.7 Producing practical, usable work In the first couple of years of your training you will be supervised in close detail. This doesn’t prevent you from carrying your weight as previously outlined. You can use the twin pressures of your cost and your trainer’s need to produce his own personal work output to get you into a position where your work is accepted and edited minimally. To do this, you have to learn what the client or your employer actually wants. In simple terms he wants advice which he can understand and on which he can act. The advice you produce, thus, has to be comprehensive but readable as well as positive without being misleading. This won’t come quickly and your professional exams are designed to find out whether you are anywhere near the standard required by the time you take them. But you will pass those same exams more easily if you aim from the outset at a clear succinct communication style. Most fee-earners in this profession do a first class job technically for their client. Many of us complain we are not appreciated for it. Most of our difficulties lie in the way we choose to put our advice into the essential words which persuade the client to take it, and pay the bill for it, or not. Present your analyses in words that come naturally to you in everyday life. Some of the concepts you will have to explain, and enlarge on, in your work are not simple. You can’t always use short sentences, let alone snappy phrases, to explain them to the extent you need to in order to satisfy your duty as an advisor. But you can do this for quite a lot of the time. And even where you have to reason at length, the reasoning is always going to be more easily followed if its meaning is plain to the reader, many, if not most, of whom have their minds on other and more essentially commercial matters whereas yours need thought and selection on their part. Be straightforward in your style. Recommend a clear way forward whenever you can. Get used to the fact that it will always be a compromise by comparison with the pure academic discovery processes you may have been used to in your career so far. This doesn’t come easily to most of us especially with that common scientific background. Work on it and it will save your trainer’s time as well as enabling him to pass your work forward with minimum editing.
2.8 Time management You will quickly realise just how much your output hinges on the efficient use of your personal working time. This doesn’t mean doing everything quickly and nor does it mean producing it all by this time tomorrow. Any fee-earner who tries to do either of these things ends up overworked and missing deadlines. He also makes repeated mistakes because he deprives himself of the time needed for essential thought to do the job well. If you get something to deal with, fit it into a personal schedule and explain to the sender when you are going to have it returned to them. Your business will have a due-date progress management system to make sure you don’t overlook it. Work forwards from the date you received it, not as so many do backwards from the ultimate due date. Any business that habitually works to the last minute leaves no room for things to go wrong and then be put right in time. And you don’t just need time for emergencies. Whatever your plans in advance to utilise a given day for a single or serial number of jobs, the arrival of the dates will almost always be disrupted because of external events. Build free space into your schedule to cope with this. It is not possible to over-stress the importance of this if you are going to have an enjoyable as well as a successful career in this profession. As you advance, you will get more and more work, partly because your clients come to depend on you progressively; but mainly because this is a habitually understaffed and overworked profession. If you begin to be rated highly then that, in itself, will attract more work to you as time goes by. Many patent attorneys end up quite overwhelmed by these pressures because they don’t plan how to cope with them. Don’t be one of them. The stress levels are high enough, given the mentally demanding nature of your job, without that pressure. Initially you have to concentrate at getting good at the job. Then you Patents Training Manual: Volume 1
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have to get quicker at it. Eventually you are going to have to cope somehow with the concurrent evils of known due dates, rearrangements of programme caused by what arrives in the morning’s e-mails, and ‘last straws’ caused by how the day itself actually develops. You won’t do it unless you learn to work well ahead of the system. Aim to manoeuvre time for yourself to think because the more you get on in your career the more you will find to think about. Once you gain a reputation for this kind of thoughtful practical advice, you will become sought after but, increasingly, at short notice. You can’t take on that kind of work, with all its inherent satisfactions to you, as well as profit to your unit, if you are habitually a slave to externally imposed deadlines. Section 3.7 considers this topic with practical suggestions for coping with such deadlines and time constraints.
2.9 Dealing with colleagues and clients You have read about the importance of fitting as quickly as possible into a productive working team unit with your colleagues. You are already a potentially important part of that unit and they regard you as such. The more you progress in your own career training, the better they will like it because your progress indirectly reflects the way they have moulded you in the early stages. All of them have skills and strengths within their own job specialities. But they know you and the other fee-earners are on a different path to theirs and they want you to show leadership, whilst appreciating and confirming to them their own value to the team unit. Your client is another matter. Whilst your colleagues judge your value as a contributory team member on what they know to be the technical level of your contribution, the client will take that technical correctness for granted. He will judge you on the usefulness to him of your output. This will be largely a product of your personal style and presentation. If you succeed, then you are building what is commonly called ‘good will’ with him. If he does not like what he sees or hears then there will be no good will and he will seek alternative providers of that same service. In essence, you are looking to build trust. You are also combating, in the early years, an all too apparent lack of experience. Don’t be put off by this. Your client knows your level in the team and will usually have asked to be told your current professional competence. If you are in private practice, he may well have asked (and will have been told) your current charging rate. He will make allowances for this, if he sees that you are good enough to restrict yourself to what you genuinely know and that you are not ashamed to call on more experienced help in order to give him the full service that he wants. The three things your clients want most to experience from you are promptness, politeness, and clarity. They want you, in other words, to be business-like. They want these things, not just because they are useful, but because they are relatively rare, and when they do encounter them they go out of their way to keep on using you. In this sense, none of us is competing with other providers. We are all competing constantly against all those other items – goods and services – only some of which can eventually be brought within our client’s budget; but all of which he would ideally like to be able to afford. Make sure, by the way that you handle your client’s affairs, that he willingly puts you on the ‘essential’ list. Being prompt doesn’t mean doing everything overnight. We discussed this above. Avoid this trap. If you know you have the best part of a fortnight’s work waiting to be done, then tell the client he will have the draft in two to three week’s time: and then keep that promise. You can buy yourself the most surprising amounts of time once you get used to this. Much of what we do can be handled in this way. But try, then, never to fail to meet these promised delivery dates. Politeness similarly doesn’t mean servility. You can be firm in telling your clients that, for example, a legally due date really is true. Or that a search result effectively destroys any hope of meaningful patent protection when correctly analysed. Or, again, that you cannot advance the prosecution of a given
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case, given the analysis you have just presented, without the client doing his job by way of technical input to mount an argument for an inventive step within a given claim wording. But you can present all these things diplomatically and you will be given more directly responsible work if you show that you can do this early on in your career. Be willing to pass on bad news sympathetically, but remember that the client needs to know the downsides. Clarity, again, has been discussed above. It starts to come naturally when you really understand your job and the law and practice underlying it. It counts a lot, as again we have mentioned, with most clients and in this, as in everything we are discussing, your client can be your line manager, your departmental head, your head of legal services or your company main board and not just the individual client of private practice firms. Use whatever means of illustration and analogy come easiest to you in this constant effort to get your message across without misunderstanding and with persuasive force. One last point under this heading. You will at some stage be unfortunate enough to be on the direct receiving end of a client who is temporarily unhappy with what you or your unit has presented to him. It is not a pleasant experience and it will recur sporadically throughout your career. In almost all cases there is something else which you will never know of but which has caused the reaction. Keep calm when dealing with this situation especially when the person that the client should really be speaking to is your own superior. Take notes always. Try to get the complainant to concentrate on the salient points, i.e. the ones which you can immediately offer some help in rectifying. Don’t stray beyond what you know to be the limits of your responsibility and certainly don’t commit colleagues for whom you cannot currently answer. Nor should you blame your colleagues – your team should take collective responsibility even though you were unlucky enough to take the call. A client in this situation is insisting on talking to someone within the unit and he won’t calm down until he does. Take the call and be resolved to act as an ambassador throughout. Make sure that chapter 3 is read thoroughly as this makes pertinent points about managing such relationships.
2.10 Coping with professional exams The final level of professional examinations you have to pass to be entered as a qualified individual is different fundamentally from the academic exams in which you will have succeeded to date. These final exams differ in that same fundamental way from the Queen Mary Certificate and its equivalents which may have gained you exemption from the intermediate level of professional exams. The difference is straightforward enough. Academic exams test knowledge and reasoning ability. Professional exams test your ability actually to do the job in which you will spend the rest of your professional working life and you will not pass them until the examiners judge you are capable, theoretically, of practicing alone before the public in all aspects of your chosen profession. For that latter reason, your professional exams are set and marked by working patent attorneys who know just what they want to see in the way of basic competence. They are not trying to catch you out with sophisticated points that come only with time. Still less are they trying to trick you into failing. But they will need to be satisfied as to your essential individual ability to pick out the points that matter in a given situation and to advise and recommend a practical way round the difficulties identified. Your trainer and your colleagues in the unit in which you work will prepare you for individual exam papers. You will almost always be surrounded by friends who are studying to pass these same exams and with whom you will form in time-honoured fashion a self-help group. Your employer may or may not send you on outside courses to promote your study and there may or may not be study groups organised within your unit on a formal basis during working hours. But bear in mind the following points whatever your personal working background opportunities. You may find there is pressure to try to pass exams as quickly as possible. The reasons are Patents Training Manual: Volume 1
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understandable. Historically, you are paid noticeably more as soon as you qualify. Principally this is because it enables your employer both to charge more for your services and to give you more work for which you are now individually responsible by way of increased output, and with decreased supervision. Resist these pressures if you feel pressured by them. You won’t pass the exams until you can show the examiners you are ready to be licensed and, in the meantime, you have a full day job to cope with. Study the examiners’ comments from previous years. You will find that they complain about the apparent lack of the same things every year. Two of the most frequent complaints are the inability of candidates to answer the actual question (i.e. to analyse the points at issue rather than to want subconsciously to display your own actual knowledge of other issues) and then to recommend a course of action (i.e. to turn the analysis into a practical usable form on which the client can then act). Acquiring these skills doesn’t come easily and there is no point in your taking any individual exam before you are thoroughly convinced you have mastered them. Whatever the study time and guidance given or not given to you by your employer, realise that most of the effort must come after working hours by way of study and practice. Your employer will teach you techniques in order to be able to use your abilities quickly within your working unit. Those same practical everyday techniques are the ones that will be examined in the individual papers. But you will be expected to do the bookwork part – learn the law, the procedures, and the precedents – largely in your own out-of-work time. And, as no practice can offer practical exposure to every type of patent situation, there will always be areas where you will just need to learn the theory unaided. You will also be expected, by most employers, to do it on your own initiative. Your employer wants the working day to be spent as largely as possible in productive money-earning work from all members of the working unit. Whilst he wants you to qualify eventually, he regards the supervision he gives you daily as his contribution to that end. He or she will assess you at least annually on your overall progress within the unit. Your progress or lack of it in exams will only be a part of that assessment and he does not normally expect to have to monitor it as distinct from mentoring it in individual cases. The essential effort and organisation must come from you and, whilst we operate in a relatively narrow band of law, we do so to a very high professional level; and so there is a lot to learn and to get good at.
Work-based example Here are two ways of constructing essentially the same letter of advice. The one on the left is a composite taken from real examples in recent years when trainees were first given the chance to try their hand at client communication. The other shows how those same efforts were re-written by an experienced trainer in each case:
ONE WAY
AN ALTERNATIVE WAY
We refer to the meeting at these offices on
Thank you for coming in yesterday to discuss
07.07.07.
this.
When our Mr Smith was also present.
I am glad you were able to meet Terry Smith. He is one of our trade mark specialists and I have asked him to work with me on your case.
We now write to confirm the several matters and
I am writing to confirm the main points we
issues arising therefrom and the corresponding
discussed and the broad advice I gave you.
points which necessitate your consideration and on which we shall require your instructions.
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Based on the materials which you handed to us
To follow our discussions, we have prepared a
and left with us, we have prepared a first draft
draft patent specification and I have pleasure in
for a proposed new priority-establishing
enclosing a copy of this for you to check.
Convention patent application and one copy of same is enclosed herewith for your approval. Would you be so kind as to specify any
Would you please read this and let me know
deletions and/or emendations that you require
whether anything needs altering or adding. I
to see made to this draft, and either return
do not need it returning to me, a phone call
same, appropriately annotated, or alternatively
will do if this is the quickest way to deal with it.
schedule your requirements for further
But I must hear from you before I can send it to
consideration by us on receipt thereof pending
the Patent Office and secure that all-important
despatch for formal filing.
filing date.
We refer now to your trade mark VERBOSITY and
On the branding front, as agreed, Terry is
confirm that we have put in hand a search
searching to see whether your word VERBOSITY –
through such official records as are currently made
or anything dangerously close to it in your field –
available to the public at the Trade Marks Registry
is already registered or about to be registered as
to ascertain whether or not this is available for use
a UK trade mark. He tells me he expects to
and/or registration within the UK. We cannot of
complete this no later than Friday of next week
course give any commitment as to the length of
and he will write to you then. You already accept
such searches nor as to their reliability and nor can
that no search can give you a cast-iron
we accept any express or implied guarantee of
guarantee, but the databases we access have
such. We shall report to you in this respect in due
proved pretty reliable in the past and we are
course and hopefully at an early date.
going ahead on that agreed assumption.
We cannot of course discount and must draw to
An international search, of course, is a different
your attention the very real possibility that
matter. But you said you would tackle that as
further and even more damaging prior art
and when your business extends abroad. At the
might be revealed by international searches of
moment, and with that obvious risk, I think you
wider scope and we accept no responsibility for
can sensibly limit yourself to this UK-only
your stated decision (which we record here
clearance search from everything that I know of
specifically for this purpose) not to proceed in
your business to date.
this context despite our strong advice that you should instruct us to do so. Finally, with reference to British Patent No 1
As far as the Jones’ ‘Autodidact’ UK patent is
234 567B of which you handed us a copy and in
concerned, you can ignore it. It was not
respect of which we have caused a search of the
renewed; and he apparently died last week.
Register of Patents to be made to ascertain the status thereof, we write to inform you, firstly, that we have ascertained from said records that the renewal fee due in respect of the 12th year of the patent failed to be paid by the last due date – including any extension thereof – and, further, that it has come to our attention via a third party that the proprietor of the above-numbered patent is now deceased. The writer will revert to these matters in due
Terry and I will write to you, as I said, by the end
course and when full and final particulars are to
of next week. We shall then need to get together Patents Training Manual: Volume 1
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hand. At that stage it is suggested that a
with you again and I shall contact you to arrange
further meeting between the writer and
that appointment after you have had a chance to
yourselves would be appropriate to discuss
read the results of our work. In the meantime,
matters arising therefrom. To ensure attention
ring or email Terry with any queries on all normal
any further communication must be addressed
occasions but if he is not here, ask specifically for
to this firm in writing and not to any named
me. Both of us are fully briefed on this particular
individual. Assuring you of our best attentions
project which is certainly an interesting one. I am
at all times.
glad we have been able to advance it successfully for you so far.
Test your knowledge Consider each of the following situations carefully. Think about your own reactions then discuss these with colleagues and your trainer. How do your opinions change? Make a note to revisit these questions later in your training period to gauge your developing attitudes. 1. Why isn’t there an agreed industry-wide standard charging rate for professional time? And ditto the base service charges that every unit adds to the bill for any job involving a significant use of non-fee-earning, but base unit overhead cost deploying, resources? 2. Statistics show that, when fully trained, the slowest workers are never the best; whereas the best are always noticeably quicker than the competent average. Where billed fee-earner hours are the biggest element of the bill, and accurate time records are kept, work produced by those of average ability is, therefore, going to cost more than that produced by those who are the best. Discuss. 3. You and your fee-earning colleagues are having to outearn the costs that the non-fee-earning staff, i.e. procedural administrators, secretaries and accounts people, cannot themselves charge out directly. Could some of these people be charged on a job-allocated basis in their own overhead-generating right? Have you come across units where this is indeed done? If so, why doesn’t everyone do it? 4. You are perfectly capable of photocopying, touch-typing, filing and making your own telephone calls. Given these facts and today’s communication systems, why don’t we all practice from home? 5. Your training is essentially one-to-one whether you are in industry or in private practice. Why does the profession perpetuate this? And why, in private practice, are there so few truly team-managed units as distinct from individual billings-accountable sole operators even where the practice is both large and long-established? 6. When you and your trainer spend joint time discussing, analysing, correcting or otherwise collaborating on a given job, how does your unit treat the simultaneous chargeable time that is ticking away at your combined rate? 7. You have to visit a client to take instructions for a new patent application for the simplest of reasons; the machinery he wants you to see can’t travel from his factory to your office! The train and taxi journey, expenses aside, will take up two and a half hours each way. The inspection, cross-examination, and confirmation of agreed action interview will probably last no more than an hour and a half. How much of your time are you allowed to charge, and at what rate? Why?
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8. You arrived in the profession a short time ago with a degree which, whilst hard-earned, was already technologically out of date. You hope to spend the rest of your working life dealing with professional matters within our legal scope. You have been told that any continuing professional development from now onwards will be almost wholly in the legal practice, procedure and precedent field and not by way of refreshing your specialist technical knowledge. Why? What do you feel about this? 9. Your clients, given the cost of your advice, expect you to be special in some way. They usually cannot assess your legal expertise, only the style of your presentation. Yet you are encouraged to cultivate a straightforward no-nonsense communication style which could ultimately mean your approach and presentation are generally indistinguishable from theirs. Discuss. 10. You dictate advice which, when typed, comes back with several informalities in your grammar changed; e.g. ‘won’t’ is now ‘would not’ and ‘isn’t obvious’ becomes ‘involves an inventive step’. You ask your formalities people why this has been done and are told that they know, from long experience, the correct accurate wording to use. What do you do, assuming the letter must go out today and your trainer is absent?
Suggested chapter answers and comments The questions raised under Test Your Knowledge are intended to make you think, discuss, and (in one or two cases literally) provoke reactions from your trainer and other professionals generally. Individual answers will vary; some will be put forward forcefully. Sift through them all, ask again if needs be, and as you learn your way through the profession in all its aspects, make your own mind up – within, of course, the practice and precedent boundaries rightfully imposed on you by your employing unit.
Chapter review This chapter has introduced you to the complexities of working practice and some of the political aspects of your working life.
Further study This chapter is essentially an introduction to the whole field of good business practice; and as chapter 3 points out, becoming better simply takes time, and plenty of experience of real life client and colleague interactions. The key to enjoying, as well as profiting from your life as a patent attorney, is the efficient management of your personal time within the normal working day. Any general text or management guide book that helps you do this is worth studying and reflecting on. Online articles from such monthly magazines as Director and Management Today frequently cover this topic, and there are books available in paperback devoted entirely to it. As to passing exams, get hold of the examiners’ comments made available by CIPA and go back several years to distil the repeated guidance comments as to what is always needed (and so often not found) from candidates’ answers.
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Business practice
Outline This chapter puts the work of the patent attorney into its business context, discussing the obligations owed to clients and employers, and the business practices which help in fulfilling those obligations. It outlines the systems and procedures which patent attorneys use in their work, sets out ‘best practice’ standards for interactions with clients, and explores how quality of service can be monitored and assured. The following key concepts are introduced: • • • • • • • • • • •
patent attorneys’ responsibilities to their clients; the need to establish exactly who the ‘client’ is; the concept of conflict of interest; the importance of continuing professional development (CPD); what happens in the event of a mistake or complaint; confidentiality safeguards; proper charging procedures; file maintenance practices; techniques for dealing with deadlines and time pressures; effective client communications; attributes of a high-quality service.
The chapter also provides guidelines for conducting client meetings.
Learning plan Prerequisites: Before reading this chapter, you should have studied the IPReg Rules of Conduct for patent and trade mark attorneys (to be found on IPReg’s website at www.ipreg.org.uk) and – if you work in private practice – your own firm’s business terms. Knowledge of the basics of the patent system is assumed, as is familiarity with common patent terminology. You should study chapter 2 of this manual, on the role of the trainee, before tackling the present chapter, as sections there are further explored in this chapter. Trainer’s input: Allow the trainee to ‘shadow’ your work as much as possible, in particular to listen in on phone conversations with clients and to accompany you to client meetings. Discuss why you handle clients and their files in the way you do, drawing distinctions between different clients’ needs and expectations. Enlist the trainee’s help in tasks such as preparing cost estimates and invoices, writing file notes of meetings and sending deadline reminders. Involve him or her in drafting a wide range of different documents, for different purposes and to different types of client. If feasible, encourage the trainee to spend time with colleagues in the records/formalities and accounts departments, to see the systems they operate and the way they interact with fee-earning staff. Syllabus link: This chapter is not directly linked to any of the qualifying exams, but should impact on your ability to do a good job in a real-life context. Time allocated: Five half-days. Patents Training Manual: Volume 1
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Learning outcomes By the end of this chapter you should have a better understanding of the relationships between patent attorneys and their clients, and of the day-to-day procedures and practices which help to optimise those relationships.
3.1 General principles 3.1.1
Good business practice
Good business practice is based on one fundamental principle: that what we do, as patent attorneys, is worthless without its business context. We do not do our work for our own benefit, or to pass exams. We do it for the benefit of our clients. The need to do right by our clients determines the way we work, the way we conduct ourselves, the way we interact with others. This chapter explains some of the more important aspects of good business practice, which you will need to be aware of from early on in your training, and build on throughout your career.
3.1.2
Responsibilities to clients
Patent attorneys’ key responsibilities to their clients are: • • • • • • • •
to do a competent job (fairly obvious, this one); to do it courteously and professionally; to do it promptly; to communicate clearly about it; to charge for it fairly; to respect the clients’ confidentiality; to keep the associated files in good order; and to be approachable and helpful.
These responsibilities are discussed in more detail in 3.3 to 3.8 and 3.10 below.
3.1.3
The IPReg Rules of Conduct
The most important of the patent attorney’s responsibilities are enshrined in the Intellectual Property Regulation Board’s (IPReg’s) Rules of Conduct, which govern the work of all registered patent attorneys and their employees. These rules state that patent attorneys ‘shall at all times act with integrity putting their clients’ interests foremost’. The guidance provided with the rules states that we should: a) practise competently, promptly, conscientiously, courteously, honestly and objectively… b) act so as to promote confidence in the intellectual property system
and also that we should not do anything that might compromise ‘the dignity and good standing of… the patent or trade mark professions’. Note, then, that this includes obligations not just to clients, but also to other patent attorneys and to the profession as a whole.
3.1.4
In-house and private practice attorneys
Business practice issues are not quite the same for the in-house attorney as they are for those working in private practice. For the latter, there will typically be many different clients, often a different one for each task undertaken. Each will need to be dealt with in a slightly different manner. Systems and procedures are required to allow all these different relationships to function efficiently whilst ensuring a consistent standard of service.
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For the in-house attorney, in contrast, there is usually only one client: the employer. On the day-today level, this client might be represented by a range of different individuals, depending on the attorney’s role – scientists, for example, commercial people, managers or on occasions even the Board of Executives. In many respects these relationships are different to those between private practice patent attorneys and their clients: for example, issues to do with billing and complaint handling are likely to be far less, if at all, relevant to the in-house attorney. There are, however, a large number of areas in common. The in-house attorney is still bound by IPReg’s Rules of Conduct. He or she still needs to communicate effectively regarding the work done, and to be courteous and professional. Both types of attorney have obligations to their employers: to work efficiently and productively, to respect confidentiality and trust, to co-operate with colleagues and to act as ambassadors for the company outside of the office. The following sections are written firstly from the point of view of the private practice attorney, on the assumption however that much of this will be relevant to all attorneys no matter where they are employed. Each section then includes a discussion as to which aspects apply to the in-house attorney.
3.2 Who is the client? 3.2.1
The fundamentals
As soon as someone asks you to do work for them, they become your client. The various obligations discussed in this chapter then apply to your relationship with them. Absolutely fundamental, then, but so often overlooked or ‘fudged’, is the question: who exactly is your client for any given piece of work? Usually this question will be easy to answer, for instance when the technical director of a company instructs you to file a patent application in the company’s name. But what if the managing director (MD) of the company is also its owner, and asks you to file a patent application in his own name because he’s the sole inventor? Are you acting for the MD himself, or for the company (which is a completely distinct legal entity)? The answer could affect the advice you give about entitlement to the invention. Though the distinction may not matter at the start, it could become crucial if for instance the company later changes hands. You must always be clear in your own mind, right from the start of a piece of work and throughout, who you are acting for. Make sure that your understanding is confirmed in writing and agreed by the person who’s instructing you. It will affect what and how you advise, and how you act on instructions. Once you’ve established who it is you’re acting for, do not act on instructions from any other person or entity without the approval of your client. Do not incur costs without the client’s consent. Nor must you give advice to anyone other than the client, or do anything which is not clearly in the client’s interest. It’s good practice, if you’re being instructed by an individual on behalf of a client company, to get a formal ‘authorisation’ signed to confirm that the individual is entitled to instruct you. The authorisation should be signed by an officer of the company (either a director or the Company Secretary), and a quick check of the Companies Register (via the Companies House website, www.companieshouse.org.uk, current cost £1) should confirm that the signatory is indeed an officer. Clarify whether anyone else within the company will be allowed to instruct you. You should also check with your trainer whether your company policy has any specific procedures in this regard. An authorisation should also be obtained where one person represents one or more others (for example a partnership) – have the authorisation signed by all the represented parties, then file it away in case of future dispute. In both cases, it may be worth stressing to the client the practical value of nominating a single person as the primary point of contact on patent matters. Patents Training Manual: Volume 1
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Finally, but crucially, make sure that your firm’s business terms are signed and accepted by the same person or entity that’s going to be the client.
3.2.2
Billing arrangements
Be absolutely clear, from day one, about who will be paying for your work. Document this on the file and, at least for new clients, confirm it in writing. Generally speaking, the person or entity you are going to bill for the work will be the client, which will also be the person or entity that instructs you. Where this is not the case, you need to be extra careful and check with your supervisor that the proposed arrangements are acceptable (and again make sure they’re clearly documented on the file and understood by all parties).
3.2.3
Special situations
The following are situations which may need extra caution, or special treatment. • • •
• •
•
•
•
Owner managers, and owner inventors, of the type mentioned in 3.2.1 above. Businesses run by partnerships, married couples, groups of siblings, etc. – can you take instructions from any of them individually, or will one represent them all? What happens if they fall out? Work referred to you by other professionals, such as solicitors or accountants – will your client be the professional intermediary, or the business itself? This will affect from whom you can take instructions and whom you can bill. Work from overseas attorneys – almost always the attorney will be your client; be wary if anything else is suggested. ‘Overload’ work from in-house attorneys – make sure you’re clear from whom in the company you can take instructions, and be wary if others (for example technical contacts) contradict your original orders. When another party becomes involved, for example as a licensee of, or investor in, your client – remember you must not advise, divulge information to or take instructions from these third parties without your client’s consent. Equally, if you are acting for a potential investor or licensee, for instance during ‘due diligence’ enquiries, you must not give advice to, take instructions from or divulge information to the company under investigation. When someone other than your usual contact at a client company asks you to do something – double-check with your usual contact before acting and if appropriate refer back to your original instructions, and to any authorisation forms you have on file, to establish who has ultimate authority.
3.2.4
Conflicts of interest
A ‘conflict of interest’ arises when you act for two different clients, and the information you have from working with one could be of value to the other, or working for one would mean acting against the interests of the other. A patent attorney should never get into this position. Yet in the excitement of attracting a new client, it can be easy to forget the importance of running a ‘conflict check’. Rule 7 of the IPReg Rules of Conduct states the following: A regulated person must not act where his interests conflict with those of a client or of a former client, or where he knows or has reasonable grounds for suspecting that the interests of any partner or regulated person or staff of his firm, conflict with those of a client or of a former client.
Thus every time a new client asks you to work for him, you must check that there is no conflict of interest with any of your work for existing clients. There must also be no risk of conflict with the other clients that your firm acts for, regardless of which attorney deals with them or (if the firm has several different offices) which branch. You will therefore need to check with every one of your colleagues, and possibly
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also with your accounts department, before agreeing to act for a new client. Some firms have set procedures for this, but the onus is on you to ensure that they are followed. There are certain circumstances in which a patent attorney may act for two or more clients in a situation of potential conflict. These are explained in the IPReg Rules. However, the attorney’s integrity and independence must never be compromised (his actions must ‘be seen to be neutral’); the clients’ confidentiality must be safeguarded; and written consent must be obtained in these cases from all the clients. It may be possible, in exceptional circumstances, for patent attorney firms to operate so-called ‘Chinese walls’ between different attorneys or departments, allowing them to separate one client’s work from another’s, but again only if both clients consent. When considering whether there’s a potential conflict of interest, ask yourself whether the two businesses could ever end up on opposite sides of a patent-related dispute in the technical field in question. Also consider whether working for one of the companies would give you knowledge that the other could benefit from. Clearly in both these situations there is a risk that you would be unable to fulfil your professional obligations to both clients at once. The most common type of conflict arises if the two businesses are direct competitors. But there may also be risks if, for example, one is a customer of, supplier to, investor in or licensee of the other. There is always the danger that at some stage in the future, the interests of the two businesses will diverge. It is worth asking a potential new client himself to name third parties with whom he thinks he could come into conflict. The accepted protocol is this: in cases of potential conflict, you should decline (politely of course) to act for the new client, in favour of the existing one. In cases where there is a slight, but in practice not very high, risk of conflict, it may be acceptable for you to act for the new client, but only if (a) both the new and the existing client agree to this and (b) both are told what will happen in the event of a future dispute. The usual practice, in the case of such a dispute, is for the attorney to act for the longer-standing client, but to assist the other in finding a suitable replacement attorney. The most important things about potential conflict situations are to spot them early, to flag them up early and publicly, to walk away as quickly as you can before your integrity can be compromised, and to be absolutely clear with all parties what it is you’re doing and why. In theory, new conflicts can arise when an existing client branches out into a new business area, acquires a new company or enters into a new business relationship with another company. Beware of these types of situation. Be aware too that a conflict can arise after you’ve ceased to act for a client: if, for example, you’re asked to represent the defendant in an infringement action under a patent you once drafted and prosecuted (perhaps for a previous employer), you will have knowledge about the validity of the patent which could be of value to that defendant but which you cannot divulge because of your continued obligation of confidence to the original (now patentee) client. In this situation you should not act for the defendant, even if you have since moved to a different firm. Finally, it’s worth noting that if you act for a larger client, you will need to take a pragmatic approach to assessing conflict risks. It may not be feasible to avoid potential conflict over all the business areas covered, say, by a large chemical company, so realistically it might be better to look at the specific fields in which the company engages your services, and compare those to the interests of the potential new client. Be prepared to inform your existing client if such issues arise.
3.2.5
Personal conflicts
A form of conflict can also arise if a patent attorney has a significant personal interest that could compromise his or her professional duties to a client – a financial stake in a competitor, for example. See Guidance point 7.7 of the IPReg Rules of Conduct.
3.2.6
Ending a relationship with a client
It is as important to end a client relationship properly as it is to start one on the correct footing. If a client no longer wants you to act for him, you need to get this instruction in writing and also to Patents Training Manual: Volume 1
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write back to confirm that you will no longer be undertaking any work on his behalf. Invoice all your outstanding charges on his files (see 3.8.4 below). If the client is transferring his work to another attorney, you could continue to have obligations to him until the new attorney has formally confirmed that the transfer is complete. Ensure therefore that you have this confirmation before removing the client’s cases from your deadline monitoring systems and ceasing to look after his files. See 3.6.6 below for more guidance on file transfer. If it is you that has chosen to terminate the relationship, for example because the client has failed to pay your bills or because of a conflict of interest, do what you can to help the client find an alternative patent attorney – see also 3.2.4, 3.8.8 and 3.10.11 regarding appropriate procedures in such cases. You must give the client reasonable notice if you intend ceasing to act for him. Note that your obligation to keep a client’s affairs confidential (see 3.4 below) continues even after you have ceased to act for him.
3.2.7
The in-house attorney
Much of the above does not apply to the in-house attorney; the client is simply the employer company. Things may not be quite that straightforward, however, particularly in large organisations. It’s important to establish with your line manager who you can take instructions from for what types of work, who you should go to for what types of information, who you’re allowed to report to and on what issues, who needs to be copied in on or consulted about your findings, etc. There are likely to be clear remits for each department and for each employee within the department. There may well be political sensitivities which go beyond simply being aware of who your superiors are. Budgetary considerations may also affect what type of work you can do, for whom and when. You will need to tune into such issues as soon as you start work. Ironically, it may be every bit as important for you to establish which part of the organisation you’re acting for, and which is going to pay for the service, as it is for the private practice attorney to identify the correct client. Conflicts of interest generally won’t need to worry the in-house attorney, except if you move on to work for a competitor, in which case you need to be careful not to make use of confidential information acquired during your previous employment.
3.3
Professional competence
3.3.1
Your duty of care
Legally, as a private practice patent attorney, you owe a duty of care to each of your clients. It is your duty to give correct and appropriate advice and to act in the client’s best interests at all times. If you fail in this duty, you (or more likely the firm that employs you) can be sued for professional negligence. The situation is not quite the same for those working as in-house attorneys, but you still have an obligation to do a professionally competent job. In fact, the IPReg Rules of Conduct require that every registered patent attorney: ‘shall carry out their professional work with due skill, care and diligence and with proper regard for the technical standards expected of them’. So, the advice you give as a patent attorney must be clear, and properly understood by the client; it must be accurate and in particular legally correct; and it should be commercially appropriate (because what constitutes good advice will depend on the nature and size of the client’s business). You must do everything you can to help optimise your client’s IP position and opportunities and minimise his patent-related risks. Be aware too that the duty of care can apply to your dealings with potential as well as actual clients.
3.3.2
Best practices
The need for professional competence is so obvious that it barely merits further explanation. There are, however, certain best practices that you ought to observe:
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• •
•
•
•
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If you don’t know the answer, ask a colleague or do the necessary research. It is far better to tell a client that you don’t know but will find out, than to bluff and turn out to be wrong. Never advise outside your field of expertise, even if pressurised to do so. Some things are better left to other professionals. Common examples – of areas into which patent attorneys have sometimes strayed without justification – are patent searching, drafting legal agreements such as licences and advising on infringement or validity of foreign patents, and of course working in unfamiliar technical fields. Note Rule 4 of IPReg’s Rules of Conduct: ‘A regulated person should only undertake work within his expertise or competence’, and the associated guidance which reminds that: ‘If the regulated person considers that the interests of the client would be served by some other person acting, he must advise his client accordingly.’ In such situations, involve more suitable professionals such as patent searchers, IP solicitors or overseas attorneys. Take time, however, to brief these people properly, clarify their business terms and charges beforehand, monitor their work and actively ‘manage’ the interaction so that your client benefits from the extra help rather than feeling abandoned by his patent attorney. Always ensure that your advice includes appropriate caveats, and that the client understands its limitations. For example, if you report patent search results, explain the limitations of searches. If you advise on subjective issues such as infringement or inventive step, point out the risks of a patent office or court coming to a different conclusion to yours. It helps to set out, at the start of any piece of advice, the scope of your investigations; the information and, if applicable, the assumptions on which your advice is based; your sources for relevant information such as legal status checks; and any factors that could significantly affect your advice. Remember that you cannot make commercial decisions for the client. You can advise on his patent position and options, and the patent implications of any particular course of action, but the decision about how to act on your advice is ultimately up to him. Stress this at all times.
3.3.3
CPD
It is expected that at all times during your career as a patent attorney – and this applies to in-house as well as to private practice attorneys – you will keep your knowledge and skills up to date. In other words, you will engage in ‘continuing professional development’ or CPD. Patent attorneys are subject to a compulsory CPD system, under which they are obliged to undertake a minimum annual amount of training. The system is not unduly onerous but it does mean that you will need to keep records of the CPD that you would no doubt have engaged in voluntarily anyway. Information about the amount and type of CPD which is required can be found on the IPReg website (www.ipreg.org.uk). Both during your training and afterwards, you should keep abreast of developments in UK, European and PCT patent law and procedures, and ideally of significant developments in other key territories such as the US and Japan. You’ll be expected, as a minimum, to read the monthly CIPA Journal, the official European Patent Office Journal, the PCT Newsletter and other relevant notices that issue from time to time from the UK Intellectual Property Office (IPO), the European Patent Office (EPO) or the World Intellectual Property Organization (WIPO). You should also read, if you have access to them, published law reports such as the Reports of Patent, Design and Trade Mark Cases (RPCs), the Fleet Street Reports (FSRs) and the European Patent Office Reports (EPORs). Keep up with circulars from overseas attorneys announcing developments in their own jurisdictions, and dip into IP-related publications such as ‘Patent World’ or whatever else your firm subscribes to. All of this makes for a mountain of paperwork to be perused every week. This is part of the cost of working in a rapidly developing area of the law that spans the whole world and interests businesses in almost all fields of technology. In addition to the reading, you should attend relevant patent-related seminars whenever you can, and take the time to discuss either general developments or specific cases with colleagues and – in the case of general developments – with attorneys from other firms. Patents Training Manual: Volume 1
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Technical knowledge
A private practice patent attorney is not expected to be an expert in the technical fields in which his clients operate. It is perfectly acceptable – indeed sensible – to be open with your clients about this. Clients are, however, entitled to expect you to have a scientific background, knowledge of the basics in the field(s) you advise in, and the ability to learn about their technology and to ask them relevant questions about it. The more you work for a particular client, and the closer your relationship with them, the more your understanding of their technology will develop.
3.3.5
Getting it wrong
It is bad enough to know that a client is dissatisfied with your work (see 3.10.11 below), but the implications of not doing a good job can be even more serious than that. Fortunately patent attorneys are not sued for negligence, or complained about, as often as other lawyers, but when they are, the stakes can be high and the insurance claims little fun to deal with. This is why private practice patent attorneys have to carry ‘professional indemnity insurance’ (which most obtain through a mutual society known as PAMIA), to cover their losses in the event of a successful negligence claim against them. It is also why private practice firms are increasingly opting to limit their liabilities, at least to the extent possible by acquiring ‘LLP’ (limited liability partnership) status. Professional negligence usually arises from getting something very clearly wrong, for example failing to act on a client’s specific instructions, missing a deadline, following incorrect or clearly inappropriate procedures, or advising incorrectly on clear-cut questions of fact such as dates. Ignorance of changes to patent laws and procedures – whether those enshrined in official statutes or rules or those emanating from court decisions – can be another cause of negligence and is certainly not an excuse for incorrect advice. You may be relieved to hear that on less clear-cut, more subjective issues such as infringement and claim interpretation, and validity (in particular inventive step), it is much less likely that you will be held to be negligent even if your conclusions turn out to be wrong. So long as you had reasonable grounds for reaching the verdict you did, and clearly justified your opinions at the time, you were not necessarily incompetent just because a patent office or court subsequently reaches a different conclusion – and let’s face it, patent office and court decisions are frequently overturned on appeal, or flatly contradicted in parallel proceedings in other countries. That said, professional pride will make you want to be proved right whenever possible. It’s often wise, on such subjective issues, to get a second opinion from a colleague. Moreover flag up to the client all the areas of doubt, so that there can be no question of misleading. If you think it appropriate, give an approximate percentage chance of a particular outcome, for example of a patent being held ‘inventive’ over a piece of prior art, though make sure you can reasonably justify your prediction. Issues over which you should be particularly careful, because the stakes are potentially so high, are (a) advising that there is no infringement risk to the client in a particular situation and (b) advising that a client’s invention is unpatentable (you should hardly ever need to say this – so long as there is novelty, even the smallest of ‘inventive steps’ might be worth arguing over, and it is not good if your client doesn’t apply for a patent but a competitor does and succeeds!). Negligence can also arise from advising on areas outside of your field of competence, but without explaining that to the client. For example, if you advise a client he does not infringe a US patent, he is entitled to rely on that advice and to believe you are competent to give it, which, unless you’re a qualified US patent attorney, you’re probably not. If your advice is wrong, the client may well be able to sue you. Give guidance by all means in this situation, but put it in context and recommend that proper advice be sought from a US lawyer. Poor drafting, in particular poor claim drafting, is another area which can get the patent attorney into trouble. Firstly, there is the question of whether you did a competent job and obtained the best possible scope of protection based on what was known at the time, not only about the invention and the
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prior art but also about the commercial context. But for a UK patent at least there is also the issue, which could affect the client’s position during future litigation under the patent, of whether the specification was drafted ‘in good faith and with reasonable skill and knowledge’ (see sections 62(3) and 63(2) of the UK Patents Act 1977 (UKPA), which relate to the financial compensation available to a patentee when his patent is amended either before or during infringement proceedings). If you do not feel, at the time of drafting a patent specification, that you have the ‘reasonable skill and knowledge’ necessary to do so, you must ask your supervisor for help. What’s really important to bear in mind is that negligence, or even just sub-standard work, can have huge costs not just for your employers but also for the client concerned. Commercial positioning is at stake, not to mention potentially huge sums of money. At the slightest hint of a mistake in your work, or client dissatisfaction, involve a more senior colleague. The issue should be officially notified to your firm’s insurers as early as possible, even if no other action is taken at that stage.
3.3.6
The in-house attorney
The in-house attorney does not usually need to worry about being sued for professional negligence. The stakes are every bit as high, however, for the in-house ‘clients’ which he or she advises. There is still a need to do as good a job as possible. The requirement for ‘good faith and reasonable skill and knowledge’ also applies as much to a patent specification drafted in-house as to one prepared by a private practice attorney. The best practices listed in 3.3.2 are still largely appropriate for in-house attorneys, and the requirement for CPD applies, of course, to all of us, wherever we work. Knowledge of the relevant technical field, meanwhile, will generally be much more important for the in-house attorney than for those in private practice.
3.4 Client confidentiality 3.4.1
Basic principles
As a patent attorney, you will inevitably be privy to highly sensitive information. Some of it will be technical, for instance to do with inventions. Some will be legal, relating perhaps to patentability or infringement risks. Some may be commercial, for example competitor intelligence, investor or licensee details, or business plans. It may even be financial, for instance information on credit ratings or cash flow issues. Your clients, and your employers, are entitled to expect that you will keep this information confidential, not only whilst you are working for them but afterwards too. The requirement to respect client confidence is specifically mentioned in the IPReg Rules of Conduct (Rule 8) and will also probably be enshrined in your contract of employment and in the business terms which your clients enter into with your firm. The basic principles are clear enough: you must never make use of or disclose, to anyone other than the relevant client or your colleagues, confidential information which you have been given during the course of your work. The same applies to confidential documents. If you are not sure whether something is confidential or is already in the public domain, treat it as confidential anyway – don’t risk being the source of the leak. These obligations continue after you cease working for the client, and even if you change employers. They even apply if the person who gave you the confidential information never actually becomes a paying client. Show discretion at all times. Ensure that your colleagues, in particular support staff who will take their example from you, do the same. Beware light-hearted discussions about clients around the office, Patents Training Manual: Volume 1
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which can all too easily lead to an unprofessional approach and the accidental disclosure of clients’ affairs. Remember that no matter how interesting, high-powered, amusing or even exasperating your work, you should never discuss it with friends or relatives or even with other patent attorneys outside of your firm. And don’t be tempted to talk to one client about another. It is of course important, in order to adhere to these principles, to be absolutely clear about who your client is in any given situation: see 3.2 above.
3.4.2
Practical precautions
The following are a few practical measures which you can – in fact should – take to help safeguard clients’ confidentiality. •
•
•
• • • • •
•
•
Mark all correspondence ‘CONFIDENTIAL’, preferably in a prominent position at the top of each page. This applies to letters (except of course those destined for official patent office files, which will automatically be open to public inspection), e-mails, faxes, reports, draft specifications and ideally even internal documents such as file notes. It could help you to establish, should the documents get into the wrong hands, that there has been a clear breach of confidence. Formal legal advice and recommendations should almost always be on your firm’s headed notepaper, if nothing else to ensure they’re recognised as professional advice in future litigation, and hence can benefit from ‘privilege’ (under Section 280 of the Copyright, Designs and Patents Act 1988) against disclosure to other parties. Use e-mail with caution, as it is not believed to be totally secure and may not be deemed sufficiently ‘confidential’ in law. Make sure your client is happy to exchange information and documents in this way. If you do use e-mail, consider password-protecting attachments (but don’t divulge the password in the same e-mail!). Be careful who you copy correspondence to (especially e-mails: it’s all too easy to use the wrong ‘cc’ list, or to forward a chain of e-mail exchanges which contains restricted information). Take care if you want to work on a train or plane or in any other public place – try to keep confidential documents out of sight of others. Similarly, be wary of who can overhear work-related telephone conversations, again particularly calls on mobiles when out and about. Always be aware of where information and documents have come from, and use your common sense about who else they ought to go to. You may not have the right to forward a document from one person to another. Also be wary when contacted for information by someone associated with your client, for example their solicitor or accountant, their marketing consultant, an investor or a potential partner – don’t divulge anything without your client’s prior agreement. Watch out for conflicts of interest (see 3.2.4 above) – these are classic situations where a client’s confidentiality could be compromised.
A final caution: if one part of a client company, or one individual there, starts asking you to keep things secret from another, or if someone associated with your client (for example an investor or licensee) asks you to keep things secret, discuss immediately with your supervisor and proceed with caution. You need to be absolutely clear about the entity to whom you owe a duty of confidence (again, see 3.2 above).
3.4.3
Employers’ confidentiality
The things you find out about your employers are also intended to be kept confidential. Again this might include legal, commercial or financial information. It will certainly include client lists and clients’
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contact details, and possibly also pricing information. Do not divulge such information to anyone without express permission. And if you leave the firm, remember that you can be sued if you take away or use confidential documents or information of any type. In the event that you have to copy or transfer one of your files to another firm of attorneys, take the precaution of removing invoices, estimates and related documentation. It’s conventional in this profession not to share charging information with competitors.
3.4.4
The in-house attorney
For those training in industry rather than private practice, it’s probably clear that most of the above will apply to the information you obtain from within your company. You will need to take special care about who you divulge information to outside of the business, in particular where investors, legal advisors, licensees or other business partners are working with the company. You’re likely to have access to far more commercially sensitive information than the private practice attorney, and possibly also financial information. It’s just as important to maintain confidentiality here as for the intelligence that a private practice attorney accumulates. You may also need to exercise discretion within the business, in particular in larger organisations. It may not be appropriate for one department to know about the work that another is doing – a common example is that the marketing staff should perhaps not be told too early about potentially patentable scientific developments. Be sensitive to such political issues, and to the chains of command which you work under, as well as to the remit (and status) of those with whom you correspond. As an employee, you will not be protected by the same degree of ‘legal professional privilege’ as that accorded to the advice which a private practice attorney gives to clients. This means that you will have to be particularly careful about the way you record your opinions and recommendations. Advice on infringement risks, for example, or patentability problems, may be better discussed with the relevant people face to face or over the phone rather than recorded in potentially damning paperwork that might have to be disclosed in subsequent litigation. Businesses which operate in the US are likely to be particularly paranoid about this. Find out from your supervisor how your company feels about such issues. In-house attorneys sometimes instruct private practice attorneys to do work such as patent drafting or prosecution. If you get involved with this, be wary of how much you divulge to the outside attorneys (bearing in mind that too little could compromise the level of service you get), and make sure they understand who in your company they’re allowed to communicate with and how. Be especially careful about e-mails: your company may operate a secure ‘intranet’ system for internal communications, but sending an e-mail to an external contact will not be so secure and may not be appropriate for example to send data for a new patent application.
3.5 Good communications 3.5.1
Introduction
Good advice is worthless without effective communication. ‘Effective’ communication is not just about producing impressive-looking letters in grammatically pristine English – although that often helps – but also about adopting a style and vocabulary that will be understood by the recipient, about presenting information in an appropriate format, about understanding what to communicate and when, and of course about listening as well as talking. We have had a look at this in chapter 2 from a practical perspective but there are business considerations too. As a patent attorney you will spend at least half your working life putting across your opinions, recommendations and knowledge to other people. You will need to be able to do this in a wide range of formats, from formal letters and reports to informal e-mails, in meetings both large and small, in Patents Training Manual: Volume 1
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teleconferences and video conferences, sometimes even in highly formal situations such as court or patent office hearings. You will need to be precise, concise, clear and well organised. You will need to be able to assemble and express your thoughts rapidly and efficiently. Sometimes you will need to persuade, influence or negotiate. At other times your role will be to extract information. Some of your communications will be available for others to read, for example on the official files of the patent applications you handle. Often your advice will be passed to others to consider. Very occasionally your work will be read out in court or – heaven forbid – perused by insurance lawyers. It needs to stand up to these tests, often over several years. Some people are naturally better at communicating than others, but all of us can learn to do it better and a significant part of a patent attorney’s training is about just that. The following are intended as helpful hints, and generally relate to all forms of verbal communication, both written and spoken.
3.5.2
What to communicate, and when
The first imperative is to communicate the right things at the right time. As a rule, you need to communicate with your client whenever anything happens on one of his files. Do so as promptly as you can, even if you only have time to say that there’s been a development and you’ll send more detailed advice in due course. Allow the client a reasonable amount of time to respond if necessary. Tell the client exactly what’s happened, what the options are in response, the pros and cons of each and their implications, both short- and long-term. It’s also helpful to outline the costs and timescales involved for each scenario. And most clients appreciate some kind of steer from you as to which might be the best course of action – although you can’t actually make a decision for them, often there will be a clear preference for one option or another. Include copies of relevant documents, for example search or examination reports or cited prior art. Make sure you have the client’s clear instructions in response before you take any action. Clarify any outstanding issues if necessary, perhaps by phone. Don’t leave anything to chance or assumption. If you’ve time, confirm telephone or face to face instructions in writing before acting on them. Whenever you do work on a file, that too must be reported promptly to the client. Tell him what it is you’ve done and why, what the implications are and what’s likely to happen next. Again send him copies of relevant documents, for example exam report responses, amended claims or applications you’ve filed. This is also a good time to include your invoice for the task. With regard to enclosures, although generally the client should be copied in on all relevant material, use your judgement and don’t swamp him with unnecessary paperwork. Not every client will need to keep a copy of the Japanese language version of his nationalised PCT application, and many will appreciate your letting them know that you’ll keep a copy on your file so as not to over-fill theirs.
3.5.3
Know your audience
Whenever you need to communicate with someone, spend a moment thinking about the recipient and the intended purpose of the communication. • • •
• •
Who is it addressed to? What’s their role? How busy and/or important are they? How much do they know about patents? What’s the purpose? Is it for you to obtain information (say from an inventor) or instructions? Is it to give advice? To report a development on a patent application and outline the response options? To persuade a patent office examiner to reconsider an objection? To arrange a meeting? Who else might the communication be shown to? What do you need from the addressee(s) in response?
Then choose a style that’s appropriate for the target audience and purpose.
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Empathy
One of the most important things about communication is understanding the recipient, and how he’s likely to react to what you’re saying. His background and level of knowledge matter a lot. Clearly you can use ‘legalese’ in a letter to a patent office examiner, an overseas attorney or an in-house lawyer but not in a letter to a normal small or medium-sized client. In a letter to an inventor you might be able to use technical terms but again you’ll need to steer clear of legal jargon. When writing to overseas attorneys, keep your instructions as pithy as possible because translations, and differences in culture as well as in local patent laws and practices, can easily lead to misunderstandings. Depending on the recipient’s background, you may need to pitch your communication at a particular intellectual level. You may also need to adjust your style to reflect subtleties such as the status of the addressee – are they for example about your own generation, or are they older and/or higher status? Some people are likely to have less time than others to deal with your communications – bear that in mind and wherever possible keep things succinct. Some will want to know the details, others will prefer you to take more initiative and make clear recommendations for them. Your addressee’s background should influence not just the way you communicate with him, but also the types of things you communicate about, and how frequently. If you have a client who knows relatively little about the patent system, you will need to contact him more frequently to explain what’s happening on his files. A more experienced client may not need to hear from you so often. The better you know the recipient, the less formal you may need to be. A more chatty style can sometimes be acceptable, but don’t over-step the mark: you are still a legal advisor and your advice may one day be read out in court. It’s good practice, when you’ve written something to someone, to read it back out loud to yourself. Does the tone sound right? If the recipient were sitting opposite you, would you be able to say the same things to his face? Often there’s only a fine line between avoiding bewildering jargon and sounding completely patronising, or between keeping things clear and empathetic and losing all professional credibility. Be sensitive too to how the document is intended to be used. Does it need to help the client decide what to do in a particular situation? If so, clear recommendations would be helpful, as would an analysis of all available options, pros and cons, likely costs and timescales. Does it contain legal advice that needs to be shown to the Board of Directors? In this case, it may need to be more formal, and definitely succinct, but equally there may be even more of a need to avoid patent jargon. In the case of a report, remember that business executives generally expect to see a one-page ‘Executive Summary’ at the start of the document, and not to have to read the whole thing. It’s a good discipline to make yourself prepare this type of précis whenever you write a document more than about four pages long. You should take account not only of the direct recipient of your communication, but also of others that it might need to be shown to in the future. Modify your style and vocabulary accordingly. Like it or not, the person you are writing to will often be reluctant to spend time reading detailed legal analyses. For insurance purposes, however, and of course to justify your bills, you will need to explain to the client exactly why you’ve reached a particular conclusion or why you’re making a certain recommendation. The best way to handle this is to send a one-page letter summarising the key issues (for example your conclusions or recommendations, and what if anything you need from the recipient) and then as an annexe a more detailed analysis of the situation. The reader need never turn to the annexe if he or she doesn’t want to, but at least you’ve done your job. Finally, remember that the advice you give should be both helpful and commercially appropriate as well as legally correct. Don’t be afraid to give negative opinions, but do so tactfully, with a mind to who might ultimately be reading your advice, and include some constructive suggestions for how problems might be addressed. Think about whether your advice is realistic in view of the client’s position and priorities. The strictly correct legal advice, whilst it has to be included, sometimes needs to be tempered Patents Training Manual: Volume 1
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with…’ but I appreciate this may not be feasible for your business at this stage, and a more practical option might be to…’.
3.5.5
Accuracy
In all your communications, learn to be pedantic. Details matter in this job – numbers, dates, sources, the precise meaning of technical terms or legal texts, all can be crucial. To get them wrong would at best lose you credibility, at worst lead to sub-standard advice. Check and double-check, then proof-read again. Never send out a document immediately after you’ve drafted it. Be very critical about the content of your work. Have you said what you meant to say? Is that how the reader will understand it? Are there any ambiguities? Any omissions? Any items referred to without antecedent? Have you used consistent terminology throughout? Is there a logical progression of ideas through the text? Have you followed through your arguments, justified your conclusions? Have you divided the issues appropriately, or muddled two or more of them together? Will the reader know what to do in their response? These questions impact not only on accuracy but on overall clarity as well.
3.5.6
Clarity
It’s obviously important that what you write, even in a simple e-mail, can be clearly understood by the recipient. So, for example: • • • • • • • • •
•
• •
Organise your thoughts before you start writing. Old-fashioned pen and paper work surprisingly well for this. Write in clear sections, especially in lengthy documents such as reports. Include sub-headings. Use bullet points to break up the text and highlight key points. Avoid jargon wherever possible. Try to keep paragraphs reasonably short. Use a mixture of short and long sentences, to keep the reader’s attention. Avoid unduly complex sentences, however, as most clients are not used to reading highly intellectual legal texts. Use the active rather than the passive voice (‘I recommend’ rather than ‘it is recommended that’). This tends to give a more friendly and client-focused feel to the text, so is easier to read. Dispense with unnecessary pomposity such as ‘with reference to the abovementioned duly executed documents…’ (even in formal letters these serve little useful purpose). If the issues are complicated to explain, put them in a separate document, for instance as an annexe to a letter. An analysis of a lengthy examination or search report is the obvious candidate for this, as are technical questions for inventors. Letters themselves should generally be short and direct. Make sure key points are highlighted. Your conclusions and recommendations should occur early in the document, even if it’s a letter, before the reader loses interest. Deadlines can be highlighted in the text or even appear in the heading. In longer documents, summarise key points now and then so the reader can confirm his understanding. Finish your communication with a clear indication of what you want the reader to do next – reply with instructions, give further technical input, or simply wait to hear from you again?
On the issue of jargon, bear in mind that even the simplest of terms which you use on a day-to-day basis may not mean anything, or may mean something completely different, to the average businessman or scientist. Try to remember what the words ‘claim’, ‘prior art’, ‘specification’, ‘prosecution’, ‘priority date’, ‘PCT’, ‘official action’, ‘amendment’, ‘anticipation’ and ‘inventive step’ meant to you before you came across the world of patents. Did you even understand the concept of ‘filing’ a document at a patent office? If you use such terms, find a way of explaining them in plain English – a ‘claim’, for example, is a legal definition of the scope of protection a patent gives – as this can help educate your client and hopefully simplify future communications.
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Physical form
It isn’t just the style and content of a communication that needs to be adapted to suit its context. The form of communication you use is also important. Options available include for example: •
•
•
•
letter. There are some who believe that all formal advice has to be sent out on the firm’s headed notepaper. This isn’t a bad starting point, particularly since the letter can be sent as an e-mail attachment for speed and convenience. report. Suitable for lengthy or complex pieces of advice, such as search results, validity or infringement opinions or analyses. Essential for formal matters such as reporting on due diligence investigations. e-mail. Good for speed and convenience. Easy to distribute widely. Beware though – too easy to send without properly checking, or to send to the wrong people. Less suitable for issuing formal instructions for example to overseas attorneys (except in the form of an attached letter), and not yet appropriate for communicating with patent office examiners, except on minor or purely formal matters. PowerPoint™ presentation. Useful – sometimes essential – in meetings. Good for getting information across quickly and effectively, especially to several people at once.
Some of the people you correspond with will prefer letters, others will respond better to e-mails or phone calls: you quickly learn which forms of communication suit someone and which are likely to be ignored. Then of course you need to think about how quickly your message needs to reach its recipient, and whether you need confirmation that it’s arrived safely. For speed, a document can be sent by fax or e-mail, or via an online filing system such as epoline®. To be sure it’s arrived, it can be sent by Special Delivery, International Recorded Delivery or an equivalent service, or by courier, or again using a secure online filing system that verifies receipt. Your firm may well have standard procedures, for example that all letters to the IPO must go by Special Delivery, but in other cases it will be up to the responsible attorney to decide on an appropriate delivery method. E-mail is not generally suitable for sending important instructions, particularly at the last minute, unless you wait for an acknowledgement of some kind such as a ‘read receipt’. E-mail is, however, useful if you need to distribute a document to several contacts. Be wary however of large circulation lists as they can easily result in confidential information being sent to inappropriate recipients, and annoy those who do not really need to be in the loop. Always take account, therefore, of who your communication needs to reach, who it might need to be copied to, and perhaps who it ought not to reach. These issues can affect whether or not you use e-mail, and also what types of enclosures or attachments it’s appropriate to include. Similarly, if the e-mail contains a trail of preceding messages, check or remove them as embarrassing text can lurk down there. Even in these days of electronic communications, faxes and e-mails are still often followed up with ‘hard’ copies in the post. Make sure you know your firm’s policy, and your client’s tolerance threshold, on such matters. Important formal documents, for example originals of signed assignment or licence documents, or granted patent certificates, will of course need to be sent by mail or more preferably by courier, and packaged to arrive safely. Make sure you keep copies on your files. Do not rule out, in all of this, the possibility of communicating by telephone or a face-to-face meeting. Both can have considerable value in eliciting prompt and definite answers, and have the added bonus of giving you an instant ‘feel’ for how well your message has been received. If you find yourself sending a letter to ask a single question, perhaps you’re procrastinating and a phone call would be a more efficient use of your time. If however your message is more complex, then it can be more considerate to send a letter and allow the recipient time to digest all the information, before following up with a phone call or meeting to clarify the outstanding issues. Patents Training Manual: Volume 1
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In meetings, you could use a PowerPoint™ presentation to convey complex advice, or a briefing document to help participants prepare for the meeting and to guide discussions on the day. Spreadsheets can also be a client-friendly way of presenting information such as cost estimates, procedural deadlines and the contents of a patent portfolio.
3.5.8
Presentation
The written word is often the only tangible product that a patent attorney’s clients get to keep. It’s worth making the effort to ensure it’s a good one. The documents you produce should be well presented, well laid out, clean, nicely bound, if appropriate, with all the right enclosures. It goes without saying that they should be spell-checked and grammatically correct. Your secretary may be the person who prepares the documents for you, but you are ultimately responsible for the documents as they leave the building. It’s good practice to include a header and/or footer on every document, indicating the nature of the document, the file it relates to, the author, the date, which version it is and of course the page number. Get into the habit of including this information; it helps with the filing (both yours and the client’s) and it looks more professional. Your firm may have standard formats for documents such as reports, and almost certainly will do for letters and e-mails. Make sure you stick to these. If nothing else, they help to ensure that vital information, such as lists of partners, company registration numbers and references to IPReg, isn’t omitted – some of this information is required by law.
3.5.9
A two-way process
Communication is, of course, a two-way process. You need not only to convey your thoughts and recommendations, but also to listen to the client’s responses and bear them in mind as you handle the work. Listen particularly carefully if a client indicates that he has not understood your advice: it’s up to you to try again until he does. Similarly be alert to more subtle clues that the client isn’t satisfied with your work – these provide opportunities to discuss and iron out misunderstandings, and to improve the working relationship. Try to encourage your clients to keep you informed about their commercial situations, business plans and priorities. If they don’t contact you, make it your business to contact them so that you get the information you need. Your advice can be so much better focused, and so much more appropriate, if you know more about its commercial context. When a client asks you to do a piece of work – a report or investigation, for example – get as much information from him as you can about why he wants the work, what he’ll use it for, who else might see it, what level of detail he wants, what format and style, etc. This will help you to deliver a better product. Often the purpose of a letter, phone call or meeting will be for you to obtain information from someone else, for example technical information from an inventor. Here again, do as much listening as you possibly can. Try to keep the person on your side by making your questions clear, to the point and logically presented. Be very clear about any extra information or documents you need from him. Above all, keep lines of communication open with all of your clients. Encourage them to contact you with both updates and queries. Be approachable and helpful. And answer them promptly.
3.5.10 The in-house attorney No-one in this profession, whether in private practice or industry, is exempt from the requirement to communicate clearly, accurately and with consideration for the needs of the recipient. The guidelines given above are fairly general and should be just as relevant to the in-house attorney as to any other, although the types of people with whom he or she needs to communicate may be slightly different, as may the purpose of the communications. Internal meetings are likely to be more frequent, and presentation styles may on the whole be less crucial, but there will still be a need to modify style to suit context, and there will be significant
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differences between communications with management, with patent or other legal colleagues and with R&D staff, and differences again when communicating with patent offices or overseas attorneys. As an in-house attorney, you may find yourself under particular pressure to produce summarised versions of your work for consumption by busy, non-patent-literate managers. You will also need to be very aware of the business context of your advice.
3.6 File maintenance 3.6.1
Introduction
Training as a patent attorney will give you an insight into what the term ‘anally retentive’ really means. Every piece of work you do – every patent application, every infringement and validity report, every opposition – will have a file. There will usually be a physical file, bulging with relevant paperwork, and there will be a corresponding electronic record by which associated procedural deadlines are monitored. Most probably there will also be electronic files containing client contact details, billing information and electronic copies of all correspondence and documentation. And into these files goes absolutely every document that crosses your desk. Every document belongs in a file; nothing is homeless. The ‘file’ (collectively the electronic and the paper records) for a piece of work is a complete record of what’s happened in connection with that work, from the time when it was first instructed to the time when it was completed and billed out. Another attorney should be able to pick up the file at any time, establish what’s happening on it and take over the work. Equally, since several months may elapse between episodes of working on the file, you yourself should be able to pick it up and immediately see what happened last and what needs to be taken into account when handling the case in the future. The file will also be an important record should the client ever complain about your work, or in case of a related insurance claim against you. If you’ve never worked in an office before, the requirement for systematic record keeping and document hoarding can seem alien at first. Yet it is essential if a patent attorney is to function efficiently and responsibly. It matters to the attorney and his or her employers and – though they may not know this – it matters to the clients.
3.6.2
What goes into the file
The answer to this is, basically: everything. The file must give a clear visual audit trail of the work you’ve done for a client and all your correspondence with him. It should show what was instructed, when and by whom; how you did the work and what you took account of; and the outcome (typically, what documents or advice were given to the client and when). It should also show what you told the client about costs and timescales, and of course what you billed when the work was done. You must therefore put on the file: • • •
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Copies of all letters, faxes, e-mails, reports or any other messages which you send to the client or to any other person (e.g., a patent office) in connection with the relevant matter. All letters, faxes, e-mails, etc. that anyone sends to you in connection with the file. Written notes of telephone conversations and meetings, including dates and timings, who was present and the key outcomes of the discussions. Telecons and meetings are so often inadequately documented, yet are a vital part of the chain of events which the file has to chronicle. Copies of any documents you send out to the client, for example cited prior art documents. When you send documents with an annotated compliments slip, a handwritten comment or a sticky note attached, keep a copy of that too. Copies of any documents you receive in connection with the file, for example from patent offices or overseas attorneys. Patents Training Manual: Volume 1
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Copies of all draft documents (such as draft patent specifications or amendments, including updated versions as they evolve) which you send to anyone for approval, including those sent electronically. File notes (dated and with the author named) of anything relevant to the file, for example your thoughts on reviewing a search report, or the outcome of research or discussions with colleagues.
Your company will have its own policies as to which of these have to be kept in paper form and which electronically. It is particularly important for the file to document procedural instructions. Examples include an instruction to file a patent application, a list of countries in which to proceed at the 12-month stage or at PCT nationalisation, approval of a draft document or of a recommended course of action, and an instruction to abandon an application. Wherever feasible, and particularly in the case of abandonment, remember that telephone or face-to-face instructions should be confirmed back to the client in writing.
3.6.3
Best practices for file maintenance
The following are some practices that you should follow to keep your files in good order. •
Date every document that goes into the file. Also mark it with the file reference (in case it gets lost in the future), its author and if applicable its source (e.g., ‘from 9.5.07 meeting’). Recording authorship can be especially important in bigger firms. Get into the habit of doing this, with every document that passes through your hands, early on. • Sign and date documents such as telecon and meeting notes, especially if they’re typed rather than in your handwriting. • Copy documents to all files to which they might be relevant. • Cross-reference liberally between related files, so that on referring to one, a reader will know that he also needs information from another. • Open a separate file for each new piece of work, not just patent applications but also ‘general’ issues such as freedom to operate searches, watching searches, validity opinions, oppositions, commercial negotiations and litigation. • Consider opening a separate, central file for all the prior art for a family of patent applications, rather than copying the same documents to the files for all the different countries. • Consider opening a ‘miscellaneous matters’ file for each of your bigger clients, to hold general correspondence regarding your relationship with them, background information, correspondence which spans a number of different matters or advance warning of potential new instructions. • For some clients you might also want general files for (a) know-how and potential new IP which has not yet been converted into a patent application, and/or (b) miscellaneous third-party patent issues. • Take special care when preparing documents which go through a number of revisions and
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incorporate input from different sources. Store each of the different versions separately, in a systematic fashion for ease of future access, at least electronically if not in paper form. Always re-save under a new file name before embarking on another update. At least the date, version number and file reference should ideally appear in a header or footer on each page. It may be wise, when you make significant changes of your own, to make notes of your reasons for doing so. Keep your files neat and tidy, which helps preserve the documents kept in them and also makes those documents easier to find. Treat formal documents, for instance signed assignments and powers of attorney, or official filing receipts or patent certificates, with special care. If you keep them on your file, store them in a document wallet rather than punching holes to put them on the correspondence ‘spike’. If you send the originals to the client, keep good clean copies on your file and send the documents by a secure system such as a courier or Registered Delivery.
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If you annotate documents such as drafts or prior art citations, initial and date the annotations: this can be vital for establishing ‘privilege’ for the document in US litigation. Avoid scribbling notes on papers – for example patent office communications – that you may later need to copy to the client.
It is worth noting that your file will generally be far more organised than the client’s. In this sense you are keeping it as much for him as for yourself. He may need to ask you for documents which he’s lost. He may at some stage need evidence that he invented something at a particular time or took a particular action, and your file may be the only place where that evidence can be found, perhaps in a document he showed to you once or in a note of a telephone discussion or meeting.
3.6.4
Amending patent applications
As a patent application goes through official examination, its claims and perhaps also its description are likely to be amended one or more times in order to address patent office objections. It is important to follow the correct procedures for recording these changes on the file. Each firm may have a slightly different policy, but generally speaking you will need to keep an intact, fully up to date version of the patent application somewhere on your file. This version should incorporate all the amendments submitted to the relevant patent office, and ideally each amended page should be marked with the date of its submission. Pages which have been replaced by the amended versions should also be kept, with an indication of the date they were superseded. You always need to be able to find the version of the application which the patent office is currently considering.
3.6.5
Electronic files
These days, most firms keep an electronic version of each paper file. Some operate almost entirely paperless systems, in which all relevant documents are scanned for electronic storage and paper records are kept to a minimum. Others – and in this profession this is probably still the norm – keep paper printouts even of the documents which are generated electronically. If your firm keeps electronic files, then keep to the same procedures for these as you do for the paper files – store every document in the correct place, with copies to multiple files if appropriate. Make sure you save documents in an appropriate format for future use – e-mails, for example, should not be stored as plain text or you will lose access to their attachments.
3.6.6
Transferring files
The files you keep belong to your employer and not to the clients. Occasionally, however, a client will move a case to another attorney. In this case, if asked, you should either transfer or more preferably copy the relevant files to the new attorney or to the client himself. It is good practice, if transferring the file, to keep a complete copy for yourself, in case of future complaints about the work you did whilst it was in your possession. You are entitled to charge the client for photocopying the papers and if necessary transporting the file, so long as your business terms stated your intention to do so, but this is a matter for your discretion and may not always be appropriate or indeed practical. An accepted alternative is to transfer the full file, but to ask for a written undertaking from the new attorney that he or she will give you access should you need it for insurance purposes in the future. When transferring or copying a file, it may be prudent first to remove invoices and other documents to do with your firm’s charging policies and internal procedures, as discussed in 3.4.3 above. If the client owes you money, you can delay handing over his file(s) until he’s paid, but again only if your intention to do this was made clear in your business terms. Whatever the circumstances of the file transfer, note that the IPReg Rules of Conduct (Rule 9) require
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you to co-operate with the ex-client and his new representative to ensure the client’s interests are protected during the change of responsibility. Finally, the fact that your files may be looked at by others in the future, whether on transfer to another attorney or during litigation or due diligence proceedings, is a good incentive to maintain them properly.
3.6.7
The in-house attorney
An in-house attorney needs to keep good files for much the same reasons as the private practice one. Someone in the future may query what happened on a particular case and why. Another colleague may need to look at or work on the file in the absence of its main owner. Even worse, because the in-house attorney’s files do not benefit from the same level of ‘legal professional privilege’ as those of the private practice attorney, they may need to be shown to other parties, and officials, during litigation. Thus, the practices discussed above should be followed by the in-house attorney too.
3.7 Deadlines and time constraints This section provides practice guidance relating to topics outlined in section 2.8: Time Management.
3.7.1
Constant time pressures
A patent attorney’s work is governed by time pressures and deadlines. There are procedural deadlines, laid down in the law or set by official bodies such as patent offices, and there are commercial deadlines. It is vital that you meet them both. Add to this the fact that because patent issues can have a huge impact on the tactics and prospects of a business, our advice will almost always be required as quickly as possible. You will therefore need to learn to work quickly and to organise your time efficiently, so as to meet all the relevant deadlines and keep all your clients happy. Typically you will be working on a number of different cases at once, with deadlines ranging from today to several months hence; keeping all the plates spinning is one of the hardest parts of the job.
3.7.2
Legal deadlines
Legal and procedural deadlines (often referred to as ‘due dates’) are not actually that difficult to meet. You generally know about them well in advance, and you just need to be organised about preparing for them and (often the hardest part) getting the necessary instructions and information out of the client. Give the client as much warning as you can of an approaching deadline. Make clear right from the start what will need to be done to meet the deadline, what it’s likely to cost and what input you want from him. Also make clear how long you’ll need, after receipt of the client’s input, to do your part of the job. Flag up additional constraints such as the time needed to courier a document and confirm its receipt, or to obtain translations, or the complications arising from differences in time zones when meeting deadlines on overseas patent applications. Also make clear what the consequences are of missing the relevant deadline. Send reminders at increasingly short intervals as the deadline approaches. If letters fail, try e-mails or phone calls. The onus is on you to extract the client’s instructions in time. Leaving a voicemail message and hoping is simply not enough. It is OK to miss a deadline if the client has refused to instruct, but only if you’ve clear evidence that you’ve done all you can to progress things and to warn the client of the consequences. In this case, your final letter should be sent by fax and Registered Delivery, for example, and you should also always attempt to make telephone contact to sort out the problem.
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Commercial deadlines
These are the more tricky ones. They are harder to predict, but every bit as important. For example, a client may need to publish something, or launch a new product, and a patent application has to be filed beforehand. An infringement clearance search may be needed before the client goes ahead with a deal or tools up to manufacture a new product. Advice and recommendations may be required ready for an imminent board meeting. You will be expected to stay late at the office if necessary, or to take work home, in order to meet deadlines like these. And annoyingly, you will often be the last person the client thinks to instruct, when everything else has been sorted and the legal go-ahead is the final barrier to proceeding. Such is the nature of the patent attorney’s work. To an extent you can reduce the risk of last-minute panics by being proactive, and ensuring good communications with your clients. They are then more likely to contact you for help before it gets too late, and, by keeping abreast of their business plans, you will often detect early warning signs of approaching commercial deadlines.
3.7.4
Interaction with the Records Department
Most firms will have a ‘records’ or ‘formalities’ department (even if only one or two men strong) which manages the formal records for all of your files and keeps track of the associated legal and procedural deadlines. There needs to be a very close and co-operative interaction between this department and the firm’s fee earning staff. The records they keep can only be as good as the information you feed them. Equally, it is they who will help ensure that you never miss a deadline. Each firm has its own procedures for entering data into the – typically computerised – records and file management systems. In many firms, the Records Department will see all incoming post, and log relevant dates directly from there. But there may still be deadlines which the attorney finds out about first, particularly now that correspondence often arrives in an individual fee earner’s e-mail inbox rather than through a central letter-box, and it is then up to you to notify Records so that their files can be kept up to date – again there may be special in-house procedures for this sort of communication. Generally speaking, you will need to let the Records Department know when there is a deadline for acting on a file, and when you have taken the necessary steps to meet that deadline. Depending on the type of records kept, you may also need to notify when you’ve sent a letter reporting a deadline to the client, or a reminder about an approaching deadline.
3.7.5
Organising your time
A patent attorney needs to be able to work quickly, but never at the expense of clarity or accuracy. These days, electronic diary systems and computerised file records make it easier to organise the workload and reduce the risk of missing a deadline. The following tips may also help you to manage your work more efficiently. • •
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Prioritise tasks as they come in. Put all of them into a diary in an order that reflects their relative urgency and allows you plenty of time to complete each task before its final deadline. Also allow time, when constructing your task list, for clients to provide the requisite input (this will usually take longer than you hoped); for suppliers such as searchers, draftsmen or overseas attorneys to fulfil their obligations; for documents to arrive. Tackle urgent tasks first, but every now and then take time to review the list of less urgent tasks, and re-prioritise if some of those have now become more important because of your delay in tackling them. Try setting aside some ‘core time’ every day, perhaps a few hours at whatever you find to be your most productive time, in which you shut your door, ask your secretary to field phone calls and get on with the difficult and/or urgent jobs. Patents Training Manual: Volume 1
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Try not to be distracted by e-mails. They arrive rapidly but do not necessarily require a rapid response. (Indeed, the response often benefits from a little more thinking time!) Be sensitive to your clients’ natural working patterns. They may need you to be available at certain times, but be unlikely to call you at others. For overseas contacts, take account of international time zones. When working close to a deadline, always allow time for Murphy’s law to come into effect – for faxes to fail, computers to crash or couriers to let you down. Manage the client’s expectations about how long a particular piece of work is likely to take and what’s involved. Find out what time pressures he’s under, but don’t make unrealistic promises about when you can deliver. (Having made a promise, however, move heaven and earth to keep it.) Be courteous enough to let the client know if you’ve been delayed on something. At extremely busy times, adopt sensible ‘firefighting’ tactics. Acknowledge receipt of the client’s instructions and promise to get back to him shortly. Tell him that an examination report’s been received, and send him a copy, then promise to do a more detailed review for him in due course. This way at least the client remains well informed and does not feel completely forgotten, whilst the bulk of the work can be set aside for a more appropriate moment. Be as helpful and prompt as you can during quieter periods, so that your clients are more likely to forgive delays when you’re snowed under. (!)
No matter how rushed you are, always make time to proof-read your work before it goes out. Don’t cut corners in checking data or doing background research. Don’t be tempted to rush something off on your own when you know it would be more appropriate to get a second opinion from a colleague or to have your supervisor check the work first.
3.7.6
Tackling difficult tasks
The type of work most likely to cause you time management problems is of course the difficult task, the one that you know is going to involve a long period of hard graft. This is partly because it’s unusual, as a patent attorney, to have the luxury of a decent amount of uninterrupted work time in which to concentrate on something technically challenging. It may also be because the difficult tasks frighten you, and we all have a tendency to put off the things we find intimidating. The following tips may help you to deal with this type of work. •
•
•
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Never be tempted to procrastinate. Firstly, the longer you leave a difficult task the more frightening it will get, and whilst it’s hanging over you it will increase the stress you’re under for the rest of your work. Secondly, the more you procrastinate, the more likely you are to have to deal with the task in a rush at the last minute, which for a long and difficult piece of work is clearly not ideal. Dip your toe in the water as early as possible, but gently at first. Tell yourself you’re just going to spend half an hour, no more, doing some preliminary work such as drafting the main headings and sub-headings, writing one section of a report, studying the first of the cited prior art documents perhaps or – in the case of a patent draft – planning the drawings. This ‘warm-up’ session can help in so many ways. It overcomes the initial fears. It starts to familiarise you with the case. Importantly, you begin to develop an idea of the vocabulary you might use to put your points across. And this type of planning is extremely valuable when it comes to presenting legal advice or drafting patent applications. Continue to tackle the task in bite-sized chunks if you prefer, for example one section of a report at a time, or one prior art citation at a time. As time goes on, you will probably become more immersed in the case and then find it easier to work on it for longer periods. If you come up against something too difficult, walk away for a while. Move on to the next section, or the next piece of prior art, or even a different task altogether. You’d be amazed how often, if you
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come back to a difficult point a few hours later, your subconscious has been working on a solution in the meantime and you can deal with the issue more easily as a result. Make use of those old clichéd psychological tricks: treat yourself to a nice cup of coffee when you sit down to read the documents; clear your desk of other files so that you can concentrate on the task in hand; start with a fresh, blank sheet of paper. Move to another room if that makes you feel better. Or make use of ‘core time’ periods, as discussed in 3.7.5 above – shut your door, have phone calls fielded for an hour or so and switch off your e-mail system; most things will be able to wait till you emerge. Talk the work through with your trainer or with another colleague. This often helps to clarify your own thoughts, or to get you past stumbling blocks. That said, do put in some effort yourself first – your trainer is unlikely to be impressed if you simply expect him to shoulder the hard work for you, so do the background research, and come up with some suggestions of your own, before asking for help in progressing a task. Don’t be intimidated if there are several, or complex, issues to think through. Tackle them systematically, in a logical order, and take time over each of them separately. Equally, don’t panic just because a piece of prior art looks to be damaging to a client’s claims, or a third party patent to present an infringement risk. Whilst it’s not going to be fun breaking the bad news, it’s important not to let this cloud your judgement. Now and then, take five minutes out to remind yourself of the bigger picture – the purpose of the task, who it’s for and what they want out of it. At these points see if you can mentally summarise the most important issues involved.
Finally, a good way of motivating yourself can be to picture how wonderful it will feel when the awful task that’s hanging over you is finished. Imagine yourself finally putting the document in the post or pressing the ‘send’ button. Remember it will eventually get done; sooner or later you’ll be looking back on the case and wondering what all the fuss was about. So plan yourself a treat for when you finish, and in the meantime knuckle down to some hard work and try to enjoy it: it is, after all, the type of work you’ve chosen to do, and the rewards, if you do it well, are great.
3.7.7
The in-house attorney
Most of the above also applies to in-house attorneys, who will need to work to both legal and commercial deadlines just like the private practice attorney. They too will need to operate within formal records management systems to ensure that procedural deadlines are properly monitored, and their employers are likely to have records or formalities departments similar to those in private practice firms. In-house attorneys, like any others, will need to juggle several different tasks at once, and they too will have to organise their time efficiently to take account of the time pressures they’re under.
3.8 Billing practices 3.8.1
In-house attorneys – look away now
Most of this section is unlikely to be relevant to you if you’re an in-house attorney. However, your employer may still want to monitor how you spend your time, or charge your services to specific departments for budgeting purposes, so you may still be required to record your time as described in 3.8.3 below.
3.8.2
The basics
At the risk of sounding mercenary, there is little point in a patent attorney doing any work unless there is profit to be made from it. And there is no profit to be made, unfortunately, unless clients are sent invoices. Patent attorneys charge: Patents Training Manual: Volume 1
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For time spent doing work for a client, at an hourly rate which usually increases with qualifications and experience, and may vary for different types of client or task. Fixed fees (sometimes called ‘dockets’) for tasks which involve significant administrative work, for example filing a new patent application or renewing a granted patent – these fees cover administrative overheads such as maintaining records and diary systems and sending standard reporting letters. In some cases, fixed fees for items such as typing, photocopying, letters, faxes, e-mails and phone calls (other firms build these overheads into their hourly rates). Disbursements which they pay out on their clients’ behalf – these include, for example, official patent office fees, overseas attorneys’ charges, patent searchers’ and draftsmen’s and translators’ fees.
Most firms also charge a ‘mark-up’ (usually a percentage of the relevant amount) on disbursements such as overseas attorneys’ or searchers’ fees. This reflects the fact that the firm has to pay bank charges and other administrative costs to meet these bills; to maintain the contact with the relevant suppliers; and maybe also to absorb losses due to exchange rate fluctuations between point of payment and the time when the client settles the corresponding invoice. Charging rates may be higher for work done on an urgent basis, or for more complex tasks, or where the work requires specialist knowledge or experience. Revisit section 2.3: Outearning your costs for the strategic view.
3.8.3
Time recording
Because professional time is likely to be the largest element of any bill, obviously you need to record systematically the amount of time you spend on each of your files. Every time you work on a file, record against it the date, time spent and briefly what it was you were doing – this makes it easier to prepare your invoice text later and helps to justify your charges if queried. Also record any disbursements incurred on the file, and any relevant fixed charges. Many firms have computerised systems for recording time and other charges, which can often be used to generate an automatic billing spreadsheet or even the invoice itself. Be very diligent about recording your time: if you don’t record it, you’ll inevitably forget to bill it. Every minute you spend working should be noted. This includes time spent reviewing files, talking to clients on the phone or in meetings, reading documents, drafting documents, checking and amending the documents you’ve drafted and also thinking about and researching the cases you’re handling and deciding what it is you’re going to advise. You can also charge for time spent travelling to and from a client meeting, since you could otherwise have spent that time doing chargeable work. (You can also, of course, pass on the associated expenses.) If you travel by public transport, however, and are able to do chargeable work during the journey, it may be fairer to charge your travelling time at only half your normal rate. Depending on the systems your firm operates, you may need to record time in units of for example five or six minutes.
3.8.4
When to charge
Ideally, you should invoice as soon as possible after you’ve worked on, or incurred charges on, a file. Bear in mind that there will be a delay – maybe several months – before the client settles the invoice, yet your firm’s overheads (including your salary) will arise regardless; think about the implications this has for the firm’s cash-flow. It’s particularly important to bill out disbursements promptly, because your firm is already out of pocket the minute the disbursement’s incurred. What this means is that you need to keep your ‘work-in-progress’ (WIP) levels as low as possible. WIP is the charges which you have incurred (both time, fixed charges and disbursements) but not yet billed. The Inland Revenue will charge tax on WIP as though it were already profit.
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As a rule of thumb, send an invoice as soon as you’ve completed a specific piece of work for a client – drafting and filing a patent application, for example, providing a report, or responding to a patent office action. The best practice is to send the invoice at the same time as you report what you’ve done. For tasks that drag on for more than a month or so, it’s acceptable and indeed good practice to send ‘interim’ bills at regular intervals. Billing little and often generally tends to be more palatable to clients – it gives them notice as costs mount up – and it also offers you advance warning of payment problems. Equally, invoicing a long time after a piece of work’s been completed is not just bad for your firm’s finances. It looks unprofessional, it takes the client by surprise and it is far more likely to result in a payment dispute. And an unpaid invoice is almost as useless as not billing for the work at all. It’s generally accepted that when working for overseas attorneys, you will invoice immediately after doing each piece of work, no matter how small – for reporting an examination report, for example, and then again for responding to it. Be practical about this, however – and this applies to all clients, not just overseas attorneys – too small an invoice is not worth the expense of generating, logging and subsequently chasing it. Other billing arrangements may be suitable, depending on each client’s needs and the nature of his relationship with you. Often a larger client will receive a regular (e.g., monthly or quarterly) bill covering all work done on its files during the relevant time period. Make sure you clear out-of-the-ordinary billing arrangements with your supervisor before agreeing to them, however. It is very uncommon, for example, for a patent attorney to work for a ‘conditional fee’, i.e., one which depends on the outcome of the case. Indeed, if you practise as a European patent attorney you will be prohibited from doing so. For some clients, especially larger ones, you will find yourself engaged on a form of ‘retainer’ basis, to review and advise on their patent affairs as and when they arise. If this arrangement is clearly understood on both sides, then you can go ahead and do work and charge for it afterwards. However it is good practice, unless you know a client well, not to do any work without getting his approval first for the likely eventual bill. So for example, when you report a patent office examination report, let the client know how much it’s likely to cost to file a response. For smaller clients, consider sending out search and examination reports without comment, but with an offer to review and advise on them and an estimate of the cost of doing so. Always be completely up-front about costs that are likely to arise in the future if you embark on a particular course of action. If a file is to be closed (for instance because a client’s abandoned a patent application or is transferring work to another attorney), charge it up to date immediately. Also notify relevant suppliers such as overseas attorneys, to prevent them from incurring any further costs on the file, and ask them to send you their final invoices too. See 3.9.5 below about charging for the first meeting with a new client.
3.8.5
How to charge
The way you prepare invoices will depend largely on your firm’s policies. Many have automated bill generation systems. Generally, you need to detail in an invoice what it is you’re charging for. The invoice text should briefly describe the work done, and identify the relevant file and time period covered by the invoice. Some clients will prefer a greater level of detail than others. You may need to itemise disbursements separately, in particular overseas attorneys’ charges. VAT has to be added to all of your charges, and to all disbursements except for IPO and EPO official fees. Non-VAT disbursements must be shown separately below the VAT line, just before the final invoice total. For internal purposes, you may be required to itemise, or at least categorise – for example, on a copy of the bill for the Accounts Department – all the disbursements, fixed charges and time charges included in the invoice total. You may also need to indicate how much of the charged time is attributed to which Patents Training Manual: Volume 1
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fee earner. This information aids the firm’s book-keeping and financial planning, but in particular can be used to monitor fee earners’ billing performance, perhaps against targets. Remember in this context that it’s the invoice total minus the disbursements that’s relevant to your performance, since recouping disbursements doesn’t actually contribute to the firm’s profits. If you charge a client in advance of work done or disbursements incurred, you should send them a so-called ‘proforma’ invoice for the relevant amount. This is needed so that everyone’s books balance – yours and the client’s. On receiving a payment in advance, the payer must be issued with a receipt. Refunds can appear as a credit (i.e., a minus) on an invoice, or can be dealt with in a separate credit note – in both cases be careful about whether the refund should appear above or below the VAT line, and check with the firm’s accounts department in cases of doubt. Note that a refund counts against one of your earlier invoices, and is not the same as returning an invoice overpayment.
3.8.6
Estimates
Very often a client will ask you for an indication of the cost of doing a piece of work. This is not an unreasonable request, and you should do all you can to respond to it accurately. Strictly speaking, if you give an ‘estimate’ of your charges this is not binding, whereas a ‘quote’ is. Because of the nature of a patent attorney’s work, where charges depend on time spent which is difficult to predict in advance, it’s often not feasible to give a quote. Make sure, however, if you give an estimate as opposed to a quote, that your client understands the distinction; many don’t. You may feel that, as a matter of courtesy, you should never exceed your estimates. Certainly if you do, it is more likely to bring you trouble. However if you’re going to adopt this laudable policy, make sure you get your estimate right, make absolutely clear what it does and doesn’t cover and what factors might cause the costs to increase, and then build in some room for manoeuvre anyway. Remember to take account of disbursements, your firm’s fixed charges and mark-ups on disbursements as well as an estimate of your time. Include actions that are an inevitable consequence of the work instructed (for instance, reporting filing details once a new application’s been filed). Also build in what you know about the way the client works, for example whether he tends to instruct promptly or to require time consuming hand-holding and chasing. It’s important to manage clients’ expectations about your charges, particularly for smaller or newer clients. It is not enough to charge a fair price; the client must agree that it’s fair and agree to pay it. Make sure therefore that he understands not just what you’re going to charge for the piece of work instructed, but also about how costs might mount up over the longer term, for instance when his newly filed patent application reaches its twelve-month foreign filing deadline, or enters the search and examination stage. Be open with the client about exactly what you’re going to do for him and what it will cost, however awkward it may seem to discuss such issues and however offputting the costs might be for the smaller client. You can make estimates seem more palatable by advising about how costs might be reduced, or expenditure postponed, for instance with more creative filing strategies or by delaying action until nearer to the relevant deadline. If you want to discount your firm’s usual charges (which is not uncommon), clear this with your supervisor first. If at any time it looks as though you’re likely to exceed your original estimate – for example because unforeseen problems emerge or new information comes to light – warn the client immediately and discuss the implications. Give him the chance to put the brakes on the work if he’s uncomfortable with the increased cost. Before a meeting, work out the approximate costs of the work you’re likely to be instructed to do. Learn the ball-park figures for common pieces of work such as filing a new UK patent application or a PCT application, or nationalising a PCT application in Europe or the US, so that you can answer the inevitable client questions with confidence.
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Finally, when you prepare an invoice do a quick reality-check and see if the total looks reasonable, bearing in mind what the client got out of the work and of course his expectations of costs. Don’t include charges for time spent rectifying your own mistakes, or for work which turned out to be unnecessary or inappropriate. Be prepared to reduce an invoice (i.e., to ‘write off’ some of your charges) if at the end of the day you think that makes more business sense. Only in very rare cases, however, should you write off disbursements.
3.8.7
Other attorneys’ charges
Never directly compare – to a client or potential client that is – your firm’s charges with those of other firms of patent attorneys. Never criticise another firm’s charges. These are the clients’ prerogatives, not yours.
3.8.8
Credit control
Chasing clients to pay their bills is a constant nightmare for firms of patent attorneys. Although this will probably be handled by the Accounts Department, you should make it your business to be aware of your clients’ credit positions and do what you can to assist the credit control process: the patent attorney is often in the best position to do this. The following can help. • •
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For new clients and bad payers, get money up front, at least to cover disbursements. Your firm may have a definite policy on this. Sometimes a proportion of the expected total cost will suffice as a deposit. Do some homework on new clients before starting work for them – check their companies exist, and find out how large they are and how long they’ve been trading. Companies can be checked out at Companies House (www.companieshouse.org.uk), but your firm may be able to run formal credit checks as well, for instance through an external provider or commercially available database. Previous County Court judgements can also be looked into. Make sure all new clients accept and sign your firm’s business terms, which will undoubtedly include payment terms. Chase bills personally – it is often more effective when the person doing the work talks directly to the person instructing it, rather than communications passing between respective accounts departments. Chase when a deadline’s coming up or more work’s needed, when you have some leverage over the client (you can refuse to do further work until the bills have been paid). Check with your Accounts Department before starting a new piece of work for a client, to make sure he’s been paying his bills recently. Manage client expectations appropriately, as discussed in 3.8.6 above. Keep to your estimates if you can, or at least get approval in advance if you’re about to exceed an estimate. Bill regularly. Bill tactically, for instance at the point when the client is happy with a job you’ve just done. Bill files up to date as a job approaches its conclusion (for example, when a patent application has been accepted and is heading towards grant). Payment may be harder to collect once the job is finished. Ensure your invoice texts are clear. Keep them consistent with your earlier cost discussions. Try clearing invoices in advance. This technique is particularly useful when you’ve worked on a long and complex case and are about to send a large bill – it pays to phone the client, explain what you’re planning to charge and why and check that he’s OK with that. Some degree of negotiation may be involved, and you may need to compromise, but at least you’ll get paid. Also, at the time you take instructions on a more nebulous task such as an infringement opinion, a patent search or a due diligence report, talk frankly with the client about how much he’s budgeted for it, which gives you an idea of how long you can spend on the job and how much you can reasonably bill for it. There may be a cost ceiling which a client does not want to exceed – if so, ensure that others involved (for example searchers) are aware of this too. Generally, be proactive – ask the client what his budget constraints are, and help him to keep within Patents Training Manual: Volume 1
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them (without, of course, working for too low a rate: you are in business, not charity). Try to understand, and work with rather than against, the client’s payment regimes and budgets. A significant proportion of all complaints against patent attorneys are to do with billing practices. More often than not, the dispute is caused by a late or unexpected bill, by work done and charged for without first seeking the client’s go-ahead, or by a bill which exceeds the original estimate. Late payments are also sometimes blamed on queries over the invoice text. The above precautions can help avoid such problems. As mentioned earlier you can refuse to do any further work for a client that isn’t paying, but this is a last resort and you must do all you can to resolve the situation first and make sure the client knows well in advance exactly what you plan to do. Similarly, if a client moves to another firm of attorneys, although only if your business terms mentioned this possibility.
3.8.9
Money laundering issues
Money laundering occurs when money generated by criminal activities (for example drug smuggling or terrorism) is paid to a respectable body such as a firm of patent attorneys, and then subsequently withdrawn, its criminal connections nicely washed away, for re-use. Since we handle money for our clients, albeit usually relatively small amounts and for short periods, we are potentially vulnerable to this type of practice. You are obliged by law, under the Proceeds of Crime Act 2002, to look out for ‘suspicious’ circumstances which might indicate that a client, or indeed any other contact, is involved in money laundering. An example might be overpayment of a bill, or payment in advance, followed by a request for repayment, although not every instance of this will indicate that money laundering is going on. Another example might be an unusual billing arrangement, typically involving payments being made to or from an entity other than the instructing client. Suspicious circumstances such as these have to be notified immediately to the Serious Organised Crime Agency (SOCA), in a specified format. Failure to notify is a criminal offence. With luck you will never find yourself in such a situation, but be on your guard and if you do spot suspicious activity, talk to your supervisor at once. You must not warn the relevant client of your suspicion (this too is a crime), but nor must you do any further work for him without SOCA’s authorisation: an extremely tricky position to be in, and one for which there is as yet little useful legal guidance. Note that this type of legal obligation overrides your duty of confidentiality to the client.
3.9
Meetings
3.9.1
General comments
Initially at least, meetings are likely to be one of the hardest things you have to deal with. They draw not only on your new knowledge and skills as an attorney, but also on your business skills. They bring together just about every facet of the job. They are also important to do well. Whenever you meet with someone from outside of your firm, whether on the premises or elsewhere, you are an ambassador for your employers and for the profession as a whole. The way you handle a meeting should take account of all the good business practices discussed above. The following are check lists to remind you of those.
3.9.2 •
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Before the meeting
Preparation is everything. It sounds obvious, but do read the relevant papers. Check who’s going to be at the meeting and their roles and status. Remind yourself about the purpose of the meeting. Collect together all the documents you might need to refer to; carry out relevant investigations such as patent status checks. Read up on aspects of the law that might be pertinent to the discussions.
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At the meeting
Again fairly obvious, but be punctual. Dress to fit the occasion. A suit will usually strike the right tone of respect for the client and send the right signals about your work. If meeting with technical staff, however, a suit may be unduly formal, even intimidating. Be aware of your role in the meeting. On many occasions it will be up to you to lead the discussions and to obtain the instructions and information you need. On other occasions you will be only one of a team, with someone else chairing the meeting, or indeed you may be present purely as an advisor in what is effectively someone else’s meeting. Make copious notes of the main points of discussion. In particular, write down what you’ve advised, what the client’s instructed, cost estimates you’ve given and promises you’ve made. If you can, highlight action items as you write. At all times, no matter how difficult, remain polite, respectful and considerate. Look after the client’s physical needs – drinks, comfort breaks, lunch if appropriate. Try to remain alert and enthusiastic. Use flip charts or white boards or PowerPoint™ presentations if it helps keep the client’s attention or convey difficult messages. Be helpful. Volunteering to do things is a good way of generating more work, and some of it will be chargeable. Answer all the client’s questions. If you sense he’s still confused, or uncomfortable, try again to explain. Make sure he understands the context of and reasons for your advice, its implications and if applicable its limitations. Ensure everyone leaves with a clear understanding of the work that’s been instructed and its likely costs and timescales. Also make sure you have copies of all relevant documents brought to the meeting. Ensure all your agenda items are covered, even if it takes time and everyone’s tired. Also listen to the client as much as you can; every bit of information makes your job easier and more relevant. You may need actively to steer a more talkative client towards the really pertinent issues, but beware shouting him down or you may miss something important. Don’t forget to check details such as who is to be the applicant for a new patent application, the correct registered address for an applicant company, the name(s) of the inventor(s) and how the applicant derived title from them, or the list of PCT countries to proceed in. It’s easy to forget such issues in the excitement of advising on patentability and filing tactics.
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Anticipate situations in which the client is likely to ask for cost estimates, and prepare them in advance. Draft yourself an agenda, or at least a list of the questions you need to ask and the cases you need instructions on. Include, if applicable, questions on technical issues (such as how the invention works, or what the closest prior art is), on formal issues such as ownership and on the commercial context of the work. Provide an agenda for the client too, if that seems appropriate. Consider sending a list of questions beforehand, and outline the information and documents you’ll need from the client if he wants to proceed as anticipated. This helps him prepare and so makes the meeting more productive. It’s particularly useful for new clients. Phone or e-mail a few days in advance to confirm arrangements such as venue and timing, and perhaps also the agenda – this is common courtesy but it can also save wasted time and embarrassment.
3.9.3 • •
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After the meeting
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Copy any documents which you obtained at the meeting to the relevant file(s), and note on them the date that you received them. (This also applies to business terms signed at a meeting with a new client.) Enter agreed tasks onto your personal to-do list, with appropriate timeframes. Enter instructions and deadlines onto the firm’s formal records systems where appropriate. Open new files for completely new instructions (for example, new patent applications or infringement opinions). Copy the meeting notes onto them. Record the time you spent at the meeting, if you think it’s chargeable. Write to the client confirming the outcome(s) of the meeting, the instructions given, the work you intend to do and its likely cost and duration, and any relevant longer term implications. This should be done as soon as possible. Consider generating a ‘www’ table, for the client and for yourself, to summarise the outcomes. (A ‘www’ table has three columns – What needs doing, Who has to do it and When.) Invoice the client for the meeting if appropriate (it may not be: in some cases it will be better to bill once you’ve completed the task discussed at the meeting). Make diary entries for longer term follow-up actions. For example where the client’s hinted that more product developments are in the pipeline, it would be appropriate to phone a few months later to check whether those developments are ready for patent protection.
3.9.5
Meetings with new clients
There are extras to remember for new client meetings. Beforehand for instance: • Assemble your firm’s business terms, corporate brochure and any other relevant literature such as client information sheets. Better still, send these when you write to confirm the meeting beforehand. • Do your homework on the client – conflict checks, credit checks or Companies House checks for instance. At the meeting: • • • • • • •
•
Introduce yourself clearly. Explain your background, including your level of qualification. Mention if your work is being supervised by another attorney. Exchange business cards. Hand out your brochure and any other relevant corporate literature. Reassure the client that everything discussed at the meeting will be kept confidential, even if he doesn’t ultimately ask you to work for him. If work is instructed, determine exactly who your ‘client’ is, and clarify billing arrangements. If applicable, hand over an authorisation form as discussed in 3.2.1 above. Give the client your firm’s business terms, and preferably get them signed and accepted during the meeting. If the client asks for different terms, check with your supervisor before agreeing. Assess your audience – how familiar are they with IP and with the types of service offered by your firm. During your discussions, take time to explain the basics if the client is new to patents, and be especially careful about using jargon. Sometimes clients are too polite to say if they don’t understand you. Ensure the client is issued with a receipt for any money he pays you on the day, for example if you’ve asked for payment in advance.
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charging rate, and billing arrangements. Your firm is likely to have a standard format for such letters, but discuss with your supervisor how to tailor the standard to a specific situation. It is customary, for a new client, to give the first half hour’s consultation free of charge, although you should check your firm’s policy on this. If you can, try to determine within that first half hour whether or not the client will want to go ahead with any work; if not, the meeting should be closed as soon as possible (though politely) because none of it, even if it exceeds 30 minutes, will really be chargeable. If, however, the client looks likely to proceed, say with a new patent application, then it is generally appropriate to charge for the full meeting minus half an hour, depending on your firm’s procedure. With potential new clients, it may be sensible to try to avoid a meeting too early on in the proceedings. Discuss the client’s needs over the phone first, to establish whether his ‘invention’ is far enough advanced for a patent application, and whether he has some form of business plan that makes a patent application seem worthwhile and its timing approximately right. If not, suggest that the client returns to meet you at a later date. Emphasise, however, the need to keep the invention confidential until then.
3.9.6
Telephone calls
Treat a telephone conversation with a client as a type of meeting. Much the same procedures will apply and you should be assiduous about making and filing a note of the call.
3.9.7
The in-house attorney
The in-house attorney will probably need to attend many times more meetings than the private practice attorney, and often for very different reasons. There may not be as much bureaucracy associated with these meetings, but most of the above checks (apart from those for new clients) will still be of use. An in-house attorney may also need to be sensitive to internal politics, and to the role and status of each person present at the meeting. And he or she may need to learn quickly the art of generating succinct minutes.
3.10 Good client care 3.10.1 Introduction Why save this section till last? – Because it’s the one that ought to be intuitive although, sadly, often isn’t. More particularly because it’s the one you should take away with you as the most important for your day-to-day work. A patent attorney may have an office-based job, focused on documents and computer records, but to be meaningful that job must also involve interaction with people. Your clients’ legal, contractual relationships will be with your firm as a whole rather than with you as an individual. The personal relationships, however, are in your hands and it is up to you to nurture them. Good client care involves a degree of humility. The client, like the proverbial customer, is almost always right. Patent attorneys are not gods; we are nothing without our clients’ approval. And with the arrival of the new ‘Legal Ombudsman’ (see 3.10.11 below), the standard of the services we offer will come under increasing scrutiny.
3.10.2 Courtesy and professionalism All of this should really go without saying. Be polite, helpful and friendly to clients at all times, no matter how exasperating they may sometimes seem. Respect their views. Be considerate of their needs. Nurture their trust and loyalty by treating their affairs, and their files, with respect. Honesty, over absolutely everything, is paramount. If you’ve made a mistake, confess quickly and do all you can to put things right. Do not shy away from reporting bad news such as infringement risks or Patents Training Manual: Volume 1
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patentability problems, be open about risk levels and weaknesses but try also to offer constructive response options. Be candid about costs and timescales too, as discussed at length above. ‘Professionalism’ generally involves a degree of selflessness. It means putting the client’s interests before your own in some situations. It means doing your best no matter how late the instructions, how difficult the job or how awkward the client. Whatever you’re feeling, whatever your personal circumstances, your work must not suffer and the client’s position must not be compromised. Always saying and doing the right thing is important not simply to keep your existing clients happy, but also because of what the outside world sees of your work. Remember that some of the documents you write will be open to public inspection on official patent office files. Others may be seen by investors in, or other business contacts of, your clients. And of course every one of your clients is a potential ambassador for your firm when he talks to his other contacts, so make sure it’s good things he’s saying about you. Lastly, remember that it’s generally seen as extremely unprofessional to criticise another patent attorney’s work, even – or perhaps especially – to promote your own business.
3.10.3 Understanding the client Do everything you can to empathise with your client. Try to imagine how you’d feel if you were him, with his level of IP knowledge and his technical and commercial constraints. What would you want from your patent attorney, and how would you want the attorney to treat you? Many clients know relatively little about patents, so bear this in mind when advising them and be patient if they need a certain amount of hand-holding through the patenting process. Do not merely answer the question the client asks, because he does not necessarily know enough to ask the right question. Instead, think about what else he might need to know, and what he might have asked had he understood more about the patent system. The same applies when a client feeds you information or instructs you to do something – delve deeper, ask more questions, consider alternatives. The obvious example of this is when a new client instructs you to file a patent application: it’s all too easy to go ahead but check first that the timing is right, vis-à-vis the commercial position and the level of technical knowledge, and that a patent application really would be of benefit to the client’s business. Does the client have a business plan, for instance, and does the patent application have value as part of that plan? Be sensitive too to the fact that many clients are bewildered by, possibly even frightened of, legal issues. They may be sceptical about the value of patents to their business and, indeed, your charges. You need not consciously attempt to overcome these feelings, but you ought to take account of them when you communicate with the clients. Take the time to listen as well as talk, not just to your regular contact but to his colleagues as well. Then use what you hear to improve the work you do.
3.10.4 Responsiveness Respond promptly to your clients’ requests. Return phone messages, and reply to letters and in particular faxes and e-mails, quickly. As far as humanly possible, always be available to speak to clients, and always make it sound as though you’re pleased to hear from them. They need to feel that you are accessible and approachable and that if they try to contact you, you will respond. This helps build up good communications and trust between you, which in turn makes the work a lot easier to do well.
3.10.5 Commercial awareness Never overlook the importance of giving advice that is not just legally correct, but also commercially appropriate. Find out what you can about each client’s commercial position and priorities, his business plan (perhaps even his intended exit strategy), his budgetary constraints, his market, his customers and his competitors. Keep this in mind when working for him, so that your advice has a context and your recommendations are practical and feasible to implement. Think through the business implications of each piece of work you do.
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3.10.6 Expectation management Keeping clients happy involves managing their expectations appropriately, particularly as to costs and timescales but also on the way that the patent system works. Talk through the longer term implications of what they’re involved in, the pros and cons of particular courses of action, the costs that are likely to follow. Make sure they understand not only what you will be doing for them but also what you will not, and the limitations of your advice. The onus is on you to make sure they’ve grasped all of this, especially for less patent-savvy clients. Also take the trouble to introduce yourself and your firm properly to each new client. Tell him how qualified you are, and whether anybody else will be helping you with the work. This helps prevent misunderstandings later.
3.10.7 Going the extra mile Really good client care involves doing not just what you ought to do, but a little more besides. Be proactive: think what else might help the client, what else might be relevant to his patent position. For example, suggest regular IP review meetings, to discuss all the client’s patent files and his overall patent positioning and strategies. Once or twice a year is appropriate, depending on the size of the client’s patent portfolio. Offer to give presentations to the client’s staff on the basics of IP, on IP ‘good housekeeping’ or specifically to update them on their own patent position. Contact the client off your own bat now and then to ask how things are going: you’d be surprised how much you find out that way, that you might otherwise not have been told, and how many times a new piece of work results from calling at just the right moment. Make the effort to visit the client’s premises rather than meeting in your own offices. Again you will find out much more about his business, and usually his technical work, which will help you put your advice to him into context. Suggest extras to help the client manage his patent portfolio more effectively – patent watching searches, for example, publication clearance procedures, invention disclosure records and ‘precautionary assignments’ to avoid entitlement disputes with inventors. The client may not even have known that such things are possible. Think about third party IP risks and explain them even if the client has not raised any concerns – they may just not have thought about it. Naturally, however, be wary of incurring extra costs for a lower-budget client, as you still have the obligation to provide a cost-effective service. You can also keep an eye out for IP-related issues that might interest or impact on your clients, for instance in the journals you read. Sometimes ‘going the extra mile’ involves a certain amount of unchargeable work. Holding the client’s hand through the patent minefield is time-consuming. It is almost always a good investment, however, and usually generates more work in the longer term. It also strengthens the relationship between attorney and client, making it function more efficiently to both parties’ benefit and reducing the risk of disputes. Check with your supervisor, however, before offering to do unchargeable work. And always make clear to the client whether or not you intend to charge for the ‘extras’ you offer.
3.10.8 Involving other professionals Often you will need to seek assistance from external professionals. Examples include patent searchers, overseas attorneys, IP solicitors, translators and draftsmen. Usually you will instruct these people on the client’s behalf (in other words, acting as the client’s ‘agent’), and their work will go out to the client via your firm. Take care that such relationships involve the same level of professionalism that you demand of your own work. Choose good suppliers, brief them well and monitor their work to ensure that it meets your standards in terms of quality, presentation and speed of delivery.
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3.10.9 Measuring quality of service Patent attorneys are service providers. We have no tangible ‘products’ that can be weighed or tested. Measuring the ‘quality’ of the work we do is not therefore straightforward. But it needs to be done: we still have to deliver in response to clients’ needs and we need to be aware of whether we are meeting those needs to everyone’s satisfaction. Your employers may measure productivity in terms of net billings, or of new clients introduced to the firm. They will want to know how quickly you work and how much profit you make for them. These criteria are important, but not to be confused with quality of service as perceived by your clients, the assurance of which is vital for the long-term success of your business. Similarly, quality of service is not really about how many patents you’ve got granted for your clients or how many oppositions you’ve won for them. Such outcomes may genuinely be outside of your control. Berry et al in 1985 [Business Horizons, May-June 1985, pp 44-52] canvassed the views of clients in four service sectors – retail banking, credit cards, securities brokerage and product repair and maintenance – and identified ten factors that appeared to determine quality of service, as seen from the clients’ viewpoint, whatever the business area. These ten determinants were: • • • • • • • • • •
Reliability – this has to do with consistency of performance, and the clients’ confidence in your ability and dependability. Competence – having the knowledge and skills needed to perform the necessary service. For patent attorneys, this will almost certainly require an ability to understand the technical field in question. Responsiveness, and willingness to provide the service. Access, ie, approachability and ease of contact. Communication – not just keeping the clients well informed but also listening to their input. Courtesy. Understanding of the clients’ needs. Credibility, meaning trustworthiness and honesty. Security – the clients must not feel vulnerable to risk. ‘Tangibles’, which has to do with the physical evidence of the service, in our case typically the documents which we send out.
I recommend you keep these criteria in mind throughout your career as a patent attorney. If you adhere to the business practice recommendations in this chapter, you should be able to deliver a good service under all ten headings. There are in existence certain external ‘quality standards’, for example ISO/EN 9002, for which professional firms may register. These tend to focus on the systems and procedures by which the firm operates, rather than personal attorney-client relationships and the quality of the end product advice. Even if your firm carries such an accreditation, you should still strive to improve your work according to the less easily quantified criteria discussed above. As in any other business, as patent attorneys we have to be accountable to our clients. We are lucky in that we tend to have fairly close relationships with them, based on personal level trust and understanding; this makes it easier for us to deliver the desired type of service and to monitor our success. But we are not immune from the need to set ourselves, aspire towards and wherever possible improve upon, service quality standards.
3.10.10 Quality control and the need for feedback So how do you know if you’re doing a good job? – Well, because your clients seem happy to talk to you; they seek and, more importantly, heed your advice; they keep instructing new work; they recommend you to others; and they pay your bills. Some of them may even thank you.
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Few clients have the courage and the social skills to offer constructive criticism where it’s appropriate. If they do, be flattered rather than affronted. Sometimes the client who criticises an aspect of your work is the one who’s made the effort to try to improve your working relationship, presumably because he wants it to continue. Treat this as an opportunity. Far better a complaint than a silent withdrawal of support. It does no harm to solicit feedback for yourself. Why not phone the client and ask: Was the report you wrote helpful? Did it strike the right tone? Was your letter about the search results clear enough? Does he need any further information or advice, any follow-up? Make this phone call before you send out your invoice. If the client’s slow to pay a bill, be brave and ask whether there was a problem with the work done – pre-empting disputes in this way can often disarm even the most difficult clients, and your candour and humility will usually be appreciated.
3.10.11 Complaints Sadly, some clients do still complain, even when you’ve done your best. Adopting good business practices does however help to minimise your exposure. Be particularly careful about billing, as the vast majority of complaints against patent attorneys are inevitably in this area. Your firm should have a set procedure for handling complaints, which should be enshrined in the business terms you agree with all clients. Such procedures normally give a client the option of taking his complaint to someone more senior in the firm if dissatisfied with the response from his usual contact. Try, however, to resolve disputes before they reach that stage. The following should also help you deal more effectively with complaints. • • • •
•
• •
Tackle them promptly; don’t let them fester. Tackle them with honesty and humility. Apologise if it’s appropriate. Don’t go it alone. At the slightest hint of a complaint or dispute, involve another colleague for a second opinion and support. Try not to become defensive or confrontational. Instead, seek a compromise as quickly as possible. Even if you believe you’re in the right, it is better to get the complaint off your desk than to spend valuable professional time arguing over it. Listen to the client’s viewpoint. Talk frankly about the outcome he’d like to achieve (it may be an apology, a reduction in charges, or simply putting right what went wrong, free of charge of course). Many complainants can be mollified with this approach, before the dispute escalates out of control. If your firm has a policy for handling complaints, follow it to the letter. If the client’s requests or allegations are genuinely unreasonable (seek a second opinion on this from a colleague), gently but firmly stand your ground.
You will also need to notify your firm’s professional indemnity insurance providers if the complaint cannot be defused in its very early stages. All clients are entitled to raise a complaint about professional misconduct with the Intellectual Property Regulation Board (IPReg). Complaints about standards of service can be raised with the Legal Ombudsman (this began operating on 6 October 2010; up until then service complaints were raised with CIPA). These bodies conduct independent reviews and will not necessarily take your side. They are likely to want you to be prepared to compromise in order to settle the matter. Again, try not to let a dispute reach this stage, as by then the client’s trust will have been lost, perhaps irretrievably. Unfortunately, some clients are natural trouble makers. Occasionally you will need to compromise, even though you believe the complaint to be unjustified, simply to avoid the disruption and the risk that it represents. Be especially careful with that client in the future, however. You are entitled to decline to act for him – politely of course – if you feel that appropriate, but never abandon him in the middle of a piece of work or close to an outstanding deadline. Patents Training Manual: Volume 1
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3.10.12 The in-house attorney As an in-house attorney you may not have ‘clients’ in the sense that the private practice attorney does, but you are still providing a service to others. Courtesy and professionalism, responsiveness, honesty and an understanding of others’ needs are therefore still important in your interactions with the colleagues you help and advise during the course of your work. Expectation management is also still likely to be necessary. Commercial awareness is vital, but probably easier for you than for the private practice attorney. Complaints may not be such an issue, but your employer – particularly a larger organisation – is still likely to want to assess and if possible control the quality of your work. Thus, most of this section applies more or less equally to both types of attorney.
Test your knowledge 1. List the patent attorney’s key responsibilities to his or her clients. 2. You act for a pharmaceutical company A. Potential new client B works in drug formulation, specifically on tablet and capsule manufacture. Discuss whether there is likely to be a conflict of interest and whether you should take on B’s work. What would you say to A and B? 3. Explain how the attorney’s professional competence can affect a client’s position during subsequent patent litigation. 4. What should you do if your client’s US distributor asks you for a copy of the client’s newly-filed UK patent application? 5. Write an outline of the procedure for obtaining a UK patent, in terms which a layman could understand. Then repeat the process but for consumption by a US patent attorney. 6. Draft a paragraph or so explaining to a new client the limitations of both patentability and patent infringement searches. (Your firm may already have standard wording for use in this situation – if so, try not to cheat; draft your own first and then check against the firm’s standard.) 7. Find out what your firm’s policies are on (a) credit for new clients; (b) new client conflict checks; (c) logging incoming post; (d) file transfer to other attorneys; and (e) complaint handling. 8. Find out what your supervisor’s, and other colleagues’, views are on the type of documents that should be sent by e-mail. 9. On a flow diagram showing the procedure for obtaining international patent protection via an initial UK application and a PCT application, indicate the points at which you are likely to need to write to the client, and those at which you are likely to need to invoice him. 10. Work out the approximate likely costs from the initial UK application up to, and including, the PCT nationalisation process, and present them in a form that a client could present to his Board of Directors to secure approval for the process. 11. What are the procedural deadlines that would need to be monitored during this process? How far in advance would you report these to the client, and when would you send reminders if you hadn’t received instructions?
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12. List ten criteria on which to assess the quality of a patent attorney’s services to his or her clients. Discuss the extent to which you personally feel you can meet those criteria, and how you intend to address areas of weakness. 13. Try to rank the ten criteria in order of their importance to (a) a two-man start-up business, (b) a medium-sized limited company, (c) a university spin-out, (d) a PLC employing an in-house attorney and (e) an in-house attorney ‘farming out’ patent drafting work to a private practice attorney. 14. A relatively new client complains about your bill for preparing and filing a new patent application, saying that the work you’ve done is unsatisfactory, that you delayed for too long before filing the application and that you exceeded the cost estimate you gave him at your first meeting. Describe what you would do in this situation. How might your response differ if this was an existing client complaining about just one of his several patent applications?
Suggested chapter answers and comments Most of the questions raised under ‘Test your Knowledge’ do not have definite answers. Indeed the answers may well depend on who you work for, and vary from client to client or even from task to task. The questions are intended for discussion with your trainer and with other colleagues, as a way of exploring further possibilities whilst reinforcing the key concepts that are likely to apply throughout the profession. That said, your answers to questions 2 to 4 should include at least the following key points. 2. The risk of conflict will depend primarily on which business areas you work in for A, for example which types of drug and how they are formulated. It will depend on whether A regards B as a competitor, or perhaps as a potential business partner or a candidate for acquisition, and whether the two companies have been involved in past disputes. A’s consent must be sought before accepting B as a client. B must also be told that A is an existing client. You should agree with both parties what is to happen should a conflict situation arise in the future. Take care, during such consultations, not to divulge to either party any confidential information about the other’s specific business interests. 3. Sections 62(3) and 63(2) of the UK Patents Act 1977 (UKPA) provide that the question of whether a patent specification was drafted ‘in good faith and with reasonable skill and knowledge’ can affect the financial compensation available to the patentee if his patent is amended either before or during infringement proceedings. See 3.3.5. 4. The distributor should not be sent a copy of the new application without the client’s consent, and the client should be advised about the pros and cons of doing so.
Chapter review Good business practice involves understanding and respecting your clients’ needs, and an appreciation of the commercial context of your work as a patent attorney. It requires systems and procedures that safeguard the clients’ confidentiality and improve the efficiency with which you work, in particular for monitoring and meeting deadlines; for proper, disciplined file maintenance; and for fair billing practices. Patent attorneys have a legal duty to act in their clients’ best interests at all times, with professional competence, and to maintain client confidentiality. They can be sued for breach of these duties, or brought to task by either IPReg or the Legal Ombudsman if their professional standards are found wanting. It is therefore vital to identify exactly who your client is, both for billing purposes and for accepting instructions, and to avoid conflicts of interest between clients. Patents Training Manual: Volume 1
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You also have a duty, as a patent attorney, to maintain your professional competence and to keep up to date with developments in patent law, by engaging in continuing professional development or ‘CPD’. Good client care also requires you to communicate effectively; to be courteous, honest, responsive and helpful at all times; to manage the clients’ expectations appropriately; to monitor your own standards of service; and to deal promptly and professionally with complaints and disputes. The in-house attorney does not face quite the same business practice issues as the private practice attorney. Nevertheless, there is much common ground: the in-house attorney – whose ‘client’ is usually his or her employer – still needs to maintain professional competence, to safeguard client confidentiality, to communicate effectively, to keep proper files and records, to work to deadlines and to conduct him or herself with professionalism and respect for colleagues.
Further study Learning more about business practice simply takes time, and plenty of experience of real life client interactions. For the time being, find out as much as you can about your own firm’s systems, procedures and policies; try to understand why they’ve been adopted; and think about whether there might be equally appropriate alternatives. If there’s an internal ‘practice manual’ or ‘quality manual’, codifying the firm’s practices and controls, take the time to read it. CIPA’s Business Practice Guidance, which your trainer will be able to access via the Members’ area of the Institute website, provides more detailed guidance on business practice issues (at the time of writing, this guidance note is being updated). For the trainee, the sections of particular relevance are those on terms of business, client relations, charging, quality considerations and complaints handling. The IPReg website (www.ipreg.org.uk) is also a good source of information about professional practice and CPD requirements. It does no harm to turn now and again to textbooks outside of the field of patent law – guides, for example, on communication skills, time management, decision making or quality assurance. Some of these texts are a little woolly, but many contain common sense pointers which can be usefully adapted to suit your work as a patent attorney. The CIPA Journal is an occasional source of articles on business practice issues, and the Institute also runs seminars on such matters from time to time. The International Federation of Intellectual Property Attorneys (FICPI/www.ficpi.org) organises an afternoon seminar, in February of each year, focusing on business practice issues for private practice attorneys – this is open to non-FICPI members, but it does tend to be directed towards more experienced attorneys. Your firm may also provide in-house training on business skills such as communication, client care and time management.
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Legislative structure
4 Outline
This chapter is intended be an introduction to the legislative structure in the UK and the European Union. It is a general guide and should not be relied upon as a substitute for specific legal advice. The chapter is divided into two parts: the first part is a general section on the institutions, legislation and different courts in the UK and European Union, the legal profession in the UK is also covered (4.1 to 4.3); the second part concerns the patent courts and the patent system in the UK and for European patents (4.4 onwards). In general, references to the UK include only England and Wales. For sources of information, please refer to chapter 5. 4.1
UK Law 4.1.1 UK institutions 4.1.2 UK legislation 4.1.3 Legal profession in the UK
4.2
The Courts in England and Wales 4.2.1 The civil court system 4.2.2 Where to start a case 4.2.3 The case management tracking system 4.2.4 Appeals
4.3
European Law 4.3.1 European institutions 4.3.2 European legislation
4.4
Patenting in the UK – Legal Bodies 4.4.1 The Intellectual Property Office (IPO) 4.4.2 The Patents County Court 4.4.3 The Patents Court 4.4.4 Allocation to the multi-track system 4.4.5 Appeals from the IPO, Patents County Court and Patents Court 4.4.6 The streamlined procedure
4.5
The Patent System in the UK 4.5.1 Historical development of the patent system 4.5.2 The Patents Act 1977
4.6
The European Patent Convention 4.6.1 European Patents
4.7
The Patent Co-operation Treaty 1970
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4.8
The Community Patent
4.9
The European Patent Litigation Agreement
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Learning plan Prerequisites: None Legal documents: The Patents Act 1977 (as amended) (UKPA), The European Patent Convention (1973), The Patent Co-operation Treaty 1970, The Community Patent Convention 1975. Trainer’s input: To provide a general background on the legislative structure in the UK and European Union and to provide information on the patent system in the UK. Syllabus link:
UK Exams: P2 EQEs: Paper D
Time allocated: Less than a day.
Learning outcomes By the end of this chapter you will have knowledge of the legal system in the UK and European Union and the patent system in the UK.
4.1 UK law 4.1.1. UK institutions Government The government is the executive authority in the UK and is made up of ministers and headed by the Prime Minister. The government runs the country and has the role of developing and implementing policies and drafting laws. The more senior ministers in government form the Cabinet and are chosen by the Prime Minister. The government is voted into power by the people in order to act in the interests of the people. The UK, therefore, has a parliamentary democracy whereby every adult has the right to vote. Along side this system, the UK also has a constitutional monarchy; Queen Elizabeth II is the current monarch, she has limited powers and remains politically impartial. Parliament Parliament is responsible for checking the work of the government (through investigative select committees and asking government ministers’ questions) and examining, debating and approving new laws. Parliament is the highest legislative authority in the UK (sometimes referred to as the principle of parliamentary sovereignty) and is made up of the House of Commons, the House of Lords and the Queen. Over time, the power of the monarchy has reduced and is now broadly ceremonial; with the Queen opening and dismissing parliament and approving bills before they become law. Members of the House of Commons (members of parliament – MPs) debate the big political issues and proposals for new laws. They are also responsible for scrutinising the work of the government. In addition, the House of Commons is responsible for granting money to the government through approving Bills that raise taxes. Generally, the decisions made in the House of Commons must be
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approved by the decisions made in the House of Lords and vice-versa, although when the House of Commons makes a decision on financial Bills (such as proposed new taxes), the House of Lords can consider these Bills but cannot block or amend them.
4.1.2
UK legislation
Acts of Parliament An Act of Parliament (an ‘Act’) or statute creates a new law or changes an existing law. An Act is superior to all other sources of law including judicial precedents and is not subject to the review of a national court. The reason parliament has this supreme law-making power that overrides all other laws, is that members of parliament in the House of Commons are democratically elected and parliament, therefore, represents all the people of England and Wales. Bills A Bill is a proposal for a new law, or a proposal to change an existing law. To become law, a Bill must be agreed by both the House of Commons and the House of Lords. Generally, either House may vote down a Bill, in which case it will not become law. There are two exceptions to this: (1) where the Commons passes the same Bill in two successive years, in which case the agreement of the House of Lords is not required for it to become law; and (2) where the Bill relates to taxes. The reigning monarch must approve all new laws; this process of approval is called the Royal Assent. In practice, this is a formality and the monarch has not withheld Royal Assent since 1708. When a Bill is given Royal Assent it becomes an Act. It is then the responsibility of the relevant government department to implement that law. A Bill may be introduced for consideration by Parliament by: • • •
The government – called public Bills. Individual MPs or Lords that are not government ministers – called private member’s Bills. Private individuals or organisations – called private Bills.
Bills are usually presented to the House of Commons first, although less controversial Bills may begin life in the House of Lords. A Bill must pass through several stages in order to become a law: • •
• • •
First reading – an introduction to the Bill without a debate. Second reading – the main general debate. At the end of the debate, the Bill and any amendments that have been proposed will be put to the vote. If the Bill survives this vote, it will then be referred to a Standing Committee of Parliament. Committee stage – the committee’s task is to examine in detail each clause of the Bill and propose amendments where it thinks appropriate. Report stage – the committee will then report back to the House. There is an opportunity for further amendments. Third reading – the final chance for debate and a final vote. If the Bill passes this final vote, it will then go to the other House and the above process will be repeated. If the second House proposes amendments then the Bill will return to the first House for the amendments to be considered. Only when the Bill has received the approval of both Houses of Parliament can it be presented for the Royal Assent, through which the monarch approves the Bill and gives her assent to it becoming law. The Royal Assent procedure nowadays is a formality.
Delegated legislation Delegated or secondary legislation allows the Government to make detailed changes to a law without the need to pass a completely new Act of Parliament. The original Act (known as the primary legislation) Patents Training Manual: Volume 1
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usually makes provisions that allow for delegated legislation. Delegated legislation may change technical details in a law, such as the level of a fine, or it may flesh out an Act which only contains the framework of a law. Statutory instruments (SIs) make up the bulk of the delegated legislation, although some Rules or Codes of Practice are also delegated legislation. SIs are normally drafted by the relevant government department and consultations often take place with interested parties. Around 3,000 SIs are issued each year and about two-thirds are not actively considered before Parliament and simply become law on a specified date in the future. A number of specialist committees have been set up to assist Parliament in scrutinising the secondary legislation, such as the Joint Committee on Statutory Instruments. Although the courts have no power to declare Acts of Parliament invalid, delegated legislation can be declared invalid if the court considers that it exceeds the power conferred by Parliament (known as ultra vires).
4.1.3
The legal profession in the UK
In the UK there are two types of lawyers: barristers and solicitors. Most other countries do not have such a division within the legal profession. To become a solicitor or a barrister, the first step is to do either a law degree, or a non-law degree and a Graduate Diploma in Law (which usually takes an additional year of full-time study after the non-law degree). Solicitors After completing a degree, to become a solicitor a person must do the legal practice course which takes a further year’s full-time study and then work for two years as a trainee in a law firm, or for an organisation such as the Crown Prosecution Service. At the end of the two years as a trainee, the trainee will usually be admitted as a solicitor by the Law Society, which is the professional body for solicitors in England and Wales. A solicitor’s work may be varied and may include drafting or reviewing contracts, preparing documents such as deeds and interviewing and advising clients. Appearing in court used to be reserved for barristers alone; however, a solicitor can now obtain higher rights of audience and become a solicitor-advocate, which permits him to appear before any civil court. There are several routes to qualify (development, accreditation and exemption). An application to obtain higher rights of audience must be made to the Law Society. Barristers To become a barrister, a person must join an Inn of Court and must pass a Bar Vocational Course which lasts one year. After this, the barrister must spend a year being a pupil barrister (known as a pupillage). He will not be able to practise in court until he has completed six months of his pupillage. Barristers practising at the Bar are self-employed and will usually join a chamber, which is an office consisting of a small number of barristers. The professional body for barristers is called the General Council of the Bar. There are of course many areas of specialisation within the legal system and we, as patent attorneys, occupy one such area.
4.2 The courts in England and Wales The courts in England and Wales have a hierarchy, with the ‘lower’ courts generally dealing with more simple matters and the higher courts hearing appeals. The court system can be broadly divided into criminal and civil divisions and accordingly, the courts that deal with criminal and civil cases are largely distinct from one another. Depending on the type of case, criminal cases can initially be dealt with by either the Magistrates’ court or the Crown Court. The civil court system is described below:
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The civil court system
The civil court system in England and Wales is composed of the county court, the High Court, the Court of Appeal and the Supreme Court of the United Kingdom (formerly the House of Lords). County courts The county court was established in the late 19th century to meet the need for a system to deal with small claims. There are approximately 200 county courts in England and Wales, each serving a particular district. The jurisdiction of the county court covers a wide range of civil matters. ‘Jurisdiction’ refers to the authority of a court to deal with a case, although it does not necessarily mean that the court will actually deal with the case. Some county courts have been designated as specialist centres for dealing with particular types of action; for example, in London there is a county court which specialises in patent cases (the Patents County Court) and there are a number of county courts that have been designated as family hearing centres. Each county court is a separate entity serving a particular district, although the patents county court is based in London, its judge is able at the request of the parties to sit in Civil Litigation Centres elsewhere in England and Wales. Although most claims can be commenced in any county court, certain claims will normally be transferred to the county court at the defendant’s home district. High Court The High Court was also established in the late 19th century and substituted several existing superior courts (giving rise to separate divisions within the High Court). The High Court sits primarily in London at the Royal Courts of Justice on the Strand but it has the jurisdiction to sit and hear cases at any place in England and Wales. Unlike the county courts which are separate courts, the High Court is a single court wherever it sits and exercises its jurisdiction. The High Court may hear both civil and criminal cases. Cases are allocated to either the county court or the High Court depending on the value of damages claimed and the complexity of the issues relating to the claim (see 4.2.2, Where to start a case, for further details). The High Court consists of three divisions, namely the Chancery Division, the Queen’s Bench Division and the Family Division. Each division deals with different types of subject-matter. The Chancery Division deals with civil cases concerning various subject-matters including intellectual property, bankruptcy, company, land, mortgages, trusts, etc. The Queen’s Bench Division also deals with a wide range of civil cases which mainly concern contract and tort. The Family Division deals with civil cases that concern family matters. It should be noted that there are a number of ‘specialist courts’ within the Chancery Division and the Queen’s Bench Division, which are not separate courts but form part of the divisions, specializing in certain types of cases. For example, the Chancery Division has a Patents Court that specialises in patent actions. The Queen’s Bench Division also has several specialist courts, including a Commercial Court, an Admiralty Court and a Technology and Construction Court. The Court of Appeal The Court of Appeal consists of a Civil and Criminal Division. As its name suggests, the Court of Appeal only hears appeals from other courts and not cases at first instance. Supreme Court of the United Kingdom (formerly the House of Lords) Since 2009 the judicial function of the House of Lords has been replaced by the Supreme Court of the United Kingdom. The Supreme Court only hears appeals from other courts and is the highest national court; no further appeal court exists in the United Kingdom. The Supreme Court was established by Part 3 of the Constitutional Reform Act 2005 and came into being on 1 October 2009. The Act aims to improve the transparency of parliament by formally separating its Patents Training Manual: Volume 1
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judicial and executive functions. The Supreme Court therefore replaces the House of Lords in its judicial capacity and has assumed the jurisdiction of the House of Lords under the Appellate Jurisdiction Acts 1876 and 1888. The Supreme Court also has jurisdiction in relation to devolution matters under the Scotland Act 1998, the Northern Ireland Act 1988 and the Government of Wales Act 2006; this was transferred to The Supreme Court from the Judicial Committee of the Privy Council. Unlike the Law Lords they have replaced, the Supreme Court’s 12 Justices are not entitled to sit in Parliament. The Justices are appointed by the Monarch on the advice of the Prime Minister (from a list of names recommended by a selection commission). The Supreme Court, as well as being the final court of appeal, plays an important role in the development of United Kingdom law. As an appeal court, the Supreme Court cannot consider a case unless a relevant order has been made in a lower court. The Supreme Court hears appeals from the following courts in each jurisdiction: • • •
England and Wales: The Court of Appeal, Civil Division; The Court of Appeal, Criminal Division; and, in some limited cases, the High Court. Scotland: The Court of Session. Northern Ireland: The Court of Appeal in Northern Ireland; and, in some limited cases, the High Court.
The Supreme Court hears appeals on arguable points of law of general public importance; concentrates on cases of the greatest public and constitutional importance; maintains and develops the role of the highest court in the UK as a leader in the common law world. Although the Supreme Court is the highest court of appeal in the UK, it must give effect to directly applicable EU law and interpret domestic law as consistently as possible with EU law. Under the Treaty on the Functioning of the European Union (Article 267), the Supreme Court must refer to the European Court of Justice (ECJ) in Luxembourg any question of EU law where the answer is not clear and it is therefore necessary for the ECJ to give judgment. The Supreme Court must also give effect to the rights contained in the European Convention on Human Rights and must therefore take account of any decision of the European Court of Human Rights in Strasbourg.
4.2.2
Where to start a case
A civil case may start either in a county court or the High Court. The amount claimed by the claimant usually determines which court the case will be allocated to. In addition, the seriousness and difficulty of the case is considered. Generally, personal injury claims for compensation of less than £50,000 and other types of claims for less than £15,000 must be started in the county court. For claims exceeding these limits proceedings can be commenced in either the county court or the High Court. Each court has the power to transfer cases to another if appropriate.
4.2.3
Case management tracking system
Most claims are subject to a ‘tracking’ system which determines what needs to be done before trial and the speed at which the claim will progress. The three possible tracks are the small claims track, fast track and multi-track. The appropriate track is determined according to the value of the claim and its complexity. Generally, claims for not more than £5,000 are allocated to the small claims track. Straightforward cases worth over £5,000 are allocated to the fast track which provides for a short but reasonable timescale to trial. The multi-track is for cases whose value exceeds £15,000, or with a lower financial value if the trial is likely to be longer than one day or if several experts are going to give evidence.
4.2.4
Appeals
The decision of a court may be appealed to a superior court provided permission is granted by either the court whose decision is to be appealed or the superior court. A decision of the county courts is
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normally appealed to the High Court, and a decision of the High Court is normally appealed to the Court of Appeal. The exception to this would be if the judge in the county court considers the matter to be of sufficient general importance to be directly referred to the Court of Appeal; similarly, a civil case in the High Court may be appealed directly to the Supreme Court under certain circumstances. This is known as the ‘leap-frog’ procedure. Permission for a second appeal (e.g. from the Court of Appeal to the Supreme Court) requires a stringent examination and is not often granted.
4.3 European legal system The UK became part of the European Community (now the European Union (EU)) in 1973, with the passing of the European Communities Act. This has had significant implications for the British legal system. Some of the laws generated by the EU institutions have become part of the UK law. Some have not become UK law but could be directly applied by the British courts under certain circumstances. In addition, the European Court of Justice can deliver opinions that bind the British courts.
4.3.1
European Institutions
The Council of European Union The Council of European Union is also called ‘the Council of Ministers’, or just ‘the Council’. It is the principal decision-making body of the EU. All EU legislation proposed by the European Commission must be approved by the Council before it can take any effect. The government of each member state has a seat on the Council. Each country has a ‘weighted’ vote according to the size of its population. For example, France and the UK both have ten votes, while Luxemburg has two votes. It should be noted that the Council is different from ‘the European Council’, which comprises the heads of member states who attend summit meetings. The European Parliament The European Parliament shares with the Council the power of approving EU legislation. Although the Council is the principal organ which approves EU legislation, the European Parliament maintains a power of veto in a wide range of matters. The European Parliament also has the role of approving the EU’s budget and can insist upon certain modifications before approving it. The European Parliament supervises the European Commission and has the power to approve and dismiss Commissioners, censure the Commission and even remove the Commission by a two-thirds majority. Unlike Ministers of the Council or Commissioners of the Commission who are appointed, the members of the European Parliament (the MEPs) are directly elected from each member state. The elections are held every five years. The numbers of MEPs representing each member state vary mainly according to their population sizes. Currently the total number of the MEPs is approximately 730, with the UK having approximately 80 MEPs. The European Commission The European Commission (the ‘Commission’) forms the main part of the executive branch of the EU. The Commission maintains three essential functions: (1) it acts as the secretariat of the EU; (2) it launches legislation proposals for the approval (or otherwise) of the Council; and (3) it is responsible for supervising the application of EU law and it has the power to commence a direct action against a member state for breach of its responsibilities as a member state. The Commission consists of 27 commissioners and a president. They are chosen by the agreement of all member states. Each commissioner leads a department of the Commission and has special Patents Training Manual: Volume 1
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responsibilities for one area of EU policy. Unlike the Ministers of the Council or the members of the Parliament, the Commissioners are obliged to act in the interests of the EU as a whole rather than the interests of their country of origin. European Court of Justice The European Court of Justice (the ‘ECJ’) is the judicial organ of the EU and only deals with cases concerning EU law. The decisions of the ECJ are binding on the member states. Decisions of national courts may not be appealed to the ECJ and the ECJ is, therefore, not an appellate court, however, national courts may refer points of EU law from their cases to the ECJ. Actions may either be brought directly in the ECJ or by reference from a national court on a point of EU law. There are two types of direct action which may be brought in the ECJ: (a) A member state, the Council, the Commission and even individuals (under certain circumstances) can bring a direct action in the ECJ to challenge the legality of an act of the Council or the Commission. (b) A member state may be challenged by a direct action in the ECJ for failure to fulfil its Community obligations. Such actions may be brought either by the Commission or by another member state. A national court of a member state may refer a point of European law to the ECJ for determination of the case. Where the national court referring to the ECJ is the highest court of that member state (where no further national appeal lies – such as the Supreme Court), then that court has no choice but to refer the point of European law to the ECJ. Courts at all levels of the English legal system have referred cases to the ECJ, although most references have been made by the Court of Appeal and the Supreme Court. The ECJ has a judge from each member state. The judges are assisted by eight Advocate-Generals who make submissions to the judges about the major facts and analyses of the cases brought before the ECJ. The judges and Advocate-Generals serve the ECJ independently from their countries of origin.
4.3.2
European legislation
European law is made up of EU treaties, regulations, and directives. The treaties are reached and signed by governments of the EU member states. Proposals for the regulations and directives are put forward by the Commission, which are then considered by the European Parliament and the Economic and Social Committee or the Committee of the Regions. Once the various suggestions from these bodies have been considered, the Council decides whether to adopt the regulation or directive. Treaties In the past, an international treaty or convention that the government signed did not automatically become part of national law until domestic legislation gave effect to it. EU treaties now enjoy a different status because of the European Community Act 1972 that gives effect to them collectively. This means that once an EU treaty is signed by the member states and comes into force it is automatically to be treated as part of national law and can generally be relied upon directly in the English courts. Regulations Once an EU regulation has been adopted it is directly applicable by the national courts of the member states – without the member states having to take any steps to implement them. EU regulations can be applied to matters concerning the relations between an individual and the state (known as ‘vertical effect’) and matters between individuals (known as ‘horizontal effect’). Directives EU directives set out the policies or objectives that must be achieved by the member states within a specified time. A member state can choose whatever means it sees fit to implement a directive. As a
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consequence it is not the directives that are applied by the national courts to decide cases but the domestic laws that implement the directives. A member state has an obligation to implement a directive into its national laws. In certain EU cases, where a member state has not adopted the implementing measures required by a directive within the prescribed period without certain justifiable reasons, the directive has become directly applicable. This means an individual may rely directly upon an EU directive where the member state has not implemented it within the required time. Unlike regulations, directives only have the vertical effect and not a horizontal effect, which means that they can only be used in actions against the state/governments and not in actions between individuals.
4.4 Patenting in the UK – legal bodies The Intellectual Property Office (IPO), Patents County Court and The Patents Court In England and Wales, proceedings for all types of patent action may be brought either in the Patents Court or in the Patents County Court. In addition, certain patent actions (proceedings to revoke a patent or for a declaration for non-infringement of a new patent) may be brought before the IPO.
4.4.1
The IPO
The IPO is the official government body formerly known as ‘The Patent Office’ responsible for granting intellectual property rights in the UK, these rights include: patents, designs, trade marks and copyright. It is an Executive Agency of the Department of Innovation, Universities and Skills (DIUS) and is led by the Comptroller. The IPO determines whether a UK patent should be granted. It also provides opinions on validity and infringement where there is a dispute. As mentioned above, certain patent dispute proceedings may be filed at the IPO. Where proceedings are pending before the courts, then an action may not be commenced before the Comptroller without the permission of the court.
4.4.2
The Patents County Court
Why use the Patents County Court? The Patents County Court 1 (PCC) is an alternative venue to the Patents Court for hearing proceedings concerning patents or designs. The PCC is meant to be a cheaper, simpler, faster and more informal option for patent proceedings. In particular, small entrepreneurs seeking to enforce or defend patent claims may benefit from using the PCC instead of the Patents Court. The PCC may not hear appeals from the decision of the Comptroller, however, its jurisdiction is otherwise the same as the Patents Court and extends to any action relating to patents or designs over which the Patents Court has jurisdiction together with any ancillary claims arising from them. At present there is no financial limit for proceedings in the PCC, although this may change in the future. A claim brought in the PCC need not be a monetary claim and may be a claim for an injunction to stop or make a person do something or an order for delivery up of items which are alleged to infringe a patent. Because of a fire at Field House, 525 Breams Buildings, London EC4A 1DX the PCC is temporarily located at St Dunstans House, Fetter Lane, London EC4A 1HD A patent attorney may conduct the action before the PCC A registered patent attorney may conduct all stages of proceedings before the PCC as though he were a solicitor of the Supreme Court. 2 This means the patent attorney may act for his client throughout the action and he is also permitted to be heard before the PCC (in the same way as a barrister or a solicitor with his higher rights of audience certificate is permitted). The patent attorney‘s rights are subject to certain restrictions; in particular he is not permitted to prepare a deed. 3 Any undertaking given by a patent attorney in the course of proceedings is enforceable by the PCC in the same way as a solicitor’s Patents Training Manual: Volume 1
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undertaking is enforceable. 4 Patent attorneys are able to take payment for their work in relation to proceedings in the PCC. 5 The Patents Judge A Patents Judge is the person nominated as such by the Lord Chief Justice to be the Judge in the PCC 6. This should be a judge with experience of patent litigation and, as far as possible, should handle all proceedings within the jurisdiction. The PCC’s power to appoint scientific advisors or assessors The PCC may appoint scientific advisers or assessors to assist the court or order the Patent Office to enquire into and report on any question of fact or opinion. The PCC may appoint advisors or assessors with or without any party’s application. Where it exercises this power under its own motion, the remuneration of the advisors or assessors will be paid out of public funds. Transferring a case to the Patents Court The Patent’s Judge has the discretion to transfer a case to the Patents Court. The factors to be considered when the judge makes this decision include: (1) the financial position of the parties; (2) the complexity of the matters raised; (3) the importance of the action generally and in particular whether or not it would affect persons not party to the action; and (4) the speed at which the trial would be heard. A Patent’s Judge should only transfer to the Patents Court if the scales are tipped in favour of transfer after considering such factors.
4.4.3
The Patents Court
The Patents Court is a court of the High Court within the Chancery division.7 The Patents Court has the same jurisdiction as the Patents County Court, however, in addition, it also has jurisdiction to hear appeals from the Comptroller General of Patents, Trade Marks and Designs. 8 Permission to appeal is not required. The person appealing the decision of the Comptroller (Appellant) has the right to appeal that decision to the Patents Court, with the exception of certain decisions including: • • • •
a decision to omit matter from a specification; a decision to give directions prohibiting or restricting the publication or communication of information in the interests of defence or public safety; a decision whether an abstract adequately fulfils its purpose; and where a decision under the Patent Rules 1990 9 provides for no right of appeal. 10
Note that a decision of the Comptroller cannot be appealed to the Patents County Court. 11 For the purpose of giving appeals, the Patents Court may consist of one or more patent judges. The Patents Court in such an appeal may make any order or exercise any power which the Comptroller could have made or exercised for the purpose of determining that question. The Comptroller must be served with a Notice of Appeal. Occasionally, the Patents Court will hear appeals on paper only if that is what the parties’ request. In such cases, the parties should liaise amongst themselves for early preparation of written submissions and bundles to provide the court with all necessary material.
4.4.4
Allocation to the multi-track system
Cases in the PCC or Patents Court are allocated to the multi-track system. In multi-track allocated cases, the Court has the ability to deal with cases of widely differing values and complexity and has the
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flexibility to manage the case in a way that is appropriate to its particular need. Often the Court in multitrack cases will give directions by way of a case-management conference or pre-trial review. A patent granted under this Act is not a royal grant of a monopoly but as a collection of rights conferred by the Patents Act 1977 (UKPA) in respect of a patentable invention. A certificate that a new patent has been granted in a form authorised by the rules made pursuant to the Act is signed by the Comptroller General of Patents, Designs and Trade Marks. Such a patent has effect throughout the UK and the Isle of Man.
4.4.5
Appeals from the IPO, PCC or the Patents Court
As discussed above, a decision of the IPO can be appealed to the Patents Court. Permission to appeal is not required. An appeal on a question of law or fact from the decision of either the PCC or Patents Court can be made to the Court of Appeal and from there, with leave, to the Supreme Court. Where an appeal lies to the Court of Appeal, the judge may, however, certify that the appeal may be made directly to the Supreme Court.
4.4.6
The streamlined procedure
The streamlined procedure is available in both the Patents Court and the PCC and aims to speed up a patent action and limit its cost. In a streamlined procedure, all factual and expert evidence is in writing. There is no requirement to give ‘disclosure’ of documents. ‘Disclosure’ is part of the legal proceedings whereby parties inform or disclose to the other party the existence of relevant documents that are or have been in their control. In addition, in a streamlined procedure there are no experiments and crossexamination is confined to specific topics. Where a procedure is streamlined, the trial date will be fixed and is normally about six months from the date of application. The trial will not normally last for more than one day. Any party can apply at any time after the commencement of the action for a streamlined procedure. The application should be made at the earliest possible time. The party wishing for the procedure to be streamlined should invite the other party to agree to the proposed procedural steps. If the parties agree on the procedural steps then the court will normally make an order which reflects the agreement. If there is no agreement, the party wishing for the streamlined procedure must make an application for it, setting out the proposed procedural directions in his application notice and requesting that the application be determined on paper. The application should be supported by a witness statement and the party opposing the streamlined procedure must serve a witness statement in response. The court determines the matter provisionally on paper alone and will make a provisional judgment and order accordingly. The provisional order comes into effect seven days after its service on the parties unless a party seeks an oral hearing.
4.5 The patenting system in the UK The purpose of the patent system is to encourage innovation and the improvement of industrial techniques. In return for the disclosure of an invention, the inventor is given a monopoly for the use of it for a period of 20 years, after which time it passes to the public domain. Instead of patenting a new invention, the inventor may instead choose to keep the details secret. In fact, not all developments are patentable, for example, scientific theories and mathematical methods are not patentable.
4.5.1
Historical development of the patent system
Elizabeth I was the first to grant patents which provided monopolies for new inventions in order to encourage the establishment of new industry. This system of granting monopolies was abused by the Stuarts and in 1623, Parliament passed the Statute of Monopolies which restricted the monopolies Patents Training Manual: Volume 1
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already granted and prohibited the granting of new monopolies except to the true and first inventor of an invention. Modern patent legislation dates from the establishment of the patent office in 1853 and the Patents, Designs and Trade Marks Act 1883 which established the practice of examination by the patent office of the patent specification before grant. The Patents & Designs Act 1907 provided for the official search through prior specifications in order to establish that the invention was new (known as ‘novelty’). The patent legislation underwent a major overhaul in 1949 by the passing of the Patents Act 1949. For patents granted on applications filed on or after 1 June 1978, the Patents Act 1949 has been replaced by the Patents Act 1977. The Patents Act 1977 has itself been amended and supplemented, in particular by the Copyright, Designs & Patents Act 1988. The history of the patent system is looked at in more detail in chapter 1. A UK patent may be granted through the IPO or, the European Patent Office (EPO). An application may also be made through the International Patent Co-operation Treaty procedure if required.
4.5.2
The Patents Act 1977 (PA 1977)
The Patents Act 1977 (UKPA) established the modern domestic patent law and gave effect to certain international conventions and treaties in the UK. It largely came into force on 1 June 1978. Part I of the Act sets out the new domestic law. Part II provides the machinery for the incorporation of the European Patent Convention, Community Patent Convention 1975 and the Patent Cooperation Treaty. Part III of PA 1977 (UKPA) deals with a variety of general matters such as legal proceedings, including the creation of the Patents Court within the Chancery Division of the High Court, criminal offences (e.g. for misuse of the title ‘patent office’ and for falsification of the patents register), appeals from the Comptroller, the Comptroller’s discretionary powers and administrative provisions such as the power to make patent rules. The Act is accompanied by a set of rules in the form of a statutory instrument setting out various implementational details of the Act. We will look at many aspects of the Act in detail in later chapters of the manual, but it is worth briefly running through some of the important features here. The PA 1977 (UKPA) does not contain a definition of an ‘invention’ or a ‘patent’ but instead describes the criteria to be satisfied by a patentable invention. 12 Patentability For an invention to be patentable it must satisfy the following conditions: (a) it must be new (have novelty); (b) it must not be obvious (it must have an inventive step); (c) it must be capable of industrial application; and (d) it must not be excluded by the PA 1977 (UKPA) – excluded matter includes computer programs, business methods and discoveries and inventions contrary to public policy or morality. Novelty An invention must be new to be patentable. This means it must not form part of the ‘state of the art’ at the priority date. The ‘state of the art’ includes any matter (whether a product, a process, information about either, or anything else) which has at any time been made available to the public (whether in the UK or elsewhere) by written or oral description, by use, or in any other way. There is no distinction between information published by the inventor or by a third party. The UK system operates a ‘first-to-file’ rather than a ‘first-to-invent’ basis which is why it is important to file a patent application as soon as it is practicable. The priority date is the date on which the invention was first disclosed in a patent application. The priority date will be the patent’s filing date unless the filing date of an earlier UK, European or PCT application is claimed. The earlier application must have been made within the previous 12 months and must disclose the invention claimed in the later application.
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Determining whether an invention is novel is a factual investigation In order to be novelty destroying a disclosure must be ‘enabling’, which means a disclosure that would enable a person skilled in that particular field but who lacks inventive spark (often referred to as ‘the skilled man’) to make the claimed product or process. Inventive step An inventive step is required in order for an invention to be patentable. The question asked here is whether the invention would have been obvious to the skilled man at the priority date, taking into account the state of the art at that time. This is a question of fact. Industrial application A patentable invention must have ‘industrial application’. This means that it can be made or used in any kind of industry; it must have a practical use and not just be an abstract proposal (such as a perpetual motion machine). In practice, the standard for industrial application is fairly low. Exclusions to patentability The following are excluded from patentability under the PA 1977 (UKPA) to the extent that the invention relates to that thing as such: •
Discoveries, scientific theories or mathematical methods.
• •
Literary, dramatic, musical or artistic works or any other aesthetic creations. (These are protected by copyright). Schemes, rules or methods for performing a mental act, playing a game or doing business, or programs for computers. The presentation of information.
•
The PA 1977 (UKPA) also provides that a patent shall not be granted for an invention which would be contrary to public policy or morality by its commercial exploitation. Exploitation is not regarded as contrary to public policy or morality only because it is prohibited by any law in the UK. Term of protection Protection in the UK lasts for 20 years from the filing date provided renewal fees are paid. Enforcement of patents In infringement proceedings, a patent owner claims that someone is using his patent without a licence or other permission. It is not possible to start infringement proceedings until a patent is granted, although there is a qualified right to recover damages retrospectively for acts committed after the publication of the specification. Any letters sent prior to the commencement of proceedings should be carefully worded as infringers may sue for unjustified ‘threats’ of proceedings. Under the PA 1977 (UKPA), where any person that threatens another person with proceedings for infringement of any patent, the ‘person aggrieved’ by the threats may bring proceedings against the person making them. There are exceptions to these provisions. For example, proceedings may not be brought for threats made to a manufacturer or importer. Also provision of factual information about a patent or making enquiries to determine if a patent has been infringed or by whom do not constitute actionable threats. Infringement – nature of the infringing act To infringe a patent in the UK, a person must engage in a prohibited act within the UK. Infringement can be direct or indirect. Where the invention is a product, a patent will be infringed by any person who, without the proprietor’s consent, in the UK: makes; disposes of; offers to dispose of; uses; imports; or keeps the product for disposal or otherwise. Patents Training Manual: Volume 1
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Where the invention is a process, it is an infringement to use the process in the UK without the proprietor’s consent. It is also an infringement to dispose of, offer to dispose of, use or import any product obtained directly by the process or keep such a product for disposal or otherwise. Indirect infringement (known as contributory infringement) occurs where a person supplies or offers to supply in the UK a person (other than a licensee or other person entitled to work the invention) with any of the means, relating to an essential element of the invention, for putting the invention into effect where he knows or it would be obvious to a reasonable person in the circumstances that those means are intended to put the invention into effect in the UK. As a basic rule, the person who actually performs the infringing act is liable. However, a person who has acted in concert with another person may also be liable under the general law of common design. There are exceptions to infringement set out in the PA 1977 (UKPA). The most commonly encountered exceptions are acts done for private use or experimental use. Further exceptions to infringement in respect of studies, tests and trials necessary for an application for authorisation of a generic medical product have recently been introduced by the Medicines (Marketing Authorisations, etc) Amendment Regulations 2005 which implement EC legislation. Construction of patent claims Assuming a patent is valid, it will be infringed if something is done which falls within the scope of any one of the patent claims. The patent claims are construed in a practical context in the light of the specification and the drawings. In a House of Lords case13, construction was summarised as ‘what would a person skilled in the art have understood the patentee to have used the language of the claim to mean?’. Once the meaning of the words of the claim is ascertained there is no scope for anything outside that meaning to infringe. The doctrine of equivalents as known in US law (and elsewhere in Europe) does not exist in English law. Validity The grounds on which the validity of a patent can be attacked are set out in the PA 1977 (UKPA). They are that the invention is not patentable in that: • • • • • •
• •
it is not new; or it lacks inventive step; or it is not capable of industrial application; or it is excluded by the PA 1977 (UKPA); or that the patent was granted to a person who was not entitled to it; or that the patent is insufficient – the specification as a whole, read together with the claims and in light of any drawings, must contain instructions that will enable the skilled man to perform the invention using his skill and knowledge without invention or prolonged research. If it does not, the patent is invalid for insufficiency; or it includes ‘added matter’; or the claims of the patent have been extended after grant by amendment (claim broadening).
A UK patent granted by the IPO is only subject to attack before the national courts. Remedies for patent infringement A successful claimant may seek: • • • •
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An injunction restraining the defendant from exploiting his invention. An order for delivery up or destruction of the infringing goods. Damages or an account of profits. A declaration that the patent is valid and has been infringed by the defendant.
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4.6 The European Patent Convention Under the European Patent Convention (EPC) 14 a bundle of national patents (for countries which are party to the EPC) may be awarded by way of a single application. The patent application must be submitted at either at the European Patent Office (EPO) or at the applicant’s national patent office, stating in which of the contracting states protection is desired (i.e. in which countries the European patent will be designated). An application filed at a national patent office has the same effect as if it had been filed on the same day at the EPO. Such an application must be forwarded by that office within six weeks of receiving it to the EPO. The EPO is based in Munich, Germany.
4.6.1
European patents
From the date of publication of the mention of its grant, the proprietor of a European Patent (UK) has the same rights and remedies and is subject to the same conditions as the proprietor of the patent under the PA 1977 (UKPA). The European patent system is primarily a patent granting system and does not touch on, for example infringement. Again, we look at the system in detail in other chapters but briefly review some of the main points here. Patentability The basics are the same as under the Patents Act 1977 (UKPA), although implementation can differ. Under the EPC, a European patent may only be granted in respect of an invention which is new and involves an inventive step and is capable of industrial application. Novelty For an invention to be considered new, it must not form part of the state of the art. The state of the art comprises everything that has been made available to the public by means of written or oral description, by use or in any other way before the date of filing of the European patent application. In addition, when assessing whether the invention is new, the state of the art will also include the content of European patent applications which were filed earlier than the application being filed but published on or after that date. Inventive step Under the EPC, an invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Exclusions to patentability The following are not regarded as patentable inventions under the EPC: (1) discoveries, scientific theories and mathematical methods; (2) aesthetic creations; (3) schemes rules and methods for performing mental acts, playing games or doing business and programs for computers; and (4) presentations of information. In addition a European patent may not be granted where the invention would be contrary to public order or morality, nor may it be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Validity – Opposition before the EPO and revocation A European patent may be opposed before the EPO for a nine-month period after its grant. If no opposition is entered, or any opposition that is entered is rejected, the validity of the European patent Patents Training Manual: Volume 1
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can only be put in issue in the national courts of the states designated by the applicant and is subject to the relevant national law. A European patent granted by the EPO which is designated in the UK (a European (UK) patent) is treated as a UK patent under the PA 1977 (UKPA). Beyond the opposition phase, a European (UK) Patent may only be revoked before the English courts. The benefit of attacking the validity of a European patent at the opposition stage is that if the opposition is successful, the patent will be revoked across Europe. If the validity of a European patent is challenged nationally the decision will only have effect in the country in which action is being taken. Infringement Infringement of a European patent is governed solely by the national law of the state concerned, since after grant, a European patent has the same territorial effect in the states for which it has been granted as does a national patent. The extent of protection given by a European patent is determined by the terms of the claims, although the description and drawings must be used to interpret the claims. Remedies The remedies available will depend on the national law of the member state in question.
4.7 The Patent Co-operation Treaty (PCT) The PCT provides for a patent to be granted in the UK via an international application. This method might be used where, for example, a proprietor of a US patent was also seeking to apply for a patent in the UK. There are more than 100 countries which are members of the PCT. The PCT is administered by the World Intellectual Property Organization (WIPO) in Geneva. It provides for a single application and preliminary search. WIPO then sends the application on to the national offices for them to decide whether to award a patent for their territory. An international application for a patent designated in the UK under the PCT is treated as an application for a patent under the PA 1977 (UKPA). Accordingly, if the application is withdrawn or deemed to be withdrawn under the PCT it is treated as withdrawn under the PA 1977 (UKPA). During the international phase of the application under the PCT, the provisions of the PCT relating to publication, search, examination and amendment will apply and not those of the PA 1977 (UKPA). The international phase of the application means the period from the filing of the application, in accordance with the PCT until the national phase of the application, begins – either when the English translation of the application has been filed at the UK Intellectual Property Office and the prescribed fee has been paid by the applicant, or when the applicant expressly requests the Comptroller to proceed with the national phase of the application filing at the IPO.
4.8 The Community Patent There have been discussions at an EU level for several years aimed at setting up a Community patent system. The discussions have been hindered by various disputes including the role of the national patent offices and which languages should be used. The main provisions of this scheme are contained in the Community Patent Convention 1975 (CPC) which has been the subject of substantial revisions. In 2003, the member states agreed on the following key areas: (a) The existing framework of the EPC should be utilised. (b) The EPO would run the community patent systems.
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(c) The EPO would grant a patent for the territory of the Community. (d) The EU as such will need to ratify the EPC. (e) The patent specification can be filed in English, French or German at the EPO with the claims translated into the other two languages. (f) The court will be called the Community Patent Court and will be established by a Council Regulation. It should come into existence by 2010. At present the Community patent framework is still moving through an extensive consultation stage. In its latest communication 15, the Commission has proposed a compromise arrangement for the Community Patent which involves a unified independent patent judiciary with competence for litigation in European patents and in future Community patents.
4.9 The European Patent Litigation Agreement The draft European Patent Litigation Agreement (EPLA) was prepared in order to try and solve the perceived problems with the current system of litigating European patents granted by the EPO – often in direct conflict with the Community Patent Office. Currently, once a European patent has been granted, litigation must take place in the national courts. Problems arise from multiple patent litigation cases across European countries which involves high costs, legal uncertainty, cross-border litigation and forum shopping. Forum shopping is where a party will choose to initiate an action before a certain jurisdiction on the basis that they are likely to be treated more favourably than in another jurisdiction. The differences in costs and in the speed of proceedings also have an impact on the choice of forum. The result of this purely national litigation system for European patents leads to a fragmented and inefficient market for ideas. Under the existing system, barring opposition, in order to obtain revocation of a European patent, revocation actions must be filed in any State for which the European patent is granted. Likewise, a patent owner may need to initiate several parallel infringement actions for the national courts in different countries. Therefore, the existing system is costly for all parties involved. In June 1999, the contracting States of the European Patent Organisation set up a working party, with the aim of producing a draft text agreement which would commit those States that signed it to an integrated judicial system for patent litigation of European patents. In addition, the working party had to agree the terms under which a common entity could be established and financed, which national jurisdictions could refer to with a view to obtaining advice relating to the validity and infringement of a patent. In November 2003, the working party agreed on a draft agreement on the establishment of a European patent litigation system and a draft statute of the European Patent Court. The European Patent Court would be set up and would comprise both a Court of First Instance and a Court of Appeal with jurisdiction to deal with the infringement and revocation actions concerning European patents. The European Patent Court of Appeal was proposed as the entity entrusted to deliver non-binding opinions on any point of law concerning European or harmonised patent law to national courts trying infringement and validity actions. In November 2006 the EPLA ran into trouble due to: • •
the identification of potential conflicts between the law of the European Union and the planned European Patent Litigation system; and the high costs of the translation requirements under EPLA (which was a similar cause for concern with the Community Patent).
In its communication dated 3 April 2007, the Commission of the European Communities stated that any European patent jurisdiction should take the European Court of Justice as being the final arbiter in matters of EU law. Patents Training Manual: Volume 1
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Cases for the European Patent Court would be heard by panels of three or five judges; at least one of the judges would be a technically qualified judge and at least two should be legally qualified judges. The legally qualified judges should be at least of two different nationalities. The language regime under the European Patent Court would be the same as the regime of the EPO (three official languages: French, English and German). Representation before the European Patent Court would be compulsory and entrusted to persons registered as European Patent Counsel who may be assisted by professional representatives.
Test your knowledge 1. How does a Bill become law? 2. What types of lawyers are there in the UK? What type of work does each profession do? 3. Name the civil courts in England and Wales, starting with the lowest court. 4. Where should a case be started? What factors are relevant to where a case should be started? Why might a person chose to use the Patents County Court? 5. Name the European Institutions. What role does each institution have? 6. What does the Intellectual Property Office do? 7. What right does a UK patent owner have? How long does it last? What can the patent owner do if someone is using his patent without a licence or other permission? 8. In order to be patentable, what conditions must the invention satisfy? 9. What types of inventions are excluded from patentability?
Notes and references 1
2 3
4 5 6 7 8 9 10 11 12 13 14 15
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Established in 1990 by the exercise of the Lord Chancellor’s power under the Copyright, Designs and Patents Act 1988 (CDPA), Section 287 (1) by the passing of the Patents County Court (Designation and Jurisdiction) Order 1994, SI 1994/1609. See Section 292 (1) CDPA. Section 292 (2) CDPA. Under Section 292 (2) the Lord Chancellor may regulate the rules granted to patent attorneys to act in connection with patent proceedings in the Patents County Court, however, the Lord Chancellor may only make such regulations with the concurrence of the Lord Chief Justice (Section 292 (2a) CDPA). See Section 142 of the County Courts Act 1984. S142 (3) extends the power of County Courts to enforce undertakings given by solicitors to apply to registered patent attorneys. Section 292 (4) CDPA. Section 291 (1) CDPA 1988 and the Civil Procedure Rules 63.4A. Section 6(i) of the Supreme Court Act 1981 (c.54). Governed by Civil Procedure Rules Part 52 (CPR 63.17). SI 1995/2093. Patents Act 1977, S. 97(1). Civil Procedurals 63.17. See Section 1(i) of PA 1977. Kirin-Amgen v TKT [2005] 1 All ER 667. The convention on the grant of European Patents (Munich, 5 October 1973; TS 20 (1978); cmnd 7090). see Communication from the Commission of the European Parliament and the Council – ‘Enhancing the patent system in Europe’, 3.4.2007.
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10. Why might a person attack the validity of a patent? On what grounds can validity be attacked? 11. What is a European patent? Who grants a European patent? 12. What is the advantage in attacking the validity of a European patent during the opposition period compared to attacking the validity nationally after the opposition period?
Suggested chapter answers and comments 1. See 4.1.2 – UK legislation – Bills 2. Solicitors and barristers – see 4.1.3 for further information. 3. County Court, High Court, Court of Appeal, The Supreme Court (formerly the House of Lords) – see 4.2.1 for further information. 4. See 4.2.2 and 4.4.2. 5. See 4.3.1 6. See 4.4.1 7. A patent owner has the exclusive right to exploit his invention for 20 years from the date of filing. He may take action for patent infringement against a person doing an infringing act – see 4.5.2 on infringement – the nature of an infringing act. 8. See 4.5.2 on patentability. 9. See 4.5.2 on exclusions to patentability. 10. Proceedings for invalidity of a patent are usually sought as a counterclaim by a person being sued for patent infringement. For the grounds of invalidity see 4.5.2 on validity. 11. A European patent is a bundle of national patents granted by the European Patent Office upon a single application. 12. A European patent may be opposed for a period of nine months from the date of its grant. If the opposition is successful then the European patent will be revoked in all its designated countries across Europe. If the validity of a European patent is challenged nationally the decision will only have effect in the country in which the action is being taken.
Chapter review This chapter covers general information on the legal institutions and legislation in the UK and European Union. It also covers the patent system in the UK and European patents.
Further study Some parts of chapter 5 overlap with this chapter and can be used as revision.
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Sources of information
Outline This chapter provides a guide to sources of information, mainly for legal research, but also briefly addressing other sources of information such as prior art databases and sources of status information for patent applications and patents. Legislation is introduced as the primary source of legal information with case law and guidance from relevant patent offices filling in the gaps and providing interpretations. In this context, a brief review is given of the various forms of legislations and their creation, how the courts generate the case law and Patent Office sources of information, such as practice guides and official journals. Practical application of these concepts is demonstrated in the suggested chapter answers and comments at the end of this chapter.
Learning plan Prerequisites: None, but it will be helpful to have basic concepts of the legislative structure in the UK, as explored in the previous chapter, and patentability criteria, which are discussed in chapters 6 and 7. Legal documents: UKPA, EPC, PCT to look through; EPO decision G2/88, Adhesive Dry Mounting v Trapp (1310) 27 RPC 341 and Merrel Dow Pharmaceuticals v Norton [1996] 3 RPC 76 for the chapter questions Trainer’s input: Provide legal research tasks to apply learned material Syllabus link: The knowledge gained here will assist you throughout your UK and EQE examinations. Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will have an understanding of the various sources of information available for (mainly legal) research and how to make use of them to address legal questions. Prior art searching databases and legal status information sources are also briefly addressed and the chapter provides a selection of web link and other references.
5.1 Legislation We need to start with the hierarchy of authoritativeness when looking for sources of legal information. In other words, we start with the law as embodied in the statutes. When addressing legal questions (for example: What forms part of the state of the art? What are the provisions on claiming priority or entitlement to own an application or a patent?) the information should, thus, always be sourced starting from the actual legislation. Depending on the context, this may be:
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For national law in the UK – the UK Patents Act 1977 as amended by the UK Patents Act 2004 (UKPA); For European patent applications and patents handled by the European Patent Office (EPO) – the European Patent Convention (EPC); and For International patent applications – the Patent Cooperation Treaty (PCT).
Since these documents are established by an act of parliament (UKPA) or multi-lateral, inter-governmental conferences (EPC, PCT), they often set out general principles and rely on additional legislation to specify the details. This allows the details to be adapted without having to establish a new Act of Parliament (as discussed in chapter 4) or convene a new diplomatic conference, for example between the governments of the EPC contracting states. These additional documents are the Patents Rules in the case of UKPA, the Implementing Regulations for the EPC (and also the Rules Relating to Fees and Protocols accompanying the EPC) and the Regulations under the PCT. These set out details such as most time limits and, for example, detailed formal requirements of a patent application. The rationale behind placing these detailed provisions in additional legal texts is that these are easier to change then the primary legislation (e.g. the EPC) itself, for example the Implementing Regulations can be amended by an EPO body called the ‘Administrative Council’ rather than requiring a full diplomatic conference of member governments as in the case of changes to the EPC (incidentally, the EPC 2000 , also known as the EPC Revision Act of December 2007, is an example of such an amendment to the EPC made by diplomatic conference). The primary legislation (UKPA, EPC, PCT as appropriate) generally follows a logical layout, with the sections (in the case of the UKPA) or articles (in the case of the EPC and PCT) being organised under certain topic headings. For example, the EPC starts with articles relating to General and Institutional Provision, followed by substantive Patent Law, for example conditions for patentability, requirements for Applications for European Patents, Procedure up to Grant, Opposition Procedure, Appeals Procedure and miscellaneous other provisions. The corresponding Rules or Implementing Regulations follow the same ordering but there is no one-to-one correspondence between the respective numbering of the sections or Articles and Rules of Implementing Regulations. It can, therefore, be a time saving tool to cross-reference the articles/sections and corresponding rules, although a number of reference works exist (discussed below in 5.5) which do so in great detail. It is very important to remember that the primary legislation and, more often, the accompanying Rules, can change, making it necessary to ensure that one is always working from the latest, up-to-date version of the relevant legal text. Your firm will generally make up-to-date paper copies of the legal text available but since these are not always re-published when changes occur, the safest way to ensure that up-to-date legal text are used is to use, or at least cross-check, with the relevant online versions of the text. The relevant patent offices and organisations make consolidated versions of the relevant texts available on their websites (see the references and web link section at the end of this chapter) in which the text is updated with changes (for example made by Statutory Instruments in the case of the UKPA or decisions of the President of the EPO or the Administrative Council in the case of the EPC). While it is in practice acceptable to work from these consolidated versions, they are not legally binding and for complete certainty, it is possible to check against the original legal text and the relevant original updates, for example, the Statutory Instrument in question. Similarly, when using reference works which provide cross-references and annotations to the legal texts (discussed later on in this chapter), it is not advisable to rely completely on these works to provide legal advice (as errors can and are known to occur) and to cross-check any information against the relevant original legal text.
5.2 Case law As discussed in the previous section, the primary legal texts such as the UKPA or EPC set out mostly general principles with further details being addressed in the relevant Implementing Regulations or
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Rules. Nevertheless, many concepts remain open to interpretation (for example, what is the content of a previous application which gives rise to a right of priority? – section 5 UKPA, Article 87 EPC). These questions are addressed by decisions by the relevant patent offices (IPO, EPO) or the Patent Courts in the UK. As discussed in more detail in chapter 4, a major difference between the EPO and the IPO is that decisions from the IPO can be appealed to the Patents Court (part of the Chancery Division of the High Court) whereas decisions by a first instance of the EPO (Examining or Opposition Divisions) can be appealed to another EPO body, the EPO Board of Appeals. Furthermore, case law under the national UK law can arise also not only from appeals from First Instance Patent Office Divisions but also in inter-party disputes directly at court, for example relating to validity and/or infringement of a UK patent. Because of these differences and the differences between the way that existing subsequent decisions by the Board of Appeal at the EPO and the courts in the UK are treated, these sources of case law will be treated separately below. Finally, it will be of interest that there is no case law in relation to the PCT, which mostly sets out formal guidelines for the handling of international applications with all substantive questions having to be addressed at national level on entry into the national/regional phase. The exception to this rule is decisions relating to findings of non-unity during the International Search when the EPO is the International Searching Authority, which is briefly discussed below (see 5.2.2) in relation to EPO case law, or national case law relating to, for example, requests for corrections, available on the PCT website.
5.2.1
UK case law
As mentioned above, sources of UK case law are decisions by the IPO itself, as well as court decisions resulting from appeals from IPO decisions or actions brought directly at court. The IPO, of course, makes decisions on the grant or refusal of patent applications but also on issues of entitlement to an application or patent or its validity, as well as questions of infringement (although the latter procedure is rarely used). The IPO provides non-binding opinions at the request of patent holders or third parties regarding the validity and/or infringement of patents. Decisions resulting from all of these activities of the IPO can be found on the IPO website (see section 5.8). As set out in chapter 4, decisions of the IPO are appealable to the Patent Court (part of the Chancery Division of the High Court) and, in turn, these decisions can be appealed further to the Court of Appeal and ultimately the Supreme Court (formerly the House of Lords). Decisions of the High Court and the higher courts hearing appeals from the High Court are binding on the IPO. Often, the IPO will set out their understanding of how the binding court decisions affect practice in so called ‘Practice Notes’ published in the IPO Official Journal and also available on the IPO website. As set out in chapter 4, the High Court will hear both appeals from IPO decisions, as well as being the first instance for inter-party disputes relating to patents, if they are not dealt with by the IPO (or Patents County Court if the value in dispute is limited). For example, the High Court hears cases relating to the entitlement, validity and/or infringement of UK patents. Where the High Court has acted as first instance, decisions can be appealed to the Court of Appeal as of right. From the point of view of sources of information the High Court is bound by previous decisions of the Court of Appeal, which in turn is bound by its own previous decisions. The final instance of appeal is the Supreme Court and decisions by the Supreme Court bind all lower courts (but not itself). Generally speaking, a decision of a higher court is binding upon a lower court which is why Supreme Court decisions are so important. If the essentials of a latter case are the same as those of an earlier case, a court will generally follow a decision at its own level, and must follow a decision at a higher level. This hierarchy of binding decision (or ‘precedent’) can seem rigid and unlikely to evolve with changing circumstances over time but it is later judges, not the original ones, that decide what the essentials of a case are that need to be followed. This binding part of a decision is known as the ratio decidendi, that is the reasons underlining the decision given the facts. Thus, a judgement will contain statements which define the decision and this constitutes the binding ratio decidendi. The judgement Patents Training Manual: Volume 1
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may further contain other remarks which do not directly influence the outcome of the case and such remarks are called obiter dictum, or obiter for short, which are not binding but may well be persuasive in later cases. Thus, it is necessary to define what the ratio decidendi of a decision is in order to apply its effect as a precedent to subsequent decisions. This is established by judges in the later cases and can often be an important point of argument made in support for or against a case. A further possibility for flexibility allowing the case law to develop is that a previous decision may be ‘distinguished on the facts’, which means that a judge (or barrister arguing this newer case) will argue that an earlier decision was specific to the facts of that particular case and does not, therefore, apply to a later case with differing facts. It can thus be seen that it is important not to consider any one court decision (with exception, maybe, of decisions by the Supreme Court), in isolation but to also check how this decision has been applied later on by subsequent decisions. Of course, it is very important to check that a later decision of a higher court has not been reversed or overturned an earlier decision later on. It is, therefore, often helpful to use textbooks as discussed in later sections as a starting point for an analysis of the case law. It is equally important to read the decision in question and make up one’s own mind as to what general principles can be extracted from it. In the end, if the case laws get too distanced from the reality, legislators may get involved, rewriting the law and, thus, ‘re-setting the clock’. In practical terms, decisions of all UK courts are published on several websites (listed at 5.8) and are also made available by publications such as the ‘Reports of Patent Cases’ (RPC) and other case reports which may be available in your firm’s library or from commercial case law databases. These case law reports also provide brief summaries in the form of ‘head notes’ for each reported case, which reflect the understanding of what was important about the case by the person writing up the head notes. Therefore, while head notes can provide a useful summary of what a case may be about, it is important that a case is studied in full, at least to address important questions since issues relevant to the specific question at hand may well be hidden inside the decision and not have been picked up in the head notes. From the above brief discussion, it will be clear that a thorough treatment of the rules of precedent in the UK courts and the interpretation of the corresponding decisions are beyond the scope of this manual and the reader is referred to numerous works addressing this very question. A good starting point for specific questions may be the textbooks discussed below (see 5.5), but a discussion of the general approach can be found in books on the interpretation of case law, such as the short book Learning the Law by Glenville Williams. Finally, discussion of individual decisions and trends in case law can be found in more general periodicals, such as the European Intellectual Property Review (EIPR) and the CIPA Journal, where current cases are discussed.
5.2.2
EPO case law
As in the UK, the EPO makes decisions regarding the grant of patent applications at first instance and provides for appeal of these decisions. However, the system of case law at the EPO has many differences to the system in the UK. Firstly, there is only a single instance of appeal, the EPO Boards of Appeal, with no further instance of appeal being available (although a further instance in the case of a substantial procedural violation or criminal behaviour on the part of the Board of Appeal was being introduced in the EPC 2000, from December 2007). Although a more senior type of Appeal Board exists (the Enlarged Board of Appeal) there is no provision for a direct appeal to the Enlarged Board of Appeal. Rather, the Enlarged Board of Appeal issues decision or opinions on points of law when a Board of Appeal considers that it would reach a decision which diverge from existing practice or when the President of the EPO finds that different of Boards of Appeal have reached conflicting conclusions and refers corresponding questions to the Enlarged Board of Appeal. The Enlarged Board of Appeal can also be petitioned to review serious cases of misconduct in Board of Appeal proceedings. The most important difference is, for current purposes, that the Boards of Appeal of the EPO operate
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in the continental tradition of written law such that the Board of Appeal decisions are not strictly speaking binding on the Examining Divisions (or Opposition Divisions for post-grant proceedings) other than the one involved in a particular case, or indeed other Boards of Appeal. This is in stark contrast to the strict system of precedent under English common law. The underlying theory is that the Board of Appeal decisions merely interpret the words of the European Patent Convention and do not in themselves create new law. Even the Enlarged Boards of Appeal decisions are not binding on the Board of Appeal or Examining/ Opposition Divisions with the exception that a specific Board of Appeal is bound by the Enlarged Board of Appeal decision regarding a question which the specific Board of Appeal has referred to the Enlarged Board of Appeal. In spite of the differences outlined above, consistent lines of decisions of the Boards of Appeal or, at the next level up, an Enlarged Board of Appeal decision will have very strong persuasive value coming close to the binding character of precedence under common law. Nevertheless, it may always be worth considering arguing against existing EPO case law if an alternative interpretation seems possible and the matter is important enough to justify the expense. As mentioned above, the role of the EPO case law is seen to provide an interpretation of the law as it is expressed in the EPC from the outset. In this spirit, a further help to interpreting a point of law (which in some cases may even not have been addressed before) is to consult the French and/or German version of the relevant provisions to see if they can clarify the point. A last resort if even this does not provide a clear interpretation is to consult the ‘Travaux Preparatoire’ of the Munich conference which founded the EPC. Of course, some questions may simply not have a clear answer, yet. Where a particular interpretation of a point has become established as a result of consistent rulings of the Boards of Appeal or an Enlarged Board of Appeal decision, the EPO will reflect this in the Guidelines for Examination (see 5.3.1), which do not have any legal effect in themselves, but may be more persuasive than isolated Boards of Appeal decisions since they generally reflect the EPO’s understanding of what the current interpretation of the EPC is. Further, the EPO produces a digest of the case law of the Boards of Appeal (see the web links, 5.8) and publishes an annual review of the Board of Appeal case law in a supplement to the October issue of the EPO Official Journal. Further, the individual decisions considered to be important by the Board of Appeal are published in the Official Journal together with a set of head-notes (the same comments as made above regarding the use of head-notes applies, as sometimes head-notes may not reflect the full information available in a case and may even lead to the wrong conclusion on very specific questions). All Board of Appeal decisions are accessible via the EPO website which provides a search interface allowing all cases to be searched by their reference number (see below) as well as keywords. However, decisions which have not been published in the Official Journal will only be available in the official language of the application or patent in question, that is such decisions may only be available in the German or French language. There exist five different types of Boards of Appeal, one of which is the Enlarged Board of Appeal mentioned above: • •
•
The decisions of the Enlarged Board of Appeal can be recognised by their reference numbers which start with a G. They may be referred to as ‘G-decisions’, colloquially. For legal questions such as the compliance with the procedural provisions for filing an application, claiming priority or recording a transfer, decisions at first instance are generally taken by the Receiving Section or Legal Division of the EPO and the corresponding appeals are heard by a Legal Board of Appeal, whose decisions are identified by their reference numbers which start with a J. Decisions taken by the Examining or Opposition Divisions of the EPO are appealed to the Technical Board of Appeal (identified by their reference number starting with a T), which often deal with substantive issues such as novelty or inventive step. However, legal issues may well come up in decisions made by the Examining or Opposition Divisions and therefore T (and of course G) decisions may well deal with such points, as well. Patents Training Manual: Volume 1
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Of minor importance for day-to-day practice may be the decisions of the Disciplinary Boards of Appeal (identified by reference numbers starting with a D) which deals with questions of professional conduct but also with appeals against the results of the European Qualifying Examination. Finally, the Boards of Appeal are also empowered to deal with appeals resulting from the EPO acting as International Searching Authority in questions of non-unity and these decisions can be identified by their reference numbers which start with a W.
Before continuing to the next section dealing with patent office publications supplementing legislation and case law, it may be worthwhile taking a look at the search interface for Board of Appeal decisions provided by the EPO (see the web links, 5.8 below) to get a feel for the different kind of topics addressed by T, D, J and W decisions as well as the kind of questions answered by the Enlarged Boards of Appeal in G-decisions (you could try random reference numbers for the different kinds of decisions or use the wild card operators provided by the search interface to search only for J-decisions, for example).
5.3 Patent Office publications 5.3.1
Practice guides
The EPO Guidelines For Examination have already been briefly discussed above but to recap, this publication sets out the EPO’s view of the interpretation of and practice under the European Patent Convention and its Implementing Regulations and is used by the Examiners as a guide to examination procedure. A similar publication, the Manual of Patent Practice, also exists at the IPO. Neither of these publications is legally binding in itself, that is, strictly speaking an Examining Division or an examiner cannot be held to comply with the Guidelines or Manual although it will generally follow it. On the flip side, the Guidelines or Manual do not provide legal basis for a rejection by the EPO or IPO even though EPO Examiners will often be happy to use the Guidelines in this way regardless. For example, there is a prohibition against double patenting in the Guidelines (Part C, Chapter IV, 6.4), for which there is no legal basis anywhere in the EPC, although this is now an active topic of discussion before the Boards of Appeal. Similarly, while the UK Manual of Patent Practice makes it clear in its preface that its contents may not be used as legal basis for an objection by the Examiner, some Examiners may nevertheless be tempted to use the manual in that way, in particular where no other legal basis exists. One such example may be the use of multiple independent claims in the same category (for example multiple method claims), which is discouraged by the Code of Practice forming part of the Manual of Patent Practice but not prohibited as such. It can thus be seen that, while these practice guides should not be taken as legal basis as such, they can still be a useful basis or at least a starting point for persuasive argument in any legal analysis, at least at the EPO. Regarding the PCT, the PCT Applicant’s Guide is the practice manual relating to PCT procedure and it is also available both in paper form and online. The Applicants’ Guide is written as a series of questions regarding the procedure and this format may sometimes make it difficult to find the required information such that the availability of a full text searchable online version can be a great help. However, the Applicant’s Guide comes with a useful index. The Applicants’ Guide consist of two parts, a first part relating to the procedure for filing until the end of the International phase and a second part relating to the national phase of a PCT application. It also provides numerous appendices with information from each patent office of the member state in its function as a receiving office or designated or elected office. As these may change frequently, it is particularly advisable to check the online version to ensure that the latest update is consulted. It is important to remember the fact that the Applicants’ Guide and, in particular its appendixes, are for reference only and that it cannot be considered safe to rely solely on the information from the PCT
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contracting states provided in the relevant appendixes to advise a client, for example regarding the national phase in one of the PCT countries. In case of the national phase in the UK or the regional phase before the EPO, the relevant UKPA and EPC provisions should be consulted directly, whilst for other countries the advice of a foreign associate may be necessary in order to ensure that correct legal advice is given to the client.
5.3.2
Official journals
The IPO publishes an official journal, the Official Journal (Patents), in which it lists such information as the bibliographic details of published applications and granted patents, applications for amendments and other procedural information as well as information which the office wishes to disseminate, for example, practice notes setting out changes and practices in light of recent court decisions. Whilst the bibliographic information may often be accessed more easily using the online register provided by the IPO on their website and practice notes are listed in a separate section of the website, it may still be worthwhile to familiarise oneself with the content of the official journal for future reference (the journal itself is provided online on the IPO website). The EPO Official Journal has been briefly mentioned above (5.2.2) in relation to the publication of Board of Appeal decisions deemed to be of interest, but it contains additional information such as decisions of the President of the EPO or the Administrative Council changing or augmenting the provisions of the EPC or Implementing Regulations. Further information includes changes in the official fees charged by the EPO, the dates on which the EPO is closed and information from the contracting states when there is a change in national law relating to the EPC. Much of this information is summarised each year in the Ancillary Regulations book published by the EPO and also the EPO publication ‘Case Law Relating To The EPC’, published both in paper form and online. However, for up-to-date information it is nevertheless recommended that the Official Journal is at least scanned each month to determine whether there is any information which needs to be followed up further. The EPO also publishes bibliographic details relating to patent applications and patents (during the opposition period) in the EPO Bulletin which is available both in paper form and online. Regarding the PCT, the PCT Gazette publishes bibliographic details of published PCT applications as well as decisions regarding PCT procedure by WIPO and other information, such as the closed days of the receiving offices and the International Bureau in Geneva. Unfortunately, this resource is not easily searched but the availability of a search interface for published PCT applications on the PCT website and the PCT Applicants’ Guide, which refers to relevant information in the Gazette, somewhat mitigates this.
5.4 Other legal texts The discussion above has been focused on the UKPA, EPC and PCT as sources of law for the relevant procedures and substantive provisions but other legal texts will also influence many aspects of our practice. For example, regarding contracts relating to patents or questions of ownership, the common law regarding aspects of contract law and property law will be important for such interactions but it is beyond of the scope of this chapter to discuss any of these in detail. Other UK statutes may well also be relevant. One example is the Civil Aviation Act 2006, which contains provisions in relation to patent infringement on visiting aircraft and the Copyright, Designs and Patents Act 1988 (CDPA), which contains provisions relating to the title ‘patent attorney’ and provisions regarding professional privilege (e.g. within Part V.). Since one always operates within the general framework of civil law, it is always important not to take an overly narrow view and to always be aware of other legal provisions which may affect the advice given to a client. As part of the European Union, the UK is bound by the ‘Acquis Communitaire’, the combined body Patents Training Manual: Volume 1
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of EU law which includes treaties and regulations (which are directly binding on national governments) and directives (which national governments are bound to translate into national law). Obvious examples in the intellectual property arena are the regulations and directives harmonising design and trade mark law and enforcement of patents. Whilst an awareness of these legal texts is very advantageous, even if one’s daily practice is not concerned with trade marks or designs, a detailed discussion again goes beyond the scope of this chapter and the reader may want to consult other resources dealing with trade marks and designs, for example, the relevant ITMA and CIPA training manuals. However, there are some elements of EU law which may affect the advice given to the client in relation to patents, notably the Treaty of Rome (the founding treaty of the European Community), which deals with aspects of competition law which may affect the licensing and assignment of patents and the Brussels Treaty, which deals with the jurisdictions in which legal proceedings can be brought as a function of the parties’ nationality and residence. We have already encountered inter-governmental treaties in the form of the EPC and the PCT above but other such treaties may also be relevant, if not to daily practice, then at least for some fundamental aspects of patent law. Probably the most important example of these is the Paris Convention administered by WIPO which regulates the framework for claiming priority. While the framework for claiming priority under the EPC and the UKPA is formulated independently of the Paris Convention, the UK and all member states of the EPC are also members of the Paris Convention. Members are bound to comply with its provisions, such that the Paris Convention may be an additional useful reference source when researching questions relating to priority and, ultimately, the provisions of the UKPA / EPC. Most notably, the PCT does not provide its own priority provisions but simply refers to the relevant article of the Paris Convention. A further important International Treaty is ‘Trade Related Aspects of Intellectual Property’ (TRIPS) which is binding on all World Trade Organisation (WTO) member states (which probably includes all countries likely to be of commercial interest). TRIPS addresses fundamental provisions about many aspects of patent law ranging from patentability to compulsory licensing. The national law of all WTO members should comply with these provisions (although it may not necessarily be so). A good resource combining many legal texts relevant to intellectual property in one volume is Blackstone’s Statutes on Intellectual Property edited by Andrew Christie and Stephen Gore, which may well merit investment in an up-to-date copy.
5.5 Other sources In addition to the official sources of information discussed above, other sources may provide useful information and discussion. In particular, the journals of the European Patent Institute (EPI) and CIPA provide discussion of current topics. For example, CIPA provides a monthly review of current UK Court and IPO proceedings case law as well as monthly discussions of EPO Board of Appeal decisions. As a (student) member of these organisations, you should receive these journals as part of your membership subscriptions. The EPO also publishes a useful text, National Laws of the EPC Countries, containing tabulated information concerning topics such as national validation and foreign filing permit requirements. Annotated versions of the UKPA and EPC have been briefly mentioned above. While these texts are invaluable tools in preparing for the UK and European Qualifying Examinations, they will also provide useful information in daily practice and may in particular form a useful starting point for further research. Regarding the UK, the Guide to the Patents Act (the ‘Black Book’) is published by CIPA and organised by the sections of the UKPA with each section followed by the relevant rules and commentary including a discussion of relevant case law. Regarding the EPC, the ‘Annotated EPC’ by Dirk Visser separately
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discusses the articles of the EPC and the implementing regulations (cross-referenced with each other) and the relevant case law and other provisions in a fairly readable format. References to the EPC by Jelle Hoekstra is more similar in organisation to the Black Book and provides a brief listing of resources including one line summaries of case law for the relevant EPC provisions, as well as further reference material in a ring binder format. This is more of a desktop reference than a guide which can be read front to back. With all of these texts, it is important to note that they cannot replace study of the primary sources, in particular in preparation for the relevant examinations, and may contain errors. It is always up to the individual attorney to check the accuracy of the advice given to the client and it is generally not considered safe to solely rely on information obtained from these annotated legal texts. Last but not least, other, more ad hoc, sources of information will be available to use. One good example, in particular for overseas law are newsletters and other publications which you and your firm may receive from foreign associated firms, legal updates and discussions circulated within your firm, e-mail bulletins, blogs and alerts such as IPKat and MIPweek and, of course, face time with your trainer and others (e.g. patent administrators) to discuss any issues which may arise.
5.6 Managing information As should be clear by now, there is a multitude of separate sources of legal information which is not only extensive but changes over time. An efficient system for dealing with all this information is, therefore, important. Clearly, it is most important to ensure that all legal texts used are current and up-to-date and one way to ensure this is to put together a good collection of web bookmarks to the relevant legal texts on the official patent office websites, as these should be updated most frequently. The website addresses set out at the end of this chapter may provide a starting point. Much of the informal information discussed above, such as a firm’s internal circulation and newsletters from associated firms, are received in the form of e-mails. By simply storing these e-mails in a designated folder, you can use your e-mail program to perform a full text search for any keywords for a particular topic of information you are looking for. This could provide a very simple and efficient way of setting up a simple ‘information database’. Similarly, if you write yourself notes on particular topics you researched and keep them in electronic form (or keep electronic forms of client advice you have provided), this can also be stored in a designated folder making it easy to access information using a full text search. For the technically minded, it may be possible to set up a relational database to organise the information you research but this may be a lot of work. A simple paper-based alternative may be to keep notes in a card index which could be stored by sections of the UKPA or articles of the EPC. Finally, an efficient method of accumulating information is to annotate the legal texts themselves with any information obtained, which also provides an efficient way of preparing for the relevant examinations. For the less ambitious, try and read everything that comes your way – don’t attempt to remember in detail – just note that there is something to think about and where you need to look if it ever comes up.
5.7 Prior art and status databases The focus of this chapter is on sources of legal information but for completeness it should be mentioned briefly that many resources are available for searching the state of the art for free, for example the EPO’s Espacenet facility or the USPTO website, both of which are listed in the web links on page 99. A detailed discussion of patent searching is beyond the scope of this chapter but briefly, it is important to distinguish between prior art (patentability or validity) searches and infringements (or freedom to
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operate) searches. A prior art search will specifically look for disclosures in the public domain (patents, applications and otherwise) dating before the priority date of the application/patent in question or to date in the case of a new filing. An infringement search will look for granted patents that are in force and will be more concerned with the claims than with the actual disclosure of the patents. In practice, clients often ask if, before preparing a patent application, you can carry out a prior art search. This is a valid request but you need to find out why they asked you to do it. Often clients, especially less experienced ones, think that you must do a search before you file a patent application and you need to explain that this is not the case. You also need to explain that there are two kinds of search, as outlined above. These types of search are entirely separate and you need assess with the client which, if any, they actually want. Turning firstly to patentability searches, the client needs to understand that whatever searches you do, the patent offices will nonetheless do their own searches and so there may be duplication of costs. In addition they need to understand that the ‘best’ outcome of a patentability search is that you will find prior art so relevant that it is not worth filing a patent application – in other words it is a negative result they will get. They need to understand the costs involved in such a search and also that it will, inevitably, slow down the filing process. Having said all that, your client does not want to invest lots of money in preparing and filing a patent application only to discover that they are, as it were, reinventing the wheel. As a result, one possible approach is to suggest that they themselves look at the likely sources of background information from their own knowledge of the field or, if they are not knowledgeable, look online using the resources discussed in this chapter. If they do want to invest in searching then there are some further comments below. In the case of infringement searching, the situation is similar. The question the client needs to be asking is: ‘when I finally market my product are there any IP rights that will get in its way?’ Bear in mind that when the product is marketed then any aspect of it (not necessarily just the bit you are trying to patent) may fall foul of a third-party patent. This is one of the reasons that the infringement search is so very different from a patentability search. Another point to bear in mind is that, in an infringement search, you are looking for any valid granted patent whose claims might cover any aspect of the eventual product to be marketed. This means that a full infringement search is extremely difficult to do and cannot be presented with absolute certainty either because you cannot guarantee that you have found all relevant patents or because even if you have, the question of whether a product infringes a claim is seldom 100% clear cut. Yet further, you need to be absolutely sure that you know exactly what the product is in relation to which you are considering infringement as often whether or not a product infringes can come down to a matter of detail, not the general concept of the product. Accordingly, if either type of search is needed then you need to discuss with your trainer whether you have the relevant resources and expertise within your organisation. For example, in many firms, you will be able to do some basic searching using classification codes, applicant or patentee names and inventor names, or possibly key words. However, you may not have the expertise to perform a search of the accuracy and exhaustiveness of a patent office or a specialist search organisation. This may have insurance repercussions and, if you do not have the relevant expertise, then you should consider carefully whether you should outsource the search to a specialist outfit. If you do that, then you need to make sure that your instructions are entirely clear as to whether you are interested in validity or infringement, as to exactly what the product/invention is that they are searching for, what cost the client is willing to incur, and any timescales that they may have. In the case of infringement searches, you also need to think very carefully about the jurisdictions of interest and remember, for example, that a pending application can be of significant relevance, if it is subsequently going to go to grant and that for many jurisdictions, you need to look at two or three different patent systems to make sure that you catch everything that affects them – for example in the UK you would need to look at granted UK patents whether granted by the IPO or the EPO and pending UK, EP and PCT applications. You may also consider, when setting up an infringement search strategy, merely concentrating on the known
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competitors of your client. This will not find all relevant patents, but may find patents which would be most likely to be enforced by third parties with a view to obtaining an injunction. Your client may be comfortable with this approach on the basis that non-competitors are more likely to seek, if anything, a reasonable royalty. However, you need to rely on the client’s own understanding of their market as to whether this is an appropriate strategy or not. It is often not practical or efficient to carry out large search projects in-house and, therefore, such searches will often be outsourced to specialised firms of searchers. However, due to the low rate at which your (trainee) time is charged to the client, it can often be effective for you to carry out small and simple searches (for example, looking for patents or application by identified competitors). This is an efficient way in which even very new trainees can usefully contribute to the services offered by their firm. Sometimes it may be necessary to research the legal status of a patent or application (e.g. if a patent is still in force) and this can be done using the online registers provided by the EPO and the IPO. In addition, the EPO provides an online file inspection in which all documents on the public file of an application or patent can be accessed over the internet. Online file or register inspections are also available from other patent offices, for example the USPTO and the German Patent Office. However, as European attorneys or UK patent attorneys, we are not qualified to advise on the law in these countries and it would, hence, be advisable to seek local advice if a definite answer regarding the status of an application in these countries is required. However, as long as the limitations of the inspection of such electronic databases is made clear to the client, a quick check on electronic databases provided by national patent offices may be a very cost effective way to get an initial idea of the status of an international patent portfolio.
5.8 Web links and references 5.8.1
Websites
You may wish to add these to favorites on your web browsers but be prepared to keep these up to date if you encounter changes. EPO • Home page: www.epo.org • European Patent Convention: 1973: www.epo.org/patents/law/legal-texts/html/epc/1973/e/ma1.html 2000: www.epo.org/patents/law/legal-texts/html/epc/2000/e/contents.html • Case Law of the Boards of Appeal (Fifth edition 2006): www.epo.org/patents/appeals/case-law.htm • Guidelines for Examination in the EPO: www.european-patent-office.org/legal/guiex/e/index.htm • Guide for Applicants: Part I www.european-patent-office.org/legal/guiapp1/e/ga_a_v.htm Part II http://legis.obi.gr/ESPACEDVD/legal_texts/guiapp2/en/ga_a_3.htm • Board of Appeal search interface: www.epo.org/patents/appeals.html • Official Journal: www.epo.org/patents/law/legal-texts/journal.html • EPO Academy (online learning modules): www.epo.org/about-us/office/academy.html IPO • Home page: www.ipo.gov.uk • Patents Act 1977 (consolidated but not authoritative): www.ipo.gov.uk/patentsact1977.pdf • The Patents Rules 2007: www.ipo.gov.uk/patentrules2007.pdf • Manual of Patent Practice: www.ipo.gov.uk/pro-types/pro-patent/p-law/p-manual/p-manual-practice.htm • Patents and Designs Journal: www.ipo.gov.uk/patent/p-journal/p-pdj.htm
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UK Case Law • UK court service: www.hmcourts-service.gov.uk • British and Irish Legal Information Institute: www.bailii.org • British library patents collection: www.bl.uk/reshelp/findhelprestype/patents PCT (WIPO) • Home page: www.wipo.int/portal/index.html.en • Patent Cooperation Treaty and Rules: www.wipo.int/pct/en/texts • PCT Applicant’s Guide: www.wipo.int/pct/guide/en • PCT Training Seminar Materials: www.wipo.int/pct/en/seminar Prior art searching • Esp@cenet: http://gb.espacenet.com • USPTO: www.uspto.gov/patft Patent registers • Register plus: https://register.epoline.org/espacenet/regviewer • IPO Patent Search page: www.ipo.gov.uk/patent/p-find/p-find-number.htm • PCT online file inspection: www.wipo.int/pctdb/en • PAIR (USPTO): http://portal.uspto.gov/external/portal/pair Additional sources • • •
Patent Information Users Group: www.piug.org IPKat (interesting IP blog): http://ipkitten.blogspot.com MIP Week (weekly IP periodical): www.managingip.com
5.8.2 • • • • • •
Printed texts
Adams, S.R., 2006. Information sources in patents. Munich: K.G. Saur Cornish, William, Cases and Materials on Intellectual Property. Andover: Sweet and Maxwell CIPA. CIPA Guide to the Patents Acts (The ‘Black Book’). Andover: Sweet & Maxwell Hoekstra, Jelle. References to the EPC. Eindhoven: Hoekstra. Available to order at www.hoekstradoc.nl Visser, Derk. The Annotated European Patent Convention: Veldhoven: H. Tel Williams, Glanville L., (2006) Learning the Law. Andover: Sweet & Maxwell
Date of publication has not been given in each case, as texts are regularly updated. Please ensure that you use the most recent edition.
Test your knowledge 1. List the three most important sources of legal information for questions under UK practice or before the EPO in order of importance. 2. In which order would you consult these? Would you consider an alternative starting point? If so which? 3. Find Board Appeal decision J 28/03 on the internet. Which department of the EPO has issued the decision under appeal in this case?
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4. A divisional application can only be filed on a pending application (Rule 36 EPC), that is one which has not yet been refused (or granted or lapsed). Your client wants to know if he can be sure to validly file a divisional application which has been refused and for which an appeal against a decision to refuse is pending. Based only on the head notes of J 28/03, what would your answer be assuming that the deadline triggered by a communication from the examining division has not yet expired? 5. Now look at point 6, 10 and 15 of the reasons of J 28/03 and the Official Journal Notice of OJ 2002, 112 referred to in point 6 of J 28/03, what would the answer be now? 6. At the IPO and EPO, can you potentially get a patent on a known compound for a new medical use? Hint: look at UKPA section 2(6) and EPC (Article 54(5)) and the corresponding sections of the Practice Manuals. 7. How (if at all) would your answer change for a new non-medical use? Hint: look at G2/88 (from the EPO website), Adhesive Dry Mounting v Trapp (1910 27 RPC 341) and Merrel Dow v Norton (1996 3 RPC 76), point 10 at page 91.
Suggested chapter answers and comments 1. Given the supremacy of Parliament (the UKPA being the result of an Act of Parliament) in the UK and what has been said above on the role of case law before the EPO (interpreting the EPC to clarify the law as it always has been rather than creating new law) the most important and authoritative source of legal information is the legislation itself such as the UKPA, EPC or PCT. We rank second the sources which are intended to interpret the legislation, i.e. case law. It is of course very important how the legal provisions of legislation and case law are applied in practice and, therefore, the third most important source of legal information is to be considered patent office publications such as Practice Manuals and Official Notices published in the official journals. 2. This is a question to which there seems to be not a single, right answer, as different ways of approaching a question of legal research may work better or worse depending on the person doing the research. However, our suggestion is to start with the practical view taken by the Patent Officers, that is the Practice Manual such as the Guidelines for Examination or the Manual of Patent Practice and to then follow up the information gained by reading the relevant sections or articles of the legislations and accompanying rules and checking for relevant case law. An alternative may be to start with one of the reference books mentioned above to provide a quick answer and/or overview and to follow up by studying the legislation, case law and patent office publications as appropriate. As mentioned previously, it is important, however, not to rely on these reference works when advising clients but to form your own view directly from the primary text. 3. The Board of Appeal decision J28/03 can be found on the EPO web site, Board of Appeal search interface, by entering J_0028/03 in the search box. Looking at point VI of the summary of the facts and submissions, the decision under appeal was issued by the receiving section. As discussed above, appeals from decisions of the receiving section or legal division are heard by a legal board of appeal and the corresponding decisions have a reference starting with a ‘J’. 4. Reading the head note, whether a divisional application was validly filed while an appeal of a decision to grant a patent is pending depends on the outcome of that appeal. Does this also apply to a divisional application filed against a decision to refuse an application, as in the question? The first paragraph of the head note states that filing an appeal does not have the effect of cancelling the Patents Training Manual: Volume 1
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appeal decision but rather means that the consequences following from an appeal decision do not immediately occur after the decision has been taken such that actions ‘taking place after a decision are “frozen’’’. Thus, a quick reading of the head note would suggest that the client cannot be assured that the divisional application can be validly filed as this would appear to depend on the outcome of the appeal. 5. This and the previous question, in fact, underline the need to be careful not to rely on the head notes of a decision alone. In the present case, the decision makes it clear at points 6, 10 and15 that the exception mentioned in the Official Journal Notice, that is that a divisional application can be validly filed whilst an appeal from refusal is pending, independent of the outcome of the appeal, is not meant to be affected by the decision. Therefore, in actual fact, the answer to the client should be that he is most likely to validly file the divisional application (of course, a later decision of the receiving section may take a different view but with the Official Journal Notice and Board of Appeal decision in our support, it would be safe to say that the arguments are stacked in our favour). 6. Looking at the provisions quoted in the question, this makes it clear that a known substance or composition (comprised in the state of the art) shall not be excluded from patentability for lack of novelty for use in a method of treatment of the human or animal body by therapy, that is for medical use, as long as the use of the substance or composition in any such method is not known. Thus, a known substance for use in medicine for the first time is considered novel and, therefore, potentially patentable. In fact, the same applies to second and subsequent medical uses as long as the specific use is novel (see the manual of Patent and Practice on section 2(6) and the Guidelines for Examination at the EPO Part C, Chapter IV, 9.7). If you have the time it may be a good idea to look at the decisions referred to in these sections of the Practice Manual. Incidentally, in the EPC the exception is extended explicitly to second and further medical uses in section 54(5). 7. Dealing first with the EPO, having read G 2/88, your answer should be that a new non-medical use can confer novelty to a claim to a substance for this new non-medical use. This is often referred to as ‘novelty of purpose’. The situation in the UK is more complicated since several decisions have made it clear that approach taken in G2/88 is at variance and inconsistent with the law of infringement in the UK. However, at the same time, section 2 UKPA, dealing with novelty is one of the sections of the Patent Act which should be interpreted in line with the EPC, in accordance with section 130 UKPA and, accordingly, UK judges often will tend to adopt the same interpretation as the Enlarged Board of Appeal of the EPO. As a result of this situation, judges to date, whilst disapproving of the ‘novelty of purpose’ approach in G 2/88, have stayed clear of actually issuing a decision which contradicts this case in its radio decidendi. Of the two decisions cited, Adhesive Dry Mountings v Trapp sets out that a novel purpose does not confer novelty on a product, although it should be noted that this case has been decided under the old (1949) UK Patents Act. However, as mentioned above, this approach is still the preferred approach in the UK. An example of this can be found in the House of Lord decision in Merrel Dow v Norton and, in particular, in point 10 at page 91 of the RPC where LJ Hoffmann disapproves of G 2/88. However, the judge also makes it clear that these comments do not effect the outcome of this case in question such that they are obiter dictum and, therefore, do not have precedent effect (although, as a House of Lord’s decision, these comments will probably have high persuasive value). Summarising, it would appear safe to say that it is highly unlikely that a claim which has mere novelty of purpose outside the medical use exemption discussed in the answer to question 6 could be obtained in the UK, although the point is not finally settled with absolute certainty. For a further discussion, look at section 2.13 of the CIPA Guide to the Patent Act (the ‘Black Book’).
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Chapter review In this chapter we have discussed legislation (including the UKPA (an Act of Parliament) and the EPC (an example of an intergovernmental agreement)) as the primary source of legal information. These mostly set out general principles. Details are provided for in respective Rules and Implementing Regulations. We have seen that this allows these details to be changed more easily. Even considering primary legislation together with Rules or Implementing Regulations, many questions will remain open to interpretation and guidance can be found in the case law of UK courts or the EPO Boards of Appeal as applicable. The patent offices (IPO, EPO) will generally set out their understanding of the answers provided by the case law to important questions in their Practice Guides and/or individual Notices in the respective official journals. Since the Practice Guides act as the Examiner’s work manual, they can often be a very useful day-to-day reference. Finally, alternative sources of information as such as publications of professional institutes and reference books, as well as ways to manage information, have been discussed and prior art databases and sources of status information for patents and patent applications have been very briefly considered at the end of the chapter.
Further study For further study, it is suggested that you become intimately familiar with the structure of the UKPA, EPC and PCT, as well as the relevant Practice Guidelines issued by the IPO, EPO and WIPO, respectively. Of course, this is a long-term process which is, however, invaluable both in daily practice as well as in preparation for the respective qualifying examinations. The reference books discussed in 5.5 should help with this. Similarly, it is a good idea to maintain up-to-date familiarity with current case law by following circulations within your firm and also periodicals providing case law summary and discussion, for example as provided in the CIPA Journal. To illustrate the content of this chapter, some aspects of substantive patent law have been mentioned such as aspects of claiming priority. These will be discussed in great detail in the remainder of this manual, in particular chapters 6, 7 and 8. Finally, it was necessary to review the legislative structure under which case law arises to provide context. This topic is discussed in more detail in chapter 4: Legislative Structure.
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Patentability: general issues
Outline This module aims to introduce you to the three key criteria of patentability, with particular reference to novelty and inventive step. These criteria are common to most worldwide patent systems, but, in this chapter, particular emphasis is paid to the requirements of the UK Patents Act (UKPA), the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), with reference to the situation in the US where appropriate contrasts can be made.
Learning plan Prerequisites: To complete this module you will need to have read: • Sections 1 to 4 of the UKPA and the associated commentary from the CIPA Guide to the Patents Act. • EPC Articles 52-57 and commentary from the Guidelines for Examination in the European Patent Office (EPO), particularly Part C.IV and the annex to C.IV. Legal documents: • Windsurfing v Tabur Marine [1985] R.P.C. 59 • The General Tire & Rubber Co v The Firestone Tyre & Rubber Co & Ors [1970] RPC 457 • Asahi’s Application [1991] RPC 485 (CA) • Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33 • G1/92 • G 2/99 Trainer’s input: As part of this module, the trainer is expected to provide examples of the initial documents provided by prospective inventors to describe the inventions that they wish to protect. It is important to discuss what issues the trainee should be considering as they consider the proposed invention. Consider discussing other considerations that may be used to support inventive step arguments. Further experience that is likely to be useful is exposure to prosecution of applications on a day to day basis. In particular analysis of search reports – Are the documents disclosed relevant for novelty or inventive step? Are they co-pending applications? – and analysis of examination reports (How has the examiner structured the novelty and inventive step attacks? Is their assessment correct? What features are available to try and distinguish the invention from the prior art?). UK Exams: P1 and P5 EQEs: Papers A, B, C and D Time allocated: One to two days. Syllabus link:
Learning outcomes By the end of this chapter you will have knowledge of the main criteria required for a patentable invention and you will have developed skills which will allow you to question whether an invention fulfils these requirements. Patents Training Manual: Volume 1
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6.1 Introduction As an introduction to the requirements for patentability, we will consider the UK Patents Act 2004 (UKPA); however the requirements under the EPC and PCT are very similar. Where relevant, contrasts with the situation under US law will be made. There are a few significant differences in the US that you need to be aware of in order to be able to make decisions on the best filing strategy (see chapter 12) or to advise your client appropriately. Section 1(1) of the UKPA sets the scene on the requirements for an invention to be considered patentable and in particular that an invention must be: (a) new; (b) involve an inventive step; (c) be capable of industrial application; and (d) not be excluded (see chapter 7). Article 54(1) EPC is similar. In this chapter, we will be discussing each of these requirements individually, establishing the background and experience against which each of these items are assessed and considering any additional factors to be taken into account in order to determine whether or not these requirements are fulfilled. In general, when assessing an invention, either as a prelude to filing or in response to an examination report that has been issued, your main considerations will be with respect to novelty and inventive step, so inevitably this will be where this chapter will be focused. However, before we consider what novelty or inventive step means, first we need to identify what we are comparing the invention with, namely what makes up the ‘state of the art’. It is from this starting point of the state of the art that the novelty of the invention is assessed and without novelty an invention cannot be considered inventive. Once we have identified that the proposed invention is novel we need to create the hypothetical ‘person of skill in the art’. It is from this vantage point that the inventive step of the proposed invention will be considered, in light of ‘common general knowledge’. If you have been able to identify that an invention is both novel and inventive, the next consideration that will be dealt with in this chapter is whether the invention has industrial applicability. Whilst it may appear that this is a simple determination to make, there is a variety of factors that will need to be considered. Finally, the possibility that an invention falls within one of the exceptions to patentability will be discussed. These are covered in more detail in the next chapter.
6.2 Novelty 6.2.1
The state of the art
The state of the art is defined as being that which has been made available to the public by anyone including the inventor and, in particular, that which has been made available prior to the filing date (or priority date) of the invention in question. This is often termed ‘the prior art’. In order for the earlier disclosure to be novelty destroying it must be demonstrated that it is identical to the invention in question. All of the elements must be present in one disclosure; it is not possible to combine disclosures to find an invention non-novel. Furthermore, the earlier disclosure must be identical to the claimed invention; any differences between the earlier disclosure and the presently claimed invention, no matter how minor, will make the invention novel. For example, if a prior art disclosure recites an engine management technique applied specifically to a two-stroke engine, it is enough for novelty to claim the same technique for a four-stroke engine. Similarly, a single amino acid change in a
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protein sequence between the claimed sequence and that of the earlier disclosure will make the claimed sequence novel. Where differences occur, then the assessment is one of inventive step, not novelty. Under UK law and the EPC, an invention may be made available to the public by any means, including: (a) written disclosures; (b) oral disclosures; and (c) public use, e.g. demonstration or sale. Each of these means of disclosure will be discussed further below, but it must be borne in mind that although the means of disclosure may be via any mechanism, it is important that this mechanism makes the information publicly available. Therefore, where a disclosure takes place under obligations of confidentiality, whether express or implied, that disclosure has not been ‘made available to the public’. The easiest way, therefore, to ensure that any disclosure made by the inventors themselves cannot be considered to be novelty destroying to a later filing, is to ensure that it is made under a confidentiality agreement, and this is the most common means by which a disclosure is protected. It should be noted though that confidentiality may be implied by the means under which a disclosure occurs, even in the absence of an explicit confidentiality agreement. This type of situation may arise where the disclosure takes part during a negotiation, where it would be expected that confidentiality would be observed, or where both parties would be considered to be working together to a common goal. For example, in discussions where one company is seeking to find a marketing partner for a new product, both parties have an incentive to maintain confidentiality. The flip side to this consideration is that provided that a single member of the public has been able to access the document, view the public use or hear the oral disclosure then this is enough to satisfy the ‘made available to the public’ requirement. It is not significant how extensive the disclosure is in terms of the audience it has, or could have reached. In order for something to be considered to have been made available to the public, a single disclosure to a single person under no confidentiality restrictions will be sufficient. This will be discussed further in relation to each of the various types of disclosure below. Written disclosures Written disclosures are the most common form of prior art that may be cited against your application in prosecution and these are also the easiest disclosures to search for when performing your initial patentability checks. These disclosures may be in any form, for example, patent applications, scientific references, websites or promotional materials. It is worth considering that this list is not exhaustive by any means and any form of written disclosure is relevant, provided that it is publicly available. It might be worth discussing with your trainer the most unusual items of written prior art that they have seen cited in a prosecution. When considering whether a document has been made available to the public it should be noted that the age, language or location of the disclosure is not relevant to its utility as a novelty destroying reference. A document is just as relevant to the consideration of novelty if it is a single copy of a PhD thesis in the library archive of a university in Uruguay or if it is a publication in Nature. Provided that a member of the public could have access to the reference should he or she so choose, then it has been made available to the public and it may be a novelty destroying disclosure. Patent applications which are unpublished at the filing or priority date of the application in question form a particular type of prior art that is discussed in more detail later on in this chapter. Oral disclosures Oral disclosures are equally valid as prior art to an invention. The challenge here is that you need to be able to accurately and convincingly ascertain the content of an oral disclosure. Typical examples of oral disclosures are lectures or presentations at scientific or other conferences. If these are cited in litigation, Patents Training Manual: Volume 1
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a common example of which is during an opposition procedure at the EPO, it is usual to expect witnesses to testify as to the content of the original disclosure. The issue of an oral disclosure may crop up suddenly requiring short notice filing, particularly when your client (or colleague) suddenly informs you about their plans to present their latest results or the next product at a conference providing you with only days (or hours) before it is due to take place. If you work in-house, it will be useful to familiarise yourself with the publication approval policy that is currently operating. If there isn’t one in place you should strongly recommend instigating one. These systems are never foolproof, but if the inventors become used to the idea that any external presentations or other disclosures need to be approved by the IP department then it increases your chances of having an early warning of these events. Nevertheless, it is fortunate that a disclosure on the same day as your priority or filing date is not relevant for the assessment of the patentability of the invention. Provided that your application is filed somewhere prior to or on the day the disclosure was made then you will avoid it being a novelty destroying disclosure. Public use Finally, an invention may be rendered non-novel by virtue of a public use, for example by demonstration of the invention, or sale. In Windsurfing v Tabur Marine1 (discussed in more detail later on in this chapter with respect to inventive step) it was found that the use of a windsurfing board by a boy during the summer break was novelty destroying. The use was in public and there was a video recording of the use made by a fellow holiday maker. There was nothing to prevent a member of the public examining the board during the use in question and seeing how it worked, therefore, the public use was sufficient to be novelty destroying for the application in question. This finding was made despite the fact that there had only been one period of use during one summer ten years previously. It should be noted that the actual sail board in question when at rest differed from the claimed sail board in having straight rather than arcuate booms, but it was found that the booms were sufficiently flexible that when they were in use they would assume the same shape as the claimed booms and thus were novelty destroying.
6.2.2
Enabling and implicit disclosures
Once you have established that a disclosure has been made available to the public, the nature of the disclosure needs to be considered. Disclosures that do not enable a person of skill in the art to replicate or perform the invention are not novelty destroying, and contrarily, disclosures may be novelty destroying even if they do not explicitly state the final end result. Enabling nature of a disclosure In order for a disclosure to be novelty destroying, it must be ‘enabling’, in other words, it must provide all the information required for someone to duplicate the disclosure. This was confirmed in Asahi’s Application2 where it was held that a prior disclosure was only novelty destroying if it conveys sufficient information for the invention to be reproduced from the total content of that prior disclosure when this was reviewed by a person skilled in the relevant art and understood by him in the light of his common general knowledge at the time. As an example, the mere disclosure of a chemical structure with no synthetic details of how it should be made, where the synthetic route is not straight forward, would not be considered to be an enabling disclosure and, thus, would not be novelty destroying. Similarly, if a mechanism was implemented in a ‘black box’ such that only the input or output was visible, then a claim for the internal workings would be novel. However, in the main part the onus will be on the applicant to demonstrate that the earlier disclosure is not enabling. Implicit disclosure The other side of the enablement consideration is that a disclosure of a method may be novelty destroying to the resulting product of that method, for example, a composition claim, even if it does
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not explicitly state the end product. If the claimed product is the inevitable result of performing the claimed method, then it will be novelty destroying. The inevitable result of a method is considered to be an implicit feature even if it is not explicitly disclosed. This can be demonstrated using the counterpart to the example discussed above. If an earlier disclosure describes a synthetic method, and following that synthetic method leads to a single chemical entity, then that method will be novelty destroying for that chemical entity as it is the inevitable result of the method claimed. If there is any ambiguity in the means by which the method may be performed and/or the method may lead to more than one chemical entity, then it is no longer novelty destroying. This has been confirmed in General Tire.3 In this case, General Tire had filed a patent relating to a method for the production of rubber that resulted in a product with improved properties. In particular, the General Tire patent taught that in order to achieve a product with the appropriate properties, it was required to use minimal mastication in the mixing process. They sought to assert this patent against the defendant who counterclaimed that the patent was invalid for lack of novelty. One of the citations relied upon by the defendants suggested employing generally similar starting ingredients, however, as regarded processing, it described two methods, one describing mixing in the ‘usual way’, the second referred to being worked up in the ‘usual manner’. The novelty attack failed because this document did not clearly teach mixing with minimal mastication. The usual way of carrying out these instructions (both at the date of citation and the date of the patent) would have been with conventional mastication. The fact that a person of skill in the art may have found in practice that if he had carried out the prior art process, he could have obtained adequate mixing with minimal mastication, was not enough for the disclosure to be considered as novelty destroying. In the absence of an explicit instruction to use minimal mastication, the claimed product was not the inevitable result of using the prior art method. Additionally, a substance is implicitly disclosed if you are able to identify its components, regardless of whether or not you would be motivated to try to do so. This was the conclusion of the Enlarged Board of Appeal at the EPO in G1/92. In this situation, the substance in question was a chemical which could be analysed to determine its composition. However, a similar consideration applies to a mechanical device from which you can readily determine its workings. It will be an implicit rather than an explicit disclosure of the details of the invention and this is a novelty destroying disclosure regardless of whether the person of skill in the art would have been particularly motivated to try and analyse it further.
6.2.3
Co-pending applications – section 2(3) UKPA 2004, Article 54(3)EPC
When you are seeking to protect your invention via a patent application, other co-pending patent applications which have a priority date earlier than that of your invention will also form part of the state of the art. Where the earlier patent application has published prior to your filing or priority date (if appropriate), the earlier patent application will be considered in the same way as any other written disclosure. However, where the earlier application was filed prior to the filing or priority date of your invention, but was published after your filing/priority date, and is in the same jurisdiction the earlier filing forms part of the state of the art for the assessment of novelty only. This system is intended to prevent two patents being granted for the same subject-matter, as, where the subject-matter is identical, the first application will be novelty destroying for the second. The time line below shows a hypothetical example of this situation:
Priority Date Invention A
PCT Date Invention A
Publication Date Invention A
Filing Date Invention B
01.01.2007
01.01.2008
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Therefore, patent A is relevant for the assessment of novelty only against patent B because it was filed but not published on the priority date of patent B When considering a document that falls into this category, it should be noted that the earlier application is only relevant to the extent that the matter that overlaps was contained in both the application as filed and the application as published, therefore: (a) any matter that was present in the priority document but was later deleted in the regular filing (PCT filing for invention A in the example above) will not be considered to have been ‘published’ and thus will not be considered for the assessment of novelty; and (b) any matter included in the publication but not included in the filing that pre-dates the application of interest is not entitled to that earlier date (see the discussion of priority in chapter 13) and equally will not be novelty destroying for the later application. Therefore, in the example above, any matter included for the first time by applicant A in the PCT filing for invention A, will not be entitled to claim the benefit of the priority filing for invention A and thus will not be relevant to the consideration of the novelty of invention B. Of further consideration is that prior rights are territorial. Section 2(3) only applies where the earlier application is or was co-pending in the UK either via a UK application, via a PCT(GB) application or via an EP(GB) application. If the earlier application was filed in the US only, but does not have a UK counterpart it will not be novelty destroying. Similarly, where an earlier application was filed via the PCT but it has not progressed into the national phase in the UK, then the application has no effect in the UK and it is not a novelty destroying reference. Historically, there was also a requirement for EP(GB) applications to have had the designation fee for the UK paid in order for them to be a novelty destroying disclosure. This requirement was officially abolished when the UK Patents Act 2004 came into effect, partly to reflect the amendments that are in the new EPC 2000. Therefore, every EP application, once published, can be considered as part of the state of the art under section 2(3) without any further requirements. Where the relevant applications were filed under the old law, then it may still be a factor to be considered. Similarly, Article 54(3) EPC only takes into account EP applications although provision is made for amendment of EP application per designated state if there is a colliding national application, as otherwise the EP could be invalidated subsequently for that state.
6.2.4
Exceptions to the state of the art
There are a couple of limited circumstances under which a disclosure will not form part of the state of the art for the consideration of the patentability of an invention. International exhibitions If the inventor displays the invention at a recognised ‘International Exhibition’ then this disclosure will not be considered part of the state of the art provided that, within six months of the exhibition, they file a UK application stating that the invention was so disclosed and provide, within four months of the filing date, evidence to support this statement. This is an extremely narrow exception as the International Exhibition must be one of those listed in accordance with the Convention on International Exhibitions. In general, there are very few qualifying exhibitions, usually less than four per year worldwide. The EPO publish a list of qualifying exhibitions which may be checked if there is a possibility that a disclosure will fall into this category. Unauthorised disclosures Where a disclosure occurs in breach of confidentiality or by a person who obtained the information unlawfully, then this disclosure will also not be considered to form part of the state of the art, if an
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application is filed within six months of the disclosure. This exception is designed to protect someone from unlawful actions by a third party; this is not a grace period provision in hiding. Importantly, it may not be enough to file an application in one state within this time period and later claim priority elsewhere relying on the exception – you need to check country by country not only whether this exception is recognised but whether a national filing is required in that country within the six months, rather than relying on a priority claim. In particular, a decision from the Enlarged Board of Appeal at the EPO (G 2/99) has clarified that in Europe at least the six month deadline is until the filing date of the European application and not to the priority date of the European application. In practice, due to the requirement to file your patent application within six months of the disclosure, unless you are carefully monitoring this area, or you are otherwise notified of the disclosure, it is very easy for this six month period to slip by without being aware of the unlawful disclosure and once this time period has expired the inventor has no ability to protect his invention.
6.2.5
Exceptions to absolute novelty
In the UK, novelty is an absolute consideration. As is discussed above any disclosure which forms part of the state of the art, anywhere in the world, will be novelty destroying for a UK application. However, it should be noted that some countries do not apply this absolute novelty assessment and the alternatives are discussed below: Relative novelty In some countries, the novelty standard applied is ‘relative’ rather than absolute. This means that although printed publications anywhere in the world are novelty destroying, public use is only novelty destroying if it is local. Of particular relevance here is the US where the ‘state of the art’ does not include anything disclosed by means of public use outside the US. Local novelty More rarely countries may choose to use a local novelty assessment; this means that only local written publications or prior use will be considered novelty destroying. New Zealand is an example of a country that applies this requirement and therefore, if an invention has been disclosed in the US and Europe but not in New Zealand then it may still be possible to obtain a patent here, if you can satisfy the other patentability requirements. Grace periods Finally, some territories offer a grace period, when disclosures are made during a specified period (usually six or 12 months) prior to the priority date or filing date of an application. The most important of these countries is the US, where a disclosure (where disclosure is defined as for the relative novelty provision discussed above) made up to 12 months prior to the filing date of the application in question does not form part of the state of the art. Other countries which offer a grace period are: (i) Canada: 12 months (ii) Japan: 6 months (iii) Brazil: 12 months (iv) Mexico: 12 months This would be a good opportunity for you to discuss these exceptions to novelty with your trainer and see if there are any relevant cases which they have seen which demonstrate where these exceptions to absolute novelty have been applied. Patents Training Manual: Volume 1
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Specific novelty considerations
Selection inventions Before we leave the discussion of novelty, it would be useful to make a few comments about selection inventions – which occur principally in the chemical field. These are inventions where the prior art discloses a broad scope and the invention relates solely to a narrower scope encompassed by the broad scope. Whilst it is a generally applicable rule that a specific disclosure will destroy the novelty of a broad claim (e.g. a disclosure of copper would be novelty destroying for metals in general), the converse situation is that a specific invention may be patentable over a broad disclosure. These types of invention are most commonly found in: (i) chemical applications, e.g. where the prior art discloses that R1 may be selected from a wide range of groups, and the present invention relates to a particular advantage (e.g. increased solubility) which is associated with a narrow subset of these groups; or (ii) methods / processes, e.g. where the prior art discloses that a particular method may be carried out at between 1-200 °C, but the present invention has identified that if it is carried out between 175-195 °C a greatly improved yield may be obtained. In order for these types of invention to be considered patentable, the selection must be purposive, not merely different from the prior art. Therefore, all members of the new selection must provide the advantage claimed. Use inventions Again in the chemical field where a composition is already known from the prior art, it may be possible to claim a novel use of that composition. This can often be seen applied to medical use applications, where a second medical use of a new compound may be protected. Rapamycin may be used as an example. Rapamycin is a naturally occurring compound which was isolated from a species of Streptomyces bacteria. The original composition of matter protection was filed in 1974, as the first disclosure of this compound, which was found to have potential use as an anti-fungal agent. Some years later it was discovered that rapamycin also had immunosuppressant activity and a further patent relating to its use as an immunosuppressant was filed in 1995. The newly amended section 4A of the UKPA details the protection that is offered in particular for new medical uses of a known composition. However, it has been upheld in decisions before the EPO that this type of protection should not merely be limited to second or further medical uses of known compositions, it should equally apply to second or further non-medical uses of known compositions. The new use, be it medical or non-medical, must satisfy the usual patentability requirements, namely that it is novel and inventive. It should be remembered, though, when considering your new invention, that an earlier disclosure of a compound will not prevent a later filing to a specific use of this compound being patentable. This is relevant as a back-up position for your chemistry series, should your series turn out to be non-novel.
6.3 Inventive step Now that it has been identified that the invention is novel over the state of the art, it must be determined whether or not the invention contains an inventive step. As stated above, co-pending applications under section 2(3) UKPA 2004/Article 54(3)EPC are not relevant for the assessment of inventive step. Where there is no teaching in the art with respect to the subject-matter of the invention, then this will be an easy matter to resolve; however, the situation is very rarely this straight forward. The usual situation is that there is a disclosure which is relevant to the application (although not identical) and then
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it must be considered whether the step from the prior art disclosure to the invention in question is one that required an inventive input, or whether it represented mere routine experimentation or the next logical step. Despite all the efforts of the legislation, this is essentially a subjective test which the authorities have done their best to objectify. Different countries have come up with different approaches, although all with a similar theme of looking for advantages/improvements of the invention and reasons why the skilled person got there from the prior art. From the UK perspective in order to determine whether there is an inventive step, the court identified in Windsurfing v Tabur Marine4 the following set of steps that should be taken: (i) identify the inventive concept embodied in the patent; (ii) assume the mantle of the normally skilled but unimaginative addressee, imputing to him what was common general knowledge in the art at the priority date; (iii) identify what, if any, differences exist between the matter cited and the alleged invention; and (iv) deciding, without knowledge of the alleged invention, whether these differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. As these questions were first formulated in the Windsurfing v Tabur Marine case, this case will be used as appropriate to exemplify these concepts further. Background to Windsurfing The patent in suit claimed a sailboard which was a wind-propelled vehicle containing a Bermuda rig and a wishbone spar, where the unstayed sail was then used to steer the vehicle. Putting to one side for these purposes the prior use which was held to be novelty destroying as discussed above, the prior art publication considered for the assessment of inventive step was an article which described a sailboard with a square-rigged sail.
6.3.1
Identify the inventive concept in the patent
This must be the first step in any inventive step consideration; until you have identified the contribution that the invention makes to the state of the art, you cannot consider whether that contribution is inventive. With respect to the Windsurfing case, the inventive step was held to be the free-sail concept, i.e. the choice of spar and rig which allowed the sail to freely move around and, thus, it could be used to steer the sail board. The sailboard described in the prior art had a square-rigged sail.
6.3.2. The person of skill in the art The next task is to establish the background, knowledge and skills of a person of skill in the art at the time that the application was filed. The aim here is to avoid any hindsight considerations with respect to assessment of inventive step. The term ‘a person of skill in the art’ is not defined specifically but clues to the background and skills of this hypothetical person may be found in case law. In particular, a person of skill in the art is deemed to have ‘common general knowledge’ of the field in question. Common general knowledge is considered to comprise techniques and methods standard in the field, and may also include the contents of standard text books. Unless there is a specific reason otherwise, common general knowledge is not considered to include information from patent applications or other highly specialised disclosures. A specific reason to include these documents might be that the field is so new that this would be the first point of reference. When considering the common general knowledge held by a person of skill in the art, it should also be noted that prejudices common to the field in question may also be considered to be held by a person Patents Training Manual: Volume 1
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of skill in the art. Therefore, where popular opinion in a particular field would discount a particular option that was nevertheless available to a person of skill in the art, then a person of skill in the art may be considered to be similarly prejudiced against this option. When considering what areas the person of skill in the art may be familiar with, it may be necessary to make the hypothetical person into a team of people. For example where the invention relates to the development of a drug, the person of skill in the art may be considered to be a multi-disciplinary team of biologists, chemists and pharmacologists. Most importantly, a person of skill in the art is able to carry out routine experimentation, but they are considered to be devoid of any inventive capability. This renders the person of skill in the art a highly artificial concept – a person who has all the knowledge without the creative spark. The aim is to create and then use the hypothetical person of skill in the art as a tool to establish what was known and standard in the relevant field at the time the invention was made. Once this has been achieved, this is used as the starting point to consider whether the contribution identified in the step described in 6.3.1 above actually involved an inventive step. In Windsurfing v Tabur Marine it was held that a person of skill in the art would be aware of the various rigs available. Particularly, they would be aware of the differences between a square and Bermuda rig, and what the advantages and disadvantages of both rigs would be. They would be aware that the square rig was less manoeuvrable and furthermore, they would also have been aware of wishbone booms.
6.3.3
Identify the differences between the state of the art and the invention
At this stage, we have identified that the invention is novel as discussed in 6.2 above and, therefore, that there must be differences between the state of the art and the invention claimed. Where the invention uses alternatives to the features of the claimed invention that are known in the art to be equivalent, these are still sufficient to render the invention novel. For example, the invention may relate to furniture and claim chairs where the legs are made of oak. A disclosure of chairs to the same design with legs made of walnut would not be novelty destroying, as there is a difference between the types of wood, but if they are accepted as equivalent options then would be expected to result in a finding of lack of inventive step. Essentially, the differences between the claimed invention and the prior art may be trivial, but this will be enough to impart novelty to the claims. In Windsurfing, as mentioned above in the background, the difference between the claimed invention and the prior art publication was the use of a Bermuda rig and a wishbone boom instead of a square rig with a crossed spar.
6.3.4
Decide whether these differences constitute an inventive step
The last step is really the nub of the determination and unfortunately there is no easy way to determine how this will be answered. In Windsurfing it was found that the invention was obvious because a person of skill in the art would have understood the advantages of the Bermuda rig over the square rig, as these were already known in the art at the time. Therefore, starting from the sailboard in the prior art publication and knowing the problems with this sailboard, they would have appreciated that these problems could be overcome by the use of a Bermuda rig and if a Bermuda rig was substituted for the square rig then a wishbone boom rather than a crossed spar would be required. It is worth noting, (and explored further in chapter 17: Prosecution through to grant), that although this Court-formulated test applies equally before the IPO, the manner in which inventive step is argued there may take a slightly less rigorous line. At 6.3.6 below, we identify various considerations that may be taken into account when trying to assess whether a particular development is inventive over the prior art. Unfortunately, this is often a subjective area and the outcome of any deliberation will depend on the exact circumstances of the prior art disclosure and the perspective of the person considering the invention.
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The ‘problem-solution’ approach
Before considering particular arguments that may be used to support or argue against inventive step, however, it is useful to consider the method used by the EPO to assess inventive step. In general, you are likely to find yourself arguing for inventive step before the EPO more often than before the IPO, therefore, it is important that you are aware of the problem-solution approach and how to apply it effectively. It differs slightly from the four-step process described on page 113, but various similarities are apparent. The process is described below using the Windsurfing case as an example. (a) First you identify the closest prior art, this may be art in the same technical field, art which solves a common problem, etc… This would be the printed publication (b) Then you determine the differences between the prior art and the invention The differences are the use of a Bermuda rig and wishbone spar rather than a square rig and crossed spar (c) Next you determine the technical effects because of the differences In this instance the use of the Bermuda rig improves the manoeuvrability of the sailboard (d) Formulate the ‘objective technical problem’ which is solved by the claimed invention The problem to be solved is to find a method to improve the manoeuvrability of a sailboard (e) Identify whether the prior art together with the common general knowledge of the skilled person contains an indication of how to solve the technical problem In this case a person of skill in the art was aware of a Bermuda rig and the advantages it offered. They were aware that the problem to be solved was to improve the manoeuvrability of the sail board and that using a Bermuda rig would accomplish this. Therefore, it would be well within the ability of a person of skill in the art to apply their common general knowledge to the prior art document and arrive at the claimed invention.
6.3.6
Further considerations and arguments for inventive step
The step by step approaches from the UK courts and the EPO discussed above are useful in establishing the background to your invention. Where there is a clear indication of whether or not the claimed invention is obvious over the prior art no further considerations may be necessary. However, in the majority of situations there are arguments both for and against the inventive step of an invention, depending on the direction from which you are approaching it. In these situations it is useful to be aware of additional arguments that may be used to assess the inventive step of an invention. Could v would approach This consideration is particularly appropriate where the invention in question is a close modification of the prior art, but a number of options were available to a person of skill in the art, none of which were particularly more favoured than another. In this situation, it is possible to argue that although a person of skill in the art could have made the invention, they would not have been motivated to do so. Many options are possible from each step in a research program, following all the available options is often not a feasible option, therefore, the choice of direction, where that direction leads to success, can be considered to be an inventive contribution. For example: the established process in the art for the production of compound A may have low efficiency. It is obvious to all in the area that an improved process would be desirable, but there may be 20-30 independent variables that may be altered. If each of these independent variables could have an effect on the process, some positive and some negative the number of possible combinations of conditions is immense. Although a person of skill in the art could try every combination of changes to see whether this was able to improve the efficiency, in the absence of any teaching of the appropriate modifications to make, it can be argued that they would not have been motivated to do so.
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Reasonable expectation of success? This is in some ways an extension of the arguments discussed above. Where the invention is a simple development of the prior art disclosure, it can be easy to suppose, with hindsight, that it was an obvious modification. However, this is often not the case and it can sometimes be demonstrated that a particular invention is inventive by showing that a person of skill in the art would not have contemplated making the invention claimed with a reasonable expectation of success. For example, the difference between the compound disclosed in the prior art and the compound claimed in the present invention may be a small modification to one of the side chains of the molecule. A medicinal chemist is well aware of the effects that can be expected to result from changes to a particular molecule and is also aware that small changes can have huge effects on the activity of a compound. Therefore, where it can be demonstrated that a person of skill in the art would have attempted that modification with a reasonable expectation that it would be successful, then it may be argued that the invention is obvious. In contrast, however, where it was unpredictable what the exact effect of a modification might be, then even a small change in structure may demonstrate the presence of an inventive step. Additionally, there may be teaching in the prior art that indicates that a particular direction is not favoured. Where there is explicit teaching in the prior art against the invention, or an accepted prejudice in the prior art, success against this prejudice may contribute to the inventive step of the claims. Routine experimentation The balance of the ‘could v would’ or ‘reasonable expectation of success’ arguments is that where the invention arises via mere routine development of the existing prior art, or as a result of a direction suggested by the prior art, it may be argued that there is no inventive step present. For example, the prior art may discuss the same problem as faced by the proposed invention and suggests two alternatives for the solution of this problem. If the proposed invention has adopted one of these solutions and found it to be successful, it is unlikely to be considered to involve an inventive step. Commercial success / long felt need The UK courts have felt that it is reasonable to expect that where an invention is particularly successful commercially, there may have been an inventive step that contributed towards its development, although this needs to be carefully distinguished from, say, good marketing. Similarly, where there has been a gap in the market for a significant period of time which is then filled by the invention in question, it can be argued that the fact that this gap / need existed for so long, with no suitable solutions being provided, implies that the invention in question must involve an inventive step. In a related vein, where there is a long gap between the prior art cited and the provision of the invention, it can also be argued that there may have been an inventive step, as if the development of the invention was so obvious, why was it not done earlier?
6.4 Industrial application The final criterion that will be considered in this chapter is that of industrial application. In order for an invention to be considered patentable, it must be demonstrated that it has a real world use. As will be discussed further in chapter 7, mere discoveries or abstract ideas are excluded from patent protection. For example, an application relating to gravity, as a concept, would not be patentable. However, an application related a method for generating power via the action of gravity acting on water to pull it through a water wheel would be patentable. In the most part, it is easy to identify an industrial application for an invention that has been brought
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to you by your client. After all, most applications are filed to protect products that the applicant wishes to sell, or methods/services that may be exploited for commercial gain. However, it is important where not self-evident that an industrial application for the invention is specified in the application as filed. If the invention is new and inventive, provided that one use is disclosed, this will be sufficient to allow composition of matter protection to the invention itself. Using an example referred to previously, rapamycin was originally found to have use as an anti-fungal compound and on this basis composition of matter claims to rapamycin per se were granted. Where an invention is described, but a use of the invention is not provided in the application, then it does not satisfy the requirements set out in the act and a patent cannot be granted. Following on from this, where a use for the invention is present in the application as filed, but is not present in the priority application, the invention may not be entitled to claim the benefit of the priority date from the earlier application Of particular relevance in this aspect are inventions relating to gene or protein sequences. With the advances in biotechnology, mass sequencing of genes and proteins has become more common and huge numbers of applications were filed relating to these sequences. Once it has been established that the sequence(s) in question are novel and inventive, their industrial applicability is then assessed. For those applications which disclose sequences with no specific use, and, in particular, no substantiated use, it is considered that these sequences have no industrial applicability and, therefore, the patent will be refused. For some of these early applications, a long list of potential uses was disclosed, with the assumption that at least one would prove to be true. However, this strategy has run into problems and if the proposed use is not substantiated to the extent that a person of skill in the art would find it credible, then it is still held not to be supported in the application as filed. This is also of relevance when considering if the invention is sufficiently enabled (this is discussed in chapter 8). A recent decision on this subject has been issued in the form of Eli Lilly v HGS5. In this case, it was held at the Court of Appeal that the disclosure of a ‘laundry list’ of potential (and contradictory) uses for the gene in the application as filed, together with contemporaneous and post-published evidence showing identification of a concrete use was not routine, amounted to a lack of industrial application for the sequence. This is a particularly interesting case to review, as the EPO Boards of Appeal came to the opposition decision on the same case in opposition proceedings. Another well-known example, at a rather simpler level, is the perpetual motion machine. It is physically impossible and so cannot be industrially applied. The purpose of the disclosure of the industrial application – when it is not self-evident from the description – is to enable a person of skill in the art to practise the invention that you claim. It cannot be expected that they need to try a myriad of potential uses before they find one that works. This requirement is discussed further in chapter 8. Therefore, where an invention has a number of uses you only need to disclose one that works, you don’t need to disclose them all. The problem is where an invention has a number of potential uses, only one of which is actually effective. If evidence needs to be supplied during the prosecution of the application to identify which one of the disclosed uses is the applicable use, it may be held that the actual invention was not made until the industrial application had been specified. Until the actual use was identified from the list of possible uses, it is merely a discovery and not an invention. The use does not necessarily have to be one that will result in commercial success or gain. You do not have to demonstrate that your invention will be profitable; merely that it can be used. The final issue that is important, here, is that the use must be a true use of the invention. Although industrial application problems seldom arise with non-impossible mechanical inventions, and it is usually not necessary to explicitly state the industrial applicability as it is self-evident, contradictory or misleading statements should be avoided. Claiming that your mechanical device could be used as a door stop is not providing a real use of the invention, and thus this would not satisfy the industrial
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applicability requirement. To go back to the biotechnology example discussed above, in some of the early sequence-related filings, uses of the sequences in highly general applications – e.g. for the protein as a food supplement, or for the DNA as a marker in gel electrophoresis – was held not to be a specific use of the invention. In the US they describe this as requiring a specific, credible use and whilst this language has not been formally adopted in the UK or at the EPO as a standard for determining industrial applicability, it should be borne in mind when considering the invention in hand.
Work-based examples Scenario 1: A client calls from a conference where he has just finished presenting some of his most recent results. He wants to know if there is anywhere that he could still file a patent on these results. Under these circumstances the questions that you should be considering include: (a) When exactly was the disclosure, and what did it say – if there is any chance that the disclosure was brief, non-enabling and didn’t render the invention obvious, then there is a possibility that you can argue that invention is novel and inventive over the disclosure e.g. if it was a slide stating – ‘it is possible to make an active enzyme X inhibitor’ or ‘the laser power increased by a factor of 10’ – provided no structure of the inhibitor was given, or methods to make the inhibitor described or that the structure or operation of the laser were not provided, then it may not be an issue. (b) What was the conference and check if it is on the International Exhibitions list. If it was then you have six months to file the application. NB: if you want to pursue protection broader than just UK it should be an EP rather than a UK application that is filed and it should not then be used as a priority document for a later application. (c) Does he have a copy of his results (e.g. a draft of a paper) that he can e-mail to you for filing online today? Disclosures on the priority date are not relevant for the assessment of novelty or inventive step (d) If all else fails, protection may still be obtained in: (i) countries with a grace period (US, JP, CA, MX, BR); (ii) countries with a local novelty provision (provided the conference was not in that country); and (iii) if it was just an oral presentation – countries with a relative novelty provision, provided the conference was not in that country. Scenario 2: Your Head of Research has identified that the compound series that they have been working on in diabetes since 2000 (composition of matter application filed in 2001), may also have use in the treatment of schizophrenia. He wants to know what his options are to protect this use. Provided that there have been no disclosures related to the use of these compounds, or similar compounds, in schizophrenia or other related psychiatric conditions, it should be possible to file a new application related to the second medical use of these compounds in schizophrenia. A new application related to this new use should be filed prior to any disclosure related to this new use by any of the scientists. Scenario 3: A client brings a new disclosure to you; it is an apparatus for filling milk bottles and sealing them with a foil cap. The essence of the invention lies in the integration of the foil capping section into the machine; other systems have two separate machines. In 2004, a publication was published stating that for correct sealing it was necessary to have the two functions separated to
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avoid overheating the milk. The two elements of the machine are essentially the same as the separate machines already known in the prior art. In this situation, because of the publication in 2004, there is evidence that there was a prejudice against combining the two elements together in one apparatus. Where there is teaching away from the invention in question, this may be used to support a claim for the inventive step. In this instance, a person of skill in the art would not have a reasonable expectation that a combined machine would be successful. It is important to ensure that any claims incorporate this limitation, as the individual components are likely not to be inventive. The inventive contribution made will be the use of the two elements together in one machine. Scenario 4: Your inventors have identified a sequence from a new cell line that they have been isolating. The sequence is novel and has no specific homologues in sequence databases. They have not yet identified specific uses for this sequence; however, based on its similarity to known receptors, they predict that it will be expressed on the surface of cells. They have suggested that this putative receptor could be targeted to decrease the number of these cells, although they do not yet know what effect this might have. They would like to file a patent application to this sequence. In this situation, your inventors have identified a sequence that appears to be novel and may well be inventive; however they have failed to identify a specific industrial application of this sequence. Any filing which is lacking an industrial application will not be granted. The industrial application needs to be specific to the invention claimed, i.e. it cannot be one that would apply to any DNA sequence or to any protein sequence. It is likely that the identification of the sequence would be considered as a discovery and, thus, the starting point of a research program rather than an end invention. The inventors need to identify the appropriate use for the sequence and then file.
Test your knowledge 1. What requirements does a written disclosure have to fulfil in order for it to be considered novelty destroying to a UK application? 2. How does your answer to 1) above change if the written disclosure is a patent application covering: (a) UK (b) PCT (c)
US
3. What is meant by the term ‘relative novelty’? 4. What characteristics does a ‘person of skill in the art’ possess? 5. There is a disclosure of the invention on the 1 June 2007, by when must the application be filed in the following countries? (assume direct filing) (a) UK (b) EP (c)
USA
(d) Japan 6. What is meant by the ‘problem-solution approach’? Patents Training Manual: Volume 1
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Suggested chapter answers and comments 1. In order for it to be novelty destroying, the written disclosure must be: (i) published prior to the priority date; (ii) disclose the invention, or a species falling within the scope of the invention; (iii) be an enabling disclosure. 2. The application must have been either published prior to the priority or filing date (in which case it is normal prior art) and in which case the answer is the same as for 1); or (a) For a UK application filed prior to the priority or filing date but published later it is prior art under section 2(3). Under these circumstances ii) and iii) as described for question 1 above must still be fulfilled but the invention must have been disclosed and enabled in the application and in the application as published. (b) For a PCT application, the answer mirrors that for a) above with the additional requirement that the application must have entered the UK national phase (via UK direct or EP(UK). (c) For a US application (assuming no related UK/EP counterparts), if it is unpublished at the priority/filing date it does not form part of the state of the art. 3. Worldwide written disclosures and local prior use 4. Aware of ‘common general knowledge’ but has no inventive capacity. May be a team of people where the invention relates to a number of different areas. 5. (a) 1 June 2007 (b) 1 June 2007
(c) 1 June 2008 (d) 1 December 2007
6. This is the process used by the EPO to assess the inventive step of an application. Effectively, it comprises identifying the problem that the claimed invention solves, and then questioning whether there was any teaching in the prior art when considered by a person of skill in the art to lead to the claimed invention.
Chapter review After reading through this chapter you should now be aware of the main criteria for an invention to be patentable and of how to assess a potential invention against the prior art. In particular: 1. You should be able to identify if a disclosure forms part of the state of the art 2. You should be aware of how to treat a co-pending application with respect to novelty and inventive step 3. You should be aware of the requirements for a disclosure to be novelty destroying 4. You should be aware of methods to identify whether a prior art disclosure is relevant to the inventive step of an application 5. You should be aware of the requirements for industrial application and how these are applied in practice
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Further study In order to fully appreciate the relevance of a document with respect to novelty and inventive step it is important that you understand how dates are ascribed to different aspects of an invention depending on the disclosure present in the priority document(s). Priority is discussed in more detail in chapter 13 and it is recommended that you read this in combination with the present chapter. The best way to appreciate how the patentability requirements are applied in practice is to read case law and to look at examples as they come in. To that end, it is suggested that you read, in particular, the cases referred to in this chapter and that you ask your trainer to discuss examination reports with you as they come in, in particular, those where the references are co-pending applications or other nonwritten prior art references. Finally, it would be useful to cover with your trainer how you discuss these requirements with your clients and, in particular, how to handle the difficult situation when you believe that the invention your client wishes to claim does not fulfil the requirements for patentability.
Notes and references 1. Windsurfing International Inc. v Tabur Marine Great Britain Ltd. [1985] RPC 59 2. Asahi Kasei Kogyo KK’s Application [1991] RPC 485 3. General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Ltd. [1972] 457 4. ibid Windsurfing International Inc. v Tabur Marine Great Britain Ltd. [1985] RPC 59 5. Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33
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Patentability: specific issues
Outline In order for an invention to be patentable, there are four requirements that it needs to fulfil. As discussed in chapter 6, it must be novel, involve an inventive step and be susceptible of industrial application. However, it must also not be otherwise barred from patent protection. This chapter discusses the exclusions to patentability, i.e. those things that are not considered to be inventions, and the exceptions to patentability, i.e. those inventions that are not allowed patent protection. These exclusions and exceptions are discussed mainly from the IPO and EPO perspective, but contrasts with the situation in the US will be made as appropriate.
Learning plan Prerequisites: The trainee must have first read: • •
Sections 1, 4A and 76A and Schedule A2 of the UK Patents Act (UKPA) and the accompanying commentary in the ‘Black Book’ Articles 52 and 53 and Rules 23b-e of the European Patent Convention and the associated sections from the Guidelines for Examination in the EPO (Part C.IV-2 to 3).
Legal documents: • • • •
Practice notes from the IPO related to methods of doing business and patentable subject-matter Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan’s Application [2006] EWCA Civ 1371 T0315/03 (Oncomouse®) G 1/83 (which provides the basis for the ‘Swiss-type’ second medical use claims).
Trainer’s input: As this can be a highly subjective area, it would be useful for the trainer to discuss with the trainee any cases that they have dealt with where the examiner has raised any objections relating to exclusions or exceptions from patentability. Additionally, more specific discussions on the software / biotechnology aspects of this section may be appropriate, depending on the field of the trainee.
Syllabus link:
UK Exams: P1 and P5 EQEs: Papers A, C and D
Time allocated: One day.
Learning outcomes By the end of this chapter you will have knowledge of the exceptions and exclusions to patentability. You will have learnt how to identify inventions that may fall into these areas and considered alternatives and solutions to objections that might be raised under these provisions.
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Introduction
In addition to establishing that your invention is novel, inventive and has an industrial application, you must also ensure that ‘the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below’ (section 1(1)(d) UK Patents Act) – article 52 of the EPC has similar effect ). Section 1(2) describes those things that are excluded from grant of a patent because they are not considered to be inventions. These exclusions are further clarified by section 1(3) in that they only apply to the extent that the invention relates to that matter ‘as such’. Then the exceptions to patentability will be discussed, these are those inventions that are not allowed patent protection. Some of these are referred to in section 4A, which was added to the UKPA in 2004 to clarify the position on methods of diagnosis and treatment. However, these exceptions also apply to the exceptions to patentability introduced by the implementation of the European Biotechnology Directive. As each exception or exclusion is discussed it will be seen that there is significant overlap between objections that may be raised against an invention under the provisions of the exceptions or exclusions to patentability, and those that could be raised under inventive step, industrial applicability or sufficiency which are discussed in other chapters. Throughout this chapter, the main emphasis will be on how these exclusions and exceptions are applied by the IPO and EPO. The language of the UKPA is intended to mirror and have the same interpretation as the EPC. However, it should be borne in mind that practice in other European countries and particularly in the US, sometimes differs from the standards applied in the UK and EPO.
7.2 Exclusions from patentability 7.2.1
What is excluded subject-matter?
Section 1(2) of the UKPA describes things which are not considered to be an invention and which are ‘as such’ excluded from patent protection. Patents are intended to protect an inventive contribution made by the inventor to the state of the art. Where the contribution is not considered to be an invention, protection via a patent cannot be obtained. This section is intended to bring into the UKPA the provisions of Articles 52(2) and 52(3) of the EPC. Whilst the matter disclosed in this section can be considered to fall into many different areas, it may be considered that these groups of matter encompass either: (a) matter which has other forms of protection (e.g. aesthetic creations or computer programs themselves which are protected by copyright); (b) matter which is highly abstract and that does not have in itself an industrial application (discoveries, scientific theories and mathematical methods); or (c) matter which provides no technical contribution (e.g. business methods, software or presentation of information). You should compare the wording of UK and EP provisions to satisfy yourself that they are fairly similar. Each of these aspects will be discussed in more detail below but before going on to consider each item it is worth noting that these exclusions apply only to the extent that the patent relates to that thing ‘as such’ (‘per se’ in the EPC). The term ‘as such’ is key here, as the application of a scientific discovery may be patentable or a device which incorporates a computer program. Therefore, it should be always borne in mind when considering an invention which, at first glance, appears to lie in any of these areas, to what extent can the invention be considered to relate to the thing as such? Where it is possible for the claims to be drafted so that they relate to the use or application of the particular subject-matter, then it may be possible to obtain patent protection. Alternatively, where
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the invention is not limited to the excluded category as such then claims may be available. Various decisions have stated that it is not possible to circumvent these exclusions just by drafting the claims in a different manner. However, the consideration should be not ‘how can I get around these exclusions’ but ‘what is it that I actually want to protect?’ and ‘what is the actual contribution that the inventor has made?’. Whilst computer programs may not be patentable, as such, it may be possible to maintain the required area of exclusivity by protecting a system which runs the program in question, without needing to claim the computer program per se. These claims will then correlate to the technical contribution to the art that has been made by the inventor. Equally, such claims could prevent third parties from using the invention where running the computer program would infringe the system or process claim. Examples of situations where the exact claims may be modified as required in order to enable the invention to benefit from patent protection will be discussed with respect to each item where appropriate.
7.2.2
Discoveries, scientific theories and mathematical methods
The exclusion of discoveries, scientific theories and mathematical methods from patent protection may be considered to relate to two separate aspects of the patent system. Firstly, a patent is the compensation from the state to the inventor for their contribution to the state of the art and secondly an invention must have industrial applicability. Contribution to the state of the art A patent is a reward to an inventor, which provides exclusivity to an invention, in return for a complete disclosure of this invention to the public. Therefore, the monopoly granted is intended to be commensurate in scope with the contribution to the state of the art that has been made. Where the claimed invention relates solely to a discovery, the subject-matter of the claims could be considered to have already existed, the inventor merely stumbling across it. Hence, no patent will be granted. The specific application of this prohibition on the patentability of discoveries to applications in the area of biotechnology will be discussed later on in this chapter. Additionally, a scientific theory, such as gravity, may be considered to be a natural phenomenon. The identification of a naturally occurring phenomenon can not be sufficient to grant a monopoly over its operation without further contribution from the inventor. Once this application is provided by the inventor, it is this application that justifies the reward of a 20-year monopoly. For example, the identification of a naturally occurring chemical entity is not patentable, the chemical occurred already in nature and all the inventor has done is find it. In order to create a patentable invention, it must be demonstrated that the chemical entity has a particular use – e.g. as an insecticide. Once a use for the chemical entity has been provided this elevates the chemical above that of a mere discovery into the realms of an invention and as a consequence claims to the chemical entity per se may then be obtained. Alternatively, if the inventor can demonstrate that the identification of the compound posed specific problems, then it may be possible for this to result in the chemical being considered more than a mere discovery. For example, where it was known that the broth of a particular organism had anti-fungal properties, the identification of the active ingredient may be patentable where it can be demonstrated that it required more that routine purification and isolation methods. Industrial application The requirement that in order to be patentable an invention must demonstrate industrial applicability has already been discussed in chapter 6. When considering the exclusions to patentability specifically, it can be argued that a scientific theory does not have an industrial application directly. A device which operates to take the benefit of a scientific theory no longer relates to the theory, as such, and thus, may be patentable, if it fulfils the other requirements for patentability. Patents Training Manual: Volume 1
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For example, an inventor may have a scientific theory about the pathway responsible for cell loss in neurodegenerative diseases. This theory in itself is not patentable; it is a natural process which the inventor has described. However, a drug which has been specifically designed to exploit this pathway, e.g. by targeting a particular point, may be patentable. Essentially, this first section of excluded subject-matter serves to ensure that it is concrete contributions to the state of the art rather than abstract ideas that are the subject of patent applications.
7.2.3
Aesthetic creations
This exclusion relates to any creation which doesn’t have a specific use but which has required some element of creative contribution. It is specifically crafted to include literary, dramatic, musical or artistic work with the further catch all statement of ‘any other aesthetic creation’. It should be noted that the terminology used in this section mirrors that used in section 1(1) of the Copyright, Designs and Patents Act 1988 (CDPA). Effectively this section excludes from protection those items that are subject to copyright protection. This section is drafted to ensure that there is no overlap between copyright protection and patent protection because it would not be reasonable for one item to receive two forms of protection. Therefore, if it is an invention it will be subject to patent protection, if it is an aesthetic creation it will be subject to copyright protection. Where it can be demonstrated that the aesthetic part of the invention is able to contribute a technical effect, then this may result in the invention being deemed to not relate to the aesthetic creation, as such. For example, an application to squash balls made of blue rubber was found to be allowable. It was held that the blue colour had a technical rather than a merely aesthetic effect. The blue rubber did not mark the courts and the particular shade of blue used made the squash ball ‘surprisingly visible’. Therefore, the claims to the blue coloured rubber balls were deemed not to be merely an aesthetic creation ‘as such’.
7.2.4 Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers This exclusion may be considered to relate to matter that does not provide a technical contribution to the state of the art. The most commonly excluded items from this section are those inventions relating to methods of doing business or computer programs and the discussion in this chapter will focus on these aspects. However, this exclusion also relates to the rules which govern how a game should be played. To the extent that this exclusion relates only to the things ‘as such’ the apparatus for playing a game may be patented. With respect to methods for performing mental acts, doing business or a computer program the exclusion applies to the extent that these may be considered to lack a technical contribution. The issue is that mere automation of mental acts, or other processes that may be performed by man, is not considered to provide a technical contribution. In order to qualify for patent protection, it is required that the invention makes a technical contribution, independent of the increased efficiency that would be expected from the automation of these processes. (The now established approach at the EPO is somewhat different, as discussed below.) It has proven difficult to establish whether an invention falls under the scope of this section. Recently, a decision from the Court of Appeal (Aerotel Ltd v Telco Holdings Ltd referenced at the start of the chapter) has sought to establish a test for determining when an application falls within this exception. The aim of this test was not to effect any substantive changes to the law, but to provide a more straightforward process to assess whether an invention falls within this exclusion or not. The steps of the method applied by the IPO follow the decision and are as follows, each point is addressed separately below: (a) Properly construe the claim. (b) Identify the actual contribution made.
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(c) Ask whether it falls solely within the excluded subject-matter. (d) Check whether the actual or alleged contribution is actually technical in nature. (a) Properly construe the claim This is an integral part of the determination of the patentability of any invention, without knowing what the metes and bounds of the claim is, it is not possible to ascertain accurately what matter falls within the claim for the assessment of novelty. Therefore, although it forms part of this four-step test, it can be considered to be a key part of assessing any invention. (b) Identify the actual contribution made At this stage it needs to be considered what the actual contribution made by the invention is to the state of the art. This is a determination that needs to be made irrespective of what the actual terms of the claims are. If the invention is a software program, the contribution may lie in the automation of tasks, an ability to process data in new ways or a system for controlling a piece of equipment. (c) Ask whether it falls solely within the excluded subject-matter At this point, it is necessary to consider if the contribution identified falls solely within the excluded subject-matter category. If so, then it will necessarily fail at this hurdle. As discussed above it is not possible to pull an invention out from inside an excluded category merely by drafting the claims to sit outside the excluded area. With respect to the software exemption, the mere placing of a software program onto a magnetic carrier means that the claim is now directed towards a magnetic carrier and not to the software as such. However where the actual contribution made relates solely to the software, then, when considering the state of the art, it is clear that the contribution is not the magnetic carrier but the software program, which is excluded. Alternatively, where the invention relates to a method of doing business, it cannot be rendered patentable merely because technical means e.g. a computer system or other machines are used to perform the method. (d) Check whether the actual or alleged contribution is actually technical in nature. This last step is present mainly for consistency with previous case law. In practice, it can be expected that an invention which passes test (c) will also pass test (d). It is easier to imagine these steps with respect to a particular example. Below are discussed examples of proposed inventions that (i) would be excluded from patentability and (ii) that would not be excluded from patentability. (i) The invention relates to a method for establishing a queuing system for lavatories in airplanes, the software enables a computer to receive requests and assign them to an empty cubicle in the appropriate section of the cabin in the order that they were received. (a) The claim relates to a method for the processing of requests in order of receipt (b) The contribution made is the software program which then allows an orderly allocation of people to cubicles to avoid confusion and extended waiting times (c) The contribution described in the application falls entirely into an excluded category as it relates to a software program (d) As the invention relates to software and the contribution is software, as such, it is not necessary to consider this final question, the invention is excluded as being to software as such. Famously, IBM applied for, and obtained, a US patent to this type of system (see US 6,329,919). (ii) The invention relates to software that runs a computer system managing a synthetic process. The Patents Training Manual: Volume 1
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software continuously monitors the conditions and changes the environment as required to maintain an optimal yield: (a) The claim relates to a method for managing a process for the synthesis of compounds comprising a software program which controls the environment in which the synthesis occurs. (b) The contribution made is a system which results in an improved production of the final product. (c) The invention does not fall entirely within an excluded category as it involves using the software to control machines which regulate a process. Therefore, it does not relate to the software itself. (d) The contribution can be considered technical as it involves the processing of large amounts of data, which are then translated to changes required to the process that is being controlled. This requires a technical contribution, converting the raw data into a variable that relates to the process being controlled. Although the intention is for the tests applied in the IPO and before the EPO to result in the same result, in practice this has not been the case. For inventions such as business methods, the net result is often the same as both the IPO and the EPO are reluctant to grant claims to business methods without a clear technical effect. However, when considering applications such as those relating to computer-related inventions, a clear difference has appeared between the claims that are being granted in the EPO and those that would be granted in the IPO under the same conditions. It is the EPO’s view that its approach, which has evolved over time, is now clear and consistent, as discussed below, and it can thus be expected that a certain discrepancy between the approach taken by the IPO and the EPO will persist for the time being. The current position of the EPO is summarised succinctly in T0154/04 (Technical Board of Appeal). The approach taken in the EPO is that it is sufficient for an invention to have technical character, for example, be run on a computer or use any other technical means to clear the hurdle of excluded subjectmatter under Article 52(2), (3) EPC. The hurdle is, thus, shifted to the assessment of whether there is an inventive step. In the EPO’s approach, only technical features can contribute to an inventive step. Using the EPO’s preferred ‘problem and solution’ approach, the question becomes whether there is a technical problem to be solved and whether that technical problem is solved by technical means. Where there is either no technical problem or no technical solution, the application will be refused as lacking inventive step. Where there is a technical problem that is solved by non-technical means, the non-technical aspects of the solution will not be considered as adding to the inventive step of the claimed invention. Therefore, where means such as standard business method steps contribute to the solution of the problem, these non-technical steps will be disregarded and the application is likely to be refused for lack of inventive step. However, provided that there is a technical problem that is solved by non-obvious technical means (e.g. a software program / computer-implemented invention) then this is likely to be patentable before the EPO. For example, features of an e-commerce method which result in improved security or more efficient data transmission could represent an inventive step, if not obvious to implement. To summarise the current approach at the EPO, matter will not be excluded from patentability if it has technical means (and the claim is so limited). If there are technical features which distinguish the matter from the prior art and these solve a technical problem, the matter could be protectable at the EPO. The question then becomes whether the corresponding solution would have been obvious for the skilled person in the relevant technical field, for example computer science or more specifically, for example, image processing. Therefore, in practice the current approach at the EPO is more patentee-friendly than the IPO, when there is a risk that the invention relates to an invention in a business context, data processing or computer science. This is both the case in relation to the type of subject-matter which can be protected and the
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scope of protection that can be achieved. On that basis, clients may favour the EPO if the invention to be protected is related to data processing or computer science. However, when drafting applications in this field for prosecution at the EPO, it is nevertheless important to emphasize all technical aspects of the invention and all technical problems solved to optimize the chances to successfully prosecute the application to grant.
7.2.5
Presentations of information
The final exclusion covered by section 1(2) is anything that relates to the mere presentation of information; this exclusion is, again, related to the technical contribution that a proposed invention makes to the prior art. It is considered that where the claimed subject-matter is effectively just presentation of information, then it has made no technical contribution and thus it is not suitable for patent protection. As with all the exclusions under section 1(2), the presentation of information is only excluded to the extent that it relates to that thing as such. Therefore, if you can demonstrate that the claimed subject-matter relates to more than just a way of presenting information, then it may be possible to obtain patent protection. An example of matter that might be considered under this exclusion is the use of thumbnails to display pictures in a folder view. This can be considered as the mere presentation of information, if all it does is enable you to quickly scan the images available in a folder and select the appropriate one. However, if there is a technical step required to convert the images to smaller, low-resolution images or the images contain additional information e.g. links directly to the full size images, then the matter may be considered to no longer relate to the presentation of information, as such, but to contain an additional technical contribution, which may allow this to be protected via the patent system. If it can be established that the invention relates to more than just the presentation of information, it will still of course be necessary to demonstrate that it fulfils the other requirements for patentability. Again, the EPO’s approach, here, differs in that an invention will not be excluded if it uses technical means and that inventive step is then assessed in terms of technical features only, as discussed in detail in the previous section.
7.2.6
Practice in other territories
As mentioned at the outset, the practice in the EPO, in many areas, correlates very closely to the approach taken by the IPO, with a few notable exceptions. The language of the relevant sections of the UKPA is intended to mirror and have the same effect as those of the EPC. However, it should be borne in mind that US practice is hugely different in these areas. Under US law it is a firmly established principle that anything under the sun made by man is patentable (Diamond v Chakrabarty, 447 U.S. 303, 309 (1980)). Whilst this leads to differences in approach for biotechnological and medical related inventions, the main area that this difference can really be noted in is with respect to the areas of software and business methods. The requirement under US law is that patents may be obtained for ‘any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof’ (35 U.S.C. §101). The USPTO does not distinguish between methods or processes that contain technical features and those that relate solely to methods of doing business. Patent protection is fully available in the US for software per se or business methods provided that they can be fully described (thereby fulfilling the enablement requirement) and that they can be shown to have a ‘useful, concrete and tangible result’. This frequently results in a disparity between the US and the UK, and the rest of Europe, regarding the scope of claims that may be obtained. In particular, the USPTO readily grants business method and software patents that would not be possible in the IPO or EPO. When advising clients in this area it should be borne in mind that just because you have come to the conclusion that an invention may not be patentable in the UK, it is not the inevitable result that no protection is available elsewhere. Patents Training Manual: Volume 1
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7.3 Exceptions to patentability 7.3.1
What subject-matter is covered by the exceptions to patentability?
Some matter is considered to be an invention (and hence not excluded), but for various reasons it still falls into an exception, which means that it is not entitled to patent protection. By and large these exceptions are designed for social and practical reasons, although the extent to which an exception applies to the matter being claimed may come down to a legal consideration of the language and nature of the claim.
7.3.2
Methods of treatment or diagnosis (section 4A).
The logic behind this exception to patentability is a highly simple one, namely that a doctor should not be limited in his selection of methods for the treatment or the diagnosis of a patient due to concerns over patent protection. In particular, they should be free from the worry that a patent owner may file a suit against them for prescribing a particular course of treatment or using a particular diagnostic method. Originally, these exceptions were formulated as inventions which were not considered to be susceptible of industrial applicability. However, it has now been accepted that this was an artificial objection and, therefore, in the recent amendments to the UKPA these exceptions were moved to a new section. These exceptions to patentability are limited to those cases where the claims are related to: (a) A method of treatment of the human or animal body, by: (i) therapy; or (ii) surgery. (b) A method of diagnosis practised on the human or animal body. From the outset, it can be seen that although the intention is there to protect the practising doctor, this still leaves a significant area of protection in the medical field for pharmaceutical and biotechnology companies. This area where protection may still be obtained is clearly marked in section 4A, where it is specified that inventions which relate to compositions for use in the excluded methods may still be subject to patent protection. Areas where patent protection may still be obtained include: diagnostic kits where the method is practiced on samples removed from the human body, pharmaceutical compositions and tools for use in surgery. The exception relating to methods of diagnosis and therapy has been the subject of some debate in the UK and before the EPO. It will often be the case that whether a claim may be obtained will depend on the language of the claim and the steps that are involved. (a) ( i) A method of treatment by therapy With respect to methods of treatment, it should be noted that this is not to be interpreted as limited to cover only methods that will provide a cure. Any method which could lead to an improvement in the symptoms of a disease may be considered to be a method of treatment and, thus, fall into this exception from patent protection. For example, renal dialysis merely gives relief from the disease symptoms, it does not affect the actual nature of the disease; however, this was found to be a method of treatment. Similarly, methods of preventing disease, e.g. using vaccines, also fall into this exception from patentability. Of course, the apparatus used for renal dialysis or the vaccine itself may be patented. The exclusion is to the method using the apparatus, i.e. that which would be used by the doctor, not to the apparatus or composition, which would be sold by the pharmaceutical company. However, methods that may be considered not to relate to the treatment of a disease may be patentable. For example, a method of causing an animal to gain weight for commercial purposes may be patentable as there is no disease being treated. Where a particular method may have non-therapeutic (i.e. patentable) and therapeutic (i.e. non-
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patentable) uses, it is only possible to patent the non-therapeutic uses, where they can be clearly distinguished from the non-patentable uses. For example, where the method of administration for a cosmetic benefit would differ from the method of administration for a therapeutic benefit, it may be possible to protect the non-therapeutic method. It is possible to imagine a situation where topical doses of compound A may be used to provide a cosmetic effect, whereas oral doses may be required to have a therapeutic effect. In this case, a method of topical administration might be patentable. In contrast, where a therapeutic effect is obtained via the same mechanism as the non-therapeutic effect protection will be denied. For example, where administration of a compound to improve bad breath also had an effect on reducing bacteria levels in the mouth and, thus, improving oral health this method would not be patentable. (a) (ii) A method of treatment by surgery This area has recently been considered by the Enlarged Board of Appeal in decision G0001/07. In this decision, they did clarify that the previous interpretations of this exclusion as encompassing any physical intervention on the human or animal body was too broad, although they did agree that the term ‘treatment by surgery’ should not be limited to only surgical methods with a therapeutic purpose. Instead they stated that the use of any ‘substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk’ renders a claim unpatentable as a method of treatment by surgery. Therefore, routine interventions (the examples given included micro-abrasion, tattooing and hair removal by optical radiation) are not covered by this exclusion. The Englarged Board of Appeal also clarified that can avoid the exclusion by disclaiming the surgical method steps or alternatives (assuming the disclaimers comply with G0001/03 and G0002/03). Finally, they indicated that where a step is not ‘a therapeutic nor a diagnostic nor a a surgical method’ that it is not excluded from patentability. For example, in the case in hand where the method is intended to generate data required for later surgical treatment (in this instance to obtain images that would be used by the surgeon) then the method does not fall within the exclusion. (b) Method of diagnosis There are difficulties in ascertaining the exact scope of the method of diagnosis exception. It is easy to identify some methods that would clearly fall within the scope of this exception e.g. where a doctor might assess a patient to determine if a fracture is present. However, where the diagnostic method can involve the human body, but the method claims can be drafted to not include any steps which would need to be performed on the human or animal body, does it still fall under the same exception? Consider, for example a method of diagnosis which requires the removal of a sample from a patient, where the sample is then assessed in a lab and the result determined separately from the patient. If the method was to be written out in full, it would by necessity need to involve the step of removing the sample from the human body and, thus, would be a method that would fall under the exception from patentability. Nevertheless, you can imagine a situation where the method steps are drafted from the starting point where you already have the sample in hand. In order to go from patient to diagnosis, it is inevitable that the method would involve all the steps that would form the claim, plus the additional step of removing the sample from the patient. Is it possible in this case to arrive at a patentable invention just by omitting the step of physically obtaining the sample? A recent decision (G0001/04) of the Enlarged Board of Appeal at the EPO addressed this case. Their opinion was that the method step needs to include all the steps required to perform the method. If a step involving the human or animal body was an essential step of the method then a claim without it must be bad for lack of sufficiency and if it were included then the method would fall under the exception. However, this is an assessment that needs to be made on a case by case basis.
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Contrary to morality/public policy (S1(3))
Section 1(3) of the UKPA provides that inventions the exploitation of which would be contrary to morality or public policy are to be denied patent protection and the EPC has similar provisions. Note that in this section, it is the exploitation of the invention, rather than the invention themselves that is the key consideration. Furthermore, it is not that the exploitation of the invention would be illegal, but that it would be immoral. It may be that these aspects overlap, many immoral actions are illegal, however it does not follow that an invention is excluded merely because the exploitation of the invention would be illegal. An example of an invention that might not be excluded is a hand gun, in the UK it is illegal to own a handgun; however, it does not necessarily follow that the use of a hand gun would be immoral. Certainly there are circumstances where their controlled use is appropriate and, thus, companies who work on the development of such things may be able to seek patent protection. In contrast, examples of things which may be considered immoral are land mines, letter bombs and other such devices. These would be excluded from protection.
7.3.4
Biotechnological inventions (S76A)
The consideration of inventions, which may be thought to be contrary to morality or public policy, leads nicely into a discussion of section 76A and biotechnological inventions generally. Section 76A was introduced into the UKPA as a means of enacting the Directive No 98/44/EC on the legal protection of biotechnological inventions (commonly referred to as the Biotech Directive), the aim of which was to harmonise the patentability of inventions related to biotechnology throughout Europe. One key provision of the Biotech Directive is that matter is not excluded from patent protection just because it contains biological material, or it is a method by which biological material is produced, processed or used. These inventions should be assessed as you would expect to assess any invention for their novelty, inventive step and industrial applicability. However, there are a few areas for which it was agreed that protection should be denied: (a) The human body, at the various stages of its growth or development, including the ‘simple discovery’ of a gene sequence (i) the ‘simple discovery’ of a gene sequence We address the second aspect of this exception first, namely that the mere discovery of a sequence does not allow you to claim composition of matter to the gene, per se. As discussed above, mere discoveries are not patentable as their discovery has not made a contribution to the state of the art. However, once a use for a gene has been identified, in accordance with the Biotech Directive, the applicant would be entitled to claim the gene, per se, always assuming that the gene fulfils the requirements of novelty and inventive step. This may be directly compared to the situation for a chemical, after all essentially a gene is a large, highly complicated chemical. Therefore, if you are entitled to discover a natural product (e.g. isolated from a plant) and once identifying a use for the natural product this entitles you to claim composition of matter to the compound, the same principle should be applicable to a gene or protein sequence. Merely identifying that the sequence exists is not sufficient to justify the 20-year monopoly, in contrast to the hopes of many gene prospectors who filed huge applications in the 1990’s claiming hundreds of gene sequences with no specific function or use attributed. However, once you have identified a real, industrial use for your gene or protein, it would be reasonable to expect that you would be entitled to the same level of protection as the applicant who filed on the natural product. In order to obtain this protection though, it is required that you disclose your industrial use for your gene/protein in the application as filed. It is not permissible to file on the sequence first and provide an industrial application at a later stage. If the use requirement is not satisfied in the application as filed the application will be refused.
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It should also be noted that, as the sequencing of the human and other genomes has become available, it has become more and more difficult for a gene or protein sequence to satisfy the conditions of novelty. Furthermore, once a gene has been identified in a species, it is becoming more typical to screen for homologues in other species, particularly where the function of the gene may be predicted from the function of other known, related genes. It is still possible to identify a gene that is patentable, but you need to clearly demonstrate that the identification of the gene and its function provides an inventive step, and that it wasn’t a mere routine exercise to isolate the gene and confirm the predicted function. (ii) the human body at its various stages of development As the methods for the extraction, culture and use of stem cells have been developed, companies have sought to protect their inventions. However, it is a key limitation of the current UKPA that inventions may not be granted for the human body. Whilst it is obvious that a child or an embryo is a human body at an early stage of development, the question of stem cells, in particular those which are able to form a multitude of cell types have been more difficult to classify. The IPO have adopted the approach that there can be considered to be two general types of stem cells: 1. totipotent stem cells – namely those which are capable of dividing and developing to form all the elements of the human body; and 2. pluripotent/adult stem cells – these are only capable of forming a limited range of cell types and in isolation are not capable of forming a human. Before the IPO, therefore, claims to pluripotent or adult stem cells are allowable, as are the uses of these types of stem cells. In contrast, claims to totipotent stem cells are considered to be excluded matter under the terms of section 76A/Schedule A2(3)(a). (b) Processes for cloning human beings or modifying germ line genetic identity of human beings This section expressly forbids the patenting of processes that involve the cloning of human beings, or that would result in the modification of germ line of human beings. Note that processes for the cloning of other species are allowable. (c) Uses of embryos for industrial or commercial purposes This exclusion is closely related to the exclusion described above with respect to the human body and is of most relevance to the consideration of the patentability of stem cells and methods for their production. In general, the most suitable source of multipotent or totipotent stem cells is the human embryo. Broadly speaking, the earlier in the developmental stage the embryo is, the broader the range of cell types that may be formed from a single type of stem cell. However, this process, by necessity, requires the destruction of the embryo and, in terms of the production of the stem cells for commercial purposes, this would clearly fall within this exclusion. The application of this exclusion can lead to the situation where the cells themselves are not totipotent and, thus, are patentable as they do not relate to the human body at a state of its development. However, the processes for the production of the cells are not patentable as they require the commercial or industrial use of embryos. The Enlarged Board of Appeal has recently considered a case relating to such use of embryos (G0002/06). In this decision they clarified that where, at the time of filing, the only method by which the stems cells could be generated involved the destruction of a human embryo, claims to the cells themselves would be prohibited under this exclusion, even if at a later date methods avoiding the industrial or commercial use of embryos were be developed.
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(d) Modifying genetic identity of animals causing suffering without a medical benefit The key decision is this area relates to the Oncomouse® decision. In this case, Harvard University had developed a mouse with a genetic modification (the insertion of an activated oncogene) which meant that it was significantly more prone to develop cancer. This mouse was the ideal model in which to investigate new drugs, which might have efficacy in the treatment of cancer, however, any research using this mouse would inevitably have a detrimental effect on the mouse itself. These genetically modified mice were not excluded under the animal varieties exclusion as the claims related to an animal and not to an animal variety. It was held that it had been demonstrated that the mice, due to their value in the screening of compounds for use in the treatment of cancer, had a significant medical benefit and, therefore, claims directed to methods for the production of an Oncomouse® and claims to Oncomouse® itself were upheld, although not claims to other rodent species or broader. It is interesting to note that whilst in Europe these claims were limited to mice carrying the genetic modification, in the US the claims were allowed to any transgenic, non-human mammal and in Canada claims to methods involving the use of the Oncomouse® were allowed, but the composition of matter claims to the Oncomouse® itself were rejected. (e) Plant or animal varieties Plant varieties and animal varieties are excluded from protection via a patent, although they may be protected via other means. A variety is defined as a group within the lowest taxon (botanical or animal) wherein all members of the group share the same characteristics and these can be distinguished from other groups by the presence or absence of these characteristics. Therefore they are a number of individuals that share common feature(s), wherein the feature(s) distinguish them from other individuals within their taxon but they do not result in the group being a new taxon. It is also a requirement that varieties can be propagated without losing their characteristics – therefore, hybrid seeds or plants (where the next generation will not share the characteristics of the parents) cannot form a variety, and thus will be patentable. This prohibition on claiming varieties does not prevent the patenting of individual genetically modified strains of plants or animals, such as the Oncomouse® discussed above, or a crop engineered to have resistance against a particular pesticide. Similarly, a crop treated (e.g. by exposure to a chemical) so as to have a characteristic that lasts for just one generation will also not fall into this exclusion. At the EPO, a decision of the Enlarged Board of Appeal (G1/98) held that a claim which encompasses varieties but that does not specifically claim varieties (i.e. where the claim is broader than just the varieties) is also not excluded from patent protection. A variety is defined by a phenotype in a specific plant or animal, which may arise via a number of methods (e.g. traditional breeding or selection or genetic engineering) and is not patentable. In contrast, a strain which is made by a specific technique is patentable and is defined by the modification that has been made. These two rights are intended to sit along side each other – matter that does not fall within the definition of a variety should therefore fall within the scope of patent protection. If this is an area of relevance to your daily practice, the best way to appreciate how these two rights interact and what matter may be the subject of patent claims will be to discuss specific examples with your trainer. (f) Essentially biological processes for the production of plants or animals. This exclusion relates to methods of breeding or otherwise producing plants and animals that are commonly used, for example, methods of generating higher producing varieties by cross-pollination of known species etc. Not included in this exception are processes for the fermentation of micro-organisms and related methods. It is possible to patent an improved fermentation process for the production of a compound via micro-organisms. The goal of the Biotech Directive was to bring harmonisation to the application of patent laws to the Biotechnology sector. Unfortunately, this goal of has not been achieved and though some countries, like
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the UK, have adopted the language of the Biotech Directive pretty much verbatim, others, for example France, have adopted limitations on the way in which biotechnological inventions can be claimed. If this is an area that is important within your field of practice, discuss this in more detail with your trainer, in particular with respect to whether the uneven implementation of the Biotech Directive has any effect on the advice that should be provided to clients interested in Europe-wide protection for their inventions.
Work-based examples It is important that you are aware of the various options for the protection of subject-matter, both in from the perspective of the type of claims available, but also with respect to the options in your main jurisdictions. Below are some scenarios that may occur and some thoughts about how protection may best be obtained. Scenario 1: A coloured label which indicates whether food is in date Your client has developed a label which changes from white to pink on detecting the chemicals emitted by food that is degrading. Although this invention could be considered to be the presentation of information (a visual representation of the condition of the food) or an aesthetic creation (a label that has a particular colour), it is likely that it would fall outside the scope of either of these exclusions. Claims could be drafted to the label itself, which is likely to require a detection system to be integrated into it; to the component which changes colour on contact with the chemicals emitted from the food or to a method for monitoring the quality of foods. The key with this invention, is that it is not limited just to a label that changes colour, it relates to the technical contribution made by a component that is able to sense the levels of chemicals in its immediate environment and convert this into a colour signal. Scenario 2: A diagnostic test for the common cold In this situation, the test consists of a stick which the patient places in their mouth for a set period of time. When the stick is removed the diagnosis of the presence or otherwise of the common cold is indicated on the handle of the stick. It is likely that claims to a method of diagnosis comprising placing the stick in question in the mouth, waiting the appropriate length of time and then reading the result from the stick may not be patentable as it involves a step which by necessity must be performed on the human body. However, if it is possible to draft claims to the features of the stick itself, then this will provide all the protection that should be required. The main competition in this instance is likely to be from other companies wishing to develop their own equivalent test or to copy the test or stick design. Therefore, claims to the stick, per se, will still provide the client with protection for their invention, without interfering with the ability of a doctor to administer the test. Scenario 3: A human gene sequence The first step is to identify that the gene sequence is novel, given the huge array of sequence databases available either for free or via a subscription. Once the novelty of the sequence has been confirmed, it may be necessary to consider closely related family members, for example if a homologue has already been identified in mouse, rat, dog and chimpanzee, it will be difficult to argue that the identification of the human sequence is inventive. It might be expected that a human homologue would exist. If it is possible to ascertain that the sequence is both novel and inventive, the next step is to clearly demonstrate that it has an industrial application. This could be by demonstrating that it is a key step in a pathway involved in the progress of a disease, or that the gene has a particular use – e.g. the gene for green fluorescent protein can be used to tag sequences so the expression of the protein under investigation can be monitored. Patents Training Manual: Volume 1
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Scenario 4: An animal stem cell A stem cell that is derived from an animal is patentable, regardless of whether it is derived from embryonic or adult sources and regardless of whether it is multipotent or totipotent. However, if the cell is totipotent, the claim must exclude the possibility that it could be a human stem cell. The term ‘mammalian stem cell’ would include human stem cells; therefore, it is important that the claim refers to mammalian non-human stem cells or alternatively specifically to rodent (for example) stem cells. If the cell is multipotent then this would be allowable under current UK law, but it is currently unclear what the position in the EPO would be.
Test your knowledge 1. What are the main exclusions from patentability in section 1(2) of the UK Patents Act? 2. Is it possible to obtain granted claims to a device which exploits the application of a scientific theory? 3. Your inventor has discovered a new gene sequence, completely unrelated to any known sequences – can he patent this gene sequence? 4. A method for the isolation and purification of cocaine has been developed, is this patentable? 5. What was the purpose and the effect on UK law of the European Biotechnology Directive? 6. A company has invented a new drug that may be used in the treatment of pancreatic cancer: a) Can they obtain patent protection for this new drug? b) Can they prevent a doctor from prescribing the drug? c) How would your answers change if at all, if the use of the drug was to prevent hair growth so shaving / waxing was no longer required? 7. Summarise the UK and EP approaches to assessing whether the subject-matter of a claim is excluded or not.
Suggested chapter answers and comments 1. (a) discoveries, mathematical methods, scientific theories. (b) literary, dramatic, musical or artistic work or any other aesthetic creations. (c) scheme, rule or method for performing a mental act, playing a game, doing business or a program for a computer. (d) presentation of information. To the extent that the invention relates to the thing as such. 2. Yes – the exploitation of a scientific theory is patentable. 3. Patent protection may be available provided that a use for the gene sequence can be identified. A gene sequence that is identical to that occurring in nature is not excluded from protection, but without a use it is a discovery, and lacks industrial application.
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4. Probably – cocaine is a drug which although illegal may have useful properties for use in medicine. Using the method may be illegal (without appropriate licence) but this does not make it immoral. 5. Its purpose was to harmonise European law on the patentability of biotechnology related inventions, its effect was the inclusion of section 76A and schedule A2 into the UK Patents Act. 6. (a) Yes – composition of matter protection to the drug itself is available. (b) No – they would not be able to obtain method claims that would be infringed by the doctor as the method claims would relate to a method of treatment contrary to section 4A(1)(a). (c) Composition of matter protection would still be available for the drug, but now the method is a cosmetic method rather than a method of treatment and such patent protection is likely to be available. 7. See section 7.2.4.
Chapter review This chapter has introduced you to the exclusions from and the exceptions to patentability. In particular, this chapter discussed: 1. The exclusions to patentability, i.e. those things that are not considered to be inventions e.g.: (a) discoveries; (b) aesthetic creations; (c) business methods / software; and (d) presentation of information. These are exceptions to the general rule and are construed narrowly to exclude matter only to the extent that the claims relate to those things ‘as such’. 2. The exceptions from patentability, i.e. those inventions that are denied patent protection; e.g.: (a) methods of treatment or diagnosis practised on the human or animal body; (b) inventions contrary to public policy or morality; and (c) particular aspects of biotechnological inventions – the human body, uses of embryos for industrial or commercial purposes, plant/animal varieties. It is hoped that after working through this chapter, and in particular after reading some of the resources referred to, that you will become familiar with recognising when you are faced with subject-matter that may fall into one of these groups.
Further study This is an area in which the application of these provisions is highly dependent on the individual situation. Case law is being generated at a rapid rate which will dictate how these exclusions and exceptions will be applied in practice. In the business methods area, the Aerotel/Macrossan’s application case ([2006] EWCA Civ 1371) should dictate how the law is applied in this area in the UK and so, if you have not already done so, read this Patents Training Manual: Volume 1
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case. In addition, it is worth reading the corresponding case T0154/04 from the Technical Boards of Appeal as this will allow you to appreciate the difference in approach from the UK courts and the EPO. There are several recent decisions and pending decisions from the Enlarged Board of Appeal at the EPO that are of interest to the material covered in this chapter, in particular: • G01/04 – a decision relating to methods of treatment by therapy • G02/06 – the WARF/Stem cells case • G01/07 – methods of treatment of the human or animal body by surgery In addition to the practice in the UK and before the EPO, developments in the law of other applicable territories, in particular the US and other European countries, should be borne in mind. For example, with particular reference to biotechnological inventions, the patchy implementation of the Biotech Directive means that although claims may be obtained via the EPO, these may not be upheld in national courts. In view of the overlap between the provisions of this section and those of inventive step and industrial application (covered in chapter 6) and those of sufficiency (covered in chapter 8), these chapters and the material cited in these chapters are also of relevance.
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Other requirements for grant
Outline This chapter aims to introduce the additional requirements that must be fulfilled in order to obtain a patent. These are requirements that the patent disclosure, as opposed to the invention, needs to satisfy in order to enable the inventor to obtain the 20-year monopoly to the invention. In brief, these are the requirements that: (a) the invention is sufficiently described to allow a person of skill in the art to reproduce the invention across the full scope of the claims. (b) the claims: (i) are clear and concise; (ii) are supported by the description; (iii) relate to only one invention or a group of inventions related to one invention. (c) the application or patent contains no matter added after the filing date. Some of these requirements need to be fulfilled at filing, others during the lifetime of the application.
Learning plan Prerequisites: The trainee must first have read: • Section 14 of the UK Patents Act 1977 (UKPA) (used throughout this chapter) and accompanying discussion from the ‘Black Book’ • Section 14 from the UK Manual of Patent Practice • Articles 82, 83, 84 and 123 EPC and accompanying discussion from the Guidelines for Examination in the EPO (see in particular Part C.III). For more detail see the case law relating to these areas in the Case Law of the Boards of Appeal published by the EPO. Legal documents: There have been a few key decisions from the Enlarged Board of Appeal related to added subject-matter, in particular G1/03 (disclaimers) and G1/93 (the ‘inescapable trap’). Trainer’s input: In this section, it is useful for the trainee to have practical experience of situations where these issues might be raised. For issues such as sufficiency this may be best addressed by looking at opposition files rather than examination reports, if suitable examples are available. Alternatively, directing them towards interesting cases available from the EPO website or the UK courts may be appropriate, depending on the field in which they are focused. Additionally, providing some experience in amending claims and becoming more familiar with identifying appropriate support in the application to avoid Art 123(2) issues would also be good practice at this stage. Syllabus link:
UK Exams: P1 and P5 EQEs: Papers A, B and C
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Learning outcomes By the end of this chapter you will have knowledge of the additional requirements that a patent application must fulfil both at the time that it is filed, and throughout its prosecution. In particular, this chapter covers sufficiency, support, unity of invention, added matter, clarity of the claims and other aspects. Further information on aspects specific to the drafting of a patent application will be covered in chapter 12. The aim is that these skills will help you with the drafting of patent applications and in being able to recognise what additional information you require from your inventors (whether they are clients or in-house inventors) in order to present a complete patent specification.
8.1 Introduction So, now we have identified that the invention at hand is novel, inventive and susceptible of industrial application (chapter 6) and we’ve determined that it doesn’t fall into any of the exclusions or exceptions to patentability (chapter 7). The time has now come to draft the patent application. The actual structure and individual elements of the patent specification will be discussed in chapters 11 and 12, but the aim of this section is to identify the other requirements that the patent application has to satisfy, both at filing and during the examination process in order to enable you to obtain a granted patent. The additional requirements that a patent application needs to satisfy are largely covered by section 14 of the UK Patents Act 1977 (UKPA) and the equivalent provision in the EPC, namely Articles 82, 83, 84 and 123. Specifically, section 14(3) requires that the specification must be sufficiently enabled and section 14(4) specifies that the claims must (a) define the subject-matter, (b) be clear and concise, (c) be supported by the description and (d) relate to a single invention. Most of these requirements are the direct consequence of the bargain that is at the heart of the patent system, namely that the UK-IPO will give you a 20-year monopoly (21 years including your priority year), to your invention, in return for a complete disclosure of the invention. Your patent application is then published at 18 months from your priority or filing date, thus providing a contribution to the state of the art in the field. If you do not satisfy the requirements that relate to your obligations of complete disclosure, then the consequence is that you are not awarded your exclusive term. Also, as you’re not allowed to add subject-matter after filing a patent application, the extent of this prohibition and its effect at the time of filing needs to be understood. Each of these requirements will be discussed in detail in this chapter. Although all of the aspects apply to patents irrespective of technology, some concerns are more significant in certain areas. Accordingly, we use two examples to illustrate the requirements, a mechanical invention and a pharmaceutical invention. For the mechanical invention imagine an egg timer including a spring loaded cradle for an egg and which has a thermostat which triggers the timer when the water starts boiling and a spring release which pops the egg above the water when the timer expires. In the pharmaceutical example we refer to an invention which relates to a number of compounds which can be generically described by the formula:
R1
R2
R3
R1 = H, halogen, C1-C6 alkyl R2 = CH2, CO, SO2, NH R3 = H, halogen, C1-C6 alkyl
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In this hypothetical example, results have demonstrated that these compounds are cytotoxic and it is suggested that they may be of use in cancer therapy.
8.2 Sufficiency: section 14(3) UK Patents Act 1977) This requirement, stated very simply, is that you need to disclose your invention in sufficient detail to enable a person of skill in the art to work the invention as claimed, across the whole scope claimed. The requirements of sufficiency are usually satisfied via a combination of the description in the main body of the application and optionally, the examples (for chemical cases) and figures for non-chemical cases. A patent which is not sufficiently enabled may be refused during examination or revoked after grant; therefore, it is essential that the necessary details are included on filing. Failure to satisfy the sufficiency requirements is fatal to the application because rectification is bound to fall foul of the added matter issue.
8.2.1
Role of specific embodiments – prophetic vs. worked examples
The ideal circumstances under which you would chose to draft your patent application would be where you have developed your invention fully. In this situation, you can provide detailed worked examples of all aspects of the invention, how it is made, how it works, how it can be applied and the products into which it can be incorporated. Where the invention relates to a mechanical object, this might involve scale drawings, and examples of the object in action. Hence, in the case of our egg timer, the inventor will probably have a very good idea of how the timer works, how the spring release is primed and released, how the thermostat operates and so forth, and all of this should be described. In our present example of the chemical genus this would involve including information on: (a) how the compounds claimed are to be synthesised and purified (if required), and (b) the activity of the compounds in relevant assays / models / trials However, it is not always the case that you will be faced with an invention that has been developed to this extent. Often you will have a client or inventor in front of you who has taken the invention to proof of concept stage, but they haven’t had the opportunity to develop it further. Alternatively, they may need to file a patent application now, in order to obtain the funding to develop their concept further, or to ensure that their ideas are protected before they talk to investors. Equally, you may be faced with the situation where the initial results look very promising and the aim is to protect as much as possible with the information to hand at present. In this situation, the patent system is designed to allow you to file an application before taking your invention all the way through to its final stage of development. The trade-off is that you are only entitled to protect the matter that you can enable a person of skill in the art to perform, i.e. the extent of protection is commensurate in scope with the contribution you have made to the state of the art. This can certainly be the case in the chemical arena and taking our chemical invention as an example, you may wish to claim a scope that includes 100 or more compounds, but in actual fact you have only synthesised 50. Furthermore, whilst you believe that these compounds are likely to be of use as anti-cancer agents, the data to hand has only demonstrated efficacy in rodent models, not full scale clinical trials. Under these circumstances, it should still be possible to file a sufficiently enabled patent application. a) How to produce your invention It is important to teach a person of skill in the art how to produce the invention that you claim. In the mechanical arena it may largely be self evident, but even so, it is good practice to include as much information as possible, at least because of the US ‘best mode’ requirements discussed below in section 8.2.4. Whereas the basic configuration and interaction of the components may be considered to be the Patents Training Manual: Volume 1
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‘structure’, therefore, it is worth also describing the ‘fabrication’ – what the parts are made of, specific part types, how they are assembled and so forth. For example, in the case of the egg timer, suitably heat-proof and long-life materials may be worth describing, the particular spring, timer and thermostat contemplated, and the linkage between the various parts. In our specific chemistry invention, the goal is to provide methods by which the compounds that you wish to claim can be synthesised. It is not necessary that each and every compound claimed has been synthesised, or has a specific route to its synthesis disclosed. What is required is a method that is suitable for the synthesis of the compounds, either directly as disclosed, or after routine experimentation, well within the skills of a person of skill in the art. Therefore, there are potentially three scenarios: (i) Where you have already synthesised the compounds. For these compounds you merely need to describe the methods that you used. In the present example you may have made a number of compounds where R2 = CH2, the description of the synthesis of these compounds may then be included. (ii) Where the synthesis of the compounds is just routine variation of methods you have already disclosed. For these compounds, you can expect a person of skill in the art to be able to undertake routine experimentation to reach the claimed compounds. In the present example, the methods used to make compounds where R2 = NH are routine modifications of those used to generate compounds where R2 = CH2, for example just by selecting appropriate starting materials. (iii) Where the synthesis of the compounds requires a distinct method not yet performed. In this situation there is an option of using prophetic examples to enable the synthesis of these compounds. In the present example, the production of compounds where R2 = CO or SO2 might require methods distinct from those for the production of compounds where R2 = CH2 or NH. The danger with using prophetic examples is that if they do not work as described then the compounds which rely on the prophetic examples will be insufficiently described and protection will be unavailable. However, this is the case regardless of whether you include prophetic examples or not; it is just easier for a third party to prove your application is insufficient if there are examples that don’t work, than if they are arguing a person of skill in the art couldn’t adapt methods of which he was already aware to obtain the compounds. b) Use of the invention In non-chemical areas, the use of the invention is typically self-evident and may, indeed, be the main point of the whole disclosure. For chemistry, however, it may need to be spelt out. The goal for sufficiently enabling a claimed use of the invention, is to provide enough information so that a person of skill in the art would believe that (i) your invention would have the use claimed and (ii) that they would know what steps would be taken next in order to reach the claimed use. Where the invention relates to a particular electrical component, this might involve an example of the component integrated into a machine demonstrating how it exerts its effect. For the egg timer, a further section describing operation of the said structure would habitually be included, setting out the basic operational steps of loading the cradle springs, placing the egg in the cradle, placing the cradle in the (cold!) water, thermostatic triggering of the timer and release of the springs. From this, use of the invention is entirely clear. In the hypothetical chemical example discussed above, it is necessary to provide sufficient information relating to the use of the compounds in the treatment of cancer. Typically, you would expect to include in
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vitro and in vivo models, which are accepted as indicative of activity in the appropriate disease model and then extrapolate from the activity in these assays to use in the particular indication of interest. For example, if it can be demonstrated for the compounds in this particular example that: (i) they are toxic in a cell-based proliferation assay; and (ii) they may be dosed to animals, without resulting in toxicity at a level sufficient, to reach a therapeutic effect; and (iii) there is a link between the target of these compounds and the pathways thought to be involved in the disease. Then there is a good argument that this data is sufficient to convince a person of skill in the art that these compounds are likely to have the activity that you claim and will be of use in the treatment of cancer. It should be noted, that there is a difference between an invention which has an industrial applicability and a product which is commercially successful. In order to be granted a patent to your invention you do not need to demonstrate that your invention is the next iPod™ or the next cancer therapy, you just need to demonstrate that it can be used and sufficiently teach a person of skill in the art how. Therefore, in our hypothetical chemical example, it is not necessary to demonstrate that the claimed compounds would be successful in a clinical trials setting. It probably goes without saying, but it should always be made clear to your clients and inventors, that it is important that they disclose in full how to perform their invention. Omitting essential details to maintain an edge in the market place or to prevent allowing their competition to see their full process may be the commercially more preferable option, but this approach if challenged, will lead to the refusal or invalidation of their patent application. If there are significant doubts about whether they wish to disclose their proprietary methods in full, then the invention should be maintained as a trade secret rather than a patent application.
8.2.2
Relationship between claim scope and sufficiency
In general, it is only required that your application discloses one way of performing the claimed invention, it is not required that you disclose every way of performing the claimed invention. In the case of the egg timer, as with most mechanical inventions at least, this is seldom an issue, as it is difficult to envisage a claim scope extending massively beyond the core concept. Using the chemistry example discussed above, if there are two (or more) possible routes via which the compounds may be synthesised, it is not required that you describe them all. Provided that you describe one method that may be used for the synthesis of each of the compounds claimed then this will be a sufficient disclosure of these compounds. This must be matched with the ‘best mode’ requirement of the US patent system, discussed at 8.2.4. However, it is important that you ensure that you meet the requirement for your invention to be enabled across the whole scope claimed. It is not reasonable to expect to be able to claim aspects which are not related to the contribution to the art made by the present invention. Where there are other ways of reaching the invention that you claim, to which your invention provides no teaching, then it is not reasonable to expect that you would be able to obtain exclusivity over these areas. This situation was discussed in detail in the English case Biogen v Medeva [1997] R.P.C. 1, where the judge in question held that it is not reasonable to expect to claim matter which owes nothing to the teaching of the invention in question. If you apply this principle to the chemistry example we have been discussing in this chapter, you can see that if the compounds claimed are of use in the treatment of cancer, it is reasonable to include a claim along the lines of: A. The use of a compound according to Formula I in the preparation of a medicament for the treatment of cancer. Patents Training Manual: Volume 1
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However, it would not be reasonable to include a claim along the lines of: B. The use of a compound in the preparation of a medicament for the treatment of cancer. You are not entitled to claim any compound which may be used in the treatment of cancer, merely because you have disclosed a group of compounds which may be used for the treatment of cancer. A recent issue that has arisen is with respect to what are often referred to as ‘reach-through claims’. This is where a claim aims to cover subject-matter that it hasn’t actually disclosed. A typical example of this is where your invention relates to methods for screening against target Y, where you have identified that the inhibition of target Y is able to prevent Athlete’s Foot from developing. A claim to the method could be: A. A method of screening for a compound that prevents Athlete’s Foot by contacting a test compound with protein Y and detecting a decrease in the activity of protein Y. A reach through claim would be: B. A compound identified using the method of claim A. Unless you have been able to identify in the application as filed the key features of compounds that inhibit the activity of protein Y, for example by identifying a key pharmacophore or features which lead to the desired activity, then this claim is insufficiently enabled. It aims to protect all compounds that could have this activity, in the absence of any information to assist a person in obtaining these compounds. This claim is also unclear, as a person of skill in the art would not be able to identify readily its metes and bounds, but lack of clarity is discussed at 8.3.
8.2.3
Date when sufficiency must be satisfied
It is important that the application is sufficiently enabled as of its priority and/or filing date as appropriate. Therefore, if you disclose a genus of compounds in your priority document that cannot be made via the methods disclosed in the priority document but only by the methods described in the main filing, then these compounds will not be entitled to claim their priority date. Similarly, although it may be possible to submit data to the patent office at a later date in order to support the claims that you make in the application as filed, e.g. further data to support the use claimed for the compounds, this data cannot be used to rectify an insufficiently described invention. Specifically with respect to biotechnological inventions, where a micro-organism is claimed in the application, in order for it to be sufficiently described, a deposit of the organism must be made under S125A by the date of filing of the application, otherwise the application is insufficient.
8.2.4
Contrast with the US
The requirements in the US differ slightly from those in the UK and Europe. In addition to sufficiently enable a person of skill in the art to perform your invention as claimed, the USPTO also requires you to disclose in the application as filed the ‘best mode’ of which you are aware of performing your invention. Going back to our chemistry example, this means that you would be required to disclose the most efficient method of which you are aware for the synthesis of the compounds that you claim. Failure to do so can result in invalidation of the patent. As with sufficiency, you need to satisfy the best mode requirements when you file the application but this is a condition that needs to be satisfied at each filing in a chain. Therefore, if you file one patent that proceeds to grant then you need to satisfy the best mode requirement at the filing date. Similarly, if you file a first application which is then used as a priority application for a subsequent PCT application filed twelve months later, you need to have satisfied the best mode requirements both at the priority date and
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at the filing date. There is no requirement to carry on supplying the best mode as you carry on through the patenting process, so in order to maintain some advantage in your invention, it may be wise to refrain from the development of your process until after your PCT application has been filed.
8.3 Clarity and conciseness More detailed information on how the patent and the claims should be drafted is covered in chapters 11 and 12, but in this section it is pertinent to discuss some aspects which are specific to the clarity and conciseness requirement as set out in section 14(b). It is a requirement of the UKPA that the claims clearly and concisely define the scope which you wish to protect. It is important that the claims are clear and concise because if your claims lack clarity, then it is not possible for either the examiner to determine if there is any prior art that falls within the scope of the invention, or a third party to identify if they infringe your claim. Additionally, it is important that your claims are concise to enable a person to establish readily if they fall with the scope of your claims.
8.3.1
Clarity
A person of skill in the art should be able to determine what scope you are intending to claim by reference to the claims themselves only, without having to refer to the description. Firstly, this means that you shouldn’t claim by result – it is difficult to assess if you infringe in that case. For the egg-timer, for example, a claim reciting ‘An egg-timer arranged to aid boiling eggs for a more exact period of time’ would not only make it very difficult to assess whether a specific alleged infringement met this criterion, it would be rather obvious. The terms you use should be clear. Terms which may be considered to introduce ambiguity include: ‘wide’, ‘high’, ‘substantially’ and similar terms that require reference to something external to the claim to be understood. Such objections of ambiguity may be circumvented if it can be established either that they have a established meaning in the art (e.g. high-frequency amplifier) or if it can be established that the manner in which they are used does not introduce ambiguity. In the case of the egg timer claim reciting ‘An egg-timer having a base sitting flush on the bottom of a pan’ would be unclear as the alleged infringement egg-timer would be assessed on its own, with no pan to aid understanding. In practice, this means that the terms you use should be readily understandable and the claims should set out what you consider to be the essential features of the invention. In the EPO they recommend the use of the two-part claim, the first part setting out what was already known from the prior art with a second part setting out the differences provided by the present invention. This is not essential in order for claims to be clear, particularly outside the mechanical field, but it can be a useful structure. Certain art-specific terms are inherently objected to. For example, within the field of chemistry the term ‘alkyl’ without further specification is held to be vague. Therefore, in the example referred to herein, if R3 had been defined as H, halogen or alkyl, the claim containing this limitation would be unclear.
8.3.2
Conciseness
The concise element to the claim relates both to the claim drafting and to the number of claims. With respect to the individual claims, whilst in general you are free to use what ever language you feel is appropriate to best describe your invention, long descriptions that are unnecessarily repeated within a claim should be avoided. Additionally, objections will be raised if it appears that the number of claims is inappropriately high, particularly where there is more than one independent claim in any particular category. Hence, a first independent egg-timer claim referring to a spring-loaded cradle and a second independent egg timer claim calling the same component a resiliently biased receptacle would meet a conciseness objection. Patents Training Manual: Volume 1
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With respect to the chemistry example described in this chapter, it is to be expected that there will be one independent claim to composition of matter to the compounds, with dependent claims narrowing in scope. It would not be appropriate to also include other independent claims to composition of matter for these compounds, unless there was a particular reason why the full scope you were entitled to claim couldn’t be covered by the first claim. The aim is to avoid trying to cover the same subject-matter in multiple independent claims. It should be noted, however, that outside Europe multiple stabs at an independent claim in the same category can be permissible.
8.4 Support Often seen as more of a formal requirement, this simply stated is that the invention claimed needs to be supported by the application as filed. This requirement is closely related to the requirement for the invention to be sufficiently described (8.2 above) and the requirement that it is not possible for the application to contain added matter. However, unlike the sufficiency and added matter requirements, lack of support is only at issue during the examination of the application. Once the patent has been granted, lack of support is not available as a ground for revocation. It should not be assumed that only matter that is explicitly disclosed is supported by the description. Most claims are a compromise between the broadest aspects envisioned by the inventor and the specific examples that they disclose. Where the inventor has provided a novel principle that has a broad application in a field, then this will support a broader claim than if he has provided an extension of an already established area. The aspect of support is more closely related to sufficiency than to added matter, in that it cannot be satisfied merely by listing the relevant features of the claim in the description of the application. The issue seldom arises in the mechanical field, but taking the chemistry example set out above, it may be accepted that compounds where R1 is H or C1-C6 alkyl may be readily prepared by the methods described in the application. However, the preparation of compounds where R1 is halogen requires significant modifications to the methods disclosed, that are more than routine experimentation that would be expected by a person of skill in the art. Despite the fact that formally the claims are supported by the description, in that the terms of the claims can be found in the description as filed, it may still be held that the claims lack support as the claims are broader than may reasonably be expected based on the disclosure in the application. It is clear from this example, that this is related to the issue of sufficiency – namely that the invention is not sufficiently described to allow a person of skill in the art to produce compounds where R1 is halogen. However, there is a slight variation between the two criteria, in particular the barrier to proving insufficiency is higher: Lack of support – the description of the invention doesn’t support the claim in the area claimed i.e. the application doesn’t disclose how to make the claimed compounds. Lack of sufficiency – a person of skill in the art using the description of the invention and their common general knowledge couldn’t arrive at the claimed compounds, i.e. it would need to be demonstrated that a person of skill in the art couldn’t make the compounds. Merely being broad does not make a claim unsupported. Where the application discloses a novel principle that has broad application, this would justify similarly broad claims. For example, using our chemistry case, if the inventive contribution was how to achieve substitution on a cyclohexyl ring at
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the 1 and 4 positions, the nature of the substitutent being immaterial to the efficiency of the process, then this would justify broad claims. It is perfectly justifiable for the applicant to claim variations to the invention that he has disclosed that make no difference to the manner in which the invention works. An objection under lack of support arises when the invention claimed is broad but the disclosure is narrow and there is no description of how it might be applied in a more general manner. Finally, it should be noted that if you are claiming priority from an earlier filed application, the invention claimed must be supported by the initial priority document in order to be able to validly claim priority.
8.5 Unity of invention: section 14(5)(d) UK Patents Act 1977 The requirement of unity of invention states that the claims should relate to one invention, or to a group of inventions linked by a single inventive concept. If the examiner finds that your application contains more than one invention, they will require you to select one invention for prosecution in the presently pending application and it will be necessary to file divisional applications to pursue the remaining inventions. These divisional applications will benefit from the same filing or priority date as the original application (provided that the matter claimed was in the original priority document). Turning to the egg-timer example, possible claims in unity might be a claim to the apparatus – ‘An eggtimer having a spring loaded cradle etc…’ and to the method of ‘A method of boiling an egg comprising placing an egg in a spring loaded cradle, etc…’ However if a non-overlapping set of features gave rise to another advantage, then it might be necessary to draft a further independent claim not in unity, which could be ‘divided out’ of the application later as discussed below. For example, a timer which could be immersed in the water, automatically switched on at the boiling point and emitted an alarm on expiry, without the spring loaded cradle, could be separately useful and independently claimable. Taking our chemistry example here, whilst our compounds are novel and inventive, the ‘group’ of inventions linked by a single inventive concept could be considered to be: (a) composition of matter claims to the compounds per se (b) methods for the production of the compounds (c) uses of the compounds in the treatment of cancer It can be seen that, in this example, it is the compounds themselves that represent the ‘single inventive concept’; if it were to be found that the entire group of compounds were not novel, then there is no longer a single inventive concept holding these groups together, and thus it might be necessary to pursue these in separate inventions. An alternative finding in the example of the chemistry application discussed herein is that one of our options is not novel, e.g. compounds where R2 is CO and R1 and R3 are selected from the options claimed, were already known in the prior art.
R1
R2
R3
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Under these circumstances, the group of compounds would no longer be united by a single inventive concept, as there is a novelty destroying disclosure within the broader genus. It is likely that in these circumstances the remaining compounds, assuming they were still novel, might be considered to form three independent groups, where for each group the single inventive concept is the identity of the R2 group. A concept developed by the EPO is that disunity of invention may arise ‘a priori’ or ‘a posteriori’. A disunity objection ‘a priori’ arises where the claim covers a number of embodiments which are unlinked and where a search over the full scope of the claim would represent a significant burden to the examiner. In contrast, a disunity objection ‘a posteriori’ would be expected to arise where the claim on first inspection appears to relate to one invention, but during the search prior art is identified falling within the scope of the claim which indicates that unity of invention can not be maintained. The example given above relates to a finding of disunity ‘a posteriori’, where disunity of invention was apparent after an initial search had revealed a piece of prior art falling within the scope of the claims. An example of an ‘a priori’ disunity of invention will typically occur where the claims appear to cover a number of unrelated options. Consider, for example, a claim which reads: A method for treating green fly infestation on a rose bush selected from: (a) administering ‘rose clear’; (b) supplying a population of ladybirds to the plant; and (c) mechanically removing the infestation using a strong water jet. In this claim (setting aside the lack of novelty or inventive step), it can be seen that each of the proposed solutions to the claims is separate from the other and has no feature which might link it to any of the other proposed solutions. In this case, it might be expected that the examiner would raise an objection of disunity ‘a priori’ and ask the application to select which invention they would like to be the subject of the search. It should be noted that lack of unity is not a ground for revocation of your patent once granted. Therefore, if it becomes apparent after grant that your ‘single inventive concept’ no longer exists, this will not prevent the maintenance of the remaining novel and inventive claims once they have been granted as a group. Additionally, if it becomes clear during prosecution that the single inventive concept is no longer applicable, if the examiner doesn’t feel that there is an additional burden in examining the remaining claim scope, then they may not issue a disunity of invention objection.
8.6 Added matter One of the key restrictions on your ability to amend your application after filing is that you may not add any matter after the filing date. This will be discussed specifically with respect to three stages: pre-grant, post-grant and divisional application.
8.6.1
Pre-grant amendments
During examination, it is highly likely that you will need to amend your claims and, possibly, your description. Your ability to amend the application during the prosecution process is regulated by section 72(1)(d) UKPA or Article 123 EPC which state that one of the grounds for revocation of a patent is that it contains matter not disclosed in the application as filed. It is obvious to see that if, when amending your application you broaden the claims beyond what was disclosed, then this will represent additional matter. For the egg-timer, if it turned out that instead of spring loading the cradle you could just use some material that expanded upwardly when sufficiently heated, this information would need to have been in the application as filed, if you wanted to claim it subsequently. In our chemistry example used in this chapter, suddenly amending the claims to specify that R1 may be C1-C6 alkoxy would result in the claim covering compounds not included in the application as filed. This is an impermissible amendment as it adds subject-matter to the application as filed.
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However, it is possible to add matter, even if you are limiting the protection of the claims. To demonstrate this, consider the chemistry example discussed above: • •
Description: Examples:
•
Prior art: C6 alkyl (different use)
R1 = C1-C6 alkyl (only) R1 = C1 alkyl (only)
The desirable outcome to maintain the broadest scope for these compounds would be to narrow the claim to C1-C5 alkyl. That way the compounds would be novel over the prior art which is C6 alkyl, and assuming that the different use is different enough to the use claimed, it could also be argued that the prior art was not relevant for the assessment of inventive step. However, the application as filed does not have any language corresponding to a position between C1-C6 alkyl and the examples which disclose C1 alkyl. Therefore, once your broader language has been found not to be novel, the only option open to you for a valid amendment that does not add subject-matter, is to go to the examples, which state C1 alkyl. In an ideal world, your application as filed would be more along the lines shown below: • •
Description: Examples:
R1 = C1-C6 alkyl, C1-C4 alkyl, C1-C2 alkyl R1 = C1 alkyl (only)
Under these circumstances, you would then be free to ‘fall back’ to R1 being either C1-C4 alkyl or C1-C2 alkyl, both of which would avoid the prior art, whilst allowing a scope of protection broader than that specifically described in the examples. This may seem contrary to what you might assume, namely that as long as you are limiting the scope of your claims how can you be adding matter? However, the assessment of whether or not an amendment represents added matter is largely a formal one, judged by the assessment of the language used. If this was not the case, it would be possible to file extremely broad claims, then amend the application at will during prosecution, to arrive at claims that a) bear no resemblance to those originally filed and that b) were never imagined by the applicant on filing. Therefore, when drafting an application, which is discussed in more detail in chapter 12, it is important to ensure, in addition to including the broadest aspects you believe you are entitled to claim, that you include a number of fall-back positions. These fall-back positions should reflect aspects of the invention that you believe are crucial to the area that you need to maintain your exclusivity in and that you are increasingly confident that you can defend. For the egg-timer in the scenario mentioned above you might have a broad claim 1, therefore, reciting that ‘the cradle is arranged to be raised when a heating threshold is met’, claim 2 that ‘the cradle is spring loaded to release’ and claim 3 that ‘the cradle is provided on a heat expansion material…’. Taking the chemistry scenario set out at the beginning as an example, these fall back positions could reflect narrower definitions of the compound scope (e.g. specific substituents at one or more of the R positions as described above) or more specific uses of these compounds (e.g. in the treatment of specific cancer types). If these positions are not present in the application as filed, then your options to deal with issues or prior art that arise during the prosecution process will be limited. At the very least, these fall back positions should define intermediate levels between your specific examples and your broadest claims. It is not only with respect to the claims that the consideration of added matter arises. Any amendment to the application must satisfy these requirements. It is not permitted to add to the application further experimental information – for example the results of experiments described. Additionally, it is not permitted to amend the description in such a way as to result in additional matter. Corrections are permitted, i.e. where a typographical error or other obvious mistake has been made and it is obvious what the correction should be. This is not considered to add subject-matter as where both the mistake and
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its correction are obvious to a person of skill in the art, then it may be argued that someone familiar in the area would automatically read the appropriate value. For example, where the specification reads ‘the solution should be incubated at room temperature (approx. 200°C) for 24 hours’ a person of skill in the art will recognise the room temperature is more likely to be approximately 20°C than approximately 200°C and, thus, correction to the appropriate value does not result in the addition of matter. In contrast, if the application merely read ‘the solution should be incubated at 200°C for 24 hours’, whilst the same error may have occurred, it is no longer obvious a) that there is an error or b) what the true value should have been. Amendment in this situation would result in the addition of matter. When considering where the basis for the amendments may be found, the abstract and the priority document are not part of the specification, and therefore, basis for amendments may not be found here.
8.6.2
Post-grant amendments
If you need, or choose, to amend your patent after grant the same provisions apply as to pre-grant amendments, namely that you may not add any matter compared to the application as filed. There is a further restriction, however, and this is that the claims once amended may not be broader than those as originally granted. This restriction is there to protect the public; they should be able to have certainty that once a patent is granted the applicant cannot seek further protection (other than via a divisional application). Therefore, due care should be taken when seeking to amend a patent post-grant to ensure that both of these provisions are met.
8.6.3
The ‘inescapable trap’
When amending claims during prosecution a further reason why it is important to ensure that you meet the requirements of section 76 is to avoid falling into the ‘inescapable trap’. This issue arises where a feature is added during prosecution that limits the claims but this feature does not have basis in the application as filed. In this case, the feature represents added matter – as there is no basis for this limitation in the application as filed. However, deletion of this feature in opposition at the EPO (or other post-grant proceedings in national courts) results in broadening of the claims with respect to the scope obtained on grant. In this situation, if the applicant cannot find an alternative feature which has basis in the application as filed and which either maintains or limits the scope of protection compared to the patent as granted, then the patent will inevitably be revoked. This particular situation was discussed at the EPO in G1/93 and highlights the importance of considering carefully any amendments before they are made. An example of this might be where you refer in the application as filed to springs and you amend to limit to coiled springs only, the patent proceeds to grant but coiled springs were not specifically referred to in the application as filed. In this case, the added feature that the springs are ‘coiled springs’ has no basis and so represents added matter, but if you delete this feature from the claims as granted, the scope of the claims will be broadened.
8.6.4
Added matter and divisional applications
Divisional applications are entitled to claim the benefit of the earlier date of their parent applications but in order to qualify for this benefit they must satisfy a few requirements. Firstly, they must be filed whilst the parent application is pending – once the parent has granted the right to file a divisional application is lost. Secondly, they must not contain any matter that was not disclosed in the parent application as filed. If the divisional application contains matter which was not disclosed in the parent application as filed, it will not be entitled to the earlier date, but it is not fatal to the application itself. The effect will be that its filing date will be the date it was actually filed rather than the date when the parent was filed. The 1977 UK Patents Act does allow for the amendment of divisional applications to remove additional subject-matter in the event that the examiner finds that they contain matter not contained in the parent application.
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The EPO treats divisional applications which are considered to contain additional matter, in a similar manner and the Enlarged Board of Appeal has held that divisionals can be amended to rectify added matter and further, that they can extend to any matter within the parent application, whether or not originally claimed, as long as it was filed in the divisional as well. The availability of divisionals means that it is permissible, and often cost effective, to file an initial application with multiple claims which are not in unity, with a view to consolidating the claims, abandoning some or filing divisionals much later in its life.
Test your knowledge 1. May a patent be revoked for lack of support? 2. What are the restrictions on amendments made to an application pre-grant? 3. What requirements must a divisional application fulfil in order to obtain the benefit of the parent application’s filing (or priority) date? 4. If your application is found to be insufficient during examination is it possible to supply further experimental evidence? 5. What is the difference between disunity of invention ‘a priori’ and ‘a posterori’?
Suggested chapter answers and comments 1. No, although where a lack of support argument is apparent, this may often be considered as an added matter or insufficiency argument. 2. They may not contain any additional matter 3. Parent must be pending and it must not contain any additional matter compared to the parent as filed. 4. No – the sufficiency requirement must be satisfied on filing 5. Disunity of invention ‘a priori’ is where lack of unity is apparent from examination of the claims, before the search is performed. Disunity of invention ‘a posteriori’ is when lack of unity is found after a search.
Chapter review In this chapter, we have moved on from the formal discussions of the invention and begun to consider the requirements that the application has to fulfil, both at the time it is filed and throughout its prosecution. In particular, in order to obtain the 20-year monopoly for your invention it is essential that you provide a description which is sufficient to allow a person of skill in the art to perform your invention over the full scope claimed. The claims need to be supported by the description in the application as filed, they must be clear and concise and they must relate to just one invention or a group of inventions linked by a single inventive concept. Finally, the application, throughout its prosecution, must not contain any matter that was not disclosed in the application as filed. Patents Training Manual: Volume 1
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Further study Further chapters in this volume that should be read to accompany this area include the chapter on drafting (chapter 12). Inevitably the best way to become more familiar with these additional requirements is via practical experience. Therefore, the more amendments and drafting to which you have the have the opportunity to contribute, the more your understanding of each of these requirements will develop.
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Inventorship: Ownership of inventions and disputes about ownership
Outline This chapter deals with (1) the concept of invention and inventor, (2) the right to apply for a patent and the right to be mentioned as inventor; (3) ownership and co-ownership of inventions and patents; (4) the law and procedure of determining disputes about these matters; (5) remedies; and (6) the special position of employees’ rights.
Learning plan Prerequisites: For this chapter you will need to familiarise yourself with sections 7-13, 36-43, 72(1)(b), 82 and 125 of the Patents Act 1977 (UKPA) and Article 60 of the European Patent Convention. Special warning: Many of the original provisions of the 1977 Act relevant to this Chapter were amended by the Patents Act 2004 and the 1995 Rules replaced by the Patents Rules 2007. Rule numbers in this chapter have been revised to the 2007 Rules. Students must therefore make sure that they study fully updated versions of the Act and the Rules. Legal documents: Patents Act 1977 (as amended) Patents Rules 2007; Patents (Fees) Rules 2007 European Patent Convention, Arts. 60-61 EPC Implementing Regulations, Rules 14-15. Selected leading cases: Generally Viziball’s Application [1988] RPC 213 Henry Bros v Ministry of Defence [1999] RPC 442 (C.A.) Decision 3/92 (EPO), LATCHWAYS/Unlawful Applicant [1995] EPOR 141 Kakkar v Szelke [1989] FSR 225 Yeda Research v Rhône-Poulenc Rorer [2007] UKHL 43 (H.L.) Markem Corp. v Zipher Ltd [2005] RPC 31 p761 (C.A.) University of Southampton’s Applications [2005] RPC 11 p.220 and [2006] RPC 21 at p. 567 (C.A.) Transfer of jurisdiction Luxim Corporation v Ceravision Ltd [2007] RPC 33 p.797 Co-ownership Hughes v Paxman [2007] RPC 2 at page 34 Employees’ rights Harris’ Patent [1985] RPC 19 Patents Training Manual: Volume 1
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Memco-Med’s Patent [1992] RPC 403 LIFFE Administration & Management v Pavel Pinkava [2007] RPC 30 p.667 (C.A.) Kelly & Chiu v GE Healthcare Ltd [2009] EWHC 181 (Pat); [2009] RPC 12 Shanks v Unilever Plc & Ors [2009] EWHC 3164 (Ch) Trainer’s input: discuss own work to provide examples of entitlement or inventorship disputes or any past problems establishing ‘outstanding benefit’. UK Exams: P2 EQEs: Paper D Time allocated: One to two days. Syllabus link:
Learning outcomes By the end of this chapter, you will have knowledge of the principal elements of the topics in the outline. This knowledge will enable you to ask the right questions of your clients to ensure the designation of inventorship in their patent applications is correct and complete; draft preliminary opinions in ownership and inventorship disputes; prepare basic documentation and advise employers and employees about ‘compensation’ issues in a preliminary way while noting where you will need further information
9.1 General introductory remarks 9.1.1 Overview This chapter is slightly unusual in the context of the training manual as a whole because it deals with a rather more academic subject than some of the others we have examined and so requires careful attention to the legal aspects. This is partly because the statutory provisions relating to entitlement as set out in the Patents Act (UKPA) are very complex and partly because multiple detailed cases have been decided in this area, shedding further light on the statutory provisions. One of the main reasons for the complexity is that in many ways entitlement issues move away from the practical day-to-day matters that we tend to concentrate on and which are often driven by IPO practice to issues centering, effectively, around property and ownership laws. Furthermore, entitlement typically only comes up in inter partes proceedings where both sides have a significant interest in the matter which will always complicate matters. As a result, you will need to make sure that you have a copy of the UKPA close to hand and be ready to consider the statutory provisions very carefully in conjunction with the commentary in this chapter. Before looking at the issues in more detail, a few housekeeping points are worth making. This chapter deals with a number of situations in which inter partes, contested proceedings occur and those proceedings are subject to The Patents Rules 2007 (S.I. 2007 No. 3291). www.opsi.gov.uk/si/ si2007/20073291.htm. Rule 74 adopts the ‘overriding objective’ from the Civil Procedure Rules (CPR) for litigation and states that the Rules set out a procedural code with the overriding objective of enabling the comptroller to deal with cases justly. In so far as practicable, this may include ensuring that the parties to the case are of equal footing, the handling saves expense and is proportionate, for which in turn regard should be had to the amount of money involved, the importance of the case and its complexity and the parties’ financial position. The 2007 Rules have dropped the suffix ‘/77’ from the form numbers subsisting under the1995 Rules. A significant advance of the 2007 Rules relative to the 1995 Rules is that the those that relate to inter partes are no longer scattered all over them but rather have been grouped together so as to apply to
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all the proceedings that are mentioned in this chapter (Rule 73 et seq.; Schedule 3, Part 1). Lastly, it is to be noted that all the proceedings mentioned in this chapter are opposable by appropriately specified parties but opposition as such will not be dealt with in detail here.
9.1.2 Review of the principal points This chapter builds through various legal issues relating to the central question of entitlement and it is useful here to give a précis of the situation to assist you in navigating this complex area. The chapter starts by looking at the definition of ‘invention’ (9.2.1). In particular this term is not, in fact, defined and so various tests have been developed. We then look at who the ‘inventor’ is (9.2.2) and in particular look at the statutory definition that the inventor is the ‘actual deviser’ and how the case law has developed to interpret this. It is important to recognise that the inventor and the owner are by no means the same party in all cases and also that both inventorship and ownership can be disputed (9.3 and 9.4). At least in Europe, arguments over ownership are probably the more important as this determines who has the right to exploit the patent. We look at the basic position which is that all things being equal, the inventor is also the owner entitled to grant of a patent. However, for UK employees the invention and the ensuing patent will belong not to the employee-inventor but to the employer, if it was invented in the course of normal duties, although compensation may be available to the employee inventor as discussed in section 9.6. On this point, it is important to note that other countries may have different rules and whilst the UK will look to overseas laws if they are applicable to determine ownership, the reverse is not always true. For example, in the US, the inventor is always the applicant (although the case is usually that it is automatically assigned to the employer) even if the inventor was an employee employed in the UK. Patent applications can be filed by ‘any person’ but disputes arise over to whom the patent is granted; we have a detailed look at the nature of and issues that arise in such actions and then go on to consider issues surrounding co-ownership (see 9.5) and various related statutory matters. Of course, the patent can be assigned (transferred) or licensed. In this chapter we touch upon this extremely briefly but it will be examined in more detail in later volumes. Finally, at a practical level we recognise that most attorneys are unlikely to deal with entitlement issues regularly to the extent that they become contentious between parties, but that it is vital to understand the possible consequences of an error in ownership from the outset and to safeguard your client’s rights from the outset.
9.2 Concepts of the ‘invention’ and the ‘inventor’ 9.2.1 Invention The rules about who is inventor and thus who is the owner of a patent depend initially on the definition of ‘invention’ and ‘inventor’. ‘Invention’ is not defined in the Patents Act 1977 (as amended), (UKPA). Perhaps wisely, as a definition would be likely to restrict the development of the law. However, patentable inventions are defined by the exclusions in sections 1, 2(6), 4 and 4A of the UKPA while the extent of a patentable invention is defined in section 125(1) but note that by virtue of sections 125(3) and 130(7) the exclusions and the extent are heavily influenced by the European Patent Convention. So ‘invention’ is much broader than mere patentable inventions and certainly is capable of including all the matter excluded from the ambit of the UKPA.
9.2.2 Inventor ‘Inventor’ is, on the other hand, defined in section 7(3) by reference to a person being the actual deviser of an invention. So to be an inventor your invention does not have to be patentable even though the heading to section 7 mentions applying for and obtaining a patent. Patents Training Manual: Volume 1
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There have been many attempts by judges to explain ‘actual deviser’. They do not necessarily illuminate because they substitute one word ‘inventor’ with several words. One thing is clear: the inventor must be a natural person, it cannot be a legal person such as a company. Judges have evolved explanations such as ‘contributor to the underlying inventive concept’ (Henry Bros.; University of Southampton) and deviser of the ‘heart or hearts’ of the invention (Markem). Lord Hoffmann in Yeda approved Laddie J’s statement in University of Southampton that the inventor is a natural person who came up with the inventive concept; his/her contribution must be to the formulation of that concept and Lord Hoffmann went on: Deciding upon inventorship will therefore involve assessing the evidence adduced by the parties as to the nature of the inventive concept and who contributed to it... the inventive concept is a relationship of discontinuity between the claimed invention and the prior art. It is important to distinguish between contributing to the ‘heart’ of the invention and mere verification that something works and/or adding common general knowledge to that ‘heart’ (University of Southampton). As was said in Markem, there may be several ‘hearts’ and accordingly several inventors. While the enquiry about who is the inventor has nothing whatsoever to do with novelty and inventive step, and so prior art cannot be cited, in LIFFE Jacob LJ suggested that where there is clear lack of novelty the IPO should not waste its time determining the dispute to no effect.
9.3 Inventors’ rights 9.3.1 The right to be named Before looking at how rights to an invention are distributed it is useful to understand what rights the inventors have and the basis for disputes, to see why the issue is so important. By section 13 the, or each, inventor who is not also an applicant, shall have the right to be mentioned as such in the granted patent. This has to be done on Form 7: Rule 10. By section 13 the, or each, inventor who is not also an applicant, shall have the right to be mentioned as such in the granted patent. This has to be done on Form 7: Rule 10. Please ask for a paper copy in your office or study it on the IPO website at www.ipo.gov.uk/patent/pforms/p-pdfword.htm. This form need not be filed simultaneously with the application but if the application is not to be treated as withdrawn, it must be filed within 16 months of the earliest priority date, Rule 10. That period is mentioned in Part 2 of Schedule 4 of the 2007 Rules, which means that it is automatically extendable on request on Form 52 by a further two months (Rule 108(2)) and with discretion under Rule 108(3) by a further and final period not exceeding two months. Normally the inventor’s home address is required. This is because a copy of the form is sent by the IPO to the, or each, inventor mentioned in it. The purpose of this is to notify the inventor that another entity, the applicant, has claimed the right to apply for a patent for the inventor’s invention, enabling any error or wrongful statement on the form to be disputed. We will deal with inventorship and ownership disputes later in this chapter.
9.3.2 Exceptions to the right to be named There are some exceptions to having to name the inventor(s): see the 2004 Act, Schedule 2 amending paragraph (i) in section 123(2) [which deals with Rules and Rule-making], now confirmed by Rule 11. The effect is that it is possible for the inventor to apply to waive the right of his or her name to be mentioned before publication of the application, subject to a reason for the waiver to be mentioned in the waiver application and that reason finding acceptance by the comptroller. When the inventor seeks only his/her address to be suppressed, no reason need be given and the comptroller must accept the application of waiver. Moreover, the application of waiver may also be made by another person
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(usually, we expect, the inventor’s employer or assignee) as long as the applicant has identified the inventor(s) to the IPO, as required by section 13(2). This was thought to be necessary to protect inventors; in fields such as experimentation procedures on animals, inventors’ homes, being disclosed on the Form 7 which itself is publicly inspectable, became targets of unlawful harassment and physical attacks.
9.4 Inventorship disputes There are two basic situations: completely and partially incorrect mention of inventors. The latter subdivides into the omission of one or more actual inventors who should have been named, and the inclusion of inventors who should not have been named, or a combination of these.
9.4.1 Procedures for resolution The forum for resolving a dispute is the IPO. The procedure is laid down in section 13(3) and Rules 7687, within a framework laid down in Rules 73-75. Form 2 and a statement of grounds, both in duplicate, are to be used for initiating it: Rule 76. However, it is often the case that there is a concurrent inventorship and ownership (of the invention/application) dispute and in certain circumstances, discussed below, the IPO may transfer the ownership dispute to the court. There is, however, no corresponding power in the UKPA also to transfer the inventorship dispute. The solution is likely to be that the inventorship dispute is stayed by the IPO pending the outcome of the court proceedings. The remedies available to the comptroller are very wide in order to do justice to the dispute. Such a dispute may have practical significance even where none of the parties has any ownership rights in the invention/patent because it belongs to their employer (see the discussion of section 39 below at 9.6.2). In many industries an inventor may acquire kudos from being named repeatedly. Also, by virtue of section 40 (see 9.6.3 below) it does not seem possible for an employee to obtain any financial benefit unless his or her name is on the patent in question.
9.4.2 Seemingly unimportant to get it right? Getting it wrong is a potentially fatal mistake. Quite apart from avoiding disputes mentioned above, students will know that for most worthwhile or potentially important inventions their owner will seek corresponding protection in the US. In the US, getting inventorship wrong may be classed as ‘inequitable conduct’ by the owner (assignee) and this comes under the general heading of ‘fraud on the [US] Patent Office’. Depending on the facts and timing, the flaw or mistake may not be corrected and the patent be declared invalid. This warning applies equally to PCT applications that designate the US and enter the US national phase. Consequently, when receiving instructions to draft an application for a new invention, investigate thoroughly who are the actual inventors, having regard to what is said above at 9.2.2 about the ‘inventive concept’ or ‘heart’ of the invention. There will never be a better opportunity to enquire and to get it right!
9.5 Law and procedure 9.5.1 Ownership of inventions – entitlement As a starting point, to identify the owner section 30(1) specifies that a patent or patent application is personal property. As a consequence, the statutory provisions and common law rules of the law of property do apply to a patent or patent application. This has effects beyond the remit of this work but
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suffice it here to note that property has to be owned, the owner has to be a natural or legal person and dealing with the property has to be done in the prescribed manner. However, for most purposes, and the purposes of this chapter, it is safe to assume that (Yeda) the Patents Act 1977 (UKPA) ‘brings the property into existence, prescribes its incidents and determines who shall be entitled to enjoy it’. The rules for the grant of the patent are contained in section 7. Thus, Yeda has clarified that we must look to section 7 only for a substantive determination of entitlement issues, in this respect overruling Markem. Section 7 expresses, for patents, a general basic presumption about ownership of IPRs, namely that the inventor of an invention is prima facie its owner. However, this is a rebuttable presumption which can be overcome by contract between the inventor and a third party (usually but not always: a contract of employment between the employee-inventor and his/her employer) or by a rule of law, enactment, operation of law such as the law of insolvency or the law of succession. ‘Rule of law’ means a rule developed by the common law (non-statutory law) such as e.g. the law of confidence. Lord Hoffmann in Yeda called section 7 an exhaustive code for determining who is entitled to the grant of a patent. He emphasised the need not to confuse questions of entitlement with questions of validity. It is worth quoting this passage from his opinion: The [criteria for validity] are the well known and include the requirement of novelty, that the invention does not form part of the state of the art: section 2(1). By section 2(3), the state of the art includes matter contained in a patent application with an earlier priority date… This rule of novelty is the only source, in English law, of the principle that if two people independently make the same invention, the ‘first to file’ is the one entitled to a patent. In article 60(2) of the European Patent Convention the rule is stated expressly in those terms. But the important point is that the way this principle operates is not by supposing some meta-patent for which the two inventors are in competition and which is awarded to the first to file. The inventor first to file is the one entitled to a patent, not to the patent. The second to file is not entitled to a patent because the invention he claims lacks novelty by virtue of section 2(3): see Synthon BV v Smithkline Beecham plc [2005] UKHL 59… The ‘first to file’ rule is therefore a rule about validity, not about entitlement, and it can only cause confusion to muddle them up… If A claims that his inventive concept has been patented by B, the following may have happened: (a) B arrived independently at the same invention. In that case, B is entitled to the patent and A cannot apply to patent the same idea; (b) A communicated the information about the inventive concept to B without imposing any duty of confidence. In that case, the information will have been communicated to the public and B’s patent will be invalid for lack of novelty; (c) A communicated the information to B in confidence. In that case, the patent will be valid and A can claim entitlement. He is entitled, not because B made his application in breach of a duty of confidence but because he was the inventor. The duty of confidence goes to the question of validity under section 2 and not to the question of entitlement under section 7. Section 7(4) is important. It may be paraphrased as: the onus is on a referrer to prove that the applicant, or one of the co-applicants, is a usurper.
9.5.2 Pre-grant disputes Section 8 deals with disputes ‘at any time before a patent is granted for an invention, (whether or not an application has been made for it)’. It also lists various scenarios of the dispute, the forum for settling it, namely the IPO, and the corresponding remedies that the IPO may order. Note that ‘patent’ by virtue of section 130(1) means a patent under the UKPA. The IPO has separate jurisdictions to deal with overseas patents, see sections 12 and 82, discussed below.
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By Rule 7 the procedure-starting document is, again, a Form 2 and a statement of grounds, both in duplicate. Section 8 introduces special language for such disputes: the request to the IPO is called a ‘reference’ while the person seeking an adjudication is called a ‘referrer’ and the other side resisting the reference is called an ‘opponent’. Note that the IPO will notify the reference to, basically, any interested third parties such as (i) holders of rights recorded in the Patent Register, i.e. licensees and holders of a security under the patent application (not applicable to pre-filing disputes, of course); (ii) any applicant to record any transaction relating to the property; and (iii) the or each inventor. Section 8 proceedings can be quite protracted (see the procedural timetable in Rule 77-80, most of which are relatively easy to extend). Where the proceedings are started in respect of a patent application, the chances are that they will not have terminated before the period prescribed under section 20 for putting the application in order for grant has expired, then by virtue of section 9 the reference continues as if made under section 37, that is, as if the reference had been made after grant. The existence of a reference runs wholly in parallel with normal search and examination and does not slow those proceedings down. Because section 8 proceedings may be brought in respect of an invention, i.e. not necessarily a patent application, let alone one with claims, ‘invention’ must be given a very broad meaning (Viziball). Thus its quality, i.e. novelty and inventive step, are not assessed in the proceedings. Instead, as mentioned above, the task is to identify the main and subsidiary (if any) inventive concepts and then working out who made, or contributed to, them. With regard to remedies, the UKPA and Rules confer very wide discretion on the IPO to make order as they see just – except the power to revoke, in these proceedings, the contested patent. Also, while the IPO has no power to deal with disputes about ‘pure’ breach of confidence or breach of contract disputes, it does have the power to adjudicate in such matters involving inventions (Markem). Most of the remedies enumerated in section 8 speak for themselves and readers should read the section carefully. Notable remedies include the power to order the disentitled matter to be excised from the disputed application and, if desired, to file a new application for the excluded matter with such application being ante-dated to the date of the disputed application. This provision ensures that such a replacement application cannot be deprived of novelty by any use or publication of the original application. Note also that the section and associated Rules contain elaborate provisions for notifying all interested parties; and by virtue of section 11(3) and Rule 90 there is provision for the protection from infringement proceedings of licensees or applicants of good faith who have started to work the invention in the original application. The IPO has power to transfer disputes to the court where it appears to it more appropriate for the court, with its stricter and wider powers, to determine the matter: section 8(7). The topic of transfer will be further discussed under section 37 (see below).
9.5.3 Post-grant disputes Depending on the nature of the disputes, various sections are applicable post-grant. As mentioned above, section 9 provides a mechanism for continuing post-grant references started pre-grant and unresolved by the deadline for putting the application in order for grant. For European patent applications the situation is different. As will be seen (section 82), the jurisdiction of the IPO in respect of them is much more restricted, but if it subsists, the EPC permits applications to be stayed, i.e. suspended: Implementing Regulations (2007), Rule 14 (previous Rule 13) and see LATCHWAYS (Decision G3/92 of the EPO Enlarged Board of Appeal). Section 10 gives the IPO power to handle as it ‘thinks fit’ disputes between joint applicants. The remedies have varied widely in order to give justice, from giving an unco-operative co-applicant a free, personal, non-assignable, non-revocable licence under the application transferred to the other coPatents Training Manual: Volume 1
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applicant to ordering that IPO correspondence relating to substantive examination of the application should be sent to the agents of both parties pending resolution of the dispute. The procedure-starting document is, again, a Form 2 and a statement of grounds, both in duplicate. Section 11 deals with the situation where rights have already been granted to third parties, under the original application before the filing of the reference and the application is transferred under section 8 to at least one person who was not an original applicant. Notably, where the determination under section 8 results in the original applicant(s) being wholly replaced by new owner(s) and the original applicant or its licensee had acted in good faith in working the invention in the UK or made serious and effective preparations to do so, the good-faith entity is entitled to a non-exclusive licence for a reasonable period on reasonable terms: section 11(2)-(4). Mutatis mutandis, section 11(3A), introduced in 2005, gives such good-faith-entities the right to a licence from the new applicant. Section 12 essentially extends the provisions of section 8 to non-UK patent applications and the ensuing granted patents. Non-UK in this context includes applications under the EPC (subject to section 82, see below) and the PCT. Literally, section 12 is inapplicable if all the non-UK cases have proceeded to grant but it is believed that granted patents can be brought into a reference so long as there is at least one pending foreign application. As with section 8, pre-filing referrals are possible and thus ‘invention’ must be given the corresponding broad meaning. By section 12(7) ‘patent’ includes protection equivalent to a patent abroad; so for example it probably covers SPCs, utility models, certificates of utility and the like ‘petty’ patents. Again, as with section 8, in disputes the referrer may be a co-applicant or a third party. By Rules 73 and 74 and Schedule 3, the procedure-starting document is, again, a Form 2 and a statement of grounds, both in duplicate. As there is no provision in the UKPA for non-UK applications corresponding to section 13, a reference under section 12 may include inventorship disputes: Staeng’s Patent [1996] RPC 183. Where a dispute has been determined against a party which then refuses to sign any necessary documents, the IPO has power to sign on that party’s behalf (e.g. an untraceable or recalcitrant inventor, for US applications) although it is by no means clear that the relevant foreign authority would necessarily accept such a substituted signature. With regard to practice, if the IPO makes an Order changing the inventor or an applicant, make sure the record is corrected at all of the foreign offices; ask the IPO to impose this requirement on the losing party. Where there has been a determination under section 8 in respect of a UK patent application, proceedings under section 12, in respect of the foreign applications covering the same invention, would not be entertained by the IPO as being res judicata. Mutatis mutandis the remedies available under section 12 are as for section 8, above. Note, however, that once entitlement proceedings have commenced, a European application is stayed (suspended) until the proceedings terminate and cannot be amended: Article 61 EPC and Rule 15 EPC. In LATCHWAYS, decision G3/92 of the EPO Enlarged Board of Appeal, the Board accepted that it is not a precondition for a replacement application to have been validly filed that the original disentitled application should still be pending. Section 37 deals with ownership determinations after grant and in most respects is interchangeable with section 8 and 12 (per Court of Appeal in Hughes). Hence only special features not already discussed above will be mentioned. The counterpart to section 11 is section 38 (effect of transfer) but neither it nor the associated rules contains anything new relative to section 11. Section 37(5) and (9) contain time bars in respect of proceedings before the IPO and the court, respectively. As a matter of public policy, no entitlement proceedings may be brought more than two years after the date of grant of the patent. The only exception to this is where the usurping owner knew
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that at the time of grant (or at the date when it acquired the patent) that it was not entitled to it. It is noteworthy that the language is not one of an objective test (a reasonable person would have known) but of a subjective test, ‘knew’. It is not clear, and here is no precedent to guide us, how one can establish what the proprietor ‘knew’. The Yeda case is instructive in relation to the time bar. In simplified form: Yeda scientists invented a new cancer drug which made use of monoclonal antibodies belonging to Rhône-Poulenc Rorer (RPR). They sent details (in effect) to RPR who filed their own patent application, eventually granted on 27 March 2002. On 26 March 2004, i.e. within the two-year limit, Yeda applied under section 37 to be joint owners and their scientists to be co-inventors. Outside the two-year period, Yeda then applied to amend their statement of claim to become sole owners. The IPO thought this was permissible but the High Court and the Court of Appeal thought this was a new claim and was thus statute-barred. On further appeal to the House of Lords, Lord Hoffmann stated: A statement accompanying a reference to the IPO under section 37 is not analogous to a claim form asserting a cause of action in the sense of the Civil Proceedings Rules or the Limitation Act 1980. Rather, such a reference is governed by its own limitation period and its own rules, hence argument whether amended claim is a new one or not is irrelevant. The Patent Rules 1995, rule 100 [now rule 82] confer very wide discretion on the IPO to allow amendments. Here the true question is and always was: whether amendment of the statement of case/facts would make the reference a new reference. As the essence of the reference was not changed, ‘who is the true owner of the patent?’, the amendment was not statute-barred and the statement may be amended. While under section 8, 12 and 37 the proceedings are required to start at the IPO, there is nothing to stop a party from seeking suitable declarations from the court, e.g. that party A holds a patent or application on trust for party B. Where such a ‘device’ did not work, refer below to the Kakkar case under section 82. It is also common to section 8, 12 and 37 proceedings that where an order has been made permitting a replacement application to be made, that application must be filed within three months of the order. Section 82 is a severely cut-down counterpart of section 8, 12 and 37 for European patent applications and section 12 is expressly disapplied in section 82(2). The obvious reason for restricting the IPO jurisdiction is that a European patent may not have any connection with this country. The EPC Protocol on Recognition is determinative as to which national court of an EPC member state has exclusive jurisdiction. By section 82(3) the section applies only to a question arising before the grant of a European patent. By section 82(4) the IPO has jurisdiction if either the referrer or the applicant has its residence or principal place of business in the UK. However, if the parties so agree in writing, the IPO may make an ownership determination where otherwise it would not have jurisdiction. The facts in Kakkar were somewhat complex but the Court of Appeal declined to entertain an application for a declaration of constructive trust against the proprietor, neither qualifying under section 82(4), because it saw through the application as one in essence asking ‘who is the true owner?’ which did not fall within its jurisdiction.
9.5.4 Transfer of disputes from the IPO to the court Entitlement disputes have, as we have already seen, alternative entry level for litigation: the IPO, as prescribed by the UKPA; or the court. Normally, however, things start at the IPO but the UKPA provides the option of transferring it to court if the referred question involves ‘matters which would more properly be determined by the court’: section 8(7), 12(2). Such matters may e.g. be when the dispute is connected with complex other claims such as breach of contract under a foreign law or an intricate case of breach of confidence. Until recently there have not been clear guidelines on when to transfer. The IPO has been notably reluctant to do so, citing Parliamentary intention to confer jurisdiction on it. But now the Luxim case has Patents Training Manual: Volume 1
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provided some principles. It states that there is no bias in favour of retention of cases by the IPO. Complexity of case was the decisive factor. The IPO has to assess complexity in a neutral way in relation to the different areas where different technical, factual or legal issues could arise and overall need to judge whether to transfer against the powers, expertise and experience of a hearing officer as compared with those of a judge.
9.6 Co-ownership As has been stated already, patents and patent applications are property. Property may be co-owned. English law recognizes two forms of co-ownership: joint ownership (the survivor acquires the deceased co-owner’s notional share automatically) and tenancy in common (where ownership of a deceased owner’s share devolves to his/her personal representatives). Section 36 deals with the co-ownership by declaring that, in the absence of agreement to the contrary, each co-owner is a tenant in common, expressed as being ‘entitled to an equal undivided share in the patent’. What does this mean in practice? Equal undivided share means that: • each co-owner may exploit the patent wholly independently of, without having to account to or share the proceeds with, the other co-owner(s); • such exploitation cannot be an infringement of the other(s)’ share of the patent and this immunity also extends to contributory infringement (section 60(2)) to a co-owner’s supplier and to a reseller of a patented product (defined in section 130(1)); but • no co-owner may deal with its share as property (sell, license, mortgage, etc.) without the other(s)’ consent; and • no co-owner may apply to amend or revoke the patent without such consent. In certain circumstances, the IPO or the court can override the provisions of section 36 even in the absence of agreement between the parties. The Court of Appeal in Hughes held that the IPO did have the power to grant a licence in a situation where a co-owner refused to agree on the basis that ‘Parliament could not have intended it to be possible that exploitation of an invention could be frustrated by a deadlock between co-owners’. In exercising this discretion the IPO had to act rationally, fairly and proportionately so as to produce a fair commercial solution when co-owners could not agree. Disputes between co-owners are handled under section 8(1)(b), 12(1)(b) and 37, with the same form and procedural rules as mentioned above.
9.7 Employees’ inventions This covers sections 39-43 of the UKPA and some preliminary points need to be made to avoid confusion with matters discussed in this chapter until now.
9.7.1 Status of the employee Firstly, obviously but sometimes overlooked, the inventor has to be an employee. That word has been the subject of considerable case law outside the field of patents, for the status of employee can give rise many important rights, e.g. not to be unfairly dismissed. Secondly, being an employee requires the existence of an employer and a contractual relationship, a contract of employment, to exist between them. That relationship requires certain irreducible minimum of obligations of each party to the other: see Ultraframe v Fielding [2004] RPC 24 at page 479 (C.A.) approving Ready Mixed Concrete v Minister of Pensions and National Insurance [1968] 2 QB 497. It also requires personal service on the part of the
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employee (no deputies) and control of the employee by the employer, e.g. prescribing the place and hours of work, the duties, etc. Note that ‘employee’ and ‘employer’ occur in the list of defined terms in section 130(1) but they do not particularly help. In most cases there is a proper written contract spelling out the terms which leave no doubt as to the status of an inventor as being an employee. But there are many areas of difficulty, such as consultants. Normally, consultants are independent contractors and not employees and entitlement disputes involving them would be handled under one of sections 8, 12, 37 or 82. But some care is necessary in that some people holding themselves out as consultants are in fact employees and are treated as such by HM Revenue & Customs. Ask about their PAYE status. Secondees can also be a problem; whose employees are they? Check the contractual arrangements. University staff may present problems: some of them may be ‘office holders’ rather than employees. Check their appointment and contract to see what they have been contracted to do: just teaching? Research and if so, into what? They will not be further discussed here. It is important to note that section 43 contain provisions which modify the meaning of the word ‘patent’ occurring in section 39-42 from the conventional meaning derived from section 130. Firstly, section 43(4) makes it clear that ‘patent’ includes a non-UK patent or application including EPC and PCT matters. Secondly, ‘patent’ for the purposes of these sections includes ‘other protection’. Quite what that term covers is still somewhat shrouded in mystery. Most agree that petty patents, Gebrauchsmuster, utility models are covered. Perhaps more controversially, copyright and design rights are considered by many to be covered also. The support for this is set out below when discussing section 39. In addition, section 43 puts a gloss on the applicability of the word ‘employee’ for the purposes of sections 39-42 in the case of employees working abroad.
9.7.2 Rights to employees’ inventions Section 39 is a complete, self-contained code for determining ownership of employees’ inventions (LIFFE). Note that the section deals with inventions, i.e. again the existence of a patent is not necessary for the section to be invoked. It is the first statutory provision to deal with employee inventions; previously the question was determined by principles developed by the common law. The preamble to section 39(1), ‘Notwithstanding anything in any rule of law’, makes it clear that the common law rules have been swept away. That subsection then goes on to prescribe two tests for the employer to qualify for ownership but before discussing them, it should be noted that by section 39(2) it is stated that all other inventions belong to the employee. One consequence is that shared or joint ownership is excluded: either subs. (1) applies or subs. (2). It might also seem to follow that it is for the employer to prove that it is within section 39(1) and thus owns the invention. But the normal rules of civil litigation apply: the claimant must prove its case on the balance of probabilities. Most (but not all) cases under section 39 are brought by employees and in such cases the quasi-presumption in section 39(2) appears to have no effect. Section 39(1) lays down a two-stage test for determining ownership. The first stage involves determining the status of the employee and the nature of his/her duties. The subsection recognizes that there are essentially only two types of employee for these purposes: ‘ordinary status’ employees and ‘higher-status’ employees. The dividing line between the two will not always be obvious but as para. (b) of the sub-section indicates, the latter have a ‘special obligation’ to further the employer’s undertaking, this obligation being due to particular responsibilities arising from the nature of the [employee’s] duties. This focus on the employee’s duties is key to understanding the section. For ordinary employee-inventors, the first stage is to establish whether the invention was made in the course of their normal duties, or, as a variant, duties which are outside the normal duties but have Patents Training Manual: Volume 1
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been specifically assigned to them. ‘Normal duties’ require an examination of the contract of employment with its express and implied terms and its consensual variations as well as what the employee actually does day-to-day. In LIFFE, Jacob LJ (rather unhelpfully, we submit) insisted that as the statute says ‘normal’, that is the word we should use and not, e.g. ‘ordinary’ but that does not help to clarify the scope of ‘normal’. Where he was, however, helpful is where he said that examination of day-to-day duties may be inadequate because sporadically performed duties may well still be normal; and that duties evolve, expand or contract, with time. So a duty which at first was specifically assigned may become normal. But in the end one is asking: was the employee employed to innovate; and what general sort of areas his or her duties of innovation covered. It is wrong to focus overly on day-to-day duties because the employee’s normal duties extend to other matters which would be of commercial interest to the employer. The second stage of enquiry for employees of normal duty (para. (a) of subsection (1)) is to ask whether the circumstances were such that an invention might reasonably be expected to result from the carrying out of those duties. The word ‘reasonably’ indicates an objective test. Both Harris and LIFFE agree that ‘an’ means ‘an’ and not ‘the’, i.e. not the invention the ownership of which is in question but an invention generally. At the same time Harris makes it clear that this does not mean any invention whatsoever, but rather one that arises from the performance of duties. In LIFFE, the Lords Justices disagreed on one issue: in relation to ‘might reasonably be expected’, are the personal attributes or abilities of the employee-inventor relevant? Said Jacob LJ: I cannot accept that… there can be a difference as to ownership depending on whether the employee is thick or brilliant. Why should an unimaginative employee get the invention because no-one expected him to come up with anything whereas an Edison… has to hand it to his employer?
Two Lords Justices and the judge below said ‘yes, relevant’ but Jacob LJ said ‘irrelevant whether the employee is “thick or brilliant”’; it was dangerous to enquire into personalities. For para. (b) employees, the focus in the first stage of enquiry is still on duties. But such employees have wide-ranging duties, not merely innovatory but also, for instance, managerial. The nature of these higher-level duties means that the employee has certain responsibilities which give rise to a special obligation to the employer. In other words, by virtue of the status in the hierarchy and duties of the employee, s/he is in a kind of position of trust such that it would be unconscionable for the employee to try to hold the invention against the employer. See the facts, amusing in some respects, of Harris. Because the ownership regimes under different IP rights are not necessarily the same (cf. section 11 and section 215 CDPA 1988; section 2 Registered Designs Act 1949) it may occur that an employee invention belongs to the employer under another Act or the common law but to the employee under the 1977 Act (UKPA). In those circumstances, the employee could not exploit the invention for fear of infringing the employer’s rights. Section 39(3) comes to the employee’s rescue by, in effect, granting him or her immunity from copyright and design right infringement. It is submitted that ‘design right’ encompasses both unregistered and registered designs. The existence of section 39(3) tends to support the argument raised above, namely that the ambit of the phrase ‘other protection’ (which section 43(4) applies to sections 39 to 42 to widen the meaning of ‘patent’) could include copyright and design rights so long as they are ‘inventions’.
9.7.3 Compensation for employees Section 40 sets out circumstances in which an employee may get money, quaintly called ‘compensation’ in the UKPA, and section 41 lists factors to take into account when calculating how much compensation may be paid. These two sections run on two parallel tracks. Track 1 – section 40 (1) and section 41(4) – covers the situation where under the ownership determination under section 39 the invention has always belonged to the employer. Track 2 – section 40(2) and section 41(5) – provides for the case where
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a determination of ownership under section 39 was resolved in favour of the employee who then subsequently assigned his/her rights to, or exclusively licensed, the employer. Section 40(1) stipulates the following conditions before compensation may be paid to an employee in Track 1 situations: • the employee’s application for compensation is made within ‘the prescribed period’ which by Rule 91 is one year from the date when the patent ceased, e.g. by surrender, expiry, lapse due to nonpayment of the appropriate renewal fee, revocation; • the employee made an invention belonging to the employer for which a patent has been granted (‘patent’ having the extended meaning given by section 43(4)); • the invention or the patent or a combination of them is of outstanding benefit to the employer, having regard inter alia to the size and nature of the employer’s undertaking; and • for these reasons it is just to award compensation to the employee. In the case of track 1, any employee claims for compensation must be brought on the basis that the patent, or the patent and/or the invention since the UKPA was amended in 2005, is of outstanding benefit; by contrast, for track 2, the employee need only show that the benefit received from the contract of assignment is “inadequate” in relation to the benefit derived from the patent by the employer. The claimant for compensation has the choice of forum: the IPO or the court, which may be the High Court (Patents Court) or, in England and Wales, the Patents County Court. If the application is made to the court, CPR Part 63 applies. The amount of compensation to be paid is to be determined in accordance with section 41 so that a just and fair award is made in the light of all evidence available, that neither limits the employee to compensation for loss or damage nor places him/her in a strong a position as an external patentee or licensor. This valuation is to take place ex-post rather than ex-ante so that the evidence of the benefit of the patent may be taken properly into account. Note that ‘benefit’ is defined in section 43(7) as being in money or money’s worth. The requirement to have regard to the size and nature of the employer’s business means that a benefit of an absolute sum, e.g. £1m, may be of outstanding benefit to a business with an annual turnover of £1/3m while not being particularly significant to a mega-business turning over £1bn. On the issue of what is ‘just’ it is not clear what might make it not ‘just’ to make an award if all the other criteria have been fulfilled. Perhaps it refers to cases where the employee has behaved badly, dishonestly, etc. There are no cases to help explain. Again, the lack of case law hampers our understanding of the relative term ‘inadequate’ in section 40(2). It is important to note that the employee who has licensed the employer may only be entitled if the licence is an exclusive licence (defined in section 130). By section 40(4) one cannot contract out from Track 2 cases. For Track 1 cases the same effect is achieved in practice by section 42(2), below. Bearing in mind the definition of ‘patent’ in section 43(4) embracing overseas ‘patent’ rights, it is important to include in any claim for compensation the entire family of ‘patents’ based on the invention in question. For example, many UK inventions earn most of their profits in the USA (as was the case in Kelly and Chiu, discussed next. The first and only successful employee claim to be brought under section 40(1) and section 41(4) is that of Kelly and Chiu v GE Healthcare which concerned a patent for a radioactive imaging agent sold under the trade mark Myoview. It is instructive to contrast this case with the Memco-Med case. It was not in dispute that by virtue of section 39(1), the inventions made by Drs Kelly, Chiu and others not parties to the proceedings vested in their employer. It was made clear that the patent must have been a cause of the benefit (and not the invention, as the patent was filed before the 2005 amendment) but does not have to be the only cause, although it was determined that the ‘other Patents Training Manual: Volume 1
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protection’ mentioned in section 43(4) does not include regulatory data exclusivity (RDE) regimes which do not give monopoly rights. The benefit of the patent in suit was assessed and deemed to be outstanding, which was defined by Mr Justice Floyd at para 60 of the judgment as: ‘Outstanding’ means ‘something special’ or ‘out of the ordinary’ and more than ‘substantial’, ‘significant’ or ‘good’. The benefit must be something more than one would normally expect to arise from the duties for which the employee is paid.
To isolate the benefits of the patent to Amersham, and subsequently GE, Floyd J suggested that, following Memco-Med, it was necessary to assume that Myoview had gone ahead, but without protection, and compare an estimate of how it would have performed against the actual profits, thus isolating the benefit of the monopoly. In valuing the benefit, it was stated that: Where actual benefits have been achieved from the patent, the proper approach must be to take those benefits into account. A royalty negotiated for the bare invention does not take these benefits into account. A royalty negotiated in the knowledge that the invention has led to a successful product would be likely to be an order of magnitude higher than… 1%.
Evidence was presented from both sides as to the value of the patents and the amount the compensatory award should be. Floyd J placed what is considered a ‘very conservative’ value of £50m on the patent and considered that 3% of this value would constitute a just and fair award to the claimants, which was split between the employees according to the value of their individual contributions; Dr Kelly received 2% and Dr Chui 1%. There was nothing in the evidence to compel the judge to find that it would be unjust for compensation to be paid. Track 2 starts with section 40(2). The elements of it are: • the patent and/or invention was always owned by the employee but was subsequently assigned or exclusively licensed to employer (‘the contract’); • application for compensation is made before 1 year from the ‘cesser’ of the patent; • the patent and/or invention does not have to be outstanding, instead a comparison has to be made between the respective benefits derived by each party to the contract; • the employee’s benefit must be ‘inadequate’ relative to the employer’s benefit; and • there are no equitable factors against paying the employee (‘just’).
9.7.4 Amount of compensation The overriding principle here is stated in section 41(1): the amount must be such as will secure ‘a fair share’ of the benefit the employer has derived or may be expected to derive, from the patent and/or invention, either in Track 1 or Track 2. The elements of section 41 are set out in section 41(4) for Track 1 and section 41(5) for Track 2. No useful comment or paraphrase can be made of these provisions beyond reading the actual words! The position of employees for compensation can be very unclear and unsatisfactory where the employer has sold the invention or patent to a third party and it is the latter which reaps the major part of the benefit. It seems that in such cases the employee’s only recourse is against the proceeds of the sale. However, where the sale is to a ‘connected person’, that is, a person connected with the employer, the benefit to that entity is brought into the equation. (‘Connected person’ is term of art of tax legislation.) This should be borne in mind in frequently-occurring arrangements where a group of companies has an IP-holding/licensing company and the patents are transferred to that company which of course is not the inventor’s employer. One recent judgment may assist the inventor-employee. The case of Shanks v Unilever concerned the interpretation of section 41(2) of the UKPA, not changed by the amendments to the UKPA in 2005.
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Professor Shanks developed a measuring device for use in diabetic testing kits whilst an employee of Unilever Central Resources Ltd (CRL). A patent was awarded to CRL but was later assigned to Unilever’s parent company, Unilever plc, for a nominal sum. Professor Shanks brought an employee inventor compensation claim against Unilever under section 40(1) of the UKPA at the IPO. Integral with this claim was a request for the hearing officer to clarify the meaning of section 41(2) of the UKPA , the interpretation of which could have a significant bearing on the amount of compensation awarded. Section 41(2) states that where there has been an assignment (or licence) from the employer to a person connected with the employer, the amount of the benefit of the patent to the employer is to be assessed as the amount which could reasonably expected to be derived if ‘that person’ were not connected to him. The IPO hearing officer found that ‘that person’ means the actual assignee (minus its connection to the employer). Professor Shanks appealed the decision to the High Court. Mr Justice Mann disagreed, deciding that ‘that person’ means a notional, unconnected arms-length purchaser. He explained that any other interpretation of section 41 could result in a loophole for employers: an employer could assign a patent to someone connected to them, such as a spouse who has no interest in exploiting the patent, in an attempt to evade or minimise an employee inventor compensation claim. The judge considered it to be absurd to use such a transaction as the basis for compensating an employee. Although Unilever plc licensed the patent to a number of third parties, earning an estimated £23m as a result, it also accepted that a reasonable licensing deal to an arms-length purchaser would have yielded in the order of US$1bn in royalties. This huge jump in the potential market price of the patent could significantly increase the amount of compensation which may be awarded to Professor Shanks, whose claim is ongoing. The decision may mean that the amount of compensation due to the employee may now be based on the market price of the patent. This is obviously regarded as a positive outcome for inventors who may be considering filing a claim for compensation. Some sweep-up matters in section 41: • the compensation order may be for a lump sum or for a periodic payment or both; • a refusal of an application for compensation does not prevent further applications being made; and • an order for compensation made may on application by either employee or employer be varied, suspended or discharged.
9.7.5 Enforceability of contracts of employment Section 42(2) and (3) are both very important in practice. They and their interrelationship came up for an examination in the LIFFE case, as will be seen below. To paraphrase section 42(2), any term in a contract of employment which diminishes the employee’s rights in an invention made by him/her is unenforceable to that extent. So, for example, a term which purports to prevent an employee from making a claim for compensation is void. Similarly, any contract term purporting to oblige the employee to transfer to the employer ownership (or any other right such as an automatic licence) in an invention which under section 39 belongs to the employee is unenforceable. In LIFFE, Jacob LJ read section 42(2) together with section 39 and he usefully stated that section 39 alone determines ownership of employee inventions and section 42(2) is both an anti-contracting-out mechanism and a means for controlling with overstated/exaggerated duties laid down for employees in their contracts. An unresolved issue is the question to what extent section 42(2) impacts on employers’ requirement to employees to disclose their inventions to them, especially where the employee may believe, rightly or wrongly, that the invention belongs to them under section 39(2) and, therefore, they should be able to file their own application without telling the employer. However, it is believed that in most circumstances section 42(3) resolves the conundrum. Patents Training Manual: Volume 1
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Section 42(3) declares that nothing in section 42(2) derogates from the duty of confidentiality owed by an employee to his/her employer ‘by virtue of any rule of law or otherwise’. The main rule of law is the term, usually express but if not express, definitely implied, in every contact of employment, namely that an employee has the duty to keep the employer’s secrets secret. (For a general review of the law of confidentiality, which is outside the scope of this chapter, see Faccenda Chicken v Fowler [1986] FSR 291and Lancashire Fires v S.A. Lyons [1996] FSR 629.) In most cases, any invention made by an employee builds on preceding inventions and existing trade secrets, confidential data, proprietary information and formulae, etc., in short, matter not in the public domain with the necessary quality of confidentiality, owned by the employer. If, therefore, employees who made an invention making use of such matter but overall actually belonging to them were to make their own applications without disclosing them first to their employers, they would run the risk that when their applications are published by the IPO, the confidential information would be put in the public domain, thus breaching their duty of confidentiality. Jacob LJ recognized this issue in LIFFE. He read section 42(3) as modifying section 39: ‘…although section 39(1) is a complete code, it lets the common law back in via the concept of “duty” [of confidence]’; and ‘Parliament cannot have intended such a stalemate’. Here he really dealt with the issue of ownership but by parity of reasoning the law of confidential information will normally also deal with the diminution of rights/disclosure dilemma. Any employee reluctant to disclose his/her invention and patent application(s) filed for it should be warned not to permit unauthorised disclosure of the employer’s confidential information and to make sensible disclosure to, and discussion with, the employer regarding ownership and confidentiality issues. Sweep-up matters in section 43: • Elsewhere in this chapter we have already discussed section 43(2) which disapplies sections 39-42 to employees employed outside the UK. Also discussed above are the important provisions of section 43(4) applying these sections to UK and foreign patent rights and modifying the meaning of ‘patent’; and that by section 43(7) benefit includes money’s worth. • Other issues: death! If the employer or employee dies, their personal representatives will stand in their shoes, in compensation matters; so e.g. account is taken of any benefit derived by such personal representatives. There is a curious insertion in subsection (5A) to limit the employer’s benefit from the invention to the time up to the date of cessation of the patent.
9.8 Practical considerations As can be seen from this chapter, it is important, at the outset, to understand who the inventor is, what their nationality and residence is, who, if anyone, employs the inventor and in what capacity. Prior to filing a patent application this information can ensure that the application is filed in the correct name. Even if the position is wrong it can be tidied up subsequent to filing (as ‘any person’ may file a patent application) but this is clearly less than desirable. It is also vitally important to bear in mind that it is not possible to recover the right to claim priority if a later patent application is filed by someone who is not the applicant or his successor in title to the earlier application for which priority is claimed. Again, therefore, the more care that is taken at this stage the better. It is important to recall that different jurisdictions apply different rules to ownership so that additional paperwork may be required even though the entitlement is settled at home. For example in the US, even though the originating UK application may have been correctly filed in the name of the employer it must be filed in the name of the inventor and an assignment filed out. It is also worth bearing in mind that some jurisdictions simply refuse to have anything to do with entitlement. For example, the EPO makes it clear that they will abide by the finding of a national court although they do
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apply some rules as to which court they believe has jurisdiction. In a very large proportion of cases, the matter of ownership is uncontentious and uncomplicated. It is vital, however, to recognise that if it does go wrong then it can go very wrong because parties fighting over who owns the patent are often playing for very high stakes. In the same way, although the rules on co-ownership are well defined and two co-owners at the outset may seem like the rosiest newly weds, if matters break down they can do so very quickly and so a pre-nuptial agreement is worth considering. This chapter has not looked in any detail at how transfers of patent applications (for example, assignments) are handled as this will be examined later in further volumes. At the basic level, however, the approach is very simple as set out in section 30 of the UKPA. It is important to recall that there are benefits in registering or recording transactions with the IPO (section 33). As we move towards more complex transactions such as detailed licensing models or the increasing market in buying and selling patents wholesale, the transfers and corresponding documentation become more complex and will be looked at in more detail in later volumes.
Test your knowledge 1. Turn to 9.2.2. May a computer be an inventor? The Copyright, Designs and Patents Act 1988 recognises that computer-generated works may be protected by copyright and unregistered design right. Consider your response and discuss this with your trainer. 2. Consider Lord Hoffmann’s comments (9.2.2). Discuss whether this statement is helpful in determining who is the inventor when no application for a patent is made, e.g. because the invention falls under one of statutory exclusions. 3. In LIFFE, Jacob LJ made some comments that brought the Lords Justices in the case into disagreement (9.7.2). Do you agree with Jacob LJ or the majority? Discuss your thoughts with colleagues and your trainer.
Suggested chapter answers and comments As with chapter 2, the answers to the above will be formed as you become more experienced in your practice. Take time to consider your own reactions and those of colleagues around you. Your attitudes may be subject to change. Try to take a similarly questioning approach when reading case transcripts and other legal opinions so that you develop your legal skills further.
Chapter review This chapter has looked at the legal requirements involved in inventorship and ownership disputes. The chapter should equip you with the factors to consider and the questions to ask when you are asked to act to one of the parties to the dispute.
Further study In view of the recent implementation of the provisions of the Patents Act 2004, there is little literature to recommend except for the CIPA Guide to the Patents Acts with its latest updating supplement; the the 6th edition is dated 2009.
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Infringement and claim interpretation
Outline Whether a patent has been infringed involves two questions. First is (1) whether the object or process alleged to infringe is actually what is covered by the claim and second is (2) whether what is being done with it is an act that the law reserves to the patent holder. Answering the first question itself has two parts: (1a) determining the true meaning of the claims, which is often termed ‘interpreting a claim’ or ‘determining the scope [or breadth] of a claim’, and then (1b) checking whether the alleged infringement falls within that meaning. Determining the meaning of a claim is a core skill of a patent attorney; while this obviously needs to be done if a client asks whether they infringe a patent, the question also, and more frequently, arises when considering the issues of novelty and inventive step because those questions are answered using the same definition of the invention, namely that provided by the claims. The second question is often straightforward since patents regulate most kinds of economic activity, for example, sale. However, there are exceptions for activities that are not really economic activity or are activities to be encouraged, or at least not discouraged by a patent, for economic or other policy reasons.
Learning plan Legal documents: • Patents Act 1977 (UKPA) • European Patent Convention (EPC) (1973 and 2000) & Protocol on the Interpretation of Article 69 EPC • CIPA Guide to the Patents Acts • Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46 (www.publications.parliament.uk/pa/ld200304/ldjudgmt/jd041021/kirin-1.htm) • Catnic v Hill and Smith [1982] RPC 183 (HL) • Improver v Remington [1990] FSR 181 • PLG Research v Ardon [1995] RPC 287 (CA) • Mayne Pharma Pty Ltd, Mayne Pharma Plc v Pharmacia Italia SpA [2004] EWHC 4258 • Mayne Pharma Limited, Mayne Parma plc v Debiopharm SA, Sanofi-Sythelabo [2006] EWHC 1123 • Mertz Pharma GmbH & Co K GaA v Allergan Inc [2006] EWHC 2686 • Journal of the German Association for the Protection of Intellectual Property at [2006] GRUR, Heft 9, 720 Trainer’s input: The trainer needs to discuss claim construction when reviewing the trainee’s case work. These discussions should try to develop the trainee’s sensitivity to ambiguity in the claim and judgement as to which interpretation points are important and as to how they are reasonably resolved. The trainee should be encouraged to prepare for review of work by highlighting passages in the description of the patent, or application, that shed light on claim interpretation points, ready for discussion with the trainer. Examination and infringement and validity work provides the fullest examples, but drafting also provides an opportunity to develop sensitivity to claim ambiguities. Syllabus link: UK Exams: P2 and P6 EQEs: Paper C Patents Training Manual: Volume 1
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Time allocated: It will take several hours to study and note this chapter and the statutes and cases referred to. The topic is, however, somewhat abstract without real examples but the material needs to be borne in mind whenever considering a patent, whether for an infringement and validity opinion, an examination report, or when drafting.
Learning outcomes Determining the scope of a claim is an issue on which you will need to develop both a sensitivity as to how the wording of the claim might mean different things, and judgement, to decide which meaning is the one to be preferred. That judgement involves knowing from whose perspective the claim should be judged and to what standard. Your skills in this area will need a fair amount of practice to develop. Fortunately, many such issues arise in the prosecution of patent applications, less often when giving opinions on infringement. Prior art can give rise to new questions as to how a claim is to be interpreted. Patent office examiners often provide new perspectives with their own claim interpretations, which you will need to check so that, for example, you can explain to the client that they have a point, clarify the claim by amendment, or persuade the examiner that yours is the better interpretation. In most real cases the answer as to whether the act of infringement is one proscribed by law is simply ‘yes’. However, you need to be aware of what the exceptions are, so that when they arise you remember to look up the details.
10.1 Infringement 10.1.1 With which act does one infringe? We start with a brief look at the second question (2). The law is set out within the UKPA. Section 60(1) defines which acts infringe a patent, in the following terms: 60-(1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say – (a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise; (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; (c) where the invention is a process, he disposes of, offers to dispose of, uses or imports any product obtained directly by means of that process or keeps any such product whether for disposal or otherwise.
You will see that where the invention is a product, section 60(1)(a), the acts of making, disposing of (which covers sale), offering for disposal, importation and keeping cover pretty much all types of economic activity, e.g. manufacturing, distribution, retail and end use. Where the invention is a process infringement is simply by use, and the direct product of a process is also covered in the same way as a product. There is, occasionally, the legal question of whether the act done with the invention is covered by the wording of section 60(1), for example, who is in law the importer, but, for example, the meaning of ‘making’ causes fewer problems.
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10.1.2 Contributory infringement In accordance with section 60(2) one can also infringe by the supply of ‘means, relating to an essential element of the invention, for putting the invention into effect’. This kind of infringement is called ‘contributory infringement’. If it is suspected you will need to check for the conditions set for its application in section 60(2) and the exception for the supply of a ‘staple product’ in section 60(3).
10.1.3 Exceptions to infringement Sections 60(5) to (7) list various exceptions to infringement. They include certain exceptions for private and experimental use, for farming, for aircraft and shipping, for extemporaneous preparation of pharmaceuticals. You need to be aware of these exceptions so that if the suspected infringement involves those areas you can check whether the exceptions apply. Some of the exceptions, for example, experimental use, have case law to study.
10.1.4 Who is the infringer? The importance of this question is that you need to identify the infringer in order to complain to them about the infringement or to take action against them in the courts. The infringer is obviously the person who does the infringing act that you have identified. Usually infringing articles are made by one company and then are traded down the supply chain. The patent owner will not always want to take legal action against all of these. The patent owner will, generally, want to sue the manufacturer of infringing items, but traders further down the chain may well be customers of the patent owner as well as customers of the infringing manufacture. The patent owner might win a case against a trader but then be damaged by a trader not buying their goods having taken offence at being sued. Traders can, however, also be cooperative in providing information as to who supplied them with the infringing items. Taking action against private consumers will generate bad publicity and is unlikely to generate much in damages. Another aspect of this question is jurisdiction. If infringing items are traded between countries, then it is likely that different parties will be the infringers in each jurisdiction (assuming that there is an equivalent patent in force in each).
10.1.5 With which thing does one infringe? We return to the first question (1). Section 60 refers to the invention as the object or process that is to be made, kept, etc.. The patent specification, of course, provides all sorts of information about the invention: examples, definitions, advantages, explanations of function. So, which of this information is used in determining whether there is infringement or not? This is not done by reading all of it and freely determining whether the alleged infringer has taken some important idea belonging to the inventor. Such an investigation would be long and with uncertain outcome. As we have seen in other chapters, instead the applicant for a patent has to provide, for the purpose, their own definition(s) of what the invention is, namely the claims. Indeed, historically, applicants volunteered claims before they became compulsory in order to avoid the court second guessing them as to what the invention was. The provision of claims in the specification is specified at section 14(2) and their use in the assessment of infringement follows from section 125, which says: (1) For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly. (2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above. Patents Training Manual: Volume 1
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(3) The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article. [bold added]
So the claims define what the invention is for the purpose, inter alia, of infringement. The section also provides some first guidance on how to interpret the wording of the claims, namely look at the description and the drawings. This, however, is not the only law on the issue; section 125 refers to the European Patent Convention (EPC), in particular to the Protocol on the Interpretation of Article 69 of the Convention. Not only that, but the Patents Act 1977 (UKPA) also includes, at section 130, a list of sections which are supposed to be interpreted in the same way as those of the EPC. 130 (7) Whereas by a resolution made on the signature of the Community Patent Convention the governments of the member states of the European Economic Community resolved to adjust their laws relating to patents so as (among other things) to bring those laws into conformity with the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-Operation Treaty, it is hereby declared that the following provisions of this Act, that is to say, sections 1(1) to (4), 2 to 6, 14(3), (5) and (6), 37(5), 54, 60, 69, 72(1) and (2), 74(4), 82, 83, 100 and 125, are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention, the Community Patent Convention and the Patent Co-operation Treaty have in the territories to which those Conventions apply. [bold added]
Simply referring in the UK provisions to the provisions of the EPC, rather than restating them in different words, may have been clearer, but that did not happen, so we need also to study the Convention and hope that the two versions of the law are in agreement. European Patent Convention 1973 (Post EPC2000 version) Article 69 (1) The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
[bold added. EPC2000 deleted the words ‘the terms of’ after ‘determined’. This change is not thought to be significant in itself, being rather a clarification of the language.] Both section 125(1) and Article 69(1) say that the claims define the extent of protection but that the claims are interpreted in the light of the description and drawings. Protocol on the Interpretation of Article 69 (Post EPC2000 version) Article 1 Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties. Article 2 For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.
The Protocol, therefore, gives some more detailed guidance on interpretation, namely on how to apply the description and drawings when interpreting the claims. There is more on this below, particularly at 10.4.
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10.2 Checking the claim against the infringement 10.2.1 Scope of the infringement Having determined the meaning of the claim, the next step (Question 1b) is to check whether the alleged infringement falls within that meaning. A claim by convention (and by regulation to a greater or lesser extent around the world) is structured as a noun phrase having an opening phrase giving the general class of the invention followed by a list of features, which limit the general class. To infringe, an alleged infringement must fall within this definition; thus for the conventional form of claim the alleged infringement must be of the general kind identified by the opening phrase of the claim and also have all of the features listed. In particular we concentrate on the, or each, independent claim – as discussed at 10.5.8. If this is not infringed, then the dependent claims cannot be infringed either. Consider the following claim: 1. A can opener comprising: a head unit comprising: a rim engaging member, and a lid cutter, the lid cutting member being mounted, on the rim engaging member, to rotate, and a grip a manually operated handle, and drive means so linking the handle to the lid cutting member that operation of the handle causes the lid cutting member to pivot about the rim engaging member. (The italics are not part of this claim but have been added for the purpose of this discussion.) Checking whether this claim is infringed is simply the process of checking that the alleged infringement is a can opener and that it has all of the items listed, which have been picked out in italics. This process is called reading the claim on to the infringement. This, obviously, can be done simply by reading down the claim while having the alleged infringement in view. However, in order to show your working to your client, your opponent, the court, etc. you may well want to tabulate your findings, for example:
Table 1 Item
Location in infringement
Can opener
The article does open cans and is intended for the purpose Top end in figure
Head unit Rim engaging member
Slot
Lid cutter
Sharpened wheel
Pivot
Wheel rotates about axle
Grip
Indentations on lower half
Handle
Rotating handle in upper half
Drive means
Gears mounted on handle and cutter
An alternative approach is to label a picture of the infringement with the features of the claim (either using the wording or by associating index numbers with the features and writing those on the picture). When reading the claim on to the alleged infringement, it is important not to let any analysis of the claim into separate features, or shorthand for the features, both of which the above table employs, lose any requirement of the claim or generate any requirement not in the claim. For example in Table 1 there is an item called ‘pivot’. There is no requirement in the claim for a pivot as such; this is shorthand for the requirement of ‘the lid cutting member being mounted, on the rim engaging member, to rotate’. So whether the infringement actually includes something that can be termed a ‘pivot’ is not an issue. Patents Training Manual: Volume 1
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10.2.2 Hypothetical and actual infringements Opinions on infringement can be hypothetical e.g. ‘If we were to make the widget shown in the attached engineering drawings, would we infringe patent GB7654321B?’ To answer this question, the potential widget needs to be specified in enough detail. If not enough detail is supplied, you will have to insist on it, giving guidance as to the area in which more detail is required. If the point is narrow enough, you might be able to say you will infringe if you do A but not if you do B, but it would be preferable to see a detailed example from your client of their implementation of B – it may come back different from what you imagined. For the question of whether an actual past or current act infringes it needs to be based on evidence as discussed next.
10.2.3 Evidence of what the alleged infringement actually comprises What an alleged infringement actually comprises is, in many cases, immediately apparent from a sample. Sometimes drawings or photographs also provide the information needed. Samples of some products do not, however, yield up their information so easily; for example, integrated circuits are both microscopic and encapsulated in black epoxy resin, and most chemicals are a white powder or clear solution. Such things will need to be analysed. Often this can be done by your client and, if not, they will probably know who can do the analysis. Otherwise you will have to do some research to find a suitable expert or laboratory. Samples can often be bought on the open market. For consumer products buying one personally yourself can be done without raising suspicion about your motive, which would otherwise result in non-delivery of your sample. For other products, it may be better to have a private investigator buy it. For industrial products your client may be able to place an order through a trader.
10.2.4 Evidence of the act of infringement Generally, for it to be worthwhile giving an opinion on an actual infringement there has to be at least some suspicion that an infringing act is actually taking place in a country that has patent protection (preferably the UK, if you are based there). If you only have a suspicion then, in fact, you are only giving an opinion on whether the sample (or the supplied description of it) falls within the claims. Evidence of the act of infringement can, for example, take the form of the invoice for the sample on to which you are reading the claims of the patent. In any event, you need to show that the evidence of the infringing act relates to the goods that are the same as the sample. (For example, you might come across a shipping note for a batch of product shipped to the UK, but only be able to buy a sample in another jurisdiction. The question is then whether they are the same products.)
10.2.5 Summary so far We have so far looked, albeit briefly, at all the elements of the process of determining whether there is infringement, namely interpreting the claim and checking whether the alleged infringement is covered by that and whether the alleged infringing act is of a prohibited kind. Now for some more detail.
10.3 General principles of claim interpretation 10.3.1 Selecting claim interpretation points You may think that the above process was simple enough, and, as was noted, there is to be no general investigation as to what the invention really is, so why does the claim need interpreting? The answer is that nearly every word and phrase is ambiguous and the true meaning of a claim needs to be resolved by selecting the correct meaning from the many possible. A classic example (given, for example, by psychology professor Steven Pinker (chapter 7 of the The Language Instinct) is that the phrase ‘time flies like an arrow’
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without any clue of context has at least five different meanings. An average sentence has been reckoned to have typically a few dozen meanings. It is an amusing exercise to try to find them all (but note that you will be lucky to do that, a computer program usually being employed to reach such totals). The different meanings arise both from resolving the words of the claims into grammatical structures, e.g. which word/phrase qualifies which (and in which way), and from the different meanings of the same word. For example, with respect to the tin opener claim in 10.2.1, one might ask whether the grip is part of the head unit or not; the indentation of the claim suggests not, but it is by no means certain. And what is a ‘head unit’ anyway; perhaps it is something at one end, but to what extent does its identity have to be separate from that of the rest of the device? Another question would be in what sense is a ‘grip’ required, e.g. does it grip something else or is it to be gripped by the user? Such ambiguities can be identified by considering the claim in the context of the patent (and indeed you should do that) but many will only occur to you when reading the claim on to the alleged infringement. Fortunately, most of these questions are easily and even subconsciously resolved (especially once you have read the description) and it is not usually necessary to create a vast table of possible meanings with pages of argument for and against each. On the other hand, if your inclination is always to assume that there is only one particular meaning then you will need to develop your sensitivity to the issue somewhat. Once you have that sensitivity you can end up at the other extreme with many possibilities to consider. This is not a bad thing in that you are more likely to find the ones that matter, and the list of possibilities to consider can then be reduced in number quickly by discarding the irrelevant. Indeed, often many points will make no difference as to whether the alleged infringement is covered or not by the claim; such points are not worth your client’s or the court’s time. Others are easily resolved; if you would feel really embarrassed arguing a point to the court to your side’s advantage or explaining it to the client when justifying your bill, then the point is probably not worth a great deal of effort . So the points to be selected for interpretation are the ones that make a difference to whether there is infringement and where there is some real issue as to the true meaning.
10.3.2 Judicial guidance on interpretation The controlling case in the UK on interpreting claims is: Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46. The judgment, which is very clear and readable, can be found at www.publications.parliament.uk/pa/ld200304/ldjudgmt/jd041021/kirin-1.htm. The judgment of the House of Lords, in particular of Hoffmann LJ, who has a long association with the issue, is, of course, essential reading (so do it now). I do not address it here point by point but look at some particular issues in claim interpretation. However, for example, the judgment has a lot to say about the process of interpreting claims and also on ‘equivalents’, namely things that fall outside the claim (or an overly literal interpretation of it) but which nonetheless still have the inventive concept. If you detect any difference between the remarks in this chapter and those in the judgment then, of course, the latter are to be preferred.
10.3.3 Context and viewpoint to use when interpreting a claim Context is what you use to resolve the meaning of any words. In the case of a claim, the description and drawings are the immediate context and are the only one mandated by section 125 and Article 69. Reading the description carefully is, therefore, an essential step in interpreting the claims. This should come as no surprise since most claims make no sense whatsoever without doing that (and it was deliberate that the can opener example above was of a highly familiar item with nothing new about it so that no description had to be provided for you to understand it). Ways of using the description and drawings to interpret the claims are discussed in section 10.4 below. The viewpoint to use is that of the person skilled in the art who is trying reasonably, objectively and fairly to determine what the words of the claim should mean to them. We are also supposed to make a Patents Training Manual: Volume 1
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‘purposive’ interpretation of the patent. This means taking its purpose into account. The purpose of a patent document is to communicate an invention to the public, tell them how to realise it and to define, using the claims, what protection is sought. It is the patentee who gets to write the patent so if the patentee gets the scope of the claim wrong and claims the inventive concept too narrowly leading to no infringement or too broadly, leading to invalidity, then there can be little sympathy; again there is therefore no mandate to reinvestigate what the scope of protection should have been.
10.3.4 No file wrapper estoppel Estoppel is the legal principle that a party cannot, in some situations, argue contrary to statements that they have made previously. In the US, when interpreting a claim, statements made by the applicant to the United States Patent and Trademark Office (USPTO) when prosecuting a patent can be taken into consideration. These statements are, of course, to be found in the USPTO’s file for the application, which is called the ‘file wrapper’. For example, if an amendment is said to be made to exclude a particular piece of prior art from the scope of the claim then the relevant words of the claim will be interpreted by the court so that they do in fact do that. Since only the description and claims are to be taken into account in accordance with section 125 no such statements may be taken into account when interpreting a UK patent. There is some sense to this divergence. File wrapper estoppel in the US, apart from being essential to go with their view of ‘equivalents’, is perhaps a result of the US courts viewing the patent as a contract between the USPTO and the applicant. In the interpretation of contracts, one can rely on statements made by the parties during the negotiation procedure and so, similarly, statements made by the applicant during the negotiation with the USPTO, i.e. the application procedure, are relevant. In the UK, on the other hand, trends in patent claim interpretation have followed those found in the interpretation of statute law. The rationale for this is that a patent is (unlike a contract) a public law artefact whose prohibition of what can be made or sold, etc applies to everyone. Statutes are similarly interpreted from the viewpoint of a member of the public trying fairly to make sense of the words used in the statute. (Only recently has one even been able to look at Hansard reports on parliamentary debates to see what parliament or ministers said the law would mean, but that is only used as a last resort; recent patent infringement cases, however, suggest that a parallel move in this direction, i.e. towards looking at the application file, is not going to happen in the foreseeable future. On the other hand, none of this is going to stop a patentee from pointing to the application file to highlight their consistency of interpretation and by implication the outlandishness of their opponent’s interpretation, or conversely their opponent, if they can, pointing to the application file to highlight the inconsistency of the patentee’s interpretation and cast doubt on the veracity of their arguments.) A short history of patent interpretation in the UK is given in 10.6 below.
10.4 Use of the description and drawings in interpretation The description and drawings, as noted previously, provide all sorts of information about the invention, which can be used to resolve the meaning of the claims.
10.4.1 Covering the examples One function of the description is to provide working examples of the invention. Indeed, in most specifications, it is explicitly said that the examples are examples of ‘the invention’. Therefore, meanings of a claim that cover the examples are to be preferred over ones that do not. Some examples of this are given below on the section on the ambiguity of terms, but the principle applies to other kinds of interpretation problems. Note that there is a definite will to make the claim cover the example, because the law says that the claim is to be interpreted in the context of the description. This is different from interpretation of the claim in relation to the infringement and ‘equivalents’, where, as discussed below, there is no such drive and interpretation is not to favour the infringement.
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It may not always be possible to have the claim cover the example without altering its meaning in way that cannot be borne by the words of the claim. At this point, it just has to be accepted that the claim means something else, and it may be that the patent does not describe the invention so interpreted in sufficient detail for it to be made or performed. In some cases, it may be that the claim covers some of the examples and not others, even with a reasonable will during interpretation to make it cover all examples. This is not an impossible conclusion to reach and occurs from time to time when the claim has been amended during the application procedure but deletion of the no longer relevant examples has been overlooked. (Sometimes such examples are not deleted but are introduced in such a way as to make it clear that they are different to the invention or are only part of it; the claim should then be respectively interpreted not to cover them or so that only the relevant elements of the claim read on to them.)
10.4.2 Reference numerals Often you will see reference numerals in claims, especially if they are in a European patent. According to Rule 43(7) EPC2000, a reference numeral does not limit the claim to precisely to the thing in the description and drawings that the reference numeral denotes. Therefore, the generality of meaning of the wording is not altered merely on the basis of the reference numeral. However, if there are alternative meanings for a feature of the claim a meaning that reads on to the item in the description denoted by the reference numeral is to be preferred over one that does not. If there is more than one reference numeral given for a feature of the claim then that feature should cover all of the items in the description denoted by them.
10.4.3 Advantages and disadvantages Statements of the disadvantages that the invention solves or advantages that it provides (surprising or otherwise) are generally helpful since an interpretation of the claim in which the invention provides those outcomes is generally to be preferred to one that does not. This needs some care, however, as you need to take into account to which aspect of the invention the advantages relate. For example, a particular advantage may only arise with certain embodiments of the invention. That the advantage comes only with a particular preferred feature is not always stated explicitly by the specification; in some cases that will only become apparent when you have understood from the specification how the invention works. Most likely, you will judge that the skilled person will have worked that out too and so will conclude that it is not essential for the invention in the form of the independent claim, which does not have the particular preferred feature, to deliver the advantage when you are trying to work out what that claim means. The same point can also arise if the specification includes plural independent claims to different inventive concepts; you will have to work out to which claims the advantage applies.
10.4.4 What the invention actually is It was noted above that there is to be no general reinvestigation as to what the invention actually is and that the claim is to be relied upon to tell you that. However, the specification is to be read purposively and one of its functions is to explain what the invention is. So you are not prohibited from using the description to decide what it is. The difference is that you do not have the freedom to pick out what in your opinion would have been a good thing to have claimed. Instead you need to find in the description the thing that the claim was meant to claim (from the viewpoint of the objective skilled person reading the specification) and then use that to clarify its meaning. This is circular but, of course, you are only looking for consistency between the claims and the description. Recitation of advantages is not the only way that the description tells you what the invention is. There may be statements about what features the invention has that particular piece of prior art does not. You need also to understand thoroughly from the description, how the invention works (or in some cases how it is made); it is perhaps this information that most often makes claims that are by themselves Patents Training Manual: Volume 1
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incomprehensible into ones that are utterly and immediately clear. If some ambiguity remains, go back to the description and work out whether the invention described there actually does what the invention claimed would do if it meant each of its possible meanings.
10.4.5 Claim terms being used in description The particular words used in the description for components of the invention will not always be the same as those used in the claim. The purpose of the claim is to define the invention in general terms and not, for example, limit the claim to one of the examples. Therefore, words used to describe a feature or component in the claim will generally be broader than those used in the description. Sometimes you will have to provide the mapping between them yourself, but often the mapping is provided for you by the patent. This can be done in different ways. One way is to provide sentences giving the mapping explicitly. For example, ‘The spars A and B are joined by a bolt and washers threaded by the bolt are placed in the gap between them. The washers therefore provide a minimum gap setting means,’ where the ‘minimum gap setting means’ is the term used in the claim for that item. Another way is for a high-level or generalised example of the invention to be provided using the terminology of the claim to explain the relationship between the parts. A common example is a block diagram in which the blocks are given the names of the items of the claim (often with later figures showing details of the blocks). Note that the block diagram will not necessarily have the same number of blocks as items listed in the claim, but this does not stop you identifying one of the blocks as corresponding to a particular item of the claim.
10.4.6 External sources of context The description and drawings will not answer all interpretation questions by themselves. The meanings of some terms may remain obscure and perhaps some relevant details of how the invention operates, or what it in fact amounts to, are puzzling. The description and drawings, therefore, have to be interpreted further before they can be used to illuminate the claims. This should be done from the viewpoint of the skilled person who is trying reasonably, objectively and fairly to determine what the words of the description should mean to them. Dictionaries and uses of terms in other documents that would be known to the skilled person can be employed to provide definitions, but these are suggestions only and it still needs to be considered whether a particular definition is what the skilled person is likely to have taken the patent to mean by the term. Technical experts, such as your client, or independent expert witnesses, if it comes to litigation, can provide useful information in this respect (although it is often the case that they are merely confirming what a sensible reading of the document would have revealed anyway). If details in the description are scant or there is an apparent conflict in what has been said, then the laws of physics, logic and the technical facts of the field can be applied to work out what was meant. If extreme effort is required in this process, it may point to the disclosure being insufficient and, hence, the patent invalid. Given that the language of the patent was fixed at the filing date, it is unlikely that facts discovered, or definitions forged, subsequently are going to be relevant to this process.
10.4.7 Use of the infringement as context The alleged infringement is not part of the context used to determine whether there is infringement. You are trying to come to an objective view of what the patent means; the alleged infringement would not be known to a member of the public reading it and, in any event, the alleged infringement is not part of the context you can rely on according to the law. Of course, for the sake of efficiency, one needs to look at the alleged infringement to determine which points need to be interpreted, but once that selection has been made, the infringement should generally be put out of your mind. It would not be fair to an infringer to make a choice of which interpretation of the claim to prefer simply in order to ensure that there is infringement. (See, however, see 10.6 on equivalents.)
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10.5 Types of interpretation problem We have looked at some of the interpretation issues that arise at a general level, but it is worth considering these in more detail.
10.5.1 Ambiguity of terms Many words have more than one meaning. Take for example the word ‘set’ in the sentence ‘Set the jelly on the table’. This might mean place the jelly on the table or cause the jelly to become solid while it is on the table. These meanings are quite different, but the context of the patent specification is likely to tell you which is meant. For example, if the jelly is not yet on the table and is already solid at the point this instruction is to be followed, then the placement meaning is the true one. The word ‘determine’ is a more difficult example. For example, what does it mean in the sentence ‘Determine the level of the signal’? It could mean ‘Measure the level of the signal.’ or it could mean ‘Exercise some control on the signal so that its level becomes a known value.’ In the ‘set’ example it was quite clear that either one or the other of the two meanings was meant. But for ‘determine’ it is at least arguable that it can have a general meaning that covers both measurement of and control of the variable. If the patent were to give examples of the invention of both kinds, one where the variable is measured and one where it is controlled, then this general meaning is well supported. If there is an example of only one kind then it would be more difficult. Here, you will have to consider what the description says about the invention: particularly, for example, how it works and what advantages it has and see if those exclude the other kind. If the description makes a general statement that the idea is that the signal coming out of whatever produces it is at a known level, then that would support the general meaning since both measuring it and fixing it do that. This example contrasts with the ‘set’ example because there is not a general meaning of set that covers both putting something down and turning it solid. (This of course is a bold assertion and if you can think of a context in which it is untrue the author would be pleased to know.)
10.5.2 Consistent interpretation It is perhaps stating the obvious that all aspects of the interpretation of the claim need to be consistent. So, this is a quality check that you should make on your own interpretation of the claim. For example, it can be very easy to interpret a claim term in a first way at one point in the claim and in another way later in the claim. If you are not sure which of the two meanings is right, try reading the claim using just one of the interpretations consistently, then just the other – often only one interpretation will then make sense. Once an interpretation of a claim has been arrived at, it can sometimes take a while to spot an inconsistency. So, for your own interpretations, the advice can only be to take care and keep the possibility in mind. When considering other the other side’s interpretation, it can pay to come to your own interpretation first before studying the other side’s view too closely (since you may not make the same mistake yourself and the opponent’s error will then be plain). I say error because advancing an inconsistent interpretation knowingly would be a bit desperate and risks looking foolish when the inconsistency is pointed out. If you start with the other side’s interpretation you can then be drawn into it. A common source of inconsistent interpretation is concentrating on one feature of a claim and reading that on to a feature of the alleged infringement and then doing the same for a second feature but forgetting a linkage in the claim between the two features.
10.5.3 Feature hierarchy within a claim The can opener claim at 10.2.1, for example, has a hierarchy. This needs to be respected when reading the claim on to the alleged infringement. In the can opener example, if the rim engaging member and the lid cutter are not part of something that can be called a head unit then the claim is not infringed. In this case, one would probably expect to find the rim engaging member and the lid cutter at one end of Patents Training Manual: Volume 1
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the opener. The name of the composite feature does not always provide a significant restriction; consider, for example, ‘an amplifier comprising a gain stage and a negative feedback path connected between the output and the input of the gain stage’ – once the gain stage and an associated negative feedback path have been found in the alleged infringement it also has the amplifier. You might also have some freedom on where to draw, in the infringement, the boundary of the composite feature, for example, the head unit in the actual infringement could comprise extra features and you have the freedom to choose the boundary to achieve infringement as long as the interpretation of the other features of the claim remains consistent.
10.5.4 Names used in the prior art (or the alleged infringement) When considering validity, prior art is usually in the form of a written description. The fact that a prior art document uses the same term for a feature as a term used for a feature of the claim does not automatically mean that that feature of the claim has thereby been identified in the prior art. It may be that the term is being used in a different way. Therefore, as usual, you will need to determine whether what is described in the prior art actually amounts, from the details given, to what is claimed; if all you can say is that the same term is used then you will need to have reason to say that the term is being used in the same way. When it comes to infringement, the alleged infringement is not a document but a real article or process, so any written description of it is only secondary evidence of it and you will need to consider the purpose of that description. A written description written by an alleged infringer in response to your enquiry requesting details of what the alleged infringement is, is unlikely to use the terminology of the claim for any feature where there is something to be made of the difference, whereas a description of it written by the patentee may well try to use the terms of the claim.
10.5.5 Functional and structural features Items in a claim can be stated as items of structure, or can be defined functionally, or quite frequently a mixture of both can be used. Compare ‘an upright member’, ‘supporting means’ and ‘an upright member mounted to provide support’. In general, the structural or functional definition is to be respected as such when interpreting a claim; a functional definition is not to be limited to the particular means used in the examples, nor is a structural item to be given additional features to make it fulfil some function. This does not mean, however, for example, that the skilled person would not interpret an ambiguous functional feature in such a way that the function can be carried out by the structural element shown in the examples. Claims using just purely structurally defined features can be extremely clear. Take for example structural formulae for molecules. For such claims, the question arises whether they actually represent, over the whole of their scope, the invention. If they do not, their clarity may well prevent an interpretation that limits the scope to the true invention. For claims to chemical structural formulae, this position can lead to lack of sufficiency or to much gathering of experimental evidence to show that the invention is enabled over the whole of its scope. Purely structural claims for mechanical items do exist but can appear barren; the point of the invention not emerging. Of course, it may be that the invention is purely structural, but another common source of such cases is from the US, where the draftsman has been afraid, for local reasons, of adding any function to the features. While these claims can suffer from not having enough features to give the actual invention, generally they will be clear enough not to be open to much reasonable interpretation that would move them in the direction of the real invention and unnecessary invalidity can result, for example by reason of lack of novelty over prior art not otherwise relevant to the invention. In contrast, functional definitions can often easily build in the invention accurately. While this seems desirable, functional definitions are not without their own problems. The reason why functional
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specification of features is rarely used for chemical formulae claims is the unpredictable nature of chemistry; you might want a particular portion of a molecule to provide a certain function but often the possibilities for what you might use are vast in number and are just guesses – until you have actually tried some possibilities out whether they actually work in a particular molecule is unknown. All of which leads to fears of invalidity. In contrast, in mechanics and electronics functional features are used much more frequently because there are usually many known possibilities for structural means that will provide the function, and even if they are not known there is in many cases be a high expectation that means to provide the function can be easily devised, so the problems of invalidity are less acute. In any event, the temptations to take into account (1) the function in the invention of a structural feature of a claim, and (2) the structural examples in the description of a functional feature of a claim, should be limited to resolving the meaning of the claim and not be stretched to avoiding invalidity. It is notable that many words have both structural and functional aspects; consider ‘leg’, ‘spacer’ and ‘amplifier’. In these cases the skilled person will generally expect to find both the structural and functional aspects in the infringement.
10.5.6 Obvious mistake If an obvious mistake has been made in the claim then it is to be interpreted to correct the mistake. For example, with the can opener example above if the description actually referred to a sugar cane opener then the wording of the claim should be read as ‘A cane opener…’ rather than ‘A can opener’. (Suspend your disbelief for a moment that sugar cane has a lid or that a walking cane needs an opener at all.) I saw a good example of this on a bus recently, where a sign said, ‘Passengers must remain seated until the bus is stationery’. Clearly that should have been ‘stationary’ but I did not feel the need to await the transformation of the bus into headed notepaper before alighting.
10.5.7 Non-standard or ‘improper’ usage of terms These cannot be called mistakes, but if the patent uses a term in its own way then you are not free to disagree with that just because it does not match how a dictionary or a skilled person of the time would have defined the word. (If you feel irritated by a usage you probably understand full well what it was intended to mean.) The usage does, however, have to be clear to the reader. A patent that uses a term in a special way without that being plain, from the patent, will have to be interpreted using the standard meaning despite the complaints of the patentee later. Occasionally, there will be an explicit definition of a term in the description; this should be followed but do check that it is consistent with the use in the claim, the examples and so on.
10.5.8 Independent and dependent claims In practice there are, of course, many claims in a patent. Infringement is decided separately for each and it is only necessary to infringe one of the claims for the patent proprietor to be entitled to damages or other remedy. A dependent claim is considered to have all the features of a claim from which it depends, so to infringe a dependent claim, the alleged infringement must have all the features of the claims on which it depends (through any intermediate dependent claims back to the independent claim). Clearly then, if a dependent claim is infringed, the claims on which it depends, including naturally the independent claim, are also infringed. (The converse does not follow, of course, namely that if an independent claim is infringed that its dependent claims will be.) Examining the infringement of dependent claims is useful and important, however, because they may be valid while broader ones are not. Often, therefore, part of an infringement opinion exercise is to assess not only which independent claims are infringed, but also which dependent claims. If the review is coupled with a validity
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assessment of the patent this will help identify potential amended versions of the patent that could still present an infringement risk even if the original independent claims were found invalid. Indeed, other amendments may be available beyond the dependent claims, for example from the description.
10.5.9 Effect of dependent claims on the interpretation of independent claims Following on from the previous section, if there is an interpretation problem with a broader claim that makes it difficult to decide whether it is infringed, it may be that you can, nonetheless, identify that a dependent claim is infringed. Because the independent claim necessarily encompasses the dependent claim you can then say that the patent is infringed without having to resolve that interpretation problem. Also, since a dependent claim is generally supposed to be narrower in scope than the claim from which it depends, if the meaning of the latter is unclear it should mean something that does cover the dependent claim. (Also the independent claim should generally, since it is broader, also cover something other than that covered by the dependent claim.) An example might be what does a ‘closure means’ mean in an independent claim for a suitcase having two articulated halves: something that provides the seal between the two halves, or something that biases or holds the two halves together? If a dependent claims says ‘wherein the closure means is a clasp’ then the second of those two meanings is favourite. If there are several dependent claims then the independent claim should relate to something that covers all of them. Dependent claims typically correspond to the examples in the description, so this principle corresponds to making sure that a claim reads on to the examples. This occasionally fails if the dependent claim is not actually within the claim it depends on, e.g. ‘wherein X is replaced by Y’, or ‘wherein X is X ‘ but X is in fact broader than X – the latter may well be a drafting error and both would generally be discouraged by examiners during the patent application process as being unclear. The effect of a dependent claim on a claim from which it depends is often called the ‘repercussive’ effect.
10.5.10 Relationship to validity The claim defines the invention for both the issues of infringement and validity and it means the same thing for both. Therefore, the same approach to interpreting it is to be taken irrespective of which of those issues is being considered. The process of determining what the skilled person should reasonably take the words of the claim to mean is neutral to both the infringement and prior art. One is not trying to interpret the claim to find infringement and, equally, one is not trying to interpret the claim to avoid invalidity. The claim is interpreted first and then infringement and validity follow accordingly. (An exception to this may be when the patent itself mentions the prior art, particularly when features of the invention that the prior art does not have are clearly identified by the patent.)
10.5.11 Relationship to clarity Under Article 84 EPC and section 14(5)(b) UKPA, the claims are to be clear. This requirement does not come into play when interpreting claims for the issues of infringement and validity but only during the examination process (or equivalently when amending after grant). Examiners like clear claims so as not to burden the public with too much effort in interpreting the claims. While, as discussed above, it is impossible to have a claim that is absolutely clear free of its context, presenting arguments to examiners that rely on the description in too an involved manner can backfire and convince them that the requirement for clarity has not been met. Examples of usages in the literature of allegedly unclear claim wording that mean the same as they do in the patent do, however, frequently overcome a clarity objection.
10.5.12 No idea what the claim actually requires Very rarely a claim and description are so unclear that the claim cannot, even with the greatest effort and sympathetic reading of patent, be resolved to any particular meaning let alone a choice between possibilities. This makes advice difficult, but if there is no way to tell whether the claim covers a possible
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infringement, the patentee is going to have difficulty showing that it does and the patent may also be invalid for lack of a disclosure clear enough to enable it to be realised.
10.5.13 Feature of claim appears to narrowly stated If a claim states a feature of the invention in a manner that is in your opinion too narrow, for example says ‘a bolt’ where any ‘fixing means’ would have done, then the rule should be, in view of what has been said above, then that is the patentee’s tough luck – they get to decide the wording of the claim and the potential infringer is not to know whether the patentee had some particular secret reason for adopting the limited wording. In some cases, this perhaps leads to unfairness to the patentee, e.g. when there is no such secret reason (or any prior art) that makes the narrow wording anything other than a missed opportunity, resulting in the patentee not being rewarded. In this case, the patentee may try to argue that the wording also covers ‘equivalents’ and this is dealt with in the next section.
10.6 Equivalents and the history of claim interpretation via Catnic and Kirin Amgen to EPC2000 coming into force Most of the case law on claim interpretation relates to equivalents of a feature in the claim. This is not surprising because these cases arise when the alleged infringement appears to be outside the claim but the patentee would like it to be inside; in such a case the patentee must argue that the infringement is, when properly looked at, the same as the invention in some way, i.e. is ‘equivalent’ to it. Historically (i.e. from the 19th century through to 1970s) claims were usually interpreted literally by the UK courts without reference to the description or by considering the nature of the invention itself, but nonetheless sometimes equivalents were held to infringe. When the EPC was drawn up in 1973, a uniform approach across Europe to claim interpretation was needed. There were the perceptions, perhaps caricatures, that UK interpretation was based on a strict literal interpretation of the claims and that the German courts simply used the claims as a starting point in their search for the invention. A middle ground, the Protocol on the Interpretation of Article 69 EPC (see above), was decided upon.
10.6.1 Catnic In 1982, the House of Lords decided the case of Catnic v Hill and Smith ([1982] RPC 183 (HL)). The court took the opportunity to look at the issue of claim interpretation in detail and decided that literal infringement and infringement by equivalents were not separate kinds of infringement but that the claim had to be interpreted ‘purposively’ rather than literally and so would be infringed if the skilled person would understand the words to cover minor variants. ‘Purposively’ means to take the purpose of the document into account, involving, as discussed above, questions like who is the patent addressed to and why is written, and what is the invention that is being communicated in it. There were limitations on the applicability of this case. Although the European patent system and an entirely new UK patent law (Patents Act 1977) had come into force (in 1978) the patent was one that was granted under the previous UK law (the Patents Act 1949) and so was only to be relied on accordingly. Also, the case was not about equivalents of a general kind, for example can one use a bolt where a nail is claimed and not infringe, but about a degree of precision; in particular the case involved a lintel, or beam, for which the claim required a ‘vertical’ member. The alleged infringement was not strictly vertical but was generally so, and vertical enough to fulfil its functional purpose in the invention and so was held to infringe. In Improver v Remington [1990] FSR 181, Hoffmann J applied the Catnic case to patents under the EPC/Patents Act 1977 overcoming those limitations. He improved the test for infringement by equivalents, or ‘variants’, setting out three questions: Patents Training Manual: Volume 1
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(1) does the variant have a material effect on the way the invention works? If yes the variant is outside the claim. If no, (2) would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes, (3) would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee had intended that strict compliance with the primary meaning was an essential requirement of the invention? If, yes the variant is outside the claim.
Again, in the third question we come back to looking at what was actually meant by the claim on a fair interpretation of its words. The first two questions, nonetheless, help you avoid having to do difficult interpretation in many cases: if the variant makes the invention work differently, or if it works in the same way but that would not have been apparent to the skilled person then the patentee clearly could not have meant to cover it, or, more accurately, cannot reasonably be taken to have meant to cover it. Note particularly that purposive interpretation does not allow interpretation that the words of the claim will not bear. The CIPA Guide to the Patents Acts, Fourth Edition, 1995 at 125.14 said purposive interpretation: should not result in a finding of infringement, even when an obvious equivalent thereto is involved if there was no word in the claim which can be stretched in meaning to cover the equivalent: one cannot write words into a claim that are not there or give meaning to a term of the claim that is contrary to its language.
Later, in PLG Research v Ardon [1995] RPC 287 (CA), the question arose as to whether application of the Catnic/Improver questions was proper given that interpretation of claims should be governed by the Protocol on the Interpretation of Article 69 EPC. The Court of Appeal found that the Catnic/Improver questions were not inconsistent with the Protocol to Article 69 EPC and stated that more attention should be given to the wording of the Protocol itself. As a result of this case the ‘Improver questions’ are now known as the ‘Protocol questions’.
10.6.2 EPC2000 – revisions to EPC drawn up In the year 2000, the European Patent Convention was being revised, in what is now known as EPC2000. Although it took many years for EPC2000 to come into force, this act of revision was the next stage in the historical development of this topic. The initial draft of the amendment to the Protocol and the Interpretation of Article 69, which was a radical departure, read: Article 1 – NO CHANGE
BUT ADDITION OF: Article 2 Equivalents (1) For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of means, which at the time of the alleged infringement are equivalent to the means specified in the claims. (2) A means shall generally be considered as being equivalent if it is obvious to a person skilled in the art that using such means achieves substantially the same result as that achieved through the means specified in the claim.
The new Article 2 looked like a US style of infringement law, where there is both literal infringement and infringement by equivalents to that claimed. It would have given very broad protection to equivalents, whether or not they could be covered by the claim, including, for example, (i) all equivalents invented later and (ii) all those that achieve the same result – apparently even if they changed the way the invention works.
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Further, with a new Article 3, the official file for the patent application would limit the application of the equivalents rule, which again is exactly like the US doctrine of equivalents, which has this so-called ‘file wrapper estoppel’: Article 3 Prior statements (3) For the purpose of determining the extent of protection, due account shall be taken of any statement unambiguously limiting the extent of protection, made by the applicant or the proprietor of the patent in the European patent application or patent, or during proceedings concerning the grant or the validity of the European patent, in particular where the limitation was made in response to a citation of prior art.
This would have gone against the UK idea that the claims are there to define the extent of protection and, in the view of some observers, this would have been undesirable in terms of legal uncertainty and cost in coming to an opinion on infringement in any particular case. Others perceived fairness in ameliorating the harshness of limiting protection always to the claim. In the end a more limited amendment was agreed and for EPC2000 we now have just the addition to the Protocol of: Article 2 Equivalents For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.
The question is whether the new Article 2 of the Protocol will mean that more account is to be taken of equivalents than before. The transitional provisions (Special edition No. 1 OJ EPO 2007) are illuminating in that the new Protocol will apply to existing European patents. It would be inequitable if something that had not previously infringed for many years did so now, and the retroactive transitional provision reflects the official view that the new Protocol does not broaden claims (by allowing more equivalents) but merely clarifies the law. As a practical matter, of course, it might encourage a court to interpret a claim more broadly but a court would be unlikely to say that the law has changed in that direction. This was all in 2000 and EPC2000 did not come into force until 13 December 2007.
10.6.3 Kirin-Amgen Inc. In the meantime, the House of Lords reconsidered the matter of interpreting claims in detail for the first time since the Catnic case, in the case of Kirin-Amgen Inc v Hoechst Marion Roussel Limited discussed earlier above. The judgment provides many observations on claim interpretation, see for example paragraphs 32, 34, 35, 47, 49, 52, 63 to 66, 70 to 75, 78, 80 and 84. The general philosophy of claim interpretation given by the judgment has hopefully been covered already; some further points are as follows: (i) the Protocol questions are not the law itself and, while useful in many cases, may not be in all, e.g. possibly for equivalents invented after the patent, where there may be an understandable inability of the patentee to use appropriate terminology (ii) practice on claim interpretation has been harmonised at least in the major European jurisdictions, (iii) the German question about whether the equivalent works in the same way – ‘whether it solves the problem underlying the invention by means which have the same technical effect’, may be better, and (iv) the judgment is consistent also with the new version of the Protocol under EPC2000 with equivalents being taken into account by considering them, using the Protocol questions or otherwise, in the process of arriving at the proper interpretation of the claim and then seeing if that meaning covers the infringement. The decision in Kirin-Amgen has been applied several times in the UK courts. (See Mayne Pharma Pty Ltd, Mayne Pharma Plc v Pharmacia Italia SpA [2004] EWHC4258, Mayne Pharma Limited, Mayne Parma plc v Debiopharm SA, Sanofi-Sythelabo [2006] EWHC 1123, and Mertz Pharma GmbH & Co K GaA v Allergan Inc [2006] EWHC 2686.) The outcomes in the post Kirin-Amgen cases would have probably have been the same if they had been decided using the Improver rules. Kirin-Amgen simply provides a better Patents Training Manual: Volume 1
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understanding of the Protocol questions, in particular, and the whole matter of purposive construction in general.
10.6.4 EPC2000 – coming into force Now that the amendments to the Protocol to Article 69 under EPC2000 have come into force, will this change the law? Earlier it was noted that the transitional provisions for EPC2000 suggest that there is no change in the law, and that the Kirin-Amgen case explains how equivalents are taken into account in the process of interpreting the claim to determine its proper meaning. Those would seem to leave little scope for saying that the new Article 2 will mean that Europe now has a US-style ‘doctrine of equivalents’. Moreover, in an article in the journal of the German Association for the Protection of Intellectual Property ([2006] GRUR, Heft 9, 720), which was also printed in the CIPA Journal, Lord Hoffmann reiterated this position which he had espoused in Kirin-Amgen. However, in countries where there was traditionally more sympathy for infringement by equivalents outside the claim it could be that Article 2 will be used to justify that. Commentators from those parts are already making remarks in that direction so perhaps the European harmonisation already achieved will be damaged by a measure intended to clarify what that harmonisation was. The advice on equivalents to those drafting patents is to think up as many equivalents as possible and make sure that the claims are worded to cover as many of those that you want to cover. Since this a counsel of perfection, the issue of what is the proper scope of protection for equivalents will continue to be debated.
10.7 Opinions on foreign patents It is unwise to give opinions on foreign patents; you are not qualified to do so and will not be familiar with the rules of interpretation nor with the acts of infringement. For example, the rules of interpretation for US patents are quite alien so you should seek the advice of US counsel, which will not come cheap. The European law on the extent of protection is supposed to be harmonised through Article 69 and its Protocol, but may be becoming less so. Having, therefore, decided whether a patent is infringed in the UK you will have to assess the situation and, before seeking similar opinions from colleagues in other European countries, weigh up the likelihood of obtaining a different answer with the value of the matter, the stage of progress of the dispute and whether having a different result in another country makes any difference to how your client would view the matter.
10.8 Enforcement Enforcement is a topic on its own and so is not covered in any detail here. A few key points are as follows. Much more of the basics can be found in the CIPA Guide to the Patents Act. However, generally patent litigation is conducted by specialist litigators, mostly solicitors and some patent attorneys. Experience can be difficult to come by, given how few patent cases come to trial. Further education in this topic can be had by taking the LLM in Intellectual Property Litigation.
10.8.1 Court action Patents are enforced through court action in the High Court or the Patents County Court. The Patent Office (which now prefers to be called by its new trading name of the ‘Intellectual Property Office’) can also be used as a forum, but this is less popular. However, its service of informal opinions is becoming popular for small companies.
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10.8.2 Remedies If the patent is found, valid damages will be awarded. The key remedy is, however, an injunction to stop the infringer from continuing production or distribution. This is discretionary but is generally awarded. There are other remedies available such as destruction of infringing articles. If damages are unfair, in that the infringer has made much more money out of the infringement than the patent owner has been damaged then the patent owner can opt for an account of profits, i.e. the handing over of the profits the infringer has made from their activity.
10.8.3 Partially valid patents If a patent appears to be only partially valid, i.e. only some of the claims are valid (or indeed none of the claims appear valid but there appears to be basis in the description for a validating amendment) the patentee can in many cases amend the patent and obtain damages and an injunction. This is why the infringement of dependent claims should be considered.
10.8.4 Threats actions Having come to your opinion on infringement, you may well want to write to the infringer suggesting they stop doing that. Before doing that, you should be aware of the existence in the Patents Act (UKPA) of the action for groundless threats of infringement which certain classes of infringer can bring if they disagree with you, so you may have to decide that you are prepared to be involved in court action before you write such a letter. You should also have some familiarity with UK litigation procedure so that any action you take before litigation does not complicate that procedure or make it more expensive. This, however, is a whole further topic.
Test your knowledge Here are some questions, the answers to which are to be found in this chapter. 1. Which law defines the infringing act? 2. Which laws regulate the extent of protection provided by a patent claim? 3. What is the mandatory context for interpreting a patent claim? 4. Whose viewpoint is to be used when interpreting a claim? 5. Claims need interpreting for deciding infringement, but for what other issue is claim interpretation a first step? 6. What rule does the alleged infringement have in claim interpretation? 7. What information external to the patent can be taken into account when interpreting it? 8. How are functional and structural limitations interpreted in the claims? 9. Is an interpretation of a claim that makes it valid to be preferred over one that leaves it invalid? 10. What is an equivalent, and what are the Protocol questions?
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Suggested chapter answers and comments Please refer to the sections given below to check your answers: 1. 10.1.1 2. 10.1.5 3. 10.3.3 4. 10.3.3 5. 10.5.10 6. 10.4.7 7. 10.4.6 8. 10.5.5 9. 10.3.3 10. 10.6.1 and 10.6.2
Chapter review This chapter has looked at the basic law of infringement, which divides into two questions, namely, what objects and processes do the claims protect, and what acts in relation to those does the infringer have to perform in order to infringe? The latter question is mostly the matter of bookwork, but claim interpretation is a skill that needs to be developed through practical experience. All claims are ambiguous, and you will need to develop a sensitivity to that in order to find the possible meanings of a claim. Having found the possibilities, you then have to decide which is the best interpretation. Various rules on how to do that have been discussed, which in the main involve applying the information in the description part of the patent, as is mandated by statute. The case law sets out procedures for dealing with difficult cases, namely those involving ‘equivalents’.
Further study Development of your skills in claim interpretation requires, of course, putting the principles noted above into practice in your day-to-day work. While formal infringement opinions may only be requested occasionally, these issues do occur frequently when answering examiners’ reports. Also, when drafting claims it is also essential to check your work by interpreting what you have written (trying to put to one side what you meant to say). So, part of the skill of drafting is avoiding ambiguities (or leaving only ambiguities that are certain to be resolved as you wish). Paul Cole’s book Fundamentals of Patent Drafting, which is well worth reading for its own purpose, contains a section on claim interpretation. Steven Pinker’s book The Language Instinct provides an interesting background to the whole business of language and the extraction of meaning, and should provide a cure for those, if there are any left, who think that interpretation (or drafting) can be done without context.
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Structure of a patent application
Outline The structure of a patent application is well defined and, before you turn to drafting a patent in the next chapter, it is useful to understand how it is basically put together and the underlying logic behind the structure. This chapter examines in principle the legal requirements underlying the construction of a patent application, the main components of the patent application and also explains some of the information that you will find in published patent applications.
Learning plan Prerequisites: The trainee must first have read: • Section 1, 2, 3, 14, 60, 61, 72, 125 UKPA. • Articles 52, 54, 56, 83, 84, 85, 100, Protocol on the Interpretation of Article 69 EPC. • Articles 5, 6, 33 PCT Legal documents: Not applicable. Trainer’s input: The trainer should provide plenty of drafting practice. Also it may be worth discussing how the trainer likes to draft – in particular their preferred mode of extracting information from the inventor, the order in which they prepare the patent application, and how they structure it. UK Exams: P3 EQEs: Paper A Time allocated: Two half days. Syllabus link:
Learning outcomes By the end of this chapter you will be able to analyse a patent specification quickly, moving efficiently to the part you need to understand. You will be able to tailor your discussions with the inventor to make sure you get the relevant information for each part of the specification.
11.1 Legal context 11.1.1 Summary of legal background The legal issues surrounding patenting are covered in other parts of this manual and so here they are briefly summarised, specifically in the context of drafting patent applications. Our role is to balance two main aspects: legal and commercial. The patent offices are largely concerned with the legal aspects and these form part of the responsibility of the courts as well. The legal issues include topics such as patentability (especially novelty and inventive step), sufficiency, support and clarity. Also, although the question of ‘added matter’ does not arise during the drafting of a patent Patents Training Manual: Volume 1
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application, as you can put anything you like into it, it is important to understand the ramifications of the added matter provisions to make sure that you put enough information into the application as filed, in case you need it later. On the commercial side, it is important to make a patent as useful as possible to the inventor and as troublesome as possible to his competitors, but when it comes to actually using the patent then, once again, the courts can be closely involved. The commercial issues all centre around the extent of protection available, making sure that the patent covers all aspects of the invention as broadly as possible. The skill of the draftsman lies in balancing these two requirements and finding a compromise between the legal requirements – where the pressures are generally to narrow the scope of the patent (to ensure that it is inventive) – and the commercial requirements – where the pressure is very much to broaden the scope of the patent (to catch as many infringers as possible).
11.1.2 Legal requirements Starting with patentability, the main issues that we will touch upon here are novelty and inventive step (excluded subject-matter is dealt with elsewhere in this manual). When you file a patent application you do not have an opportunity at that stage to argue the case on patentability and so the main goal is to ensure that there is ammunition in the patent application for arguing your position later. As far as novelty is concerned, therefore, you need to make sure that your independent claims have a novel feature over the prior art that you are aware of and that you have plenty of fallback positions, whether in the dependent claims or in the description, which can give you the basis for further novelty positions – allowing subsequent amendment, if new prior art comes up (which it often does). Then, when during prosecution any such prior art does come up which discloses all of the features of your independent claims, you can simply write in by way of amendment additional features from any part of the patent specification giving you novelty. As regards inventive step, this is essentially a matter of argument once you have your novel feature. However, it is good practice to provide as much information as possible in the application which could be relied on later for any such inventive step argument. In particular, therefore, it is useful to identify in the patent application any advantages attached to any features, problems solved by features and so forth. As we see below, the structure of the patent application permits this as the introduction is designed around this approach. However, the description can be used as well, to point to further advantages of other features and this can make the document a little more readable, whilst still providing the required ammunition later. In addition, to the extent that you are working in areas of excluded matter such as computer programs and so forth, it is very useful to highlight the detailed technical features on which you may rely and the technical effects or advantages attached to them. This can be extremely important in pursuing such patent applications before the EPO and the IPO and presenting arguments as to why such applications do not relate to excluded matter.
11.2 Other requirements for grant Again, when you are drafting the patent application, you do not have to persuade anybody that your patent application meets the requirements for grant, but you do need to ensure that it is in good shape for examination by the patent offices later. There are three main issues that need to be taken into account and which can affect different parts of the patent specification: • • •
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Sufficiency – in particular the description of the patent has to be full enough to allow the skilled reader to put the invention into effect. Added matter – in particular the document as a whole will need to provide basis for amendments later. Clarity – in particular the claims will need to meet the clarity requirements.
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In addition, it is important to make sure that the claims are supported and this requires ensuring that the right relationship exists between the description and the claims. There are also various formal requirements that will be tested by the patent offices in due course, but these are seldom of any concern during the drafting process and will not be looked at in detail here.
11.2.1 Sufficiency Dealing firstly with the sufficiency requirement, the legal test is that the invention is described in sufficient detail that it can be to put into effect by the skilled person. Usually your inventor is a good approximation of the skilled person but he or she may well tell you that three lines of text would be enough for him or any of his peers to actually make the invention work, with their background knowledge. It is important to err significantly on the side of caution in this respect and provide as much information as possible simply because third parties can attack or oppose the patent and revoke it if it is insufficient. This can seldom be remedied later as any additional information required would be impermissible added matter. On the other hand, the inventor needs to understand that the patent application will be published and, therefore, all the information that goes into the patent application will go out to the competition. There may, therefore, be yet more pressure from the inventor to restrict the information content of the patent application. It is certainly the case that, where possible, information should kept back as knowhow, but the risk of making the patent insufficient if too much is suppressed must be fully understood. We look below at some ways of structuring the description of the patent to ensure that as much information as possible is captured in a consistent manner.
11.2.2 Added matter Turning to added matter, the patent application can be amended to relate to any information in the patent application as filed. However, if the information is not there, then it can be very embarrassing if the inventor suggests during prosecution that you rely on a feature which you fo to put in. Once again, therefore, it is important to treat the patent application as a reservoir of possible amendments and to explain this to the inventor when detailing the information that has gone in. There are various techniques in writing a patent application which will tend to strengthen your position. One of the most important ones is not to rely on the drawings, per se, as it is very difficult to make an amendment to a patent application based only on information found in the drawings. Ideally, the drawings need to be described verbally to the extent that they could be reconstructed from the words alone.
11.2.3 Clarity As regards clarity, this is, in fact, the aspect of drafting that most trainee patent attorneys find the most difficult. Drafting a specific description is manageable and spotting the novel features to go into the claims is also usually fairly easy. The difficulty lies in knowing what else goes into, in particular, the independent claim and this is generally governed by the clarity requirements. As an interesting observation, the patent offices do not consider infringement when examining a patent application and are not bothered about the scope of the claim as long as it is narrow enough to meet the patentability requirements. But because they deal with clarity, in fact, what they are doing is making sure that the claim is usable against third parties later on and so they do a stealth infringement check for you. Indeed, if the claim is drafted so as to be valid and commercially useful, the clarity requirements tend to be automatically met. As far as drafting is concerned, the clarity test can be divided into two basic parts, as discussed also in chapter 17 (17.1.8). The first part is a validity aspect – the claims must relate to the features that give rise to a result rather than the result itself. This makes sense if you consider patentability. If a claim is directed merely to a result then often this is just a desideratum, and even if that desideratum has not been achieved before the mere act of spotting it is likely to be obvious. What is not obvious is how it is achieved, and the claims need to reflect that by indicating the technical features that give rise to the advantage. Patents Training Manual: Volume 1
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As a result, when interviewing your inventor and being told that the invention is a flying machine, you need to ask the inventor how he made the machine fly. When he explains that it involves a rapidly rotating rotor with slightly inclined blades mounted above the machine, you are moving towards the novel features that need to go into the claim to avoid any clarity objection. If you simply claimed ‘a flying machine’, even if this had never been achieved, it would not be inventive as the basic concept is an obvious (non-inventive) desideratum – everyone would like to fly. The second aspect of the clarity requirement is that the claim should make sense to third parties. It should not have relative terms such as ‘vertical’ or ‘large’ and should not require reference to features external to the claimed subject-matter in order to make sense. In other words, if the invention is an engine that can be mounted in a certain orientation in a vehicle and the claim starts ‘an engine’ then a limitation ‘in which it is mounted in orientation X in a vehicle’ is not acceptable because when the infringer comes to read the claim he is just looking at the engine in the absence of the vehicle. The claim would need to recite the features of the engine that allowed it to be mounted in that orientation. A further clarity aspect ensuring that third parties know where they stand is that you should ‘claim on the shelf’. If, for example, your invention has moving or interacting parts and you are claiming it as an apparatus, you should bear in mind that it will probably not be switched on when it is being made or sold. Accordingly, you should draft your claim such that something lying stone dead on the floor infringes. Going back to the helicopter invention, therefore, a claim to ‘a flying machine having a rotating rotor’ is not infringed by a helicopter with the engine off. In this example the solution is simple: simply refer to it as ‘a flying machine having a rotatable rotor’. Another way of looking at this is that you should always review your patent claim to make sure that no method steps have crept into an apparatus claim.
11.2.4 Support Turning briefly to support, which is distinct from added matter/basis and sufficiency, this is the requirement, in essence, that the description is sufficient across the scope of the claims. At the time of filing the main requirement here, therefore, is to ensure that if the inventor tells you that the patent can extend in all sorts of directions, you need to make sure that one can work out from the description how to make it work for the entire scope of the claims.
11.2.5 Commercial requirements The main issue commercially is whether the patent is a sufficient barrier or licensing platform for competitors meaning that it must be as broad as possible within the confines of the requirements discussed above. The purist will tell you that this is approached from two angles, namely ‘the extent of protection’ and ‘the scope of the monopoly’ – these are discussed in chapter 10. For the ‘extent of protection’, the question here is whether the claim wording is broad enough to cover all areas of the invention, and this is where much of the case law on claim construction is directed. The extent of protection is governed by the claims and discussed in section 125 UKPA. The ‘scope of the monopoly’ refers much more to the types of infringing act covered by a patent as set out in section 60 UKPA: manufacture, sale, import and so forth. It is important, however, to make sure that your patent is framed so as to catch competitors whichever of these activities they are undertaking. Furthermore, it is because of the provisions of section 60 that the scope of the monopoly extends to contributory infringement – section 60 (2) – people can infringe if they provide ‘means essential for putting the invention into effect’ even if those ‘means’ do not have every part of the claim.
11.2.6 The extent of protection Turning firstly then to the extent of the protection and the manner in which the claims are construed, there are plenty of cases giving leeway to the patentee when the literal wording of the claim did not quite catch the infringement. Perhaps the most famous case is the Catnic case where a window lintel (the beam that goes in a wall above a window to stop it being squashed) had, according to the claim, a ‘vertical
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member’. The alleged infringement had a slightly not-vertical member but after several years of litigation was held to infringe. Various legal doctrines have been developed to deal with this type of issue and are discussed elsewhere in this manual but when it comes to drafting, other than describing the invention fully in the application and pointing to all the advantages attached to the various features there is very little that one can do to help the claim interpretation process later in the life of a patent application. Instead, one should concentrate on drafting the claims broadly (‘substantially vertical member’?) enough that they have no need to be painstakingly construed in this way and an infringer knows immediately that they infringe. Drafting patents with evident flaws in the hope that the courts will sort it out later is quite clearly dreadful practice.
11.2.7 The scope of the monopoly We can have far more influence when we look at the ‘scope of the monopoly’ and in particular contributory infringement. When you are drafting, you should look at the various acts in relation to which you can use an invention and make sure that you have thought through the implications in relation to your claims. For example, if your inventor comes to you with a new kind of engine where the spark plug is ten times better, then you might want to consider what his competitors might sell – a vehicle? An engine? A spark plug? You should start with the smallest component, i.e. the spark plug, as a basis for a claim as both the engine and the vehicle will necessarily infringe this and you can always put extra claims for ‘an engine including the spark plug’, ‘a vehicle including the engine’ and so forth. You should also bear in mind that processes are also within the available scope of the monopoly and consider whether there is a manufacturing process that could be covered or whether the actual operation of the engine is worth covering – for example, if it could be embodied in a third party piece of software. Taking this step back can often mean that you add quite a few claims that you might not have thought of otherwise. Of course if you have started with process claims you should consider adding product claims. Sometimes it can be difficult to claim very simple components because the claim simply does not make sense without the interaction of other features (which can, as discussed above, give rise to clarity objections, if you are not careful). In that case, if there is no alternative, then you can claim the component together with other interacting features but with the risk that a third party just selling the component may not ‘directly’ infringe. However, an understanding of contributory infringement is useful here – if you do claim a larger system of which the specific item is just a feature, then third parties may still infringe when selling just the component if you can show that it is ‘means essential for putting the invention into effect’. This approach is to be discouraged, but sometimes is unavoidable. It is also important to have an understanding of the remedies available including injunction and damages. As well as assisting the drafting process this can help you explain to the inventors why you have so many different claim categories to catch so many different people. For example, going back to the engine example, you may well find your client much happier when they are seeking damages for the sale of a car than for the sale of a spark plug.
11.3 Structure of a patent application It is likely that you will read more patent applications than you write whilst you are training but an understanding of how the different parts fit together is just as helpful in both cases. Certainly, when you are reviewing a patent application to assess its relevance as prior art, it is useful to know what information is contained where – for example the specific description in the prior art may contain the technical information but there may be very useful teachings in the introductory portion which can help construct an argument as to why it would not be obvious to develop the prior art in the direction that the invention went. Of course, when writing the patent application, you need to make sure that the Patents Training Manual: Volume 1
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relevant information goes in the relevant place and that the legal requirements set out above are satisfied within the confines of the structure of the patent document. The easiest way to go through this is to start at the beginning:
11.3.1 The title In the UK, unusually, before a patent application is published certain bibliographic details are available including the applicants name, the filing date and the title. As a result, people have tended to restrict the amount of information in the title and it is not unknown for patent applications in the field of chemistry to be entitled ‘Method’. One possible approach which can lead to consistency is to mirror the first few words in the claim or possibly claims, for example, ‘A method and apparatus for mowing’ or whatever the subject-matter may be. Patent applications seldom stand or fall with the title and it is always amendable within the confines of added matter.
11.3.2 The field of the invention Typically, the first sentence of a patent application gives some background as to the technical field. In some instances, weight has been attached to this text by the courts in determining, for example, who the skilled person may be. Again, a good practice is to keep this area broad. One approach, therefore, is simply to replicate the title: ‘The invention relates to a method and apparatus for…’.
11.3.3 The background/discussion of the prior art The patent will be read critically by various people including a patent examiner and, possibly, a judge. The purpose of the background section is to discuss relevant prior art and, in particular, to discuss it in a way that represents the state of the art that the skill person faced. For example, the prior art section may discuss one or more instances of prior art and point to disadvantages in those instances – ideally those disadvantages will then be solved by aspects of the invention as a whole.
11.3.4 Statement of invention This part of the document has also been described as being for the ‘judge’. Having identified problems with the prior art in the preceding section, the statement of invention provides an opportunity to identify the claimed invention and how it solves those problems. A difficulty that can arise later in the life of the patent application is that new prior art might be cited requiring reformulation of the inventive step arguments but, nonetheless, the statement of invention can provide a useful first attempt at providing the basis for inventive step arguments, especially if many advantageous features and corresponding advantages are defined in this section. Traditionally, the statement of invention would mirror more or less word for word the claims but recently, at least in the UK and before the EPO, the patent offices have clearly indicated that they are willing to accept a simple cross reference to the claims. It remains good practice, however, to highlight why these claims relate to subject-matter which solve the problems identified in the prior art section. You will also often see, just before the statements of invention, object clauses along the lines ‘it is an object of the invention to solve problem A…’. These have been diminishing in popularity not least because in the US they can cause significant problems if any of those objects are not met such that many practitioners simply omit them altogether now. Neither the practice of reducing a statement of invention nor of omitting objects appears to have had any great ramifications in subsequent court procedure but you may well want to talk to your trainer about their preferred approach in this area.
11.3.5 The introduction to the drawings Assuming that you are working in a technology where drawings are required – in most areas you would be expected to include them and would have a weaker patent application without them but in the chemical and biochemical areas they may well not be necessary – you will typically have a short
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introduction to the drawings followed by a caption describing each of the drawings. These captions can be very important in setting the initial scene for the patent application and so should be considered carefully and made as consistent with each other as possible.
11.3.6 The specific description The specific description itself must provide enough detail about at least one embodiment of the invention that it can be put into effect. In other words, a primary role of the specific description is to meet the sufficiency requirement. In addition, however, it is an important repository of potential amendments, should they be required and so it is useful for it to be as full as possible to get round any added matter problems later on. It is also the specific description that is compared with the claims for the purposes of support and so you need to consider just how broad the claims are and whether the specific description really teaches across that scope. There are plenty of techniques that have been discussed for constructing the specific description and some of these are looked at in more detail in the next chapter. It is notable that we are not examined in our professional examinations on writing the specific description and there is less guidance around than you might think – in practice it often turns out that writing the claims, whilst intellectually taxing, is not the longest part of the job by any means – it is writing the specific description that can be the most time consuming. Also, you have to get it right. If the information isn’t there, you can’t put it in later and there is far less scope for amendment than with the claims. As a result this may, in fact, be the most forgotten part of our job and one that can be every bit as demanding as writing the claims. In addition to providing a clear and structured description of how to put at least one embodiment of the invention into effect, the specific description will often also discuss advantages of various features, perhaps ones that were not already covered in the statement of invention. These can provide a link between more general terms used in the claims and specific terms used in the description and will often close with a section discussing ‘variants’; that is, other features that might be incorporated, other applications of the inventive ideas and so forth. Finally, it is worth noting that in the US, at the time of writing, in addition to the sufficiency requirement, there is a ‘best mode’ requirement that the inventors or applicant specify the best way that they know for putting the invention into effect. More often than not this is what you will have anyway but if you do have suspicions that there may be other ways that are being suppressed then you may at least need to explain the risks to your inventor.
11.3.7 The claims These, of course, are the pinnacle of the patent attorney’s achievement and are of primary and fundamental importance. In particular, in prosecution matters the claim is everything – it defines the novel features of the invention, it is what is compared with the prior art to establish whether novelty is there, and those novel features, expressed in the terms used in the claim, must be what provide the advantages or solutions offered by the invention. In the litigation stages exactly the same words, with the same interpretation, must define an invention which is patentably distinguished over the prior art and which also catches the infringement. This is why we have to strike the balance between validity and breadth of scope and what gives rise to the ‘squeeze’ situation. In a squeeze (sometimes termed a ‘Gillette defence’ because of the case law where the idea was developed), if you can show that your invention is identical to, or no more than an obvious development of, the prior art then clearly, if a claim catches that infringement by definition, it is invalid as it is either not novel or not inventive over the corresponding prior art. In terms of the structure of the claims, these clauses – not actually sentences if you read them carefully; you have to imagine that they start with an invisible introductory term such as ‘What is claimed is’ – are consecutively numbered and start with an independent claim. The independent claim lists the bare set of ‘essential’ features the invention has. The independent claim is normally followed by one or more Patents Training Manual: Volume 1
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dependent claims setting out optional additional features and indicating their dependency by virtue of terms such as ‘An apparatus as claimed in claim 1 further including…’. For the purposes of validity, the independent claim alone is considered against the prior art. If, for example, a single prior art instance includes all of the features of the independent claim, then it is not novel. If there are dependent claims which include additional features not found in the prior art then these do not render the patent novel unless they are expressly incorporated by amendment into the main claim, that is, by rewriting the main claim to include those additional features. Of course, any such features must provide an inventive step in order to make the claim patentable. For the purposes of infringement exactly the same test applies. If an infringement includes all of the features of claim 1 then it is caught. If it also includes features found in the dependent claims then this is not relevant, although this will help identify possible fallback amendment claims should claim 1 be found to be invalid. In other words, you have to make sure that if you have to amend the independent claim for patentability purposes then the amended claim still catches the infringement. This is why amending the patent application during prosecution, as discussed in other chapters, has to be handled very carefully as not only must it make the patent valid but it must be commercially relevant as well.
11.3.8 Why do we need dependent claims? A commonly asked question is: If only the independent claim is considered for validity and infringement why do we need dependent claims? One immediate and obvious reason for having dependent claims is apparent from the preceding paragraphs – it is useful to have fallback positions expressed in the dependent claims. However, in prosecution it is entirely permissible to incorporate material into the claims from any part of the application as filed, for example, the specific description, within the confines of the added matter requirements. So again, why dependent claims? A first very good reason is because of the strictness of the added matter requirements at least as expressed in Europe. Patent offices may well say that simply extracting a random feature from the middle of a page of features in the specific description and putting it into claim 1 is adding matter as there is no indication that it could be so combined with the other features of claim 1 nor that it could be incorporated without the context of the other features in relation to which it is described. On the other hand, if at the outset you put the feature into a dependent claim then it is absolutely clear that that particular combination was disclosed. A second reason is that in some jurisdictions, in post grant proceedings, it is very difficult or impossible to amend to anything other than a dependent claim. A third reason is that certain claims might help define the invention for the purposes of a licence or set of licences allowing the exact terms of exclusivity to be defined very neatly in the claims. For all of these reasons, it is vital to pay as much attention to the dependent claim as to the independent claim, to include commercially important claims following discussions with the inventor and to view each dependent claim as a potential rewrite to the independent claim, imparting patentability should the independent claim be found to be not patentable. At a simplistic level, you also need to make sure, for the purposes of support, that all of the variants and alternatives you present in the dependent claims are also described in the specific description. Claim dependencies can be more difficult than they look. In some jurisdictions, such as the US, ‘multiple dependency’, that is where a dependent claim is dependent on more than one preceding claim, are allowed only in very restricted circumstances such that typically most claims will simply hark back either to a single preceding dependent claim, or directly to the independent claim. In Europe, multiple dependencies are entirely permissible, so that a claim can be dependent on any number of preceding dependent and independent claims. For example, where there are all kinds of possible additional features that can be added in any combination to the main claim, then we would want the dependent claims to each of those sub features to include dependencies to all of the other dependent claims, along the lines ‘An apparatus as claimed in any preceding claim’. Multiple dependencies can get quite complex
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and sometimes overwhelming and so it is always useful to be careful when structuring the dependent claims. So far, we have talked about an independent single claim followed by dependent claims. Elsewhere in this manual (specifically, in chapter 8) we have discussed the unity and conciseness issues that surround multiple independent claims but, at least in Europe, it is entirely permissible to have an independent apparatus claim to the same subject-matter as an independent method claim. In addition, it is quite possible that there will be ‘specialist’ forms of claim such as ‘Swiss-type claims’ and the like and, if this falls within your technology, then you should discuss with your trainer how these are formulated and used. In addition, a dying breed of claim is the ‘omnibus claim’. This is still permissible in the UK although very, very seldom relied on in any litigation, and comprises a claim which effectively says ‘if I have forgotten anything in the description I am claiming it here’. It often takes the form ‘An apparatus and method substantially as described herein with reference to the drawings’. The IPO did look into abolishing these a little while ago but practitioners rallied, pointing out even if they are not much use, it might be your last ditch hope in litigation and so it should be allowed. In a sense, this puts the pressure on the judges to decide whether or not omnibus claims have any particular merit but while they are still allowed it is good practice to include them.
11.3.9 The abstract The abstract may or may not be relied on as a source of potential amendment dependent on jurisdiction but should never be treated as such and so should merely provide a brief outline of the invention as summarily as possible. It is of little benefit to the patentee but very useful to third parties and so typically it is kept as abstract as possible. In many cases, a précis of the main claim is simply incorporated as the abstract.
11.4 Reading the patent As intimated above, we don’t just write patent applications, we also read them for various purposes and it is worth a few lines here about how to do that. The two main reasons we might read a patent are because it has been cited against us as prior art or because we want to work out what it covers, for example, for the purposes of litigation, an opinion or a due diligence exercise. When you read a patent application as prior art, the first thing to bear in mind is that you are not reading it as a patent application but merely as a publication which happens to have a fairly unusual introduction and a strange set of clauses, largely meaningless, at the end. That’s the claims, by the way. It is also important to remember that you are reading it effectively at the date of publication (unless it is a novelty-only citation under Article 54(3) EPC or the equivalent provisions elsewhere). Usually, therefore, we look at A-specification publications (published pending applications 18 months from the priority date). If you find yourself looking a B-specification as prior art then you need to consider this as being published at the date of grant of the patent. You must remember why you are reading it and not get excited about the scope of the claims which is completely irrelevant to validity. You also need to consider whether there is an earlier A-specification, not least because information may have been excised from the B-specification during prosecution. When reading the prior art document, therefore, the principal teaching will be in the specific description and accompanying drawings. Often you will need to understand this fairly well in order to formulate arguments, for example, as to why the document teaches away from the claimed invention (if you are defending your patent) or is an obvious stepping stone towards it (if you are attacking someone else’s patent). The remainder of the prior art document can also be important, however. As mentioned above, often comments are added at the end of the specific description about other implementations or variants of Patents Training Manual: Volume 1
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the described subject-matter which can cause all kinds of validity problems to a later patent and need to be checked carefully. Similarly, the introductory portion can include many statements about the kinds of problems that the document was trying to overcome, some of the advantages provided and so forth which once again can be very useful in preparing arguments as to why it would or would not have provided a stepping stone toward the subject-matter claimed in the patent in suit. The abstract is as much prior art as anything else and whilst often it will not disclose anything additional, sometimes people put (incorrectly) information into the abstract that can’t be found anywhere else in the document. The claims should also be briefly reviewed. Again, for the purposes of considering an earlier patent document as prior art it is utterly irrelevant whether its claims ‘cover’ a subsequently claimed invention from the point of view of patentability. The prior art document is being read by the skilled man and so he would view them as broad statements of intent at best. Nonetheless, sometimes in the sub claims information is once again hidden away that was (incorrectly) not included in the remainder of the document. Turning to the consideration of a patent document for the purposes of assessing whether there is an infringement issue, an entirely different set of criteria applies. First of all you need to make sure that the patent is in force in the jurisdiction(s) of interest to you. If not, then it is not an infringement issue although you need to search for any equivalents, divisionals, continuations and so forth. The status of the case is, of course, generally irrelevant if you are considering the document purely for the purposes of whether it constitutes prior art or not. Secondly, the focus is very much on the claims of the patent – you want to compare your potential infringement with those claims to see whether there is an infringement case and you may also want to see if there is a validity attack available against those claims. Thirdly, you should now not be looking at your own patent or patent application but at the product or process that you are intending to commercialise, once again compared against the claims of the patent you are studying. The remainder of the patent is principally a tool for understanding and more importantly, construing the claims. You need to read and understand the patent very well in order to be able to put together the most likely construction and consider whether your product or process falls within the claims when so construed. Whatever the reasons are for your reading the patent document, time and budget constraints permitting, you will probably need to read all of it very carefully. In practice, patents can run on for tens or even hundreds of pages and you may be faced with many documents to review in a very short time. In that case, you may need to explain to whoever you are working for that a full review of every document is not possible/within budget and highlight the areas that you have been studying along the lines set out above. This is always slightly scary and sub-optimal but it is important to understand your client’s needs and whether the most detailed forensic analysis is required on an initial review. As long as you set out exactly how far you have gone, ideally what else should be done and where any uncertainties may lie, then the client may well be satisfied with a less detailed review.
11.5 Bibliographic information Information is also derivable from the very front page of a published patent or patent application. This is all very much background matter but can carry vital information about priority dates, publication dates, ownership and so forth. Some of this information can change and, hence, needs to be cross checked against the current state of the register (for example the patent may have been assigned to a new entity) but if you are trying to establish the relevance of a document as prior art, for example, all of these checks are vital. The information on the front of a patent document is ordered according to an international code using numbered fields meaning that, even if you have a foreign language document, you can work out quite a lot of what is going on. If you look at the front of, say, a published international patent application, you
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will see that it includes an international publication number (code 10), an international patent classification (51), an international application number (21), an international filing date (22), priority data (30) and applicant and inventor information (71, 72). The front page will also carry the abstract and a drawing and so can be a very useful first filter for looking through large batches of patent applications, subject to the reservations expressed above about the information actually available from an abstract. It is worth comparing the information available on the front page of an A-specification published patent application against that provided by the granted patent. For example, if you look at a granted European patent front sheet there is an additional field indicating the references cited during search (56) but there is no abstract or drawing presented.
Test your knowledge 1. List the main legal requirements you need to meet with a patent application. 2. List the main parts of a typical (mechanical) patent application and their purpose. 3. Link the legal requirements from question 1 with the parts of the patent application from question 2 that satisfy them. 4. When you are reading a patent as prior art, what is the relevance of the claims? 5. When you are reading a patent as a potential infringement risk, what is the relevance of the description?
Suggested chapter answers and comments 1. 2. 3. 4. 5.
See 11. 1 and 11.2 See 11.3 See 11.3 See 11.4 See 11.4
Chapter review This chapter has looked at the legal and commercial requirements that need to be met by a patent application and considered them in the context of the structure of a patent application. Along the way, we have also seen how to use knowledge of the structure to tailor or target reading of a patent document dependent on why you’re doing it.
Further study There are some excellent books out on drafting including Paul Cole’s Fundamentals of Patent Drafting which is a collection of papers discussing the process, and (forgive the plug) Gwilym Roberts’ Practical Guide to Patent Drafting which approaches the topic at a more basic level. Make sure that you think about the structure when you read patent documents, and consider for what reason you’re reading them. And get drafting practice under supervision – to develop your own approaches and style as early as possible.
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Drafting a patent
Outline Drafting a patent application may be the most difficult skill for a patent attorney to learn and could well be the most important skill to posses. This chapter examines not only the mechanics of writing a patent application but also practical issues, such as extracting the invention from the inventor and dealing with the inventor generally. Whilst the previous chapter has focused on the ‘theory’ behind the various parts of a patent application or a patent, we will now look at some practical aspects, conceptually divided into three stages: getting the information from the inventors, drafting the application and reporting it.
Learning plan Prerequisites: Must have read at least chapter 11 first and be familiar with 6, 7 and 8. Trainer’s input: Ask your trainer to give you plenty of drafting practice. Also it may be worth asking your trainer how they like to draft, their preferred mode of extracting information from the inventor and the order in which they prepare the patent application. Syllabus link:
UK Exams: P3 EQEs: Paper A
Time allocated: Two days.
Learning outcomes By the end of this chapter you will have an initial idea of how to approach a patent draft. The discussed skills will allow you to approach drafting a patent application in a structured manner.
12.1 Obtaining the information In practice, there are many ways in which you will acquire information from the inventors or your contact within the client company, such as an initial write-up (for example, a technical report), a letter with a brief summary or simply a phone call. In most cases, it will be necessary to follow this up with the inventor in an e-mail conversation, telephone call or face-to-face meeting (often a face-to-face meeting will represent the most efficient way of transferring information from the inventor to you). Whichever form the interaction with the inventor takes, it is important to be as prepared as possible to ensure that the right questions can be asked and to maximise information transfer itself. It will be more efficient in terms of the client’s time, as well as your time (and, therefore, the client’s costs), if all information can be obtained in one single go, although, in practice, some follow-up questions will occur when reporting the draft application. Patents Training Manual: Volume 1
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The kind of questions that need to be asked may by now seem obvious once you have studied the preceding chapters of this guide, in particular chapter 3, but it is worthwhile to make these explicit, by way of preparation, so that nothing is forgotten. Below, are topics forming a checklist of the kind of questions which you may consider asking, of course to be adapted in accordance with your practice as it develops and each case at hand. Administration Is there any deadline (publication or otherwise) by which the application needs to be filed? What are the client’s budgetary constraints? (You may need to manage expectations as to what level of detail is achievable within a given budget, ensure that you do not commit to doing more work than is possible within the budget and then stick to it). Ensure ownership/inventorship details are understood and addressed Who are the inventors? How do the applicant’s rights derive from the inventors? (For large clients this may be dealt with at the client side but it is, nevertheless, our duty to ensure that these questions are addressed, unless it is part of the client relationship that these questions are handled by the client). Understanding the commercial background What is the technical field of the invention? What is the product that it is used in? What is the corresponding market like? Who are the competitors? Why does the client want a patent? To exclude competitors? To license? To formalise the company’s intellectual assets to attract investment? While caveat emptor surely applies, it is, nevertheless, our duty to ensure that the client understands the cost implications of drafting and prosecuting a patent application and what a patent can and cannot do for his or her business. Understanding the invention What was the starting point for developing the invention? What is the problem solved, the improvement made? How is the improvement achieved? Determining an appropriate scope of protection Which features distinguish the invention from the prior art? Which of these are necessary to achieve the improvement and which are additional ones suitable for a later fallback position? Which of the distinguishing features are absolutely necessary, or at least difficult, to do without making it difficult for competitors to design around the patent? Obtaining all the details needed for the specific description In addition to the distinguishing features, what, if any, other information is needed to make the improvement work – which of these features are well known and need not be described in detail? (It is better to err on the side of caution and add information which later turns out to be unnecessary than vice versa as you can’t add matter, as explored in 8.6) if there are one or more embodiments, which one is the one considered to be the preferred, best one? (It is the legal requirement in the US that the best working embodiment is described, this is called ‘best mode’. See 8.2.4. for more information.) Which embodiment will actually be used? (Focus on that one.) Ensure that all angles have been covered Consider possible future developments and ensure they are covered. Ensure any known or contemplated alternative or design-around is covered.
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Last but not least Remember to avoid jargon – yours and theirs – check the client/inventor understands what you need to prepare the draft and how the kind of information provided relates to potential strengths which can be achieved in the application. An explanation of the structure of patents and the patent system may help the inventor give you the information you need and ensure that any comments on your draft application are targeted and useful. Do not forget that there may be commercial value in a highly speculative application in the right context, for example, if the client needs to rush to file because of a publication deadline or needs to formalise his intellectual assets ahead of a funding loan. It is recommended that you take the above points and consider how they apply to your practice and your clients and then adapt them accordingly. You could consider making a list of keywords as an aide-memoir. Depending on each case, it may work best to switch the order around – some of the information may be known in advance (for example, as standing instructions for a particular client) and, of course, to some extent it will always be necessary to be able to be flexible and think on your feet once you get there.
12.2 Starting the draft Once you have collected the information required to start working on the draft application itself, it may be desirable, in practice, to find a sufficiently large dedicated time slot to work on the draft application in a concentrated fashion. There are various approaches to tackling the task: for example, some attorneys prefer to start by drafting a specific description, as this may help to understand the invention and its background and then do the claims, fitting in the drawings where appropriate. Alternatively, especially if you are more experienced, you may start with the claims to ensure that you set up a consistent terminology. For example, you could start off by reviewing any drawings provided by the inventor or, if no drawings have been provided, prepare a set of drawings based on the discussion with the inventors. The drawings are then used as a guide to what has been disclosed and the rest of the application can be structured around them, starting with the independent claims, to capture the basic essence of the invention, followed by completing a full set of claims, with fallback positions in the dependent claims. This is then followed by the preparation of the specific description using the outline of the drawings and ensuring that the claims are supported by it. Of course, this is only one approach and it will be best to experiment with how to tackle the (quite substantial) task of preparing draft applications in a way that suits your (and your trainer’s) practice. Below, I will discuss these elements of a patent application in the order set out above.
12.3 Drawings Often, particularly in mechanical cases, high quality and clear drawings can be obtained from the client. For example, they can be easily derived from three dimensional models used for prototyping. However, it is important to ensure that, when drawings depicting the client’s product are being used, the publication of the drawings 18 months from the filing date will not interfere with the client’s plans for seeking design protection later on. Thus, whilst drawings obtained from, for example, the client’s prototype model may make for compelling illustration, it may sometimes be preferable to use more schematic drawings, which do not give away aesthetic features which could be subject to design protection or comprise valuable know-how. Where the application relies on experimental results in support of an inventive step, plots of experimental data can be helpful to illustrate this point. Where the invention resides within a process, flow diagrams will often be useful to illustrate the steps of the process and will help to structure the description by referring to the steps in the flow diagrams. A further important consideration, with Patents Training Manual: Volume 1
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respect to the US, is to ensure that each embodiment claimed is depicted in the drawings. For example, if a method is also claimed in the form of a computer system, or a computer network, then there should be a drawing of a computer system or network even if only in its most rudimentary ‘black box’ form. As we have learnt in chapter 11, it is important to provide a written description of the client’s embodiments in such detail that drawings are in fact not really necessary to define the disclosure as it may otherwise be difficult later on to rely on a feature present only in the drawings to provide basis for an amendment during prosecution. That said, it is often good practice to ensure that the drawings show sufficient detail such that each feature described in the description can be discerned in the drawings. There are at least two good reasons for this. First, this should enable you to use a sequence of drawings as a kind of outline in the specific description, which can be a very intuitive and time effective tool for organising the drafting process. Second, a picture could be worth the proverbial thousand words and can help to bring an inventive step argument to life during prosecution (during written proceedings and, in particular, at hearings). A full set of drawings can turn out to be a very powerful tool in advocating a client’s case. Finally, there are a number of formal issues which must be considered in relation to the drawings. There are such issues as the margins and page numbering which will not be addressed any further here. Another formal aspect is the reference numerals assigned to the integers in the drawings. In principal, each feature of the drawings which is described in the specific description, should obtain a reference numeral and, again, there are a variety of approaches which offer themselves for this purpose. You may find it convenient to prepare a list of all the reference numerals you intend to use with the meaning for each of them before doing the specific description or, if you choose to be guided by the drawings when preparing the specific description, you could assign reference numerals as you go along. In any event, it is good practice to number the features in the order in which they are introduced in the description, which makes it easier to find the part of a description relating to a specific reference numeral both when reviewing the draft application and later on when reading the patent application. One common approach is to use only even numbers for the reference numerals such that the odd numbers can be reserved for later insertions in the appropriate order in which the features are discussed. If the drawings in fact represent a number of sub-units, which are more or less self-contained, another approach is to group reference in accordance with the sub-unit to which they refer, for example starting the features of a first sub-unit with reference numeral ‘100’, the next sub-unit grouped with reference numeral ‘200’, and so on.
12.4 Claims As discussed above, this part of a patent specification defines the scope of monopoly which the applicant seeks and the patentee may wish to assert such that it could be seen as the most important part of the specification (although, for a strong patent, it needs to be supported by a good specific description as discussed above). Certainly, in both examination and litigation, it is the most talked-about. Most practitioners will agree that this is also the part of the specification where our professional skills are most needed and that drafting claims is one of the most difficult, if not the most difficult, skill (some would say art) of a patent attorney. As we have seen in the chapter 11, there are two types of claims: independent claims defining the broadest definition of the invention and dependent claims, referring back to the independent ones and providing narrower fallback positions. Since different considerations apply to each, they will be discussed in separate sections below, after a brief introduction. As discussed in detail above, two forces should act on the attorney’s mind when drafting an independent claim. On the one hand, the claim must be novel and define at least one feature which can support an inventive step argument. On the other hand, the client will generally want to obtain a scope of protection
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as broad as possible to ensure that as many competitors’ products as possible are covered, to make it difficult to design around the claims and provide less room for argument in infringement proceedings. As a default position, it may be prudent to include a bias towards the latter, broadening influence, in this tug of war. It will be more difficult to broaden a narrow claim during prosecution than to narrow a claim which turns out to be overly broad, as long as good fallback positions are provided in the dependent claims/description. However, each case needs to be judged on its own and it may well be that the client prefers to go for a narrower scope from the outset to facilitate prosecution both in terms of time and effort needed to be spent in the dialogue with the Patent Office during prosecution of the application.
12.4.1 Independent claims In practice, one way to approach tackling an independent claim as the broadest definition of the invention, is to start off with a first attempt based on what has been determined to be the invention when discussing with the inventor, and to then carefully go through each feature and ask yourself whether it is required to distinguish the claim from the prior art or to achieve the effects underlying the invention. If it is not, it should be relegated to a dependent claim. In theory, you should end up with one feature which is the most important for achieving the effect underlying the client’s invention, as well as any features required to support the distinguishing feature (for example, in an invention relating to the clearance between a spark plug in a motor and other components of the motor, it may be necessary to recite the other components in addition to the spark plug, unless the invention can be defined in terms of the structural features of the spark plug itself). Once you have reduced the number of features in your claim 1, in this way, it is prudent to carry out a cross-check by taking a fresh look at the resulting claim and ensure that it is still novel over the prior art available. To get started drafting an independent claim: • Spot the invention. Make a note of the novel features and your inventive step argument. • Choose the introductory clause of the claim. • Add the novel feature. • Add any other features needed for your inventive step argument or to support the novel feature of the claim. Then do a cross-check for the claim: • Check it is novel over all prior art. • Check the inventive step argument works. • Remove any unnecessary features. • Broaden any limiting words. • Make sure you cover what is made/sold. • If you have changed anything, repeat. Once an independent claim has been drafted, you need to consider whether further independent claims are appropriate. For example, you may have a claim to a new product but also a claim to a novel method of making the product or using it. Merely adding a claim to the use of the product as such, which is novel only by reference to the product, may not be worthwhile since the scope of the monopoly afforded by the product claim includes the use of the covered product. However, a different situation may arise if the invention is mainly related to a novel method of doing something. In that case, it may be a good idea to start with an independent method claim in line with the type of invention you are covering. However, in particular with a method invention, it will nearly always be advisable to add claims to a system defined in terms of structural features reflecting the method steps to ensure that a system arranged to carry out the method is covered even when not in use (Use: ‘A system arranged to do xyz….’ rather than ‘a system doing xyz…’). Patents Training Manual: Volume 1
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You should consider adding independent claims to a computer program on its own and on a computer readable medium and electronic carrier wave, if the invention is a computer-implemented method, to make sure that selling the programme on a disk is also an infringing act (although this is not allowable under present UK practice, the EPO routinely grants such claims where the subject matter is otherwise allowable). Similarly, special claim constructs apply in the fields of chemistry, pharmacy and biotechnology (for example, first medical use, Swiss claims) and if you work in this field you should consult your trainer. As mentioned above, further independent claims may be useful for other reasons, for example licensing as discussed further above. Briefly, if your invention resides in a spark plug, which could be used in both a car and an aircraft engine, you may want to consider claiming both a car and an aircraft with the spark plug inside (as well as an engine). This may make it easier to license the spark plug for use in a car to one party and for use in an aircraft to another. Before turning to the dependent claims, it is worthwhile considering the EPO rules regarding the number of independent claims. Apart from a number of limited circumstances (such as a plug and socket scenario or alternative solutions to the same problem) the EPO allows only a single independent claim in each category – that is a single method claim, a single apparatus claim and a single system claim. This does not mean you have to satisfy this rule on filing there may be very good reasons to have lots of independent claims. However, you may need to explain the likely repercussions/extra steps downstream to your client. Any claim including all features of a previous claim is considered by the EPO to be a dependent claim, so the above consideration may be achieved by writing claims which look like independent claims, but are in fact dependent claims, for example, of the form ‘An aircraft including a spark plug as claimed in any preceding claim’. This can also help to reduce the number of claims using multiple dependencies, saving on claims fees, for example, as charged by the EPO. In the above example, a single additional claim (‘An aircraft…’) represents, in fact, as many additional (singly – dependent) claims as there are ‘preceding’ claims. However, bearing in mind that US Courts (as opposed to UK Courts) consider the validity of each claim separately, such that an application does not become invalid merely because one of its independent claims is invalid; this approach should maybe not be taken too far and it is generally found to be appropriate to have a full set of dependent claims, for both independent method and system/apparatus claims.
12.4.2 Dependent claims As discussed in previous sections, the main function of the dependent claims is to provide fallback positions if the independent claims turn out to be too broad during prosecution. Since there is a cost involved in adding dependent claims to an application, both in terms of professional time spent as well as in claims fees in many major jurisdictions, the number of dependent claims should be reasonable; that is, only features which provide a potentially useful fallback position should be recited in the dependent claims. The aim should be to strike a balance between the number of explicitly recited fallback positions and a manageable set of claims. It should not be forgotten that, although sometimes more difficult to argue, amendment is also possible based on the disclosure in the description. Retaining a manageable set of claims also has other benefits as well as keeping the cost of the drafting process at bay. At the EPO and in other jurisdictions, multiple claim dependencies are not only allowed but also encouraged by the Patent Office (e.g. ‘a widget as claimed in any preceding claims….’). Whilst this is not the case in some other jurisdictions, notably the US, it still is a good idea to draft an initial set of claims of a application serving as a priority application with a fully connected set of claims, that is – a set of claims in which all claims refer to as many previous claims as possible without causing contradictions. For example, if claim 1 recites a resilient biasing means and claim 2 recites the resilient biasing means being a leaf spring, claim 3 reciting that the resilient biasing means is a coil spring can only depend on claim 1 but not claim 2 without giving rise to a contradiction. Ensuring that you have a fully
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connected set of claims provides you with maximum basis for later amendment with very few additional costs in terms of professional time and no additional costs in terms of claims fees (apart from the US where multiple claim dependencies are strongly discouraged by prohibitive fees). Claim dependencies can be used in other ways to enrich the disclosure of an initial application at little extra cost. For example, your claimed product may involve a number of inventions which interact with each other such that they could be claimed in combination, but could also be claimed separately as independent inventions. While, ultimately, an application claiming all the invention separately will probably attract an objection of lack of unity requiring different inventions to be pursued in different (divisional) applications, writing the claims relating to these features as both independent claims and dependent claims, can ensure that the claims provide a basis at the same time for each inventive concept in isolation, as well as for the combination of these features. A claim which is both dependent and independent can be achieved in a number of ways for example as follows: ‘a widget for use in widgetry, in particular as claimed in any preceding claim, in which….’.
12.4.3 Summarising claim drafting The art of claim drafting can only be acquired by repeated practice and constructive discussion with your trainer. A crib sheet of what may be the most important steps follows: • • •
•
Get started with an initial draft for an independent claim. Delete features which are not really necessary but keep a note of them for dependent claims. Check the result – is it still novel and does it work as a claim? (for example, if you find that any part recited in the claim appears to float in mid air and there is no connection to the other parts, it is likely that you have not recited all features which are required to make the invention work). Check the specific terms – are the terms you have used too narrow?
The last steps may need some iteration – some people find that making simple drawings of the integers of the claims helps but, of course, any approach that works for you is fine. Once you have an independent claim, with which you are happy, consider what other independent claims are needed from a point of view of infringement (scope of the monopoly), licensing consideration and other considerations, such as a claim written to a specific product which the client or a competitor sells. Then, derive dependent claims that provide useful fallback positions and make sure that they are connected as far as consistency allows by multiple dependencies. Finally, make a note of any specific questions that come to mind when doing the above steps and discuss with your trainer. Your trainer will be the best person to give you guidance on how many independent/dependent claims will be appropriate for a given situation and client, and you should seek to have a constructive discussion about any changes made by your trainer to your claims to understand why a different form of claim or wording may be more appropriate in each situation. Once you have produced a set of claims encapsulating the information about the invention provided by the inventor, the general statements of the claims, together with the drawings, should provide you with a useful guide to start preparing the description, dealt with in the next section.
12.5 The description We have already discussed, in chapter 11, what the elements of the description are and their respective functions. Briefly recalling these, there is a statement of the field of the invention, a discussion of the prior art and a discussion of the claimed features and their advantages (statement of invention). This is followed by a brief description of the drawings, introducing a detailed description of at least one embodiment of the invention. Patents Training Manual: Volume 1
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12.5.1 Field of the invention Regarding the field of the invention as discussed above, this should be fairly broad and certainly not narrower than your broadest claim. It can often be useful to have a very broad first indication followed by a more specific aspect prefixed with ‘in particular although not exclusively’.
12.5.2 State of the art The field of the invention is followed by a discussion of the background prior art. It is important to be realistic about what prior art is discussed in this section – discussing all prior art documents you have reviewed in preparing the draft so far could give a misleading and confusing view of how the invention came into being. There may be differing views on this point but one approach is to identify either the piece of prior art from which the inventor has actually started developing the invention or which he believes could be the most promising starting point for arriving at the invention and briefly discussing this prior art. The prior art section should be used to set up the invention and help with inventive step arguments to support the invention. To this end, it can be helpful to discuss the drawbacks of the prior art which the invention overcomes (this ties in with the ‘problem and solution approach’ used by the EPO in the assessment of inventive step, as discussed at section 6.3.5 and within chapter 17). In general, it is often found sufficient (and even preferable) to discuss only a single piece of prior art in this way. Of course, there will always be exceptions to the rules, one example being where it may be useful to discuss several other pieces of prior art to show how all of these have failed to overcome the drawbacks of the prior art in the way that the invention does. In all this, however, it is most important to ensure that a discussion of the prior art does not point to the invention as this could otherwise help an opponent later on to argue that the invention does not comprise an inventive step.
12.5.3 Statement of invention As discussed in detail above, the discussion of background or prior art is followed by the ‘statement of invention’, the function of which is to provide support for the claim, and, traditionally, this has involved copying the words of at least the independent claims into the description. Both the EPO and the IPO now accept a short form of statement of invention which simply refers to the independent claims by their claim numbers. Often, a compromise between these two extreme positions may help to increase the readability of the draft, for example along the lines of ‘In one aspect of the invention, there is provided a widget for widgetry as defined in claim 1’. This can then be followed by an explanation of how claim 1 solves the problem or overcomes the drawbacks of the prior art. Whilst, strictly speaking, it is not necessary to provide a statement of invention for the dependent claims, since the dependent claims are supposed to provide useful fallback positions, for example, when there is a lack of inventive step objection, it will often be helpful to discuss the features of the dependent claims and their respective advantages, as well. However, it is not necessary to slavishly copy the wording of the dependent claims and often a slightly different, for example, more compact, formulation may later on provide basis for useful amendments (apart from making the statement of invention more readable).
12.5.4 Brief description of the drawing Following the statement of invention comes a brief description of the drawings which is largely selfexplanatory. However, it is important not to fall into the trap of making these statements potentially limiting (do not use ‘Figure 1 shows a widget in accordance with the invention’ but ‘Figure 1 shows a widget in accordance with an embodiment’). Equally, the brief description of the drawings should be preceded by a brief statement making it clear that the subsequent description of the embodiments of the invention is by way of example only. Otherwise, it will be useful to keep the brief descriptions informative, such that the reader can easily find the drawings relevant to the item of information he or she is looking for.
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12.5.5 Specific description After all these introductory sections have been completed, the actual description of one or more embodiments of the invention follows. The way you go about drafting this will probably depend to a large extent on the format in which you receive the information from the inventor. It may, for example, be a job of simply amending a text provided by the inventor to make sure that no overly limiting or unclear statements are made. However, this must always be tempered by keeping in mind that all information that could possibly be needed later should be included. If you are starting from scratch, you may consider preparing a list of bullet points first to ensure all topics are covered or you could use the drawings instead and proceed in a fashion of describing the drawings one by one. You may want to prepare a list of reference numerals as discussed above, or simply create the reference numerals as you proceed to discuss one drawing after the other. Experiment with different ways of organising this part of the job until you find something that works for you. Whatever technique you come up with, it will be important to ensure that the terminology you use is consistent throughout the description (for example when describing different embodiments) and between the description and the claims to ensure that the text is easily understood and does not give rise to inconsistencies or lack of clarity. It is important to realise that the description is, on the one hand, a technical document which should tell the skilled person how to perform the invention. Therefore, as you prepare the description, make sure that you are happy that you understand from the text you have just written how the invention can be put into practice. If, at any point, you believe that there is some information missing, it would be just as well to flag this up with the inventor. The missing information may turn out to be unimportant or well known in the specific field that you are drafting in (such that there may be no need to describe it in detail) but if you do not flag it up, you risk missing an important feature which could result in an insufficient description, incurable after filing. On the other hand, of course, the description is also part of a legal document and it is, therefore, important to make sure that it is scrutinised beyond purely its technical content. For example, there are certain things that need to be done for certain kinds of technologies in view of certain jurisdictions where the application may eventually end up. For example, when drafting an application related to a method implemented on computers, it is good practice to include both a figure of a computer and a brief description of its normal working part such as a display, input device, hard disk, etc. as this may be necessary to comply with the ‘written description’ requirements under US practice (this may be changing but it takes little effort to use a ‘belts and braces’ approach). Similar considerations apply in other fields and you should discuss this with your trainer. There are also certain other things which are better not said. For example, statements implying that a feature, other than those in claim 1, is essential should be avoided as it could later restrict the scope of the claims more than was intended. Similarly, statements promising that the invention functions in an ‘optimal’ way or similar superlative statements should be avoided since this could lay the application or later patent open to an attack of insufficiency unless you can show that the invention is ‘truly’ optimal. If you follow the order of preparing the various parts of the draft as discussed above, the description will be the last piece in the puzzle. Once you have finished the draft, it will therefore, be a good idea to check carefully all the points raised above and read everything through in one go, to make sure that everything is consistent and nothing has been missed. If you have kept a note of any question that you came up whilst you were preparing the description (or claims), now is a good time to review them to see if some of them have already been addressed or remain outstanding and to keep an eye out for issues to be addressed in your reporting letter, discussed in the next section.
12.5.6 Abstract As mentioned above, the abstract in essentially a tool for searching and should succinctly summarise the disclosure. However, it is nevertheless good practice to ensure that the statements in the abstract are not
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narrower than the independent claims. It can help to use language equivalent or close to that used in the independent claims.
12.6 Reporting to the client Once a first draft of the application is prepared, it must be reported to the client usually under cover of a reporting letter. This may apply more so to private practice, although set procedures for obtaining feedback from the inventors may be applicable if you work in-house. However, similar considerations should apply. The primary function of the reporting letter is to act as a cover letter for the draft application to send it to your client. As such, it should be a document which helps the client (and/or inventor) to review the application. A number of considerations flow from this. If one or more of the persons reviewing the draft application has no or little experience of dealing with the patent system, it would be very important to explain clearly the function of each part of the description and, consequently, what they need to look out for. Briefly, this would include explaining the function of an enabling description and asking the inventor to check that sufficient detail has been provided. The function of the claims to define the monopoly should be explained to the inventor so that the inventor can check that all the dependent claims each contain at least one feature not disclosed in the prior art to ensure novelty, but do not contain any features not essential to making the invention work at its broadest level. A reminder of the ‘best mode’ requirements in the US will also be very helpful. You will probably find that you will say the same sort of thing over and over again, so that it may make sense to develop a set of notes to aid reviewing a draft patent application, which you can then simply attach to your reporting letter. In addition to these general points, it is likely that there will many issues which need to be highlighted and discussed relating to the specific draft at hand. For example, quite often you will find that the information provided by the inventor when you start drafting the application will not be entirely sufficient and you may have made some assumptions where information has been missing or not entirely clear. It is important to spell out clearly these assumptions and obtain the inventor’s confirmation that they are indeed correct (or not, as the case may be). Similarly, any changes over what has been discussed (for example, the scope of claims or ways to define certain features) should be highlighted to ensure that the inventor is aware of the changes. Similarly, if any information provided is not used, this should also be clearly stated, and it would probably help the reviewer if a brief explanation for the reason for the omission is also given. Summarising, it is important to ensure that the reviewer of the draft application is made aware of any information (changed, added or missing) not apparent from the face of the draft, to ensure that approval is obtained. Equally, it will probably be judicious (and good client service) also to highlight any features of the draft which you believe are worth noting. Finally, as always, there will be some administration to do. An approaching deadline may have to be met with the filing of the application, in which case the client should be reminded and, if possible, a date should be set by which you will need the client’s instructions in order to meet the deadline. If you are filing at the IPO, other questions which will need to be addressed are whether the client wishes to have the application searched and/or examined on filing, whether a statement of inventorship should be filed on filing and any other procedural issue which may arise, unless standing instructions for these exist. Make sure that all information necessary for filing is either available or requested so that the application can be filed without the need for further queries once approval of the draft in its present form (or after further iteration) is obtained. The chapters on patent prosecution (17) and filing strategies and systems (13 to 16) will help you to determine what is needed. After all this, all that is left to do is to send off the draft, ensure that any deadlines are diaried and wait to hear back from the client.
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Test your knowledge 1. Sections 12.1. 12.4.1 and 12.4.2 propose a number of checklists and processes. Produce your own versions to make them most useful and relevant to you. 2. Your client, a manufacturer of steam irons, asks you to draft an application for a new invention. The invention consists in a new steam iron to which your client has applied a particular steam nozzle design in the ironing shoe which is being used for high-pressure steam cleaners. The client provides you with a document (A) describing conventional steam irons, a document (B) describing a steam cleaner having the particular nozzle and a document (C) describing another recent steam iron nozzle design which the client tells you fails to provide the benefit of the particular nozzle. Which of A, B and C would you discuss in your introduction to the description and why? 3. Your client of question 2 tells you that there is a substantial market for ironing shoes, which the client sells to other manufacturers for them to incorporate into their own steam irons. How many independent claims would you consider using and directed to which product(s)? Can you think of any further questions you should ask the client? 4. Take a moment to get a copy of the EQE paper A (Electricity / Mechanics) of 2006 and the Examiner’s comments (available online at www.epo.org/about-us/publications/legal-professionals/eqe-compendium. html). Read through the paper (don’t look at the Examiner’s comments yet): (a) How many inventions can you spot? (b) How many of these can be covered in a single application? (c) Think about the client’s activities: what kind of claims method/apparatus) should you include? (d) What kind of product/services should they be directed to? (e) Have a go at an independent apparatus claim.
Suggested chapter answers and comments 1. Since these lists should be relevant to you, there is no single answer. Take another look at the relevant sections and discuss with your trainer. It may be a good idea to complete first questions 2 to 4 and to schedule a meeting to discuss your answers and thoughts with your trainer. 2. At least A should be discussed, including its drawbacks which are overcome by the invention. It may be useful to discuss C to show how others have failed to address the drawbacks. B should not be discussed, as it would risk giving a misleading picture of the invention which resides in applying steam cleaner technology to steam irons – discussing B risks making the inventive step look smaller. 3. Using the EPO’s definition of an independent claim, a single independent claim related to the ironing shoe of the iron (there is a substantial market for the shoes themselves) and a dependent claim reciting and including the shoe as claimed would be appropriate. An important question to ask the client would be whether the invention can be defined only in relation to the shoe or whether features only in the remainder of the iron are needed (in which case the above approach may become difficult). 4. Now take a look at the Examiner’s comments. You should have found that there are three inventions: (1) a one one-way clutch to prevent starting a treadle machine in the wrong direction; (2) two one-way clutches to enable the machine to be powered by either treadle or an electric motor; and (3) the Patents Training Manual: Volume 1
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elongated extension shaft of Fig 5C (which can be used with two pulley prior art sewing machines). Invention (2) can be protected as a dependent claim, dependent on a claim for invention (1) and both are unified by the inventive concept of using a one-way clutch to drive a sewing machine. Invention (3) is a separate invention and would eventually have to be protected in a separate application. Since the client operates service centres for upgrading sewing machines, the Examiner’s comments state that a method claim directed to upgrading existing treadle machines should be included. Do you think this reasoning is complete? Can you think of more detailed reasons? Discuss with your trainer. Take a look at the Examiner’s preferred solution for an independent apparatus claim. How does yours compare? Discuss this with your trainer, if possible together with your other answers, in particular to question 1.
Chapter review This chapter has looked into the practical aspects of drafting a patent application, once the theoretical underpinning knowledge, covered in previous chapters has been assimilated. Before the drafting process can begin, the information must be obtained from the inventor. One approach to then preparing a draft has been discussed but it must be emphasised that everybody is likely to develop their own approach based on experience. This chapter should have provided practical pointers to arrive at a set of claims covering the invention and a description to support it.
Further study Since a large part of mastering the art of drafting requires practice over and over again, the best further study is to actually draft patent applications under your trainer’s supervision. However, you may want to look into the following for further reading: • Roberts, Gwilym, (2006), A Practical Guide to Drafting Patents, EIPR Practice Series. Andover: Sweet & Maxwell • Cole, Paul, (2006). Fundamentals of Patent Drafting. London: CIPA
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Filing strategies: an introduction
Outline This chapter deals with systems for obtaining patent protection in multiple jurisdictions and looks at how to protect an invention to which improvements are being made during the patenting process. In particular, the chapter explores regional and international systems for keeping patenting options open for as long, and widely, as possible within budgeting constraints, how to identify countries for which patent protection is desired, how, broadly, to pursue protection in those countries, and use of the ‘priority’ system. The following key concepts are introduced: • The Paris Convention governing the priority system. • The Patent Cooperation Treaty (PCT) or International Patent Application System. • The European Patent (EP) and other regional patent grant systems.
Learning plan Prerequisites: The trainee should have read: • • • •
Sections 2, 3, 5, 6, 77-79, 89, 89A, 89B UKPA Articles 75, 87-89, 150 EPC Articles 3, 4, 8, 22, 39 PCT The Paris Convention.
Trainer’s input: Discuss with your trainer some examples of filing scenarios that they have encountered, and how they dealt with them. These should include filing strategies covering a large number of countries or covering a small well-defined set of countries and instances where the first filing has been made overseas and the reasoning behind it. Also discuss approaches adopted when an inventor or a team of inventors have continued to work on related inventions after a first patent filing such that further patent protection was required both within and subsequent to the priority year. Syllabus link:
UK Exams: P2 EQEs: Paper D
Time allocated: Two days.
Learning outcomes This chapter will enable you to advise the client/business on filing strategies including where to file a first patent application, how to defer the costs and keep the options open for patent protection in multiple countries, how to select in which countries to seek granted patents and how to protect a string of related inventions which develop over time.
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13.1 Legal background In order to advise thoroughly and, if needs be, innovatively, in relation to filing strategies, it is essential to have a clear understanding of the underlying legal principles. The fundamental issue in ensuring that suitable protection is available is the requirement of absolute novelty and, in particular, ensuring that the novelty of the invention is preserved in all of the countries of interest or of potential interest, especially over your own disclosure of the invention. This is vital, not only where you want to protect an invention in multiple jurisdictions, many or all of which may have their own absolute novelty requirements, but also where, after making a first invention and filing an application for it, the inventor comes up with improvements, each of which is additionally patentable. To accommodate the inconvenience resulting from country-by-country absolute novelty requirements, various legal systems have been developed allowing novelty to be preserved for limited periods without the requirement of filing in every country of interest before any disclosure of the invention. It is also essential, therefore, to understand these systems, in particular the ‘priority’ system governed by the Paris Convention, the international patent application (PCT) system and the interaction of these with national or regional granting patent systems such as the EP system.
13.1.1 Novelty The concept of absolute novelty, that is, that a claimed invention must be distinguished from any individual prior art disclosure anywhere in the world and in any form, is dealt with at length in chapter 6. Typically, the main concern during subsequent prosecution of a patent application is the patentability of the claimed invention over third party prior art, because the filing strategy should have been developed specifically to ensure that your patent filings were made before any of your own disclosures. In this chapter, however, although we need to bear in mind the risk of third party disclosures, the focus is on how to ensure that the client/business does not shoot itself in the foot and find itself having to argue during prosecution that the claimed invention is novel over its own disclosure which can, of course, be a massive problem. If one were to imagine a situation where each country in the world had absolute novelty and there were no international conventions or systems in place to make things easier then it will quickly be seen that multi-jurisdiction protection would be immediately extremely burdensome. For example, if the inventors wanted to disclose their invention as a matter of urgency, whilst securing patent protection in multiple countries, then it would be necessary to file a patent application in each of those multiple countries prior to the disclosure. This would introduce very high upfront costs at a time when it might not be clear how much value the invention/patent might provide. If the disclosure were imminent, then the administrative burden might also be very high and, for example, there might be significant problems in obtaining a filing date in countries where translations were required.
13.1.2 Claiming priority The ‘priority’ system, governed by the Paris Convention as imported into the national/regional patent granting law of contracting states, was introduced over 100 years ago to alleviate some of these problems. According to the priority system, filing a patent application in any one contracting state is enough to obtain a corresponding effective filing date in all other contracting states as long as various conditions are met, allowing inventors to disclose after the priority date without prejudicing patent protection in the other contracting states. For example, imagine a first filing, establishing a priority date, in the UK. If the inventors disclose after that priority date then not only will the disclosure not constitute prior art against the patent application in the UK, but also in other countries party to the Paris Convention, if the right steps are taken. In order for this system to apply, it is necessary to take additional steps in the countries of interest within 12 months of the priority date. In the absence of any other legal systems, therefore, the priority system would afford the client/business an extra year in which to decide how much to invest in overseas
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filing of the patent application. This is still a comparatively short time to assess the potential value of an invention but it is entirely possible to make use of the priority system to the exclusion of other international and regional systems discussed below; and sometimes this makes commercial sense. The claim to priority itself is a purely formal matter including specifying the priority date and country and (possibly later) providing the application number of the priority application together with a certified copy. The priority claiming filing itself must be made within the 12 months. Provisions do exist in some jurisdictions for running slightly past this period if an error can be shown. This is beyond the scope of this chapter – as a general observation, the best and only practice is to completely ignore ‘let-out’ provisions such as this as they may not be available in some countries, you may have not met the relevant conditions and so forth. If you ever have to rely on provisions like these you should view them as a straightforward failure on your part! Also beyond the scope of the chapter are the specific requirements for claiming priority and, for example, the deadlines for providing backup documentation and information such as the certified copy and number of the priority application, which is dealt with in chapters 14 to 16. It is worth mentioning that there are some countries not party to the Paris Convention but which have equivalent reciprocal agreements with the UK, for example, Taiwan. The subsequently filed patent application that claims priority can include additional subject-matter over the original, but will only be entitled to the priority date in relation to the common subject-matter. As a result, if there are developments during the priority year these can be incorporated in the subsequent priority claiming application or covered in separate applications, dependent on the circumstances, as discussed in later sections of this chapter. It is worth noting, however, that if it is intended that the development will also be published within the priority year then a further patent application including additional information should be filed before the disclosure, establishing a further priority date for additional information. This is often the reason why you will see patent applications claiming multiple priority dates. Publication of the application also provides provisional protection in most jurisdictions, as discussed in 13.1.5. If it is known that only a few, clearly defined countries are required or that some of the countries required are not party to other international systems, then a simple filing strategy is to obtain a priority date by a first filing, for example, in the UK and then, within one year, filing patent applications in other individual countries of interest ‘claiming priority’ from the UK application. Often the one year priority period is simply not enough for the client/business to make a commercial assessment of the likely value of the invention or patent, but until 1978 there was little other option. Many changes took place that year and you should have pity on any of your colleagues who were around then as there was a complete law transformation for many people. Two of the big changes relevant to this chapter were the introduction of the EP regional patent granting system and the PCT system.
13.1.3 The PCT system Starting with the PCT system, the first point to note is that although it is an international patent application system it does not result in an ‘international patent’. The effect of the PCT system is to preserve the priority date of the invention beyond the 12 months afforded by the Paris Convention for those countries party to the PCT which, it should be noted, form a subset of those countries party to the Paris Convention. To be exact, the PCT system, during the international phase, keeps the international patent application pending for 30 months (or 31 months in some countries) from the priority date of the patent application. After that, at the national or regional phase, it is necessary to convert the PCT application into national or regional patent applications in the countries still of interest to the patent applicant, which typically involves carrying out various formal steps for each jurisdiction, including, where necessary, filing of translations. As a result, the cost of proceeding in multiple countries is not removed, but it is deferred. Use of the PCT system is extremely common and provides a very cost effective way of keeping the applicant’s options open for as many countries as possible for as long as possible. A typical filing strategy Patents Training Manual: Volume 1
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using the system might be, for example, to file an initial application in the UK, to file a PCT application within one year of the priority date and claiming priority from the UK application and then, at the end of the life of the PCT application, convert it into patent applications in specific countries or regions of interest. Thereafter, the patent application is prosecuted separately in each of those countries before the respective patent office and according to their own procedures and requirements. Hence, the cost is still there but incurred much further down the line, when the client or business may have a better idea of how much they want to invest in the concept. It is important to note that the 30-month period (or 31 month) is calculated from the original priority date. Hence, if a PCT application is filed at the end of the 12 months, it, itself, runs another 18 or 19 months before the 30 (or 31) months is reached. If the PCT application is filed earlier into the priority year, this has no effect on the date when the PCT must be converted into national and regional patent applications. Indeed, instead of filing a UK application to establish a priority date, the PCT application can be filed as the first filing establishing the priority date, in which case it runs on its own for the full 30 or 31 months from that date. Various procedural and substantive steps take place during the life of the PCT application, and a detailed consideration of these is found in chapter 16. It is, however, worth noting that a full patentability search will be carried out during the international phase, typically by one of the major patent offices acting as an International Search Authority. As a result there may be savings on subsequent search fees in the national or regional phase in some jurisdictions where it may be deemed unnecessary to duplicate the search or only a top up or a reduced search required. In addition, some level of substantive examination of the application is available, that is, a review of the patentability of the claims over the cited prior art. You should discuss with your trainer what approach he or she would typically adopt in relation to the substantive review options available, as the patent granting authorities and national/regional authorities may be less inclined to abide by the conclusions of any such review during the international phase1.
13.1.4 The EP system Turning now to regional systems such as the EP system, these will vary in approach and it is merely mentioned that in addition a Eurasian patent system, two African multinational systems (OAPI, ARIPO) and a South American regional system (The Andean Pact) are available. A detailed discussion of the EP system is beyond the scope of this chapter (see chapter 15), but, in brief, the system allows a patent application in a single language (selected from one of English, French and German) to be examined centrally at the European Patent Office (EPO) and, if found acceptable, granted as a European patent. The patentee still needs to decide in which of the states party to the European Patent system he or she wants the patent to be validated and, in those countries, it is necessary to take formal steps which can include the filing of translations of the entire patent or the claims. As a result the European Patent system is end loaded allowing yet more time to decide on the final countries of interest, but these end loading cost can be high and this needs to be understood by the client or business. Reverting, then, to a typical multinational filing strategy, where European countries are of interest, the approach taken to keep options open for as long as possible at lowest cost, might be to file a UK priority application, followed by a PCT application which is then converted into an EP application, together with other countries or regions of interest, each case being prosecuted through to grant and, in the case of the EP, subsequently validated as national patents in the specific EP jurisdictions of interest. However, all of these systems can be used flexibly and are certainly not mutually exclusive. For example, after a first single-country priority filing, at the one-year stage a regional patent application such as an EP application may be pursued immediately, together with any other countries of interest. Alternatively, an international patent application may be pursued in conjunction, say, with one or more national or regional patent applications in which it is desired to obtain grant of patent at an accelerated rate, for example because of known commercial risks.
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13.1.5 First filing overseas In addition, although a filing strategy where a UK first filing to obtain a priority date is a simple, straightforward and comparatively cheap starting point, it is by no means essential that the first filing be in your or the applicant’s own territory. For example, in some instances some countries may afford certain additional rights for first filings in that country as against subsequent filings there claiming priority from a foreign application, so there may be commercial reasons to obtain a first filing in a certain country. Indeed, in a few countries there is a ‘grace period’ available whereby an application can have novelty over a disclosure by the applicant as long as it is within the predetermined period prior to the filing date. Notably, in the US a one year grace period is available. As a result, even when a disclosure has taken place, a filing strategy may be developed at least covering other countries which have such a grace period, although, in those circumstances, it is essential to have an understanding of the national requirements for obtaining the benefit of the grace period. For example, in some countries it may be necessary to file directly in that country within the grace period, rather than relying on a priority filing in another country within that grace period. If you want coverage in any countries without a grace period, don’t use it! It is also important to understand whether any foreign filing permit is required for a first, priority, filing overseas. Many national laws require that if an inventor, or applicant or even patent attorney, in some instances, wishes to make a first patent filing outside the country then certain conditions may have to be met. The underlying reasoning is that otherwise defence related material maybe propagated overseas without national vetting. As a result, where you are considering an overseas first filing or, importantly, where any of the inventors or applicants is resident in or national of a different country from that in which the first filing is contemplated, you need to investigate the respective foreign filing permit requirements and take the required steps. Before we investigate the implications of the legal issues highlighted in this section, there are two other background issues that bear consideration. The first of these is the fact and effect of publication of a patent application. Whatever filing approach you adopt, with very few exceptions, you can expect your patent application to be published about 18 months after the priority date, whether as part of a national patent application, a regional patent application or as a PCT application at that point. Even if the applicant does not otherwise disclose their invention, the information in the patent application becomes part of the public domain which, in most jurisdictions, will be fully citeable against subsequently filed patent applications as prior art. This means that if your inventors are continuing to develop their concept and want to obtain subsequent protection, then any developments for which patent applications are filed more than 18 months after the original idea must be fully patentable over the disclosure of the original patent application. This is an important consideration in protecting a string of inventions as they develop. In some jurisdictions, especially in Europe, pending unpublished patent applications can have limited prior art effect. This is discussed in more detail in chapter 15 but, in summary, a first patent application having a first priority date may be citable for novelty only but not inventive step in relation to a second patent application having a priority date after the first priority date but before publication of the first patent application (draw a timeline if this is unclear). Once again, this can be taken into account in terms of timings of filing of patent applications for string of related inventions as they develop. The details vary, but another general effect of publication is provisional protection. If infringement commences in a country where a patent application is still pending then, while it cannot be enforced until grant, once granted, in addition to seeking an injunction and damages for losses suffered since grant, damages can be extended back as far as the date of publication of the application if various conditions are met. As a result the ‘damages clock’ can start ticking from publication of the application, meaning that third parties need to take care even with pending cases. Armed with all of this advice, the patent applicant will still, eventually, have to select the countries where patent protection might be desired. This is, in one sense, a commercial decision but should be made in the light of an understanding of the scope of monopoly afforded by a patent, which is looked Patents Training Manual: Volume 1
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at in detail in chapter 10. Although this varies from territory to territory the general situation can be fairly similar; a patent can be used to prevent third parties, without authorisation, from making, selling, importing, using or offering for sale a patented product. In the case of a patented process, use or offer of use of the process as well as acts in relation to direct products of the process can also infringe. All this needs to be taken into account when deciding the filing strategy.
13.2 Practical considerations The practical considerations in developing a filing strategy are almost all budget driven. If the applicant has unlimited money then a grand, global filing strategy covering everywhere should do. More realistically, however, the client is likely to have fairly strict financial constraints and may also want as much time as possible for making the costly country-by-country decision. Accordingly there are various considerations that the client or business should consider: •
Do you know exactly in which countries this patent is going to be useful? This may be because of the very limited geographical market or because only a few countries have the technology available to copy the invention. If so, one possibility is to go straight into those countries at the end of the priority year based on the first filing. The downside of this approach is that this may close the door on all other countries as far as patent protection is concerned even if they subsequently become of interest.
•
Do you want to keep your options open for as long as possible at the lowest cost? In this case, it is necessary to have an understanding of the priority and PCT systems, but also to recognise that this defers rather than avoids the costs. An understanding of the benefits of provisional protection in this instance is also useful.
•
If you are unsure of the countries of interests where is your business base? Where is your customer base? Where are your competitors based and where might competing manufacture take place? This allows identification of potential infringing activities, which can, at least partially, narrow down the candidate countries for the longer term. This could be a decision to be made at the end of the PCT phase.
•
Of the countries identified is it worth patenting there? To a large extent this is purely a commercial question of the value of the market per country. However, it is also worth bearing in mind practical issues of policing infringement. For example, in large or remote countries it may be very difficult to tell what is going on. There may also be concerns about the availability or reliability of a suitable enforcement system. You need to make sure that once you have a patent in certain jurisdictions, the courts know what to do with it and have a decent track record of fair decisions.
Not all of this information is necessarily required at the outset. For applicants who do not regularly use the system and have not developed their own strategy, it is typically enough to talk through the options quickly, for which a sketched timeline can be enormously useful. It is also important for you to understand the rough costs associated with each stage for which you can, once again, talk to your trainer for guidance. It is always worth exploring whether the client or business has a clear and educated idea of the countries of interest and whether, in that case, they do not need to keep their options open elsewhere. Experiences may differ, but it is probably safe to say that, in the majority of cases, the client is happy to keep their options open and their up-front costs down by using the priority system and, subsequently, the PCT system, possibly plugging any gaps in the PCT contracting states by separate additional national filings at the one year stage. But this approach should not be taken for granted, and the flexibilities of the system should be understood in order to allow more innovative filing strategies.
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13.3 Commercial considerations The commercial considerations are closely tied in with the practical considerations. Once again, the client or business needs to consider where they want to obtain protection and when to spend money making best use of the systems available. In addition to a basic understanding of the damages available in relation to pre-grant infringing activities, the commercial impact of a pending patent application should also not be underestimated. The potential for amendment to patent applications and patents is looked at in detail in chapter 8, but the significantly greater freedom of amendment available in a pending patent application should be taken into account. Once the patent is granted, generally speaking, it cannot be broadened to cover subject-matter beyond that encompassed at the date of grant. In other words, if an infringer knows that he or she is safe at the date of grant then nothing can be done to the patent to improve the patentee’s position. Pre-grant, however, there is not only the opportunity to broaden the existing patent claims (as long as it does not add matter) but also the possibility of filing one or more divisionals to other unclaimed subject-matter in the application2. As a result, third parties when faced with, say, a recently published pending international patent application have the uncertainty not only of an eventual granted patent being directed to any patentable subject-matter within the published application, but also of those granted patents appearing in over one hundred countries party to the PCT. The importance of provisional protection (sometimes it is useful to talk about ‘patent pending’ for less experienced users of the system) should be stressed too, namely that back-damages can clock up against pre-grant infringement. It may be worth talking to your trainer about any due diligence or clearance exercises where freedom to operate issues have been raised on the basis of third-party patent applications and the uncertainties that they entail. It is useful for the business to put itself in the shoes of the third party faced with their patent application, to fully understand the difficulty that a filing strategy which keeps the patent options open for a limited time, even if not all of those options are exercised, can cause to third parties. When it comes to making the final decisions on where to grant the patent then, once again, the rights afforded by a granted patent are important to understand, as well as the policeability or enforceability of the patent. In the end, your client needs to understand their business and that of their competitors or potential licensees in assessing which strategic markets are of importance. In the case of a simple product, for example, easily manufactured and sold in high volumes, it may be almost impossible to stop all manufacturing activity which could be set up anywhere, but much easier to identify the target consumer markets and concentrate on patent protection there. In the case of technically very complex processes, then, in addition to the main consumer markets for the products of those processes, those countries with a technological base that could allow competing manufacture might be targeted. Certainly, in this case, one should look where the competitors are. Some inventions, for example in the computer or communications area, may relate to international standards such that patenting in a few key countries per region may be enough, as locking competitors out of one country may be sufficient to effectively close down the whole region. On the other hand, some blockbuster pharmaceuticals may have significant markets more or less globally and, hence, require comprehensive coverage. There are many other scenarios and seldom will two businesses have the same issues. Unfortunately, in advising in relation to these issues, it is necessary to tread a tightrope between comprehensive advice and information overload, the trick being to provide the former whilst avoiding the latter and this is, possibly, where experience comes in most useful!
13.4 Practice issues Of course, one needs to take into account the realities of actually implementing the filing strategy. You will need to understand your own office procedures and the timings involved, as well as your interaction with overseas attorneys, which will be very important, to the extent that they are handling any of the Patents Training Manual: Volume 1
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filing or prosecution issues. You also need to ensure that you understand the issues relating to foreign filing permits and restrictions on the right to file certain patent applications, such as an international patent application.
13.4.1 Urgent filings Turning to the timing issues firstly, if your inventors inform you that there is only a very short time available for filing, this may well limit the options open to you as a first filing. For example, it may well be that the time required for obtaining a foreign filing permit (where the subject-matter is restricted in relation to the UK authorities) may dictate that a UK, EP or PCT patent application filed in the UK has to be your first step. Of course, if your inventors have already disclosed and you are towards the end of any grace period available then the urgency increases as you are probably going to have to deal with overseas agents to obtain foreign filing dates in conjunction with any filing permit issues. In that case, you will also need to understand what other information – such as full inventor details – may be required by those other authorities.
13.4.2 End of priority year At the one year stage, in addition to establishing whether there is any further information to be incorporated into the patent application, you will need instructions as early as possible about the desired next steps and you will also need to make sure that you have the relevant information for performing those next steps again, for example, full inventor details. If the plan is simply to file an international patent application, then translation issues are not relevant but if there are additional national applications, ‘plugging the gaps’, then translations may be required immediately or shortly after filing in those countries, such that this purely logistical issue needs to be factored into the equation.
13.4.3 National and regional phase Translation issues tend to be more of a consideration towards the end of the international phase where it is quite possible that the applicant will want applications in a range of countries with different language requirements. You will need to understand not only what the time limits are for each country (typically 30 or 31 months from the priority date), but also where translations are required and, if so, whether they are required at the time of filing or can be filed subsequently. You also have to get the papers to the overseas attorneys and you have to make sure that they are correct. All of this needs to be factored in when seeking instructions and, in effect, you have to start chasing early. Similar considerations apply during the European regional phase, especially at the national validation stage, where once again translations may need to be prepared by clear cut deadlines which are often inextensible. The interaction with your foreign attorneys is very important. You should always bear in mind that as a UK and European patent attorney, your expertise does not extend, strictly speaking, beyond UK validity and infringement issues, EPO validity and opposition matters and PCT procedural points. But you need to have an understanding of the filing requirements for other jurisdictions and your overseas agents are the ultimate source for this. You also want to have quick, responsive, comprehensible and efficient overseas attorneys that can help you in moments of urgency, and who can, of course, give you sound advice during subsequent prosecution or third party issues. And then you need to remember that if you handle work on behalf of them, they are looking for the same thing from you! Building a good relationship with other attorneys in other jurisdictions and impressing them with your responsiveness, thoroughness and professionalism is not only good for the client or business for whom you act – it may also be good for your own business, if you are in private practice. Finally, part of the information you need to have available at your fingertips, for your own jurisdictions and on request from overseas jurisdictions, are issues concerning foreign filing permits, the information needed for filing, and so forth.
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Although many of these practice issues may seem trivial details, some of them have to be sorted out to obtain a filing date and so it is vital to understand your position fully. There can be nothing worse than exhausting yourself preparing a patent application, as a matter of urgency, only to find that you do not obtain a priority date because of a trivial omission. More chillingly, it is much easier to be found negligent as a result of trivial omission than it is as a result of error in drafting a patent application.
13.5 Handling a string of related inventions You may find that your inventors have embarked on a project which they expect to generate significant IP spread over a period of time. Often, in that case, the core inventive concept may appear fairly early but, as development continues, specific improvements may present themselves which are also worthy of patent protection albeit of a narrower type. Of course, other scenarios are possible – sometimes a patent application is filed for a very narrow initial development, the potential of which is only fully recognised subsequently such that additional patent protection may be sought at a later date. Whatever the specific situation, it is necessary to develop a filing strategy taking into account not only proposed publication by the inventors themselves, but the effect on later patent applications of earlier patent applications, cost considerations and potential third party patenting or publishing risks.
13.5.1 When to file The first issue is when to file the patent application. The basic guiding rule is, once again, preserving novelty such that the patent application must be filed before any publication of the invention takes place (unless it is intended only to rely on the grace period in countries that support this). If this is not an issue, then the principal other consideration to take into account is whether there is likely to be third party activity. Your client may be in a race and concerned about a third party filing a patent application first (which could have limited or full prior art effect in many jurisdictions) or the possibility of publication by a third party which, whilst potentially not creating any freedom to operate issues, could destroy patentability world wide. If the inventors are aware that there is a race going on with another group, then this concern can be a very significant one. If there is no evidence of a third party problem, the issue still needs to be discussed, but in the context of balancing the risk of third party activity against the potential downsides of an early filing. The pressures mitigating against an early filing, for example are the difficulties with a ‘rush job’, potential problems with an insufficient disclosure and the effects on the lifetime of the patent. The problems with a rush job are self evident. Usually, when you ask the applicant when they would like the application filed, the response is ‘as soon as possible’. It is vital that there is an understanding of the importance of getting the document right and, in particular, the difficulties of introducing further matter into a patent application subsequent to filing. Even where the application is filed establishing a priority date, then a clear understanding of the ramifications of filing a subsequent application claiming priority, but with additional information needs to be understood. In particular, the priority date will only be available for subject-matter common between the original and later application and, if the initial filing would not itself meet the basic requirements for a patent application, in particular sufficiency, then the priority date may be worthless. So the main problem with a rush job is that if it does not contain enough information to meet the sufficiency requirement discussed at chapter 8, or in some jurisdictions, it does not make it possible to work out what the claim relates to, then it may not, in fact, achieve very much. That is not to say that rush jobs do not happen – sometimes you receive last minute notice prior to a disclosure and you simply have to file what you can. In that case as much information as possible is advisable – any indication of the subject-matter which it is desired to be claimed, for example, in the form of a rush set of claims agreed with the inventors is preferable, if possible. The risk is clear, however: if there is a disclosure in Patents Training Manual: Volume 1
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the priority year then the priority application may not be entitled to its priority date such that the disclosure remains full prior art against applications claiming the priority date. A further problem with the rush job is that it will typically be low on information which could later form the basis for amendment of the patent application if the core concept turns out to be known. This may well be because that information is not available at the time of filing but requires further research work or it may be because the information is simply omitted in the rush. In either case, a related problem is the risk that the initial patent application will become prior art against subsequently filed patent applications. Even if you do have time to discuss possible improvements and modifications to the basic information provided, if this is not described in sufficient detail you may find that the patent is not available to you for the information given but it is enough to knock out future, more detailed, patent applications. A further pressure in favour of delaying filing is the fact that the life of the patent application runs from the point of filing. Technically speaking, the maximum life of a patent application (excluding things like supplementary protection certificates) runs 21 years from the priority date of the application, if full use of the priority year is used, the actual calculation being that the patent can last up to 20 years from the filing date. Irrespective of the details, it is clear that the later the application is filed the later it will expire.
13.5.2 Augmenting the application All of these factors need to be taken into account and balanced against one another in deciding when to file the initial patent application. Once this date is set, then there are three distinct subsequent periods during which protection can be sought for further information and in relation to which entirely different patentability considerations apply. The first period is the priority year. If there is further development during this year, then the information can be collated together with the original disclosure into a new patent application claiming priority. The priority date will only be valid for the common information such that if there is intended to be an intervening disclosure by the inventors then a priority date must be established for the additional information by filing a suitable patent application in the interim. It is worth discussing with your trainer whether this interim application should itself claim priority from the original or not – under UK practice, it is in fact better not to as this can prejudice the possibility of dropping both applications prior to publication and starting the priority year again. Instead you should file a combined application at the end of the year claiming priority from both. However, the possibility of effectively adding information during the priority year should be taken into account when deciding how much to put into the initial application. For example, a broad statement in the initial application could create prior art problems against subsequent patent applications but should not cause such difficulties if it is likely to be fleshed out in the priority year and pursued in the subsequent application claiming priority. Of course, there is nothing against filing a complete stand-alone patent application for the additional information. However, it should be considered whether this information is worth pursuing separately or is better in the context of the original application, for example, providing full amendment positions if relevant prior art is found. It is also important to take into account any prior art effect of the original patent application against any subsequent non-priority claiming applications. The second phase runs up to publication of the application. Once the priority year has expired, it will generally be impossible to file an application with additional subject-matter claiming the original priority date, for obvious reasons. Accordingly, the original application will be citable for novelty purposes in some circumstances. However, in the same circumstances, it may well not be citable for inventive step (at least in Europe) such that during the second stage it is still possible to file patent applications for subject-matter which is purely novel but not necessarily inventive, over the information in the earlier patent application. In many cases, this may not be of interest but where, for example, additional information is spotted that really should have gone into the first application; this approach can be used at least for any jurisdiction party to the novelty-only approach. The third stage is after publication of the original patent application. The original application is now full
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prior art for both novelty and inventive step, just like any other publication, against any subsequently filed patent application. However, just like any other piece of prior art you are faced with, the sole issue is to consider the totality of the disclosure and decide whether your development has an improvement not disclosed in the prior art and (paraphrasing the inventive step approach) whether that improvement provides unexpected advantages, say. It is vital to understand that it is entirely possible to obtain a patent for developments which are incremental improvements on a core concept, which, of course, applies irrespective of whether the core concept belongs to you or someone else. The question, as far as patentability is concerned, is whether the improvement was disclosed in the prior art, and not whether it is covered by the claim. For some reason, this tends to be more of a source of confusion when one is considering developments by a common set of inventors to the core patent than usual, probably because you tend to be more aware of earlier claims if you drafted them. The claims are only relevant to the question ‘would a product including the development infringe the earlier patent’. With any luck the answer is yes, but you don’t mind because you own the earlier patent as well! In fact claim scope should be much more of a concern when looking at third-party patent applications from a commercial viewpoint.
13.5.3 Multiple inventions A question that often comes up is whether there is any point in filing subsequent patent applications directed to narrow improvements on the core patent, if the core patent claims would cover any third party products including the improvements as well. There are, in fact, two advantages to this approach. The first is that the core patent maybe found invalid because of its breadth, in which case, any other patent covering aspects of it may become strategically important very quickly. The second is that this approach can effectively prolong the useful life of your patent protection far beyond the 20 years. A good example of this is the patenting strategy adopted by Dyson™. The original broad patent expired a few years ago (but not before being successfully enforced). A large number of patent applications have subsequently been filed, many, undoubtedly, to improvements which would have been covered by the core patent. Third parties may now implement the subject-matter of the initial, expired patent but must design around every improvement patent which is still in force. The upshot of this is that infringers are restricted to imitating products which are, effectively, 20 years out of date. A parallel issue is where inventors have multiple concepts which may not be particularly related. It is entirely permissible to file a patent application to a range of disparate inventions each with respective independent and dependent claims and descriptions within a single patent application. Divisionals can be filed later on and, indeed, this can reduce the cost. However, this approach can give rise to problems. First of all, it may be very difficult to keep track of the different inventions from a purely administrative perspective. Secondly, if the applicant subsequently decides that they want to suppress publication of one of the concepts then the entire patent application needs to be abandoned, which could give rise to problems for the other concepts. In brief summary so far, therefore, it can be seen that there are various ways of protecting a string of inventions as they develop which can differ, dependent on when the developments come to light, in view of the potential prior art effect of earlier patent filings. However, relying purely on the scope of the core broad patent is not, in itself, necessarily enough for a long-term patenting strategy. In some instances, it is worth noting that at the end of the priority year the client or business may not feel ready to invest in further filings. In that case, as long as certain conditions are met, it may be possible to abandon the original filings and refile subsequently, restarting the priority year. Those conditions can include (obviously) that the concept has not been disclosed but may also require that no priority claim has already been made, which is why care needs to be taken when filing multiple patent applications within the priority year. It is also worth noting that the applicants may decide after the priority year that they do, in fact, want overseas protection having omitted to pursue it in time. This may still be available as long as there has been no disclosure of the concept, including, of course, publication of the original patent application. In those circumstances, even though the priority claim is not valid, absolute novelty is retained. Patents Training Manual: Volume 1
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Work-based examples It worth considering possible scenarios to identify various filing strategies: Scenario 1: The inventors intend to disclose the invention in the near future, want to keep their options open and want to keep their costs down. This is a typical scenario. Of course you need to prepare the patent application in at least one Paris Convention country – typically the UK, if your home country – and file the PCT application at the one year stage, claiming priority, deferring any further decisions for two and half years from the priority date. Scenario 2: The client or business wants to obtain protection in a specific set of countries cost effectively but does not need to defer costs particularly. In this case, it is probably still worthwhile making use of the priority year, if only because it provides an opportunity to add extra information or rethink the filing strategy. Accordingly, a first Paris Convention filing, such as a UK filing, can be carried out to obtain the priority year and then the application can proceed in each specific country, claiming priority, at the end of the year. This removes the cost of the PCT stage. Scenario 3: The client wants to file in several European countries. Where all the countries are party to a regional convention such as the EPC, then, unless very few countries are required to begin with, usually the most effective approach is to file a single European Patent application and validate in the countries of interest once it is granted. However, in some instances, considerations may apply such as a more favourable patent regime before national offices in relation to certain types of subjectmatter, speed of grant or desire to avoid the centralised EPO opposition proceedings. Scenario 4: The patent applicant wants to cover every country. This can be tricky. There does not seem to be much protection available in the Maldives, for example. This approach needs to take into account that there are some countries that are not party to the Paris Convention such that, unless other reciprocal agreements are in place, initial filing may be required there as well as in the initial priority creating country prior to any disclosure. Similarly, at the one year stage any countries party to the Paris Convention but not the PCT system need to be covered with separate priority claiming applications. After that, it is all just a matter of administrative burden and really rather significant costs. Scenario 5: Applicant wishes to file overseas first. Subject to foreign filing permit requirements, this is entirely permissible and may be required for commercial reasons (client needs to show that the patent is already pending in a certain country) or for practical reasons such as the existence of a prior disclosure by the applicants of an invention and the need to use the grace period in countries where it is available. Assuming that there has been no disclosure it is, therefore, simply a matter of obtaining any permits and instructing an overseas attorney to take the necessary steps. Subsequently, protection can be obtained in other countries by claiming priority from the first filing patent – it does not matter which country it is filed in. But take care if you used the grace period! Alternatively, the first filing may be a European patent application, other regional patent applications or even a PCT application which, again, can be used to establish a priority date. This may have practical implications. For example, the EPO is issuing very rapid extended search reports for initial filings which can give an early idea of patentability. Scenario 6: Early grant is required. For example, your client may move in the FMCG field and fear that as soon as their product comes out
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competitors will copy. In this case, it is useful to identify where the competitors may be so as to spot countries where rapid grant would be beneficial. It may be worthwhile filing an initial application within the priority year in more than one country, requesting accelerated grant (where available) as well as accelerated publication and corresponding tools to maximise your position. In addition, long-term protection may be available for other countries via a PCT application filed at the end of the priority year according to the normal route. Scenario 7: The client or business has no intention of disclosing the invention. An immediate consideration is whether a patent application is required at all. The best form of intellectual property is secrecy as this provides a monopoly that does not run out. Of course, if a third party comes up with the same concept themselves then there is no protection, nor if your secret is legitimately broken, but, for example, for a manufacturing process that cannot be discerned from the finished product and which can be kept safely behind closed doors, or for a formula which cannot be reverse engineered, the possibility of not filing a patent application and merely guarding the secret closely, a la Coca-cola ™ should not be discounted. However the inventors need to understand the limitations of this approach. If your employee moves to a competitor and spills the beans, there is little you can do to prevent the competition from using the information.
Test your knowledge 1. You file an initial patent application. Your client decides after the priority year is up that they want to file overseas. Is there anything you can do? 2. What would your basic filing strategy be for covering every available country in the world? 3. How would you keep your options open for as many countries for as low a cost as possible for the client? 4. When is the last point you can add information to a patent application? 5. How might you advise a client who expects to develop their invention further during the priority year? 6. How might you advise a client who expected to continue with inventive developments after the priority year? 7. Draw a time line illustrating a typical patent strategy with a national first filing, subsequent PCT application and European, Japanese and US applications issuing out of the PCT. Ask your trainer to assess the likely cost at each stage. 8. What are the benefits of filing a GB patent application as first filing? Is it necessary for the first application to be a GB application to obtain a priority date? 9. What happens if, towards the end of the priority year, your client decides they want to restart the priority year? 10. Is there anything you can do if your client has already disclosed the invention?
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Suggested chapter answers and comments 1. See 13.5 2. See 13.6 3. See 13.6 4. See 13.5 5. See 13.5 6. See 13.5 7. See 13.6 8. See 13.5 9. See 13.5 10. See 13.5
Chapter review The filing strategy you adopt is basically built around preserving novelty for the countries of interest to your client. It is typically done using the priority system and PCT system in conjunction, often, with regional filing systems, such as the European patent system. At the outset, your client may be happy to keep their options open for as many countries as possible, but this can be a costly exercise and so selection can be made later, obtaining patent protection in countries where there are large markets where manufacture might take place or where competitors operate, amongst other considerations. Where the client or business is developing a string of inventions based around a core technology, then the filing strategy may be developed with a core patent and later follow-on patents effectively prolonging the life of patent for the concept and providing multiple lines of attack should any one of the cases be found invalid.
Further study Talk to your trainer and colleagues about different approaches they have adopted and the requirements that drove them.
Notes and references 1. 2.
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Practice is developing on this in Europe following the recent rule changes – see chapter 15. Again recent rule changes have curtailed this slightly at the EPO – see chapter 15.
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Filing strategies (UK)
Outline This chapter will deal with the life of a UK patent application from initial filing through to grant, in terms of the procedural steps involved and the timing of each of the main events. Substantive issues that you may encounter during this time are addressed in chapters 6 to 8. Where forms are referred to we omit the /77 suffix which is given on older versions. As a UK application may be filed for different reasons, the various issues to take into account for each scenario are also addressed, as well as the strategic rationale involved. The different types of UK application discussed in this chapter are a direct UK application that will go through to grant, a UK application that claims priority from an earlier application, a UK application that is filed merely to obtain a priority date for subsequent foreign filings, a PCT application that enters the UK national phase, a divisional application and an application converted from a European application. Although many issues relevant for each of these types of applications are the same, there are important differences between them that must be considered. The following key concepts are introduced: • •
Main events in the life of a patent application. Timings of events and situations when these timings may change other pre-grant procedures.
Learning plan Prerequisites: Read sections 5, 13 to 21, 24, 74A, 74B, 89A, 117 and 125A of Patents Act 1977 (UKPA) and corresponding commentary in CIPA Guide to the Patents Act (5th Edition + 5th cumulative supplement) and Patents Rules 2007 Legal documents: Patents forms Trainer’s input: Discuss with your trainer how to go about filing a UK application and which forms and fees are required. Discuss why some of the timings differ when filing, for example, a divisional application, or an ex-PCT application. Ask your trainer about other pre-grant procedures, such as hearings. Has your trainer been to a hearing at the IPO? If so, what was the reason? Look through some UK files together. You will probably notice that some of the timings do not correspond with those set out in this chapter. Discuss with your trainer why this might be – perhaps because quick progress though the pre-grant stage was required – or perhaps the application was abandoned after 12 months. Syllabus link:
UK Exams: P1 and P2 EQEs: Paper D
Time allocated: One day.
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Learning outcomes By the end of this chapter you will have knowledge of how to file a UK patent application, and when to take each of the procedural steps involved. You will know the difference in time limits for different types of UK applications, and also why the time limits may vary for a standard application. You will also understand the other pre-grant procedures, which although you will not encounter very often, will form part of your general practice, in time. You will learn skills which will allow you to advise clients/your business when each procedural step should be taken. You will be able to keep a reliable diary system, in order that all essential due dates are met. This chapter will help you understand why you need not wait for the end of a time limit to carry out a certain action, and will provide you with the knowledge to remedy any actions that you may miss.
14.1 General timeline for a UK patent application An application for a UK patent should be filed at the Intellectual Property Office (IPO). This can be done by fax, by post and/or on the on-line secure filing system. The IPO also has a filing facility in London, where applications may receive a filing date of the date of receipt at the London office. Other forms and letters in relation to a filed application may also be filed in this way. In the simplest (and slightly unusual) case, the UK application is filed directly and proceeds towards grant. Within a few days the Comptroller will notify the applicant of the date of filing and acts that need to be completed in the future of the application. The application number and the filing receipt will be received at this time. After a period of around a month, the applicant’s name and title of the invention will be published in the Patents and Designs Journal. No further information is given at this time. After 12 months from the filing date, the application fee must be paid, as well as the search fee and the request for a search. If not already done so, claims and an abstract should be filed within the 12month time period as well. Within around two weeks of requesting the search, a preliminary examination report will be carried out. Preliminary examination is carried out to check the formal aspect of the application to ensure all the required paperwork is there and the physical format of the application meets the required standards set out in the Rules and the UKPA. If there are any defects in the application, the examiner will invite the applicant to respond within a time limit. Around four months after paying the search fee, a search report will be issued. At this time, (i.e. 16 months from the original filing date if the search fee was paid at 12 months) a ‘designation of inventor form’ should be filed to identify the inventors of the subject-matter of the application and how the applicant derives the right to the application from the inventors. At about 18 months from the filing date, the application is published. Within six months of publication of the application, examination must be requested and the examination fee paid. After approximately 12 months from the date of requesting examination, the applicant will receive a substantive examination report, if there are any issues that need to be resolved before the application is in order. Examination reports and responses thereto may be repeated until the IPO examiner is satisfied that the application is in order for grant, or the application is refused or withdrawn. A hearing will be offered prior to refusal. At four and a half years from the original filing date, the application must be in order for grant. By this time, all issues raised by the examiner should have been resolved. If not, then the application will be refused, unless the period is extended by request. These are the main events in the life of a patent application and the general time limits by which the actions occur or must be carried out. You may find it helpful to draw a time-line, marking on all of these events, to give you a visual picture of the life of a patent application at its most basic. Each of these time points will be looked into in more detail in this chapter plus any variations that may occur in different types of applications.
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14.1.1 Filing an application S. = Section of the Patents Act 1977 (UKPA) R. = Rule of the Patents Rules 2007 Section 14(1) sets out that the application must be made in the prescribed form and S. 14(1) manner. The form and manner are set out in Rules 12, 14 and 16. R. 12, 14 and 16 Section 14(2) states that every application shall contain a request for grant of a S. 14(2) patent, a specification and an abstract. The specification should contain a description of the invention, at least one claim and any drawings referred to in the description or the claims. However, all of these aspects need not be present to obtain a filing date. The S. 15(1) minimum requirements in order for a patent application to be accorded a filing date are set out in section 15(1). R. 12 R. 25
A filing date will be accorded provided the documents filed at the IPO indicate that a patent is sought, identify the person applying for the patent and sufficient information to contact that person, together with something which appears to be a description of the invention for which a patent is sought. This is also set out in Rule 12 and Rule 25. Sufficient identification of the applicant is normally met by giving the name and address of the applicant. However, a telephone number may be enough in order that the IPO may contact the applicant, to obtain an address. The address may be anywhere in the world. If there is more than one applicant, then the contact information for each of them must be given.
R. 12(1) S. 15(1)
The request for a grant of a patent must be made on form 1, as set out in Rule 12(1). Provided this form is filled in correctly and some sort of description is enclosed, the requirements of section 15(1) are met. The application fee may be paid with form 1. However, since this does not need to be paid until the end of the 12-month time period, this is often not paid until requesting the search using a different form (9A).
S. 5(1)(c)(ii) R. 17
With regard to the description, provided that a document that contains at least some technical information that appears to relate to the invention is present, a filing date will be given. The description may be filed in a language other than English. A translation into English must be filed within two months of notification to the applicant that a translation is required, unless the original application is filed in Welsh. Alternatively, rather than filing a description, a reference to an earlier application as a replacement for the description may be filed. As set out in section 15(1)(c)(ii) which is governed by Rule 17, the information relating to the earlier application must be given as the application number, the date of filing and the country of filing. A certified copy of the earlier application must be filed within four months and a description must be filed as well. The description as filed must not contain matter beyond that disclosed in the earlier application to which reference was made. This matter must be removed from the description if the application is to proceed. Otherwise, the application will fail to meet the requirements to be given a date of filing. This approach is seldom used. If the earlier application is not in English or Welsh, a translation of the earlier application must also be filed or a declaration that the description filed is a complete an accurate translation of the earlier application. Patents Training Manual: Volume 1
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Additional information that may be provided by way of the form 1 includes any priority claims, an indication of whether the applicant is also an inventor, and a document checklist. A contact name and number should also be provided, which would usually be the details of the patent attorney filing the application, if you are filing an application on behalf of your client or business.
14.1.2 Preliminary examination S. 15(5)(6)(7) R. 18
Sections 15(5)(6)(7) relate to missing parts in a patent application, together with Rule 18. For example, if an application is filed wherein the drawings are described in the description but the actual drawings are not filed, the drawings are considered to be ‘a missing part’. If, after a filing date has been accorded, the applicant then files the drawings after realising they are missing, the filing date will be recalculated from the day that the drawings are received. It is very important to be aware of this fact since the reallocation of the filing date may make the difference as to whether a client can obtain a patent or not, in view of an intervening disclosure.
S. 15(6)(b)
However, if the drawings are part of the priority application, the applicant may make a declaration that section 15(6)(b) may not apply. His declaration must be made before or at the filing date, and a certified copy of the priority document, and an indication of where the missing part can be found, must be filed within 16 months of the priority date. This will not apply if there is not a priority claim. Normally, the missing parts are noticed during preliminary examination by the formalities examiner. Since this does not occur until after the application fee has been paid, the missing parts may not be noticed until 12 months after the original filing date. Therefore, re-dating at this stage is unlikely to be a possibility. Usually, the only way around this is to remove reference to the drawings from the description and proceed with the application without the drawings. The missing part, in this circumstance, must be withdrawn by written request. This is a major omission.
14.1.3 Search report 14.1.3(a) Timing of searches S. 17 After any issues raised in the preliminary examination report have been overcome, a R. 23 search report will be issued after about 16 months from the filing date, if requested at the R. 24 12-month stage. The search is covered by section 17 of the Patents Act (UKPA) and Patents R. 25 Rules 23, 24, 25 and 27. Section 17(1) dictates that an application will only be searched if R. 27 preliminary examination has been carried out, the application has not been withdrawn, the search has been requested, the fee has been paid and the application includes description and at least one claim. Search must be requested on Patents Form 9A and the search fee paid. If the application fee has not yet been paid, this must be paid at this time. With regards to searching, the IPO generally attempts to carry out the search in order that it may be published along with the application at the eighteen months from filing time point. Thus, it is almost always issued by 16 months and three weeks after the original filing or priority date. Although the time limit to request a search and a pay the search fee is 12 months from filing, it may be requested at any time before this date. In fact, if an application is going to act as a priority application for any further applications, such as a PCT or
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European application, many applicants request a search upon the filing of the application, in order that they have the results by the time they need to make a decision about whether to continue with the application at the 12-month time point. Accelerated search may be requested, although an adequate reason must be given. This is at the discretion of the IPO. Furthermore, if a search has been requested and the fee paid and then the applicant changes their mind, a refund of the search fee may be given, so long as the examiner has not commenced the search or issued the search report. Again, this is at the discretion of the IPO. 14.1.3(b) Substantive nature of searches If the application relates to only one invention the search should cover all the subject-matter to which the claims are directed. If the independent claims are particularly broad the examiner will tend to only list the first ten documents that appear in the search. The search report will be issued together with a copy of the documents found by the examiner. The examiner will place each of the documents into a certain category. For example, category ‘X’ means that the examiner considers the document to be relevant to patentability when taken alone. ‘X’ most often means that it is pertinent to the novelty of the subject-matter of the claim. A document placed in category ‘Y’ generally means that it is relevant for inventive step and is relevant for the patentability of the subject-matter of the claim, when combined with another document. Further documents include ‘T’, ‘A’, and ‘P’. Find a search report in a UK file to find out what these designations mean. The search report will also identify the field of search with the UK search code, and the International Patent Classification (IPC) search code categories should also be identified. If an application claims priority from an earlier application, the results of an earlier search can be used and the examiner will merely carry out a ‘top up’ search to ensure the results are up to date. The cited documents will be listed in order of relevance. The examiner will also indicate the claims to which each document are relevant and the passage within the document which is of most relevance. The search examiner will include in the search, published patent documents, books and journal articles. Documents in a foreign language may be identified by their abstracts, such as Japanese patent documents. Search reports will often be issued together with a written opinion of the searching examiner. This provides further information to the applicant to assist in a decision whether to continue with the application. This is called an Examination Opinion. Generally, if the examiner has issued an examination opinion together with the search report they will indicate that this examination opinion will form the basis of the first substantive examination report unless amendments are filed in the meantime. 14.1.3 (c) Partial searches A partial search may be performed or none at all, where the examiner does not believe S. 17(5)(b) that a search will serve a useful purpose. This is set out in section 17(5)(b). Some subject-matter may not be searched if it is considered to relate to unpatentable subjectmatter, such as method of treatment claims, business methods or mental acts, or claims that the examiner considers to be nonsensical. In this case, the examiner will write to the applicant to request amendment before a search. If amendments are received before preparations for publication have been completed, a search may be carried out in the normal way. This is relatively rare, however, and usually a partial search may be performed. S. 17(6)
If the claims relate to multiple inventions, a lack of unity is found where the examiner Patents Training Manual: Volume 1
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considers that the application relates to two or more inventions that are not so linked as to form a single inventive concept. (Unity of invention is discussed in chapter 8). Section 17(6) relates to search reports where a lack of unity is found. If the subject-matter of the first listed claim relates to non-searchable subject-matter i.e. unpatentable or obscure claims, the first searchable claims relating to patentable subject-matter will be searched. If a lack of unity is found, the applicant will be notified when the search report relating to the first invention is issued.
R. 27(4)(5)
S. 19
In general, the search examiner will not search more than one invention, if there is lack of unity. In such a situation, the examiner will notify the applicant that further searches may be carried out, if further search fees are paid. The search examiner will generally indicate the claims that relate to each invention. A further search can be requested by the applicant by the filing of a further form 9A and the payment of an additional search fee. There is not usually a time period set for doing this. However, it must be done at least three months before the end of the Rule 30 period. (This is indicated by Rule 27(4)(5)). A form 9A and a search fee must be paid for every additional search that the applicant wishes to be carried out. For example, if three further inventions were identified in the application, three further forms 9A and three further search fees must be paid. Once a search report has been issued, it is possible for the applicant to file amended claims to address any issues raised in the search report. This is addressed by section 19.
14.1.4 Amendment S. 18
Amendment of the specification of an application may be made as of right, after the issue of the search report and before the issuance of the first substantive examination report under Section 18. This is usually to take account of any documents cited in the search report, particularly if an examination opinion is included which indicates to the applicant that amendment will be necessary. Amendment of the claims at this stage may assist in the examination of the application since the first examination report will take account of any amendments filed rather than be a re-issuance of the examination opinion issued with the search report. Amendment in response to the examination report will be addressed later, 14.3.3.
14.1.5 Publication S. 16
Typically, after the search report has been issued, the application will be prepared for publication. This is governed by section 16. Section 16(1) sets out that, unless the application is withdrawn or refused before preparations for publication have been completed, the application will be published as filed. The publication will include the original claims and also any amendments that have been filed before the completion of publication preparations. This can be useful in some circumstances as ‘provisional protection’ for pending patent applications is assessed taking into account the claims as published under section 16. Preparation for publication is considered to be completed five weeks before 18 months from the filing date, or in other words 16 months and three weeks from the filing date or priority date. If an applicant wishes to prevent publication of an application he must withdraw it before this date. A patent application that is not withdrawn by this time is published as an ‘A’ specification. The ‘A’ document contains the specification as filed, together with any
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amendments, a front sheet and the search report. Upon publication, the file is available for public inspection. The file will contain any correspondence between the applicant and the Intellectual Property Office, the ‘A’ specification, any forms that have been filed such as the 1, 7 and 9A, an abstract, the priority document (if any) and any translations thereof and any cancelled pages. The publication of the application is advertised in the Patents and Designs Journal and on the on-line file register. Any amendments to the claims are included in the published application, but amendments to the description are published only in the file – they are not included in the specification. A list of the documents cited in the search report is also included on the front sheet. If the applicant’s name has changed, due to an assignment or change of name of the company, this will be reflected on the ‘A’ specification and if a correction has been made and allowed, this will also be reflected in the ‘A’ specification. Corrections are governed by section 117. An application may not be published if it falls under the reasons set out in section 16(2), i.e. if the IPO considers that is disparages any person or that it encourages offensive, immoral or antisocial behaviour. Such sections of a patent application may be omitted from publication.
S. 16(2)
Accelerated publication may be requested by the applicant and no reason needs to be given. This generally occurs if the applicant believes that somebody would infringe the application if it becomes a granted patent.
S. 69
Once an application is published, the applicant has ‘provisional protection’ rights, with regard to infringement of his patent, once granted. Provided the published application contains claims which then grant, any successful infringement action that occurs once the patent has granted, may also result in damages being backdated to the date of publication. This is governed by section 69.
14.1.6 Designation of inventor S. 13(1) R. 10
Section 13(1) states that the inventor has the right to be identified. This is governed by Rule 10. The identification of inventor(s) and the indication of how the applicant derives the rights from the inventor(s) to be granted a patent can be notified to the IPO by way of form 7. This must be filed within 16 months of the filing date of the application. Usually an applicant derives the right to file a patent for the invention by way of contract of employment or by way of assignment. No further details are required for the form 7. As a matter of course, however, this information should be obtained from the applicant when filing an application as different countries will require different information, such as date of assignment. One copy of the form 7 is kept on the file at the IPO and also one further copy is sent to each named inventor.
S. 13(1)
Section 13(1) states that the inventor has the right to be mentioned in any patent granted for the invention and in any published application. However, if an inventor applies in writing before preparations for publication have been completed, he may waive his right to have his name and address mentioned as an inventor or waive the right in respect of his address only. Satisfactory reasons must be given if the inventor wishes to withhold his name (for example the patent application relates to a sensitive technology). This waiver may be ended by the inventor at any time. Patents Training Manual: Volume 1
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14.1.7 Substantive examination S. 18 R. 28 R. 29 R. 30
Within six months of the publication of the search report a request for examination must be filed at the IPO together with a fee. This should be done by way of the form 10. Substantive examination is governed by section 18 of the Patents Act and Rules 28, 29 and 30 of the Patents Rules. Issuance of the first substantive examination report normally happens within 12 months of request for examination. If no request for examination is filed, the application will be deemed withdrawn. Rules 28 and 29 dictate the time period to request examination. If a form 10 is filed at the same time as form 9, a combined search and examination report will be issued by the IPO unless the applicant has explicitly stated in writing that this is not desired. If the claims have been amended after the search report and before the issuance of the first examination report, this may result in the examiner forming the view that a supplementary search is required. In this case, substantive examination will be delayed until a supplementary search fee is paid or the application is amended to remove the matter which requires the supplementary search. If neither of these actions is taken, the application may be refused. An applicant may request accelerated substantive examination of an application provided reasons are given, which should accompany the form 10, together with the request for accelerated examination. If no or inadequate reasons are given, the request will be refused. If the reason for requesting accelerated prosecution is because of an alleged infringement, the details of the alleged potential infringement may be kept confidential. However, the request for accelerated examination with a general reason will be made available to the public. Another method of requesting accelerated examination is through the Patent Prosecution Highway, which runs between the IPO and the USPTO and the Japanese Patent Office (JPO). At present, this is only a pilot scheme. Fast-track examination can be obtained by providing a copy of an earlier search and examination report from the USPTO or JPO relating to a corresponding application, provided the other office finds your claims to be acceptable. The claims of your UK application must be the same or of similar scope to those allowed at the USPTO or the JPO. This also works in the opposite direction, the reason being to reduce workloads in each office. The examiner will review the results of the search with any supplementary search carried out, as to whether the invention disclosed in the claims is a patentable invention. There are also other issues to be considered when deciding whether the application is in order for grant, such as whether the invention is sufficiently disclosed in the application, whether the claims are clear and concise and supported by the description, and whether there is a single invention. These issues are covered in chapters 6 to 8. If an examination opinion was issued with the search report and no comment or amendment was filed by the applicant, the first examination report may merely be a repetition of the examination opinion that was issued with the search report. As well as the form and content of the claims, the examiner will also examine the title, the description and the drawings to ensure that they are in the appropriate order and that the description supports the claims.
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Once the examination report is issued, the examiner normally sets a four-month term to respond to the objections. This is extendible by two months as of right and an additional two months with the discretion of the Comptroller. Shorter periods may be set if only minor objections are made. Once the applicant’s representative has responded to the examination report, a further examination report may be issued if there are outstanding issues relating to any of the above matters i.e. patentability or form of the claims. R. 108 R. 109
S. 117(b)(3)
Rule 108 sets out the requirements for an automatic extension of two months to the period set in an official report if requested in writing. The request should be received before the end of the extended period of time. For example, if the examiner has initially set a period of four months to respond to the examination report the request for an extension of time must be received within six months of the date of the examination report. Section 117(b)(3) also dictates various discretionary and ‘as of right’ extensions of time. An extension of time request may be made in writing by post or by e-mail. If a response to the examination report is received after expiry of the specified period and the two month extension of time has passed, a reason should be given for the delay in response. If no reason is given, the examination will be refused. Reasons such as a mistake by the agent or an office procedure or financial problems faced by the applicant will normally be sufficient to prevent refusal of the application. However, it must be shown that effort has been made to meet the deadlines in spite of the problems. For example, if extensions of time are consistently requested without good reason then the extension of time will ultimately be refused. The IPO will generally give one further extension once an adequate reason has been given although any further extensions beyond this will require a proper reason.
S. 18(3)(4) S. 76 R. 30
If the examiner considers that the objections have been overcome, he will issue a communication under section 18(4). If a request for extension of time is refused, a hearing may be requested by the examiner, providing the application has not reached the end of the Rule 30 period. Once the response has been filed to an examination report under section 18(3), the examiner will review the observations made by the applicant and examine any amendments made to ensure that they do not add matter beyond the application as originally filed as required by section 76. Usually amendments should be submitted in typed form; although hand amended minor amendments are allowable. If the amendments and/or observations of the applicant do not overcome the objections, a further examination report will be issued. This may have the same time period of four months or may have a two month time period for response. This is again extendible by two months as of right and further at the discretion of the Comptroller. A further examination report is usually issued between one month and six months after receipt of the response. Although an application may be refused for failing to overcome the objections in the examination report, this does not usually occur. Either further examination reports will be issued or the examiner will offer a hearing if it appears that no agreement is being reached between the applicant and the IPO. Hearings are covered later in this chapter in section 14.3.2. Patents Training Manual: Volume 1
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However, if the objections are overcome, the examiner will issue a report under section 18(4) stating that the application will proceed to grant. Should the Rule 30 period be reached before substantive issues have been resolved, a hearing is normally the most expedient way forward, otherwise the application will refused for not being in order.
14.1.8 Grant of patent S. 24, R. 34
The publication and certificate of grant is set out in section 24, and Rule 34. Once an application has been granted, the certificate of grant will be sent to the applicant from the IPO, stating the name of the proprietor and the date of filing of the application. It does not state the date of grant. The application will then be republished as a granted patent, a ‘B’ document. The ‘B’ document contains similar information to the ‘A’ document, and includes the date of grant, the specification and claims in final granted form. No cancelled pages or amendments are included in the ‘B’ document. This is the usual time line for a patent application, provided there are no unusual circumstances. The following sections will show the variances from the procedures set out above for different types of applications.
14.2 UK applications with different procedural aspects 14.2.1 Claiming priority S. 5
When filing an application claiming priority, the same procedures must be carried out as set out above. However, many of the time periods are calculated from the priority date, rather than the filing date. For example, the time limit to request search will be 12 months from priority, which will usually be around when the application claiming priority is filed. Claims and an abstract must also be supplied within 12 months after the priority application. The UK application may claim priority from an overseas application. Alternatively, it may claim priority from an earlier UK application, for example, when new material has been added. The priority date of any new material will be different from the original priority date as discussed in detail in chapter 13. Conversely, a common form of UK filing is one that is abandoned after 12 months, since it is filed only as a priority application. In this case, usually the minimum requirements are met i.e. a description, claims and drawings are filed, together with the form 1. No fees need to be paid at this time, nor does any search request or an abstract need to be filed. After 12 months, a PCT, an EP or a national application may then be filed, claiming priority from the UK application. Due to the term of a patent being 20 years from the filing date, not the priority date, the original UK application is usually abandoned and protection for the UK pursued through the PCT or EP route, or though a new UK application, claiming priority. In this case, the original application can become abandoned by failure to pay the application fee, the search fee, filing an abstract or requesting a search at the 12-month date.
14.2.2 Divisional applications S. 15(9) R. 19
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Divisional applications are applications that are ‘divided out’ from a parent application to cover different inventions. This is often done if a lack of unity is found in the parent, and so a divisional application will be filed to cover matter that is required to be excised from the parent. This is also discussed in section 8.6.4. A divisional application is covered in section 15(9) and Rule 19.
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Divisional application is made by using the form 1, as with the parent application. Reference to the parent application is made in the request for grant form, by way of its application number and its filing date. A divisional application must be filed within three months of the end of the Rule 30 period, i.e. within four years and three months of the original filing or priority date. Furthermore, a divisional application may only be made if the parent is still pending, i.e. it has not been granted, abandoned, refused or withdrawn. Discuss with your trainer how to ensure that the parent is not granted before a divisional, if desired, is filed. A divisional application must be made by the same applicant as the parent. If the parent application has two applicants, one of them may apply for a divisional application, without the other. The new application will take the priority date (if any) and filing date of the parent. Therefore, time periods will be different since many of the ones relating to the parent will have already passed. These differences are set out below. Even if a form 7 has been filed in respect of the parent application, this must be done again for the divisional. This is because the inventors may be different. This must be done at the time of filing, or, if the time period for doing so for the parent has not expired, then within this time period (16 months form the filing or priority date).
R. 30
S. 85(5)
A request for search, by way of the form 9A must be filed within the time period allowed for the parent, or if this has already passed, within two months of filing the divisional application. If the subject-matter of the claims has already been searched, in respect of the parent application, a search must still be requested in respect of the divisional, and the search fee must be paid. However, a request may be made for a refund of the search fee, and the Comptroller will usually allow this. If the divisional application is filed within six months of the end of the Rule 30 period, the search must be requested on filing. Examination of a divisional application must be requested within two years of the filing date or the priority date, If this time period has already passed, then examination must be requested when filing the divisional application. The divisional application must not contain matter which extends beyond the parent application as originally filed. If it does so, it will not be allowed to proceed until the added matter has been deleted. The claims of the divisional application may be of different scope to that of the parent, provided there is basis in the description. However, double patenting is not allowed, by virtue of section 18(5). Thus, the subject-matter of the claims of the divisional application and that of the parent must not overlap. A further divisional application may be filed, either from the parent or from the first divisional application, provided that the time periods dating from the original parent, for doing so have not expired.
14.2.3 Ex-PCT applications S. 89(a) R. 66 to 72
Filing a UK national phase application from an international application is usually done at 31 months from the priority date or the international filing date. Entry into the UK national phase is initiated by way of the form NP1 and is governed by section 89A and Rules 66 to 72. Form NP1 is not an absolute requirement, although use of it will ensure that all required information is provided. Patents Training Manual: Volume 1
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The information needed to enter the UK national phase is the international application number, the applicant details and the address of either the applicant or his agent. If the international application is not in English, a translation must be filed. The national fee must also be paid.
R. 108(2)(3)
The search request and fee must be filed on form 9A within 33 months from priority (or filing) date, as well as the designation of inventor form 7. These time periods may be extended in accordance with Rules 108 (2) and (3) once as of right and further extensions may be obtained at the discretion of the Comptroller. Entry in to the national phase may be initiated early (i.e. before the expiry of 31 months from priority or filing date of the international application). This can be done once the fee has been paid, the IPO has a copy of the application and any translation has been filed. If the application is to proceed, the required 9A and 7 forms must also be filed. Early entry should be requested at this time; otherwise, the IPO will not treat the application as having entered the UK phase at the 31 month date. The application will be deemed not to have entered the national phase, and, therefore, be withdrawn, if any of the above time limits are not met.
14.2.4 Extensions of time R. 108
Many of the time periods discussed above can be extended by way of Rule 108
R. 108(2)(3)
Rule 108(2) and (3) relate to time periods that can be extended as of right by two months, and then by a further period of time by discretion of the Comptroller. The time periods to which this applies are set out in Schedule 4, part 2.
R. 108(5)(7)
Rule 108(5) and (7) relate to time periods that may only be extended by a maximum of two months at a time and for which extensions must be requested before the two months from the end of the time period to be extended has expired. Such time limits are set out in Schedule 4, part 2. Have a look at these schedules (at the end of the Patents Rules) to find out which of the time limits set out above can be extended and by how much.
14.3 Other pre-grant procedures 14.3.1 Third-party observations S. 21 R. 33
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The law relating to third-party observations is set out in section 21 and Rule 33. Observations by a third party may be filed any time before grant of an application, after it has been published. However, any observations received by the IPO after the issuance of a communication indicating that the IPO are willing to grant a patent on the basis of the application, will not be considered by the examiner. Third-party observations may be filed when your client is concerned about a competitor’s patent and would like to try and prevent it from being granted. Thirdparty observations may only be filed in relation to patentability of the subject-matter of the invention; for example, referring to a prior art document relevant to novelty or inventive step that has not been considered by the examiner. This does not stop people raising other grounds, such as clarity or added matter, but the examiner
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should ignore these. There is no requirement for the third party to be named, and thus, the observations may be filed anonymously. S. 18(3)
S. 21
Once filed, the observations will be passed on to the applicant, by the examiner, and acknowledged to the third party. The observations will also be considered by the examiner, and if he considers them to be relevant, will include them, in his own words, in the next examination report under section 18(3). If the examiner does not consider the observations to be relevant, he will still forward them to the applicant, but will not consider them any further. The third party does not become party to the proceedings (hence the name) and so must monitor the file for any activity by the examiner or applicant and file further submissions by way of additional third-party observations. Third-party observations are useful, particularly as there is no opposition provision in the UK. Section 21 provides a way for the third party to influence the progress of a competitor’s patent application without becoming party to the proceedings, or, if he does not wish to, becoming known to the applicant. It is a far less expensive and easier way to prevent a competitor obtaining a patent, rather than bringing revocation proceedings against him. Typically though, they are unlikely to succeed without new, very relevant, prior art and you should discuss with your trainer their views on the efficacy of third-party observations.
14.3.2 Pre-grant hearings R. 30
Hearings are fairly rare in pre-grant proceedings, although many are now being held in relation to computer-implemented inventions. Usually a hearing is offered by the examiner if the application is nearing the end of the Rule 30 period, and there are still unresolved substantive issues outstanding. A hearing may also be called if he believes that it would be expeditious to proceedings. Pre-grant hearings may be held by video-conference or, more commonly, in person at the IPO in Newport or London. The hearing officer will normally be the deputy director, and the examiner will also usually be present at the hearing. Also present will be a hearings clerk, who will prepare the minutes of the hearing. Pre-grant hearings are usually fairly informal and usually take the form of a discussion of the application between the applicant (or his representative), the hearing officer and, usually, the examiner. At the end of the hearing, once all arguments and reasons have been discussed, the hearing officer may give an oral decision. Alternatively, a written decision may follow in due course. In both cases, where the decision is adverse to the applicant, full reasons should be given. Oral decisions are often given when the Rule 30 period is very nearly expired, to save time. A decision of the hearing officer may be appealed, with the time limit of 28 days from the date of the decision or the date of the written reasons, if received later by the applicant.
14.3.3 Pre-Grant Amendment S. 19 R. 31
Amendment is governed by section 19 and Rule 31. Although section 19 states that the application may be amended anytime before grant, the points at which amendment may be carried out are set out in the Rules. The applicant may amend the specification, drawings or claims, only once the search report has been received, and this can be carried out before the first examination report. Patents Training Manual: Volume 1
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Further amendment may be carried out in response to the Examiner’s objections in examination reports under section 18(3) and within two months of a report under section 18(4). Amendment at any other time is at the discretion of the Comptroller. Amendment to the request for grant form (1) can only be made on the form 11 stating the reason for it.
14.3.4 Corrections S. 117 R. 105 R. 31
Corrections to an application or the documents relating thereto are governed by section 117 and Rule105. Rule 31 is also relevant to amendment. Section 19(1) dictates that any time before a patent is granted, the application may be amended by the applicant. It should be noted that an amendment is not the same as a correction when dealing with changes to the patent specification. Amendment of the application is also influenced by section 76 in that amendments must not add matter to the application beyond the application as originally filed. The difference between correction and amendment is set out in the Manual for Patent Practice, paragraph 19.03 Correction is the alteration of a document so that it may be better express the intention the drafter has at the time if drafting, including the case where an agent drafting a document has misconstrued his instructions. If the alteration is sought because the drafter has become aware of new facts, or because circumstances have since changed, or because he has changed his mine, then this is not a correction, but amendment.
Corrections must be requested on form 11 and, usually, must provide proof that the mistake to be corrected was an error. In correcting the specification, a two-part test applies where it is considered whether it is clear that there is an error, and if the correction is what was originally intended. Documents relating to the application may also be corrected, such as the request for grant form (1) or the designation of inventor form (7). The 11 must still be used to correct these documents. In the case of a correction to the applicant name, proof must be provided that the corrected name is what was originally intended to be used. If it just the address that is to be corrected, then written notification is enough. If the priority date or number is incorrect, these can be corrected provided that it is clear to the Comptroller that an error in translation, transcription or a typographical error has occurred. Corrections to the application number of the priority document must be received within the time limit for providing this information, i.e. 16 months from the priority date. For changes to the 7, a written explanation must be provided, together with the form 11. A correction is advertised in the Patents and Designs Journal, and any person may oppose the correction within two months of the correction being advertised.
14.4 Other UK procedural aspects 14.4.1 Duty of disclosure If the applicant receives a search report issued by another patent office in respect of a corresponding patent application, the applicant should inform the IPO of these search results. This disclosure
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requirement is indicated when the Search report is issued. However, although the search results of another patent office will be considered during substantive examination, they will not trigger a further search by the search examiner, even if documents are cited in respect of the foreign application that were not identified by the UK search examiner.
14.4.2 Viewing the file The bibliographic data relating to an application can be viewed through the IPO website. This will include (after publication) the application number, publication number, applicant’s name and address, priority, filing and publication dates, address for service (usually the representative’s address), and other information. Look up a published and a non-published UK patent application and note the difference in information given. Alternatively, the whole file may be inspected by writing to the IPO, together with a form 23 and requesting a copy of one or more documents that are on the public file. These include inter alia the examination reports, responses thereto and claim amendments. IPO is moving to online inspection for central documents.
14.4.3 Re-instatement of applications S.20(a) R.32
An application that has been refused or treated as having been withdrawn, due to the applicant failing to carry out an action within a certain time limit prescribed by the Rules, may be reinstated. In order to have an application reinstated, the applicant must satisfy the Comptroller that the reason for failing to comply with the prescribed time limit was unintentional. The applicant must also request that the application is reinstated, and such a request must comply with the Rules. The Rules state that the request must be made on form 14 and the reason given for failing to meet the time limit must be supported by evidence. The application for reinstatement must be filed within 12 months from the date of refusal of the application or the date on which it was considered to be withdrawn, or within two months from the removal of the cause of non-compliance, whichever is earliest. A fee is also payable with the form. This period is not extendable. If the IPO finds that one or more of the form, fee or evidence is missing, they will give the applicant a non-extendable period of 14 days to provide the missing parts. If the request for reinstatement is refused then the IPO will give the applicant one month to request a hearing. If a hearing is not requested, the application and the request for reinstatement will be refused.
S. 20(a)(3)
A request for reinstatement will also be refused if the time period is one of the following: a time period that has been specified by the Comptroller (as opposed to being prescribed by the Rules); the two-month period for late declaration of priority; and any extension allowed for responding to a time period specified by the Comptroller. The request for reinstatement shall be published, provided that the application itself has been published. If the application for reinstatement is allowed, then at least a two month time period is set for the applicant to meet the requirements, which he should have done in the original time period.
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The meaning of ‘unintentional’ is usually that the applicant always intended to continue with his patent application, and did not merely allow it to lapse on purpose, and then change his mind. A mis-recorded diary entry, for example, may be considered to show intention to proceed but each case will be decided on the facts in hand at the time. S. 20(b)
The effect of reinstatement on third parties is also considered by the Patents Act (UKPA). Section 20(b) sets out that anything done by a third party during the period of termination and reinstatement shall be considered to be valid. This means that anything that would be an infringement once the patent is granted, that was started during the period of lapse, provided it was carried out in good faith, may be continued once the patent application is reinstated without being considered an infringing act. However, anything that was carried out during the period of lapse that was a continuation of an infringing act or if it was started during the period where the time period could be extended, this will still be considered to be an infringing act.
14.4.4 IPO opinions (post grant) S.74(a) R. 92 to 97
Once a patent is granted, anyone may request a non-binding opinion of validity and infringement from the IPO. The opinion must be requested on form 17, together with a statement regarding in relation to what the opinion is sought. Arguments and evidence should also be included. Additionally, and if any proceedings in relation to that patent are ongoing, the details of these should also be provided. Any relevant parties will be sent details of the request for an opinion by the Comptroller. The opinion may be requested anonymously, if done so through an agent. The agent has no obligation to reveal from whom he is requesting the opinion. Once the request is published, third parties have a chance to file observations thereon. Following this, any party involved (such as the proprietor or the requester) will also be given a period of time to respond to these observations. The opinion will provide details of whether an infringement is taking place, and/or whether the patent is valid in terms of novelty and inventive step – other grounds of patentability, such as sufficiency and added matter will not be considered. Once issued (within three months of the request), the opinion will be published as well as any documents filed in relation thereto – therefore, nothing in the request can be kept confidential. If the requester withdraws his request for an opinion in writing, it will not publish.
S. 74(a) R. 98 to 100
Once the opinion has been issued, the patent holder may request a review (also nonbinding) of the opinion. This may be the case if the opinion is that his patent is invalid and he would like a second view. Early indications are that the courts will pay attention to the finding in an opinion.
14.4.5 Other subject-specific matters 14.4.5 (a) Sequence listings In order for protein or nucleotide sequences to be searched properly by the IPO, a sequence listing should be provided to enable the examiner to search the databases of sequences for the invention. However, unlike the EPO and during International phase, it is not a requirement to supply the sequence listing in electronic form. The sequence listing contains all the sequences that are described in the application, such as DNA
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primers, or protein sequences. The information relates to the source of the sequence, the length of the sequence, and whether it is natural or artificial. Find a file that relates to sequences, and have a look at the sequence listing. The sequence listing is considered as part of the description, and should be placed after the description and before the claims of an application. Should the sequence listing be particularly long (hundreds of pages), it will not form part of the published application, but will still be considered as part of the application on file. 14.4.5 (b) Biological samples S. 125(b)(1) When an invention relates to, for example, biological material that cannot be adequately described to enable the skilled person to carry out the invention, such as a microbiological organism, which is not readily available to the public, a deposit of a sample of the biological material must be made. No later than the filing date of the application, the applicant must deposit a sample of the biological material at a recognised depository, which is then able to furnish a sample of the material to the public. The name of the depository institute and the accession number of the deposit must be given. This is a requirement under the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms. Find an application that relates to such biological material. The accession number will depend on where the deposit was made.
Work-based examples Scenario 1: Your company has a new invention for which it would like you to file a patent application. The company is interested in worldwide protection. However, with regard to one aspect of the invention, it is not known at the present time whether the company will proceed with this in the future. If not, the company wants to keep this aspect secret. If so, the company would like the benefit of the earliest filing date possible for this aspect. What would you advise in this situation? Think about what may be published and when. Scenario 2: A client has a series of several inventions for which he would like to obtain protection via the patent system. It seems likely that a lack of unity would eventually be found once the application reaches the search stage. His budget is fairly low, and he cannot afford to file multiple applications. He will have more money available in a few months time. How would you advise that he proceeds? What action needs to be taken in accordance with your advice, and by when? What costs are involved in this? Would your advice differ if the client had an unlimited budget at the beginning of the process? Discuss your thoughts with your trainer and other colleagues.
Test your knowledge 1. What are the minimum requirements to obtain a filing date? 2. What are the minimum requirements of a patent application? 3. When must examination be requested? How is this done?
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4. A client/your business has filed an application, but did not include any details of the inventors. What should be done and when, in order that the application is not deemed withdrawn? 5. The search report for an application was issued six months and two days ago; no further action has been taken since designating the inventors just over two months ago. What should have been done in the meantime, and what can be done today to rectify the situation?
Suggested chapter answers and comments 1. Indicate that a patent is sought, identify the applicant and give contact details, description of the invention. 2. Request for grant, a specification, an abstract, claims, and drawings 3. At the latest within six months of the date of publication of the search report, or within two years of the priority/filing date for a divisional application (or on filing if more than two years have passed). Use form 10 and pay fee. 4. The designation of inventor forms must be filed (form 7) – one for each inventor and one extra. This must be done within 16 months of the priority/filing date or within two months of filing a divisional, if 16 months has already passed. 5. Examination should have been requested two days ago. Since the deadline has been missed, it needs to be requested within two months, together with a request for an extension of time, made on form 52, and the payment of the extension fee and the examination fee. This must be done within eight months of the publication of the search report.
Chapter review Now you should understand the timing of the main events in the life of a UK patent application. You should be able to plan your diary accordingly and advise your client/business when they will need to pay certain fees, and/or make decisions about the future of their application. You will have learnt about the difference in the timing of these events when an application claims priority, or when you are filing a divisional application. You will also now have knowledge of other pre-grant procedures that could happen at any point during the life of the UK application.
Further study • • •
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Filing strategies (EP)
Outline This chapter sets out the formal acts required to be completed in order to obtain a European Patent (EP); the acts are presented in the stages that an application passes through – namely filing, searching and publication, and examination – the procedure is sequential and the stages thus follow a largely chronological order. There are several types of EP applications: • direct-filed EP application, where the application originates as an EP application; • regional phase EP application, where the application originates as an international (PCT) application; and • divisional EP application, where the application originates from a pending, and thus existing, EP application.
Learning plan Prerequisites: Must have an understanding of what constitutes an invention and a patent, and the purposes of having a patent; must have an awareness of the existence of the European patent system, the states that are contractually bound by the European patent system, the European patent system as a means of enabling the patent applicant by means of a single procedure to obtain a patent in some or all of the contracting states, and the existence of the international patent system. Legal documents: Must have access to EPC2000, the Guidelines for Examination at the EPO, the Official Journal of the EPO, the Ancillary Regulations to the EPC, and the Case Law of the Boards of Appeal (fifth edition). Trainer’s input: Identification of cases that contain examples of the scenarios set out below. Syllabus link:
UK Exams: P2 EQEs: Papers C and D
Time allocated: Reading of the material in this chapter should take around three to four hours; set aside two days including reviewing existing EP files and discussing with your trainer. However, an appreciation and full understanding of the material can be expected to be an ongoing process, which is best approached in conjunction with case work in office.
Learning outcomes By the end of this chapter you will have knowledge of the different types of European patents and the different routes that an applicant can take when seeking patent protection in Europe. In particular, you will develop an appreciation of the various stages and timescales associated therewith, which will enable you to ask your client salient questions and allow you to advise your client as to the most appropriate route to take, based on an individual client’s set of circumstances. Patents Training Manual: Volume 1
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In order to gain an understanding of the timescales you will need to review the legal provisions of the EPC2000, that are listed adjacent the commentary: this is encouraged as a means of familiarising yourself with this important legal text as early as possible.
15.1 Filing – generic issues The ‘filing’ of an EP application refers to the process that results in an EP application being accorded a date of filing. For the EP application to be accorded the date that you filed the patent application proper (text and drawings), certain documents, fees and information have to accompany the specification, and of course these have to be filed at a certain place. The criteria specifying these requirements are typically referred to as ‘formal requirements’. The procedure for submitting these documents and information varies dependent on the type of EP application; however, the information that you need to gather and submit with the specification is very similar for all types of applications. This process is typically referred to as pre-filing preparation, and will involve you checking that you have the following details and documents: 1. Applicant details (name and address) 2. Inventor details (including how the rights pass to the applicant) 3. Priority details (where appropriate) and under certain circumstances a certified copy of priority document(s) 4. Contracting and extension states to be designated 5. Specification, including text, drawings, claims and abstract; you will need to check whether the drawings are in a form that will be accepted by the EPO and you will also need to ascertain whether they need to be translated 6. Reference to an earlier filed application (instead of 5) 7. Details of how the fees are to be paid 8. Micro-organism sample (dependent on type of invention) 9. Sequence listing (dependent on type of invention) If your instructions do not include all of this information, you will need to contact the client and request the missing information as soon as possible; some of the information is not required for the application to be accorded a date of filing, as will be seen from the passages below, but it is good practice to have what you need in good time to meet the deadlines. We will now consider how this information is used, and when, for each type of application, starting with a direct-filed EP application.
15.2 Direct-filed EP application 15.2.1 Requirements for date of filing Art. = Article of the EPC2000 R. = Regulation of the Ancillary Regulations to the EPC Art. 75, R. 35 The first thing to note is that direct-filed EP applications can be filed at any of the EPO filing offices – Munich, Berlin and The Hague – and at any competent national authority, which in practice is the patent office of a the contracting state (e.g. the UK-IPO).
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The documents making up the application can be filed directly, by post, fax, or electronically, or in fact via any permitted medium that means that the application is filed ‘in writing’. Art. 80, R. 40, Art. 14(1)&(2), R. 6(1)
For the application to be accorded a date of filing, the documents have to include an indication that a European patent is sought, applicant details (see 1 above), and a description or a reference to a previously filed application (see 6 above). The description can be filed in any language.
15.2.2 Requirements of EP application As described above, for the application to be accorded a date of filing, the requirements are a subset of the requirements for publication of the application. By this we mean that the full set of information has to be filed with the EPO at some point prior to the publication of the application, to ensure that the application is not considered to be withdrawn or abandoned. There are time limits set in the EPC that govern when and how the information is to be filed; whilst in general, we have not set out the time limits in the commentary below, these can be found from inspection of the legal basis adjacent the commentary. Art. 78(1), Art. 80, R. 40(2), R. 40(3), Art. 14(1)&(2)
If the application documents submitted upon filing included a reference to an earlier filed application, you need to supply a certified copy of the earlier filed application at the EPO. Additionally, if the earlier filed application is not in an official language of the EPO, a translation has to be filed into one of the official languages. Irrespective of whether you file an application or a reference to an earlier filed application, ultimately an application will have to be filed, and this application has to contain a description, one or more claims, the drawings referred to in the description, and an abstract.
Art. 78, R. 41(1)
As described above, for an application to be accorded a date of filing, the documents have to include an indication that a European patent is sought. Whilst this indication does not have to be set out on a form drawn up by the EPO, the application documents finally have to include a form (1001) explicitly requesting the grant of an EP patent; the form is available from the EPO website.
Art. 78(1), R. 41(2), Art. 133
The application has to include a title for the invention; the name, address and nationality of the applicant; and details of the applicant’s representative. These can all be entered into relevant boxes included in form 1001 mentioned above. You should note that a representative has to be appointed if the applicant is neither a resident of nor has a place of business in an EPC contracting state.
Art. 78(1), R. 41(2), R. 52(1)&(2)
If the EP application is claiming priority from another application, you will need to submit a declaration claiming the priority; this declaration should indicate the date on which and the country in which the priority giving application was filed. Do not forget to sign the form!
Art. 78(1)(b) & R. 31
If the invention involves use of biological material that is not in the public domain, you will need to ensure that a sample of the material has been deposited with a recognised depositary institution and details of the deposit have to be identified in the request for grant form.
Art. 78(2), R. 38
The filing fee and search fee have to be paid within a month of filing the application. Patents Training Manual: Volume 1
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Fees can be paid in many different ways, including transfer to a bank or giro account of the EPO, debiting a deposit account held with the EPO, and by cheque. In the request for grant form you can explicitly authorise the EPO to automatically deduct all fees due from the deposit account identified with the application documents (typically in the request for grant form). This is the safest method you can use, since it tells the EPO to ‘take out all fees that are due at any stage of the EP application pendency’ and safeguards against mistakes made when manually calculating dates for payment of fees and amounts of fees that are due on these dates. However, you should check with your trainer for your business policy on this. Art. 78(2), R. 45(1)&(2)
At the time of writing, fees have to be paid for each claim in excess of ten claims; those claims for which fees are not paid are considered to be abandoned, which means that they will neither be searched nor examined. As for the search and filing fees, these excess claims fees are due within one month of filing the application. Note that in 2008 / 2009 the EPO is changing its excess claims fee structure significantly – visit the EPO website to see how.
Art. 81, R. 41(2)(j), R. 60 & R. 19
The inventor has to be identified to the EPO and you need to provide details of how the applicant has come to derive his rights from the inventor, typically within 16 months of the priority date. The EPO supplies a form (1002) for this, and you can select from options such as: rights derived by virtue of employment; rights derived by virtue of an agreement dated dd/mm/yy; etc.
Art. 88(1), R. 53(1)&(2), R. 54 www. europeanpatent-office.org /epo/pubs/ oj007/02_07/ 02_0947.pdf
A certified copy of the priority document has to be obtained from whichever office the priority application was filed in, and submitted to the EPO. Some patent offices have an agreement with the EPO such that a copy is provided, upon request, to the EPO by the office. Note that if the priority giving application is an EP application, you can simply ask the EPO to transfer a copy of the priority giving application in the file of the newlyfiled and priority-claiming EP application.
Art. 94(2), R. 70(1)&(2)
You will have seen from the above that the search fee is due shortly after filing the application. After a search report has been issued by the EPO (more on this at 15.5), the search report will be published (with or without the application). Examination of the application has to be requested, and the examination fee paid, within six months of publication of the search report. You will realise that you typically have at least 24 months from the priority date of the application to pay the examination fee and request examination.
Art. 79(1)&(2), R. 39(1), Art. 169(1)
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Designation fees are due in respect of each contracting state designated in the application. Fees (known as extension fees) are also due in respect of each extension state designated in the application. Contracting states differ from extension states in so far as extension states do not have a right to vote in the Administrative Council of the EPO, but for your purposes (that is to say, if your client wants to obtain patent protection in a contracting state or an extension state), you can treat the two types of states as the same. You should note that, by default, all of the contracting states are considered to have been designated in the request for grant form, which means that designations are effective as from the date of filing.
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In order to maintain these contracting and extension designations, corresponding contracting and extension fees have to be paid. These fees are due within six months of the publication of the search report; you will, therefore, realise that the stage at which the examination fee is due is the same stage as the designation and extension fees are due.
15.2.3 Other formal requirements of EP applications Art. 90(3), R. 57(i), R. 46(1)&(2)
If the drawings filed with the application documents do not fulfil the formal requirements specified in the EPC, you will be notified by the EPO and you will have to obtain copies of the drawings that do conform to these requirements and file them as replacement drawings at the EPO. Typically formal drawings are prepared by patent draftsmen, who are familiar with these requirements, so (fortunately!) you don’t have to be desperately familiar with them.
Art. 86, R. 51(1)&(2)
Renewal fees are payable to ensure that the application is ‘maintained’ by the EPO; these fees are due annually on the anniversary of the date of filing of the application but can be paid up to the last day of the month in which the anniversary falls, without surcharge. Renewal fees are due in respect of the third and each subsequent year of the pendency of the EP application. You should note that the years start counting from the filing date (not from the priority date) and that you pay for each year at the start of that year (i.e. up front). Note that there is a grace period for the non-payment of renewal fees during which the fee can be paid, with surcharge, with no adverse effects.
15.2.4 What happens if the requirements are not met by the due dates? Art. 87(1), 122(1), R. 136(1)
Failure to file EP application within priority period: This is where you failed to file your EP application within the 12-month period from the priority date. You can request re-establishment of rights in respect of the priority period and this must be requested within two months of the expiry of the period, i.e. within two months from 12 months from the priority date. You will need to submit a written request for re-establishment, which needs to be accompanied by a statement of grounds setting out the facts you are relying on in support of your request. The request will need to be accompanied by the omitted act, which in this case is the filing of the EP application.
R. 40(1)(c), R. 55, Art. 122(1)
Failure to supply copy of previously filed application: This is where you failed to file a certified copy of the application that is referred to in the filing papers. The EPO will set a time limit for filing the copy; if the copy is not furnished within that time limit the only remedy available is re-establishment of rights.
R. 40(3), Art. 122(1)
Failure to file translation within two months: This is where you failed to file a translation of your EP application into an official language within two months of filing the application. You can request reestablishment of rights.
Art. 80, 90(1)&(2), R. 40, R. 56
Missing parts: You will be invited to file missing parts/drawings within a time limit set by the EPO. Typically, the application will be re-dated as of the date that the missing parts are provided, but there are situations in which the original filing date can be retained. Patents Training Manual: Volume 1
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R. 57, R. 58, R. 45(2)
If, upon filing, you fail to satisfy certain of the requirements, such as filing of formal drawings, filing of an abstract, signing of the request form, filing of one or more claims, payment of excess claims fees, among others, the EPO will write to you setting a period for these to be filed/paid.
Art. 88, R. 52
Failure to include all priority declaration information upon filing: If you fail to specify the date and state for which priority is being claimed at the time of filing the application, you can specify these details within 16 months from the earliest priority date.
Art. 121(1), R. 112(1), R. 135(1)
Late payment of fees: Payment of filing, search, designation and examination fees can be paid late by requesting further processing of the application. You will have to pay a surcharge (typically 50% of the official fee) and there is a fee for requesting further processing. Further processing is a process with which all patent attorneys need to be familiar: typically you will use it because your client is late in providing instructions or is short of money and needs to delay the payment of fees as much as possible. The procedure is as follows: the EPO will issue a communication alerting you to the fact that a time limit has been missed. The communication sets a time limit for requesting further processing, and provided you do everything you are supposed to do by the time the further processing time limit expires, the application will be treated as if the failure to observe the original time limit had never occurred.
Art. 121(1), R. 112(1), R. 135(1)
Late-filed examination request: Request for examination of the application can be filed late, by filing a valid request for further processing of the application.
15.3 Regional phase EP application 15.3.1 Requirements for date of filing These are mainly covered by the provisions of the PCT, since the application originated as a PCT application. As a result many, if not all, of the formal requirements associated with identifying the inventor, submitting certified copies of priority documents, compliant drawings etc. will already have been dealt with by the time the application is due to enter the EP regional phase. The formal requirements specific to regional phase entry are those associated with identifying the application that is to be processed by the EPO, paying the relevant fees, ensuring that the application enters the regional phase in one of the official languages of the EPC, and requesting search and examination of the application; this will be appreciated from a review of the passages below. The time limit for entering the regional phase before the EPO is 31 months from priority; whilst you can request early regional phase processing of your application, the actions and requirements detailed below are (generally) due 31 months from the earliest priority date of the international application.
15.3.2 Requirements for regional phase entry Art. 153(1), R. 159(1)(a)
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The first thing to note is that because international applications can be searched and examined in any one of the English, French, Spanish, Russian, Chinese, German, Arabic and Japanese languages, quite often foreign originating applications might well need to be translated into an official language of the EPO (English, French and German). You should note that the translation is due upon entering the regional phase (this
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is different to the translation requirements associated with a direct-filed EP application, where you have a number of months to supply the translation to the EPO), so you will need to be very well organised and obtain your client’s instructions in a timely manner. If a translation of the application is required, you will need to file a translation of the application as originally filed and, if the application is to be examined on the basis of an amended version of the application, a translation of the application as amended. R. 159(1)(b), R. 161, R.162(1)
You need to specify the application documents that are to form the basis of examination of the application. This can be done quite conveniently, using the form supplied by the EPO (1200). You can submit form 1200 and associated documents by post, by fax or electronically, and the papers have to be filed at one of the EPO filing offices, namely Munich, The Hague or Berlin. You can indicate whether the application is to proceed on the basis of the international application as filed, as published, as amended during the international phase, or on the basis of further amendments to the application. If you chose to submit amendments to the application upon regional phase entry, you will need to furnish the EPO with a copy of the amendments together with form 1200. Typically the claims of the application will be ripe for amendment if the application is foreign-originating: if you take a look at the claims of a US-originating international patent application, you will note that the US approach to claim dependencies is quite different to that taken in Europe. There are many different practices, but in general you will need to seek instructions from the client before making any such amendments and discuss how to proceed with your trainer; you might, therefore, find it difficult to coordinate receipt of instructions with the deadlines for entering the regional phase. Fortunately, you have a further opportunity to voluntarily amend the application and you are provided with this opportunity once the application enters the regional phase, in response to a written invitation from the EPO. Typically, the invitation will be issued between four and six weeks from entry into the regional phase (assuming all formal requirements to have been met by the time limits). You should note that the amount of excess claims fees calculated as falling due for the application will be based on your response to this communication. Thus, the date on which the excess claims are deemed due is governed by the date of issuance of this invitation.
R. 159(1)(c) & (e), Rfees2(2), OJ 2006, 192
You need to pay the filing fee and the supplementary search fee. Payment of a supplementary search fee is only due if the International Searching Authority was other than the EPO. Assuming this to be the case, the amount of the supplementary search fee is dependent on which International Searching Authority searched the application.
R. 159(1)(d), (f), Art. 153(6), R. 39(1), R. 70(1), R. 159(2)
You need to pay the designation and examination fees upon regional phase entry, if the international search report was published more than six months earlier. The amount of examination fee that is payable is dependent on whether or not international examination of the application was requested.
R. 159(1)(g)
You need to pay the renewal fee if the filing date of the international patent application is more than 24 months prior to the regional phase entry date. Patents Training Manual: Volume 1
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In practice this applies if the international patent application does not claim priority from another application, or, if it does, if it is filed up to seven months after the priority date of the application from which priority is claimed. R. 163(1)-(6)
Whilst we have said above that many of the formal requirements associated with a direct-filed EP application will have been dealt with in the international phase, quite often some of these requirements will not have been sorted out by the time the application is due to enter the regional phase. This is often the case for non-EP (foreign) originating international applications. The EPC provides for certain formal requirements to be provisioned by the applicant in the regional phase, if they have not been attended to in the international phase; these requirements include the number and copy of the priority application, the designation of inventor, a sequence listing, if relevant the nationality of the applicant, appointment of a professional representative (in the event that the applicant is not a resident of, nor has a place of business in, an EPC contracting state). These requirements are due to be fulfilled upon regional phase entry.
15.3.3 What happens if the requirements are not met by the due dates? R. 160(1) & (2), Art. 121(1), R. 112(1), R. 135(1)
If the translation of the international application or the request for examination has not been filed, or the filing fee, search fee, designation fees are not paid in time, you can file these and pay the fees late by requesting further processing of the application, as described above in relation to direct-filed EP applications.
R. 163(1)-(5)
In relation to the formal requirements listed above, if any of these have not been provided by the time of regional phase entry, the EPO will write to you or to the applicant (if no representative has been appointed), with an invitation to provide the missing information and/or documents within a certain period.
The penalties of failing to meet other requirements such as the payment of excess claims fees, non-payment of renewal fees, are dealt with in exactly the same way as they are for direct-filed EP applications.
15.4 Divisional EP application 15.4.1 Requirements for filing You will have noted that the sub-heading does not include the words ‘date of filing’. This is because a divisional EP patent application has, as its date of filing, the filing date of the EP application on which it is based. There are nevertheless, various formal requirements that need to be satisfied before the divisional EP application can proceed to search and examination. Art. 76(1) The first thing to note is that a divisional EP application can only be filed at a filing & R. 36(1)&(2) office of the EPO, so at The Hague, Berlin or the Munich offices – not at national offices. The second thing to note is that a divisional application can only be filed in respect of a pending EP application; we will refer to this latter pending EP application as the ‘parent’ EP application. Since an EP application is considered to be granted on the date in which the European patent bulletin mentions grant of the application, this means that the latest you can file your divisional EP application is the day before publication of mention of grant of the parent EP application. The third thing to note is that a divisional EP application has to be filed in the language of the proceedings of the parent EP application.
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You should also note that it is the applicant who is entitled to file a divisional application; thus if the parent EP application has been assigned and the divisional EP application is being filed in the name of the new owner, it is very important to ensure the transfer has been recorded at the EPO prior to filing the divisional EP application. You can circumvent this potential problem by ensuring that you, as representative in respect of the parent EP application, are also authorized to file divisional EP applications. As for a direct-filed EP application, a divisional EP application should be filed using form 1001. Art. 76(1) & R. 36(3)&(4), R. 70(1) Art. 76(2)
As is the case for direct-filed EP applications, the filing and search fees are due within one month of filing of the divisional EP application, and you will need to pay the designation fees and file the request for examination within six months of publication of the search report of the divisional EP application. In relation to selection of contracting and extension states, you can only designate from the set of states that were designated on the parent EP application.
R. 60(2)
As is the case for other types of EP applications, a designation of inventor is required for a divisional application. A divisional EP application contains a subset of the material disclosed in the parent EP application. As a result, the inventors to be listed for the divisional EP application can only be selected from those listed on the parent EP application (but may be a subset). In cases where the applicant for the parent EP application comprises several applicants, the divisional EP application must have the corresponding several applicants listed as applicant upon filing of the divisional application, unless one of the applicants has explicitly resigned his right to the divisional application before its filing.
R. 51(3)
Upon filing the divisional EP application, ‘back’ renewal fees are due in respect of each year from the third anniversary of the filing date of the parent EP application; they are also due each year of the pendency of the divisional EP application, as for any other type of EP applications. These ‘back’ renewal fees are due upon filing.
R. 53(2)
In relation to priority claims, assuming the parent EP application is a priorityclaiming application, a declaration of priority need not be filed a second time since the right of priority is granted automatically for a divisional application. The EPO automatically places the priority documents that were filed in respect of the parent EP application on the file of divisional EP application.
A failure to meet these requirements is dealt with in exactly the same way as it is for direct-filed EP applications.
15.5 Search The ‘search’ of an EP application refers to the process in which the claims of the EP application are reviewed by the EPO in relation to the ‘state of the art’, and the applicant is provided with a search report setting out a list of publicly available subject matter that the EPO considers to be relevant to the claims of the EP application. This subject-matter can take the form of oral disclosures, written publications, products that are on display in public places or available for sale, amongst others. Patents Training Manual: Volume 1
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The process of searching is the same for all of the different types of EP applications described above, but the output of the searching process can vary depending on the type of application and subject matter of the claims of the application. These outputs are described below:
15.5.1 Search report Art. 92, R. 61(1)-(6), R. 65
A search report lists all of the public disclosures (known as citations) that the EPO could find at the time of conducting the search, and which challenge the novelty or inventive step of the claims of your EP application. You will be sent copies of the written disclosures cited in the search report, together with any documents that refer to an oral disclosure or use/sale that predate the date of filing or, if priority is claimed, the priority date. You might find that the search report specifies certain of the claims as unsearched; this is typically the case in respect of claims for which excess search fees have not been paid (though see ‘partial search report’ below). The search report identifies passages in the citations that the search examiner considers to be relevant to the novelty or inventive step of the claims, so as to enable an expeditious review of the search report. In practice, you would be best to review the whole of the document, since there are often passages that either contradict the meaning relied on by the search examiner, or that are more relevant to the claims of the EP application than those detailed in the search report. The search report is drawn up in the language of the proceedings and it includes the international classification that the search examiner considers relevant to the claims of the application. Often several classes are cited. As you will know, EP applications filed before and published after the priority date of your EP application can only be cited against the claims of your EP application for novelty purposes, and the search report typically categorises such citations differently to citations published prior to the priority date of your EP application. Each citation can be categorised as one or more of the following categories: X particularly relevant document when taken alone Y particularly relevant document when taken in combination with another document classified as Y A document defining the general state of the art and not particularly relevant O non-written disclosure P intermediate document published in the priority interval of on the date of priority T document published after the filing or priority date and cited for the principle or theory underlying the invention E potentially conflicting patent document published after the filing date of the application searched but having a filing or priority date earlier than that date; also a patent document having the same date D document cited in the application searched L document throwing doubt on a priority claim or establishing the publication date of another citation
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During the searching process you might receive a communication from the search division informing you that the claims are considered to define more than one invention; the communication will invite you to pay further search fees in order to ensure all of the claims are searched. Unfortunately there is no mechanism for you to contest this opinion at the searching stage, so if you want all of the claims to be searched you will have to pay the additional search fee. You can, however, raise this with the examining division when the application proceeds to examination, and if the substantive examiner agrees with you, the further search fee will be refunded. You should note that if you do not pay the further search fees, examination will only proceed on the basis of those claims that have been searched, meaning that you will have no option other than to file a divisional EP application for the unsearched claims.
15.5.2 Extended search report (EESR) Art. 92, R. 62(1)&(2)
You will note that the EESR includes a commentary setting out the opinion of the search examiner, in particular of the patentability of the claims in light of the citations in the search report. You should note that the EESR is not published with the search report; however, it is accessible to the public once the application has been published and the EESR has been sent to the applicant (via file inspection; see 15.7 below).
15.5.3 Non-search Art. 92, R. 63
The search examiner can decide that the subject matter of the claims does not comply with the provisions of the EPC; this is typically the case for inventions that: are considered to lack technical character (i.e. that fall within one of the exclusions specified in Art. 52(2)&(3)); that relate to medical treatment or diagnosis; or that are not capable of industrial applicability (amongst others). In addition, this is the case if the claims are considered to so unclear that the search examiner cannot identify what to search. As a result the search report is replaced by a declaration that no search is possible. There is an important point to be noted here: there is rarely any dialogue between the applicant and the search examiner, which means that as you are notified of the search examiner’s non-search finding, you will also realise that your search fee has effectively been wasted. I say this because there is nothing you can do to get the search examiner to review his opinion (there are no provisions in the EPC that enable search examiners to issue decisions, so you cannot appeal this non-search finding). The only thing you can do is to request examination of the application and take this up with the substantive examiner. It can be very frustrating, particularly if your client was waiting for the search results to decide whether or not to request examination (and indeed allow the application to publish), so it is in your best interests to frame the claims as technically and clearly as possible.
15.5.4 Partial search report Art. 92, R. 63
It might be the case that the search examiner is of the opinion that a meaningful search can be performed in respect of some of the claims only; in this case the search report will relate to those claims that are considered to be sufficiently meaningful that a search could be performed.
15.5.5 Supplementary search report Art. 153(7)
You will have noted from the above (15.3), that a search fee is due upon EP regional phase entry. If the international application was searched by the EPO, then no Patents Training Manual: Volume 1
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supplementary search or fee is required (or indeed available), but if the international application was searched by an international searching authority other than the EPO, a further search and fee will be required; the output of this process is referred to as the supplementary search report. It can take the form of any of the search reports described above. Art. 93, R. 68(1) – (4) & R. 69
As mentioned above, the application can be published with or without the search report. This is because the date for publishing the application (at 18 months from priority or filing) is set out in the EPC, and, thus, has to be complied with for all pending applications; if the search report has not been completed by the time publication of the application is due, then clearly the application has to be published without search report. You will notice that published applications are assigned a publication number that is accompanied by one of a series of document codes; each code indicates whether the application is published with or without search report: A1: publication of application and search report A2: publication of application only A3: publication of search report only In the event that the application is published without search report, and thus as an A2 publication, there will be a second, A3, publication; it is the date of the A3 publication that triggers the time limits for payment of the designation and examination fees (you will note that the contracting states designated upon filing are indicated in the published application). Something to look out for, since it is new to EPC2000, is that the published application will indicate claims of the application that were not filed on the date of filing of the application (as we have seen above, the claims are not required to procure a date of filing).
Art. 93, R. 67, Art. 129(b), Decision of the President OJ 2006, 405, Art. 67(1)&(3)
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Publication of the application is very significant, since it marks the date on which the application becomes part of the state of the art (and thus prior art against any applications filed after the publication date for the purposes of novelty and inventive step). In some circumstances, your client may wish to withdraw the application prior to publication (e.g. if they are short of funds, have not disclosed the invention and wish to re-file the application so as to reset the time limits), so you need to be aware of the date of publication. Assuming the application to proceed to publication, the date on which the application is published can trigger what is referred to as ‘provisional protection’ in respect of the contracting states designated in the application as published. The protection conferred upon publication is provisional in so far as the application has to proceed to grant in order to develop into actual protection, and you should note that the rights associated with the protection are governed by the national laws of whichever contracting states the patent is validated in upon grant. For those contracting states whose national language is other than the official language of the proceedings, the provisional protection is dependent on the claims of the published application being translated into each respective national language; you need to note that provisional protection is not effective until the translated claims have either a) been provided to the national patent office or b) sent to a third party against whom
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the provisional protection is hoped to be exercised once the application has been granted and validated. The national law of each contracting state states which of these two options is required. If you take a look at the rule associated with the provisions governing publication (Rule 67), you’ll see that ‘The President of the European Patent Office shall determine when the technical preparations for publication of the European patent application are to be deemed to have been completed’. This should alert you to the fact that some important legal provisions are specified in documents other than the EPC; in this case the provision is specified in the Official Journal of the EPC, which is explicitly given legal standing by virtue of Article 129(b) EPC. Currently the preparations for publication are deemed to have been completed at the end of the day five weeks before expiry of the 18th month from the day of filing or priority (if claimed). You should note that a search can be based on an earlier search performed by the EPO, with the result that the amount of the search fee due on the EP application is reduced. An earlier search is a search drawn up by the EPO either in respect of another application whose priority is claimed by the directfiled EP application, or in respect of a parent EP application of a divisional EP application. As you might expect, the amount of the refund is dependent on the overlap between the claims of the earlier search and those of the EP application, and you need to identify the earlier application on form 1001.
15.6 Examination The ‘examination’ of an EP application refers to the process in which the EP application is reviewed against the substantive provisions of the EPC, and the applicant is provided with an examination report setting out reasonings for why the application cannot proceed to grant in its current form. Whilst these reasonings typically relate to the substantive grounds of novelty, inventive step, clarity, sufficiency and added subject matter (dealt with in Chapters 6 to 8 in this manual), the procedure for responding to the examination report in all cases is the same.
15.6.1 Examination of the application Art. 96(1), R. 70(2); You can file the request for examination of the application earlier than the date by Rfees 10b which the search report has been transmitted by the EPO. In such instances the EPO will send a communication that asks whether or not you wish to proceed with the application and whether or not you wish to comment on the search report and/or amend the description, claims and drawings. You have a certain time limit – typically two months – within which to respond to this communication. You can explicitly waive the right to receipt of the communication; this can conveniently be done using form 1001, because the form includes a box specifically for this purpose. If the communication is waived the application will be transferred from the search division to the examination division on the day the search report is transmitted, so resulting in a faster examination of the application than would be the case if you received and responded to the communication. There is a practical point to note here: in the event that your client subsequently decides not to continue with examination of the application (e.g. having reviewed the search report your client wishes to withdraw the application), you should note that the refund of some or all of the examination fees could be affected. Thus for applications that Patents Training Manual: Volume 1
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were filed speculatively, e.g. with little or no view of the prior art relating to the claims of the application, it may be best to preserve this opportunity to review the search report, since this essentially provides you with a means of being in control of when the application proceeds to examination. This then means that you are more likely to be able to withdraw the application while the examination fee can be refunded in full. Art. 94(3), R. 71(1), R. 71 (2), R. 126(2), R. 130(1), R. 132(2), R. 134(1), Decision of President OJ 2005, 41
Once examination of the application has started, in the event that the examiner is of the opinion that the application does not meet one or more requirements of the EPC, you will receive a communication setting a time limit – commonly four months – for response and setting out the reasons why the application is not yet in order for grant. Currently these communications are sent by post, and there is a provision in the EPC that sets the date of deemed receipt of the communication at ten days from the date thereof. What this means in practice is that you should adjust (by adding to) the date of the communication by ten days, and add the period set for response to this adjusted date. You can request an extension to this period set for response as long as you request the extension before the unextended period has expired. In addition, if the period (extended or unextended) expires on a non-working day, the deadline for submitting a response is automatically extended to the next working day. Unlike the filing of applications, responses can only be filed at the offices of the EPO.
15.6.2 Response to the examination report R. 42(1)(b), R. 43(1) – (7), Guidelines for Examination C-III, 2.2
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Substantive issues are discussed at length in chapter 17. Your response to the examination report, typically, involves submissions comprising amendment to the patent application and comments explaining the amendment, together with argumentation explaining how the claims of the application are distinguished over the prior art documents relied on by the examiner in the examination report. Of course, in some cases you will not amend the claims substantively – e.g. if you believe the claims, in their current form, to be patentably distinct over the prior art relied on; however, it is likely that you will amend the form of the claims to include reference numerals, and if in the one-part form, you may have to amend the independent claims into the two-part format, as explained in the Guidelines. In addition, you will most likely have to add a description of the prior art cited in the examination report to the background section of the patent application. In general, you will submit one set of claims for further examination by the examiner; you can, however, submit several sets of claims, the broadest set being referred to as the ‘main request’ and one or more narrower sets being referred to as the ‘auxiliary requests’. This strategy is to be recommended in the event that you are uncertain about the patentability of one particular set of claims over an alternative set, and you wish to expedite the procedure. Assuming the examiner to issue a decision to refuse the main request and that indicates allowance of one of the auxiliary requests, you can appeal this decision; thus, this approach provides a means of obtaining an indication of patentability in respect of one of the narrower auxiliary requests, whilst leaving open the possibility of obtaining protection for the broader subject matter of the main request by means of filing an appeal. You can then report back to your client with a number of options, one of which is a relatively reliable promise of grant of a patent for the subject matter of the allowed request, and another which is the further procedural acts that would be required in the event that the broader subject matter is important to your client. Appealing a
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decision is described below in 15.6.6 in the event that your client needs a patent granted quickly, you could recommend amending the application to cover the allowed set of claims and pursuing patent protection for the subject matter of the broader set of claims via the filing of a divisional patent application. Art. 97(2), Art. 113, Art. 116(1), Art. 18(s)
Further examination reports will be issued if the examiner is of the opinion that the amendment and/or response have not overcome all of the objections. The examiner is quite within his rights to refuse the application provided that in previous examination reports he has given you the opportunity to address all points on which he basing his decision to refuse the application.
15.6.3 Requesting a hearing There is a provision within the EPC that you need to refer to in every response to a communication from the examining division, namely the provision that enables you to conditionally request a hearing (in the EPC this is referred to as ‘oral proceedings’) in the event that the examiner is minded to refuse the application. If you do not request a hearing, and you have not persuaded the examiner to allow the application, the examiner might issue a decision to refuse the application as described above, based purely on the written papers. This then leaves your client with no option other than to appeal the decision, which is costly (see below). If you request a hearing, you effectively buy another opportunity to get the application accepted in writing, and if this fails, the opportunity to attend a hearing and argue the case in person before an Examining Division. The Examining Division comprises three technically qualified examiners, one of whom is the examiner you will have been corresponding with thus far. You can take the inventor with you to the hearing, and quite often this can make a significant difference, because the inventor can sometimes explain the invention and prior art more convincingly than we can!
15.6.4 Time taken to report Decision of President OJ 2001, 459
The time limits governing when the EPO issues an examination report are unspecified, and are dependent on the workload of the department assigned to the application. It is not uncommon for a first examination report to be issued between three and four years from filing; for some clients (typically those having a large portfolio) this is not a problem, but in cases where a patentee needs to assert their rights against a third party within a short time frame, these sorts of timescales are totally impractical (as you will know, you cannot assert a patent application, only a granted patent). In order to address this short coming, the President issued a notice in 2001 introducing a programme for accelerated prosecution of European Patent Applications (PACE). This allows for certain procedural acts to be accelerated as follows: • The search report will be available no later than six months from the filing date; • A first examination report will be issued within three months of receipt of the request for accelerated examination, and all subsequent communications will be issued within three months of receipt of the applicant’s reply, provided the reply addresses all of the points raised in the examination report and is filed within the time limit set for response; • The grant procedure can be shortened by accompanying translations of the claims and fee payment with a formal request for acceleration, provided this is all submitted as soon as possible after issuance of communication enclosing the allowed text.
In order to accelerate these acts, you need to formally request acceleration of the application; this is most conveniently done using form 1005 available from the EPO website. Patents Training Manual: Volume 1
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15.6.5 Third-party observations Art. 115(1), 115(2), R. 137(2)
The foregoing passages all relate to search and examination on the basis of documents identified by the EPO. However, there is a provision in the EPC that enables third parties to have their observations examined in relation to a patent application after the patent application has published. The observations must be filed in writing and in one of French, German or English, and they must include a statement of the grounds on which they are based; the submissions do not need to be accompanied by the payment of a fee. The observations can only relate to patentability, which means that issues relating to a lack of unity or support, added matter or insufficiency cannot be raised. The third party is not a party to the proceedings, which means that the EPO will not write to the third party in the course of subsequent examination of the application. There are no time limits for filing third-party observations, which means that they can be filed any time from publication to the end of the opposition procedure. This can be a useful and cost effective way of alerting the examiner to documents that have been missed during search and examination and that are pertinent to the claims of the application. In at least one case, the EPO has considered third-party observations submitted anonymously, but more recently they seem to be ignoring observations filed without the identity of the third party – it will be interesting to ask your trainer whether they have experienced this. Once the observations have been received, the EPO sends them onto the applicant and invites the applicant to comment. If the examiner considers the observations to be pertinent, he will introduce them into the proceedings and request comments from the applicant when issuing the next communication. If you consider the observations to be relevant, you could make use of your right to amend the application of your own volition prior to receipt of such a communication, in an attempt to head off a rejection from the examiner.
15.6.6 Appealing the decision Art. 106(1), Art. 107, Art. 108, R. 99, Art. 21(3)
As described above, the application can be refused during examination, either during written proceedings or during a hearing. In this case you can appeal the decision to refuse. Starting an appeal is a two-stage procedure, in which you firstly need to pay a fee and submit a notice of appeal, and you secondly have to file your grounds for the appeal. In your grounds of appeal you need to set out clearly why the decision to refuse the application should be set aside. In both cases there are time limits that have to be strictly adhered to. A Board of Appeal will be appointed to examine the appeal and comprises at least two technically qualified members and one legally qualified member. Oral proceedings may be scheduled and you will be given a further opportunity to present your arguments in writing ahead of the oral proceedings. In the event that the application is refused by the Board of Appeal, there is nothing further that can be done in relation to that application1. It is, therefore, good practice to file a divisional application – at the latest on the day before the hearing – and
Notes and references 1. New to EPC200 is Art. 112a(1): this provides means for a party to file a petition for a review of the decision by the Enlarged Board of Appeal, but this provision is limited in its application to events associated with the appeal itself and most certainly is not intended to be used to revisit any substantive grounds.
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without paying the fees. If the application is refused during appeal proceedings, you can then subsequently pay the fees due on the divisional application (see above in relation to divisional applications) and start again. If, on the other hand, the appeal is allowed, the application will either be remitted to the examining division for further examination or be allowed. The appeal procedure is dealt with in more detail in at 5.2.2 of the Training Manual.
15.6.7 Grant of patent Art. 97(1), R. 71(3), Art. 97(3)
In the event that the examiner is of the opinion that the application meets the requirements of the EPC, you will be issued with a notice setting out the text that the examiner considers to be in order for grant, together with an invitation to file translations of the claims into the two official languages of the EPC, other than the language of proceedings, and pay some further official fees. The official fees are those required to effect publication of the notice of grant and of the published specification. The fees might also include additional excess claims fees, for example, if the granted patent includes more claims than were filed on the date of filing. You need to check the text carefully, because it has been known for examiners to introduce amendments to the specification that might be considered to add subject matter. This might have serious implications for the validity of the subsequently granted patent. Also, and even if the amendments are fairly based on the text within the specification, you nevertheless need to be sure that your client is happy with the text, as amended by the examiner. If you are happy with the text, then provided you file the translations and pay the fee within the time limit specified in the notice, you will be issued with a communication setting out the date on which the grant of the application will be published in the European Patent Bulletin.
Art. 97(1), R. 71(4),(5), Art. 116(1)
If, however, you do not want the patent to be granted on the basis of the wording of the claims in the text that accompanied the notice, and, instead, you want an amended set of claims to proceed to grant, you need to file the amended claims and translations of these amended claims within the time limit specified in the notice. As a matter of good practice, you should accompany the amendments with information explaining the reasons for the amendments so as to help the examiner allow them. At this point, the examiner can either agree to the amendments or he can issue a communication asking for clarification of the amendments and/or suggesting alternative amendments. If these alternative amendments are acceptable to your client (and are fairly based on the text of the specification), then you need to respond by filing translations of the alternative amendments. If, however, they are not acceptable, then when you communicate this to the examiner, you should request oral proceedings to avoid refusal of the application at this point.
Art. 97(3), Art. 65(1), Art. 98, R. 73&74
Assuming translations of the claims to have been filed and fees paid in a timely fashion, you will receive a communication from the EPO setting out the date on which mention of grant of the patent is to be published in the European Patent Bulletin. Soon after the date of grant, the specification is published (as a B specification) and a certificate of a European patent is sent to the patent holder (or their representative). Patents Training Manual: Volume 1
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The date of grant is very important because it sets the time limits for validating the granted patent in those EPC contracting and extension states designated in your application in which your client wishes patent protection. Art. 65(1), National Law relating to the EPC: Table IV, Art. 67(3), National Law relating to the EPC: Table IIA & IIB
Whilst this Chapter has assiduously avoided specifying time limits unless required for the commentary to be meaningful, it is worth stating that all contracting states have a period of three months with the exception of Ireland, which has a period of six months. The requirements for validation are specified by each contracting state and extension state, and in general the minimum requirement is that the text of the entire specification has to be translated into the official language of the state. However, the London Agreement has reduced or removed this requirement in many instances – see the EPO website for the current status. The purpose is to reduce the cost of European patents by at least partly waiving the translation requirements. The Agreement states that for those states that are party to the Agreement and that have, as their official language, one of the official languages, there will be no requirement for a translation of the European patent into their official language. For those states not having an official language in common with one of the official languages of the EPC, the state specifies a preferred official language of the EPC and then requires that the European patent be translated into that specified official EPC language. In addition, claims translations may be required. In the event that patent infringement is asserted by a patent proprietor, the proprietor must supply a translation into the official language of the state at the request of either the alleged infringer or a Court. It is worth mentioning those states that accept translations into languages other than their national language, namely Luxembourg and Monaco; in addition, you should note that some states, e.g. Italy, accept translations into one of several languages. It is worth mentioning that this requirement is to be contrasted with the translation requirements for obtaining provisional patent protection. To obtain the latter, only the claims of the application need to be translated. Most of the states require appointment of a local representative; this is rather important because it ensures that notifications in relation to unpaid renewal fees are sent to someone who can understand and, thus, act upon the notification! As you might expect, in most states validation requires the payment of an official fee. Thus, the post-grant procedure involves appointing representatives in each of the States and sending out validation instructions in a timely manner. Following introduction of the London Agreement, validation of a European patent in the UK involves merely entering the details of your firm as an address for service – there is no need for translation.
15.7 The Register and inspection of files The EPO maintains a European Patent Register, which contains certain data pertaining to application and granted files, and can be inspected by third parties. Art. 127, Files are only available for inspection by a third party after publication of the Art. 128, application. Earlier inspection is possible if a third party has procured consent from the R. 143(1), applicant or the applicant has written to the third party notifying him of the existence Rfees3(1) of his patent application and rights that are conferred upon publication and grant. Similarly, any given entry on the Register pertains to a published application; there are no provisions for early appearance of particulars of an application on the Register.
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The EPC comprises provisions governing which parts of application files are accessible to the public at the EPO and which data is entered on the Register. Originally, files were only available for inspection in paper form, but now the content of many application files are available electronically via the web (at http://my.epoline.org). In relation to those files that have not yet been scanned in (and have not been destroyed), you can submit a request via the web interface for the file to be scanned in and, thus, made available online. If the file has not been destroyed, but cannot be scanned in, a copy of the file will be sent to the requester upon payment of a fee specified in the Rules for Fees. If you check out the entries at http://my.epoline.org you will note that those particulars specified as being available on the EPO Register are conjoined with the file contents for any given application. R. 144, Decision of President OJ 2001, 458
Certain information in a file is explicitly excluded from inspection; this includes information relating to exclusion of members of Boards of Appeal, draft decisions, and information about the inventor, if he has waived his right to be mentioned. By decision of the President, other documents including requests for inspection and PACE requests (introduced above, 15.6) are excluded from inspection. However, you need to be very careful how you submit your request for acceleration of the proceedings to ensure that it is excluded from the file. You need to ensure that the request is filed in isolation and is not combined with any other request or response that is deemed part of the publicly accessible material for the application. The safest way to ensure this is to submit the PACE request using form 1005, available from the EPO website.
Test your knowledge 1. List the requirements for obtaining a date of filing of a European patent application (assuming the European patent application is unrelated to any previously filed patent application). 2. List the offices where direct European patent applications can be filed. 3. List the offices where a divisional European patent application can be filed. 4. List the medium via which European patent applications can be filed. 5. What are the benefits of using form 1001? 6. List the options available to an applicant who wants to file a European patent application claiming priority from a Japanese patent application filed 13 months ago. 7. List the language options and requirements for an Italian patent applicant who wishes to file a European patent application in Italian. 8. What is the criterion for determining the deadline for payment of examination and designation fees and what remedies are available in the event that the deadline is missed? 9. What is the last day on which a divisional EP application can be filed? 10. At which offices can documents be filed subsequent to the filing of an EP application? 11. What are ‘third-party observations’, and why would you advise your client to submit them? Patents Training Manual: Volume 1
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Suggested chapter answers and comments 1. The documents making up the application have to include an indication that a European patent is sought, applicant details, and a description or a reference to a previously filed application. 2. All EPO offices and national offices acknowledged by the EPO as being competent to receive European patent applications. 3. The Berlin, the Hague and the Munich offices of the EPO only 4. By fax, post, online. 5. It serves as a convenient ‘check list’, since it includes fields that provide information and details that are required for the application to be deemed a European patent application, and that you might otherwise forget to submit/complete. 6. Request re-establishment of rights in respect of the priority period and within two months of the expiry of the period, i.e. within two months from 12 months from the priority date. You will need to submit a written request for re-establishment, which needs to be accompanied by a statement of grounds setting out the facts you are relying on in support of your request. The request will need to be accompanied by the omitted act, which in this case is the filing of the EP application. 7. File the application in Italian; you will have to file a translation into a language of the proceedings within two months of the application filing date. 8. Publication of search report; remedy: further processing. 9. Day prior to publication of the mention of grant of the parent application. 10. EPO filing offices only. 11. Ex-parte observations in relation to novelty and inventive step of an application; the benefits of filing these observations is that it is relatively cheap and it can, at the very least, delay the grant of the patent in respect of which the observations have been submitted.
Chapter review You now have knowledge of the different types of European patents and the different routes that an applicant can take when seeking patent protection in Europe. You need to ask your trainer for access to files relating to each different type of European patent application, and, indeed, files relating to various stages of the various types of European Patent application, so you can see the routes taken by different clients when obtaining a European patent. You should particularly look out for practices governed by the law pre-EPC2000 and discuss how these differ from the EPC2000 practice with your trainer.
Further study
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Visser, Derk. The Annotated European Patent Convention: Veldhoven: H. Tel
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Date of publication has not been given as legal texts are regularly updated. Please ensure that you use the most recent edition.
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Filing strategies (PCT)
Outline An introduction to the Patent Co-operation Treaty (PCT) system has been given in chapter 13. This chapter deals with details of the procedures and stages involved. This chapter covers the use of the international patent system in seeking protection for an invention across a large number of countries. The formal requirements for the applicant and the application are set out, along with details of the procedural timeline of events for the application. The chapter moves through each procedural stage in turn and includes details of options or routes that may be available at different stages in the life of the international patent application. Alongside the law, the practical considerations that may influence the particular route chosen by the applicant are discussed. Key concepts: • •
The PCT (International Patent Application system) – how and why it is used and by whom. The offices and agencies involved in operating various stages of the application process and the procedural steps required at each stage.
Learning plan Prerequisites: The trainee should read: • •
• • • • • •
Articles 3 to 30 (Chapter I) and 31 to 42 (Chapter II) of the PCT and Rules 3 to 78 of the Regulations under the PCT. PCT Applicant's guide (www.wipo.int/pct/guide/en) in particular the question and answer sections starting at Chapter 5 of Introduction to the International Phase and Chapter 2 of Introduction to the National Phase. UK Patents Acts 1977 to 2004 (UKPA), and the sections applicable to international applications; PA 89 Effect of international application for patent. PA 89A International and national phases of applications. PA 89B Adaptation of provisions in relation to international application. The Patents Rules 2007. EPC – Article 153(1) and Article 153(2), Rules 159 to 163 EPC – Requirements for regional phase entry. At least chapters 6, 13, 14 and 15 of this Manual.
Legal documents: Official sources: The PCT website contains links to, and details of, the PCT and Regulations (www.wipo.int/pct/en/texts). The website also has links to the PCT applicant's guide (as detailed above) for both the international phase and for the national phase and the annexes to the guide. Be guided by your trainer for sourcing paper copies of any of the official sources you may need, these may be available in your office. Take care to use the most up-to-date version of the official material that is in force and current as at Patents Training Manual: Volume 1
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the current time of your study. It is common for the official wording of rules or law changes or new forms for filing to be made available before their commencement date. The ‘old’ versions should be used up to then Forms, such as the filing Request form, are provided on the PCT website. Look through at least the Request – PCT/RO/101 and the demand – PCT/IPEA/401. You may also find it helpful to look at samples of PCT communications such as the ISR (Form PCT/ISA/210) and IPRP (Form PCT/IB/373). Further explanation of these forms and communications will be given in the various sections of this chapter. Trainer’s input: At the outset of the chapter, briefly discuss with your trainer any general comments they have on the PCT system. You should ask if there are any standard procedures, practices or ways of working in your office that relate to PCT files and their case management, etc. It will help if you are aware of your trainer’s usual practice when you look at, and work with, PCT files. Standard procedures may include, for example, filing the application, with paper copies of the official forms, submitting electronic versions following the PCT-EASY format or filing online using the secure filing facility. Your trainer may suggest that you look through some existing files together. It may be helpful for you to see files at different stages of the PCT procedure; your trainer should be able to point out various procedural steps and some of the forms and documents involved at each stage. Be guided by your trainer as to the composition of the paper file and notice where various forms and documents are kept within the file. Once you have looked through some files, you may notice differences in how the PCT system is used by different applicants, for example, an individual inventor may proceed with their, perhaps single, PCT application in a very different manner to the way a large company may handle their portfolio of international applications. Syllabus link:
UK Exams: P1, P5 and P2 EQEs: Paper D Part I and II (Legal)
Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will have an understanding of the PCT system and how it might be used by those seeking patent protection in a number of different countries. You should also have an appreciation of how applicants can use an international (PCT) application to defer the cost of pursuing foreign patent protection. Your knowledge of the PCT system will become one of the skills which will allow you to advise your clients on their options for patent protection outside their own territory or country.
16.1 The PCT system – in brief The international patent application system is a useful, cost-effective way of reserving the applicant's rights in an invention, whilst deferring both the significant costs associated with obtaining patent rights, and the decisions concerning the countries and regions in which to seek patent protection (142 states/countries are PCT contracting members as of 14 January 2010). The PCT is a patent filing system administered in the international phase by the World Intellectual Property Office (WIPO) and operating for applicants having residence in, or nationality of, a country (state) party to the Treaty. The PCT system provides applicants with a centralised procedure for filing an international application and obtaining an international search and written opinion on the patentability of the claimed invention. PCT procedure involves the publication of the application and, optionally, international preliminary examination of the application. The filing of an international application involves the preparation of certain application papers and
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forms, and compliance with a fairly rigid set of formalities. The application documents automatically designate protection in all states. The filing date of that one, PCT, application is considered to be the international filing date and the filing date at each designated office. In addition, the advantage for an applicant is that the filing of a PCT application in one language, at one chosen office (Receiving Office) is acknowledged in all PCT states as having the effect of a regular national filing. The administrative burden of the system is handled and managed centrally by WIPO at the International Bureau (IB). After satisfying the international filing requirements and the procedures of the international phase, there follows a national or regional phase at a designated national or regional patent office. The final decision granting, or otherwise refusing, the application is the responsibility of those designated national/regional offices. The national phase can be deferred until 30 months from the priority date of the application for the majority of states. In certain countries, however, the international preliminary examination stage of the application must be requested by 19 months from the priority date in order to extend the international phase until the end of the 30-month period. (More details of the national procedure follow in section 16.9.) The countries which require the request for examination at 19 months are few, only Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG) as of 1 July 2010). An international (PCT) application can not become a single ‘International Patent ‘. Instead, after the international phase, there are national or regional patent applications in the countries of the applicant’s choosing. Despite this, the ‘International Patent ‘ exists as a common myth among inventors and applicants, extending even to those applicants who would consider themselves familiar with patents and the various patent systems. Patent attorneys are likely to find themselves explaining the PCT system and the lack of an ‘international patent ‘ to clients many times during their career.
16.2 Filing an application – procedure and requirements 16.2.1 Filing (See Annexes B1 and B2, Vol1/A PCT Applicant’s Guide) Nationals and residents of a contracting state of the PCT can file an international application at the office (national patent office, regional patent office or other body) designated as a receiving office (RO) by the contracting state. Where an application is filed with multiple applicants such that there are nationals/residents from more than one country, a RO appropriate for any one of the applicants may accept the application. An applicant of any contracting state also has the option of filing the application at the International Bureau (IB). For first filings outside an applicant’s own country certain provisions may apply to maintain national security. It is likely that the majority of the cases for filing that a trainee will come across will be instructions for filing a PCT application for a UK applicant (company, or individual(s)). In that case, the common route would be to file the application and the accompanying application form in English (or Welsh), at the Intellectual Property Office (IPO) acting as the UK receiving office (RO) for the IB. The European Patent Office (EPO) may also be used as RO for a UK applicant/resident with an application in English, French or German. Finally, the IB is an acceptable receiving office for an application in any language. An original copy of the application (if filed by fax) is required by the IPO, one copy of the application is required for filing at the EPO or at the IB of WIPO. . The following (16.2.2 – 16.2.5) list of formalities sets out the minimum and subsequent requirements for a PCT filing. Some of the relevant PCT Articles and Rules forming the basis for the formalities are included for reference. • • •
Article – The relevant Article of the Patent Co-operation Treaty (PCT); R. – the corresponding Rule of the Regulations under the PCT including the Schedule of Fees; and Section – a Section of the Administrative Instructions under the PCT. Patents Training Manual: Volume 1
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16.2.2 Key data making up the International application (Articles 3(2) and 3(3)) Art. 3(2), Art. 11(1), Request Form – many of the formalities, such as submitting a priority claim, providing a title of the invention and identifying the applicant, are dealt with by R. 4.5 completing the international application form (Request Form PCT/RO/101). R. 3.1 & 3.4 R. 89 ter Section 102bis Art. 4, R. 3 & 4.9
A printed copy of the form, or an electronic version (using PCT-SAFE software) is submitted with the application papers or disc. Secure online filing is also available. The Request automatically designates all states, but provisions exist for withdrawing designations. Applications for the US are made in the name of the inventor as applicant and assigned (e.g. back to the inventor’s employer) as required.
R. 4.5 (d)
Inventors for an international application are, therefore, recorded on the Request as ‘applicant and inventor‘ in respect of the US only.
R. 4.15
The Request should be signed by or on behalf of the applicant(s) or those listed as ‘applicant and inventor ‘.
Art. 9, R. 18
The applicant could be a company or an individual and an authorised signatory such as an officer or employee of the company or legal representative may be provided. The application includes:
Art. 3(2), R. 5 & 6 Art. 3(2) & 3(3) Art. 3(2) & 14(2) R. 13bis, R. 13ter
• • • •
a description of the invention and claim(s) defining the subject-matter of the invention; an abstract – a summary of the invention; drawings – if required to understand the invention; and a sequence listing, references to deposited micro-organisms, etc (for inventions involving biological material).
The PCT requirements for the description and other elements of the application listed above are in line with requirements at national patent offices. R. 10 & 11
The PCT includes rigid requirements relating to the layout and physical presentation of the application.
16.2.3 Other parts of the application
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Translation of the application – if required, into a language suitable for publication (one of Arabic, Chinese, English, French, German, Japanese, Spanish or Russian), or a language of the relevant search authority (e.g. English, French or German for a search at the EPO).
R. 90.4 & 90.5
Power of attorney – authorising of an agent appointed to act for the applicant, a common representative may be chosen from the applicants if no agent is appointed. Most offices no longer require submission of a general or separate power but, despite waiving their rights to such a document, powers of attorney may be required in certain instances at later stages of the application. It is wise to have power of attorney documents prepared and signed at the beginning of the application process in case they are needed later.
Art. 4 Paris Convention
Priority – a priority document may form part of, or accompany, the application. A claim to priority can be made from an earlier national, regional or international
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Art. 8, R. 4.10 & 17.1
application filed in or for any country party to the Paris Convention (PC) or filed in a country not party to the PC that is a World Trade Organisation (WTO) member. See 16.3.1 for comments on filing procedures for cases claiming priority.
Sections 211-215
Declarations – optional part (form) provided within the international application procedure. Declarations act to anticipate certain national phase requirements and formalities. They must be provided using standard wording and they form part of the centralised, regimented PCT procedure.
R. 4.17
Examples include a declaration as to the identity of the inventor and a declaration of an applicant’s entitlement to apply for a patent. Once a declaration is submitted and accepted in the international phase no further documents or evidence on that point are required, in principal, to prove the applicant’s position.
R. 51 bis 2
The aim of having declarations within the PCT procedure was to avoid the applicant duplicating certain formalities and procedural steps before a number of different offices in the national phase. Despite this, certain offices still maintain their own provisions and evidential requirements for inventorship, entitlement etc at the national stage so the declarations are of somewhat limited use and many applicants do not use the declarations.
16.2.4 Filing an application – fees payable A fee calculation sheet is prepared using form PCT/RO/101(Annex) and submitted along with the Request. The fees are usually paid on filing the application, although they are formally due one month from the filing date. Discuss with your trainer how your organisation handles this aspect. R.14.1(c) & 15.4
The fees comprise a transmittal (or handling) fee, an international filing fee and an additional fee for each page of the filing document (including the Request) above 30.
R. 16.1(f)
The international search fee is also paid on filing. A funded account can be set up at the EPO in order to pay the fees when required. By signing the fee calculation sheet, the applicant authorises withdrawal of the necessary funds from the deposit account. Payment also can be made by means such as cheque, bank transfer, etc. It is advisable to make the payment on filing in order to avoid delay and possible fees for late payment. The fees collected by the RO on filing are distributed to the IB and the office International Search Authority (ISA) conducting the international search. The transmittal fee is retained for the benefit of the RO for various administrative tasks such as forwarding application information to the IB. The filing fee and the additional fee are collected for the IB. The search fee is transmitted to the relevant office conducting the international search.
Schedule of fees, item 3
A reduction of up to 30% in the international filing fee is available for applicants using PCT-issued secure software (PCT-EASY and PCT-SAFE) and electronic filing techniques. The above fees are due one month from receipt of the filing at the IB. An invitation to pay underpaid or missing fees will be issued if the fees have not been paid in full.
R. 16 bis
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16.2.5 Summary – Minimum requirements to obtain an international filing date (Article 11) R. 18 & 19
An applicant entitled by residence or nationality to file a PCT application with the Receiving Office (RO). An application in a language accepted by the RO (for example English or Welsh at the IPO and English, French or German at the EPO).
Art. 4, R. 4 & 6
Application documents including an indication that it is intended to seek an international application, requesting all possible designations, a description, a claim and information sufficient to identify the applicant. It is interesting to note that it is not strictly necessary to include any of the following in the initial application Request in order to obtain an international filing date; fees, translations, drawings, applicant’s signature, abstract, title.
Art 14(2), R. 20.2 & 20.7
Although the late submission of drawings necessary for the understanding of the invention may result in a change in the international filing date.
16.3 Post-filing procedure and next steps The RO undertakes the administrative burden of checking and cataloguing the application documents and application particulars as well as assembling the file. A number of official acknowledgement forms are generated and sent to the applicant. The acknowledgement forms are an important part of the file and can be cross checked with your own case file.
16.3.1 Key post-filing procedures (i) The first stage after filing the application occurs when the RO formally receives the application and issues a receipt for the documentation confirming the documents that have been filed. R. 12.1(a) & 12.3 The application is processed within the RO – initial checks as to the language of the application, any required translation, the residence and nationality of the applicant(s), R. 19.1 & 19.2 etc are carried out to establish the competence of the RO to accept the filing of the application. Art 11, R 20 (20.3, Subsequently, following a formal check of the filing requirements (and invitation to 20.4, 20.5 & 20.6) correct), the application is accorded (or refused) an international filing date. R. 19.4
If the RO is not competent to handle the application it is forwarded to the IB, but maintains the date of receipt of the copy at the RO.
(ii) The RO makes a thorough check of the application. Art 14(1), R. 11 The RO checks that the application satisfies the formal PCT presentation and physical requirements such as text size and spacing, shading, figure numbering, etc. This means that the quality and layout of the application is suitable for publication. Art 14 (1) (b), R. 26.2
The RO communicates (forms PCT/RO/106 and PCT/RO/107) with the applicant regarding any missing parts or defects and provides an opportunity for correction. A set time period is given for the correction (usually one to two months) and, in most cases, it is possible to extend that period. A decision on correction is taken by the RO and details of the change should reach the IB before preparations for publication are completed. The correction of defects, such as replacement formal drawings, deleting shading
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on a figure, supplying additional signatures or a translation in the language of publication or of the Searching Authority, will not usually affect the filing date accorded for the application. R. 17.1(a), R. 4.10
The RO will check a priority claim. The applicant is required to submit a certified copy of the priority application within 16 months of the earliest priority date. The 16 month date is not a firm deadline however as a certified copy is considered to have arrived in time if it is received by the RO before the international publication of the application.
R. 17.1(b), R. 4.1(c)(ii)
In the situation where the priority case was filed at the office now acting as RO, a request can be made of the receiving office that, for a fee, a copy be taken from the records and transmitted to the IB. For procedural efficiency, the request can be made by marking the appropriate box relating to priority on the Request form when filing the application.
(iii) The next procedural step is the transmittal of copies of the application to the relevant offices. Art 12, R. 22.1 The RO transmits the record copy of the application to the IB. & 23.1 R. 16.1 (f) The RO checks for receipt of the fee for search within the time limit and, if received, the search copy is sent to the relevant searching authority.
16.3.2 Other post-filing procedures Priority claims R. 26 bis 1 & R. 26 bis 2
The PCT allows for late submission of, or correction of, priority claims up to four months from the international filing date, or 16 months from the priority date, whichever is the later.
The applicant may correct a priority claim or add a priority claim to a Request. The RO may issue an invitation to correct defects in a priority claim, for example, where part of the priority data is missing, where there is an inconsistency in the priority data entered on the Request and in the priority document submitted, or where the data concerning the priority document is not sufficient to identify the document. R. 26 bis 3
The PCT also allows for the restoration of a priority right by the RO at the request of the applicant and up to two months from the date of expiry of the 12-month priority period.
Subsequent to filing the application, a request made by the applicant for the restoration of priority must show that failure to file the international application within the priority period occurred despite all due care being taken and/or occurred unintentionally. The RO may apply one or both of the criteria for the failure to file. R. 26 bis 3 (i) Acknowledges that the national laws of individual states party to the PCT may be incompatible with allowing a restoration of a priority right. In this instance the incompatibility must be lodged at the IB and is advertised. A list of reservations and incompatibilities is available at www.wipo.int/pct/en/texts/reservations/res_incomp.html For example the EPO and the UK IPO acting as ROs allow restoration of priority under R. 26 bis 3 whereas the national patent offices in Germany, India, Italy, Japan and Spain do not. However, national patent offices acting as designated offices (DOs) at the national 30/31 month stage can also raise Patents Training Manual: Volume 1
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incompatibility issues. For example, the USPTO as a RO allows applications to proceed with restoration under R. 26 bis 3 but does not recognise the restoration as DO at the national stage. The provisions relating to the correction or restoration of a priority claim can be complex and prone to confusion. A useful calculator is provided at www.wipo.int/pct/en/calculator/pct-calculator.html Translations R. 12.3, R. 20.4 Translation of the application from the language of filing may be required. A translation in a language suitable for the relevant ISA is required within one month from the date of receipt of the application at the RO/IB. R. 12.4
Declarations R. 26 ter
A translation into a language suitable for publication will be required, the deadline for that translation is 14 months from the priority date.
Any declarations not submitted with the Request may still be validly filed up to 16 months from the priority date. Similarly, any corrections to declarations already filed may be made up to 16 months from the priority date.
A number of other procedures and minor formalities can be dealt with centrally before the IB, easing the burden on the applicant to make changes before every national office where protection is being sought. R. 92bis
Some examples of changes and updates to the Request (e.g. changing/correcting the name or address of an applicant or inventor) that can be made at this stage are given later (see 16.10). A change or addition reviewed and incorporated for the application at the international stage will likely be carried forward into the later, national phase without further submissions or evidence being required, thus saving considerable time and expense for the applicant.
16.4 International Search Report (ISR) – Procedure 16.4.1 International Search Authority (ISA) After the RO has completed the formalities check and its administrative tasks, the application moves through to the search stage. The search and the formalities related to the search are carried out by a relevant ISA. Each receiving office (national or regional office) specifies which one, or more, authorities are authorised for the purposes of searching applications filed with that receiving office. ISAs include patent offices from the following countries; Australia, Austria, Canada, China, Japan, Finland, Korea, Russia, Spain, Sweden, the US, the Nordic Patent Institute and the EPO. For PCT applications filed at the IPO and the EPO, the EPO is the competent ISA.
16.4.2 Duties of the ISA – search and written opinion (WO)
274
Art. 15.3, R. 33.3
The main task of the ISA is to conduct a search of the claimed subject-matter, searching for relevant prior art documents. The ISA then produces an International Search Report (ISR).
R. 13 & 40
In addition, the ISA carries out an examination for unity, looking for the number of inventions in the application. The ISA checks that the application relates to only one invention, or to a group of linked inventions forming one, inventive concept (unity of invention).
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If the ISA examination concludes that the application relates to more than one invention the examiner may invite (form PCT/ISA/206) the applicant to pay additional search fee(s) for the one (or more) additional inventions in the application. Art. 17.3 (a)
The search report will be established for those inventions that have been the subject of the search (for which the search fee and any additional search fees have been paid). Note that if the EPO is ISA they will not repeat this invitation on EP regional entry so that if you do not take the opportunity during the international phase, you will need to file divisional applications for unsearched subject-matter.
R. 37 & 38
The ISA also checks the title and the abstract of the application. The ISA has the power to make amendments to the title and the abstract, the applicant is merely informed of the changes on receipt of the search report. In the event that changes are made, the applicant has the opportunity to submit comments on the abstract (but not the title). The comments are published along with the application but there is no provision for the applicant to amend an abstract amended by the ISA.
Art. 18
Following the initial review for unity and formalities in the application, the ISA conducts a search of the prior art made available to the public by any means before the international filing date. The ISA then produces a standard reporting document (ISR).
Art. 17(2)
Alternatively, the ISA may issue a statement that a meaningful search could not be carried out, i.e. that no search report has been established.
R. 43bis
The ISA also issues an ISA written opinion (ISA-WO) document with the ISR. The written opinion document is discussed in 16.5 below.
R. 42 & 43
The ISA issues the ISR three months from its receipt of the search copy of the application (around 16 months from the earliest priority date, if claimed) or nine months from filing, whichever is later. The ISA aims to issue their report before publication of the PCT application. This means, generally, that the PCT publication pamphlet for the international application includes an annex of search report pages. In the event that it has not been possible to conduct the search to this timetable the front page of the application is republished, usually labelled as an A3 publication, and accompanied by the pages of the search report.
16.4.3 International Search Report (ISR) – Substance The ISR is similar in layout, and in the way information is presented to the applicant, to the search reports issued for national and regional applications by the IPO and the EPO authority, for example. Chapter 6 discusses types of prior art and how prior published documents are considered citable against an application or disclosure. The search examiner will arrive at a set of documents he believes are relevant following his assessment of the claimed invention. The examiner will set out the relevant documents and family members in a table forming part of the search report pages. Particular passages, pages or relevant figures from the citations are listed along with the examiner’s categorisation (X, Y, P, etc) of the relevance, or otherwise, of the citations to the subject-matter of the claims. The citations are enclosed with the report and transmitted to the applicant or their representative.
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16.4.4 ISR – Review and further action At this early stage of the international application process, it is a good idea to offer the applicant a review of the search report and a discussion of the citations and the merits of the application. By looking at the cited documents, the patent attorney can form a view of the extent of the prior art and its relevance to the application. It may be that a very relevant piece of prior art has been found and a review at this stage can avoid an applicant wasting money on a hopeless patent application. For example, where the piece of prior art discloses part, or all, of the applicant’s invention, such that there is no novelty whatsoever in the subject-matter of the applicant’s case. It is better to spot any such issues during the international stage so that the applicant can consider whether it is worth continuing into the national phase. By the time an application is reviewed at the later, national or regional stage, the applicant will have already gone to significant expense, and will have potentially wasted both time and money. On the other hand, an early review of the search report may reveal a lack of relevant prior art. That may encourage an applicant to pursue the application, and/or to pursue the application in a greater number of countries than originally planned. The applicant, however, may not wish to pay for a full attorney review of the ISR, preferring to look at the citations themselves first. In that case, the attorney can advise, if asked, on the specific parts of the cited documents to review and how best to look at the disclosures. For example, the applicant may be familiar with some of the ISR documents already, perhaps from national searches carried out on earlier (priority) applications, or from their own knowledge of the field. At this stage the attorney may wish to prompt the applicant to consider the ISR prior art and to begin to form a view of the differences that mark out and distinguish the invention over the prior art. The applicant’s responses can be kept with the file and may assist when developing inventive step arguments for use in any subsequent prosecution of the application in the international phase and, if required, before the various national offices. In view of the varying requirements of different applicants you should always consult your trainer before spending time conducting a full review of a search report.
16.4.5 ISR – Other actions to consider
276
Art. 19, R. 49.3
Amendments can be made to the claims at this stage and submitted along with a brief supporting statement or statement of reason to the IB. This amendment procedure, although not commonly used, is designed to provide applicants with a route for avoiding or overcoming prior art that may have come to light as part of the ISR. Further details relating to making and submitting amendments are included in 16.8 below.
Art. 29
In practice, few applicants use the Article 19 amendment provisions. However, any amendments made at this stage will be included in the claims as published in the international application. This affords the applicant provisional protection, in some states, for the subject-matter of the claims from the date of publication (see 16.6.3). In the event that the search report is issued after publication of the application (this possibility is discussed at 16.4.2 above) any Article 19 amendments to the claims will be published along with a statement, if applicable, accompanied by a modified front page with bibliographic details, abstract, etc.
R. 13 & 40.1
Any review of the ISR at this stage should consider any lack of unity objection and whether an additional search of those claims considered to relate to a separate invention will be required. Time is of the essence here, as an invitation (PCT/ISA/206) from the search examiner to pay an additional search fee sets a limited time window (one month) in which to make a request for the additional search and pay the required fee.
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If it is felt that the examiner’s lack of unity objection is unjustified then it is possible to have the additional claims searched under ‘protest ‘. The protest procedure involves paying a protest fee along with the additional search fee. A statement of reasons for the disputed search fees must be submitted to contest the examiner’s view and argue for the unity of the claims. The search authority carries out the additional search for the applicant and reviews the protest. If the protest is considered valid then the additional search fee already paid is refunded to the applicant. The protest procedure is not extensively used as it is time consuming and the large protest fee required is not refunded, even if the protest is considered valid.
16.4.6 SIS – Supplementary International Search R. 45bis
R. 45bis 9
Applicants have the option of requesting one or more supplementarysearches from other competent ISAs in addition to the search carried out by the main search authority (SA). The rule was introduced to try to address the increasing diversity of prior art found in the national phases and to try to avoid new, previously unknown prior art surfacing at the examination, and later, phases of the national phases. The main SA cannot be selected as the SSA.
R. 45bis 1(b) R. 45bis 1(a) R. 45bis 1(c)
A supplementary search request must be submitted to the IB. The time limit for requesting a SIS is 19 months from priority date of the application. The request must state the supplementary search authority (SSA) requested to draw up the search, along with a translation into a language of the SSA.
R. 45bis 2
SIS fees comprising a SIS fee and a SIS handling fee are payable to the IB. The SIS fee is collected by the IB on behalf of the SSA. The current PCT fee tables should be consulted for the fees applicable.
R. 45bis 3 R. 45bis 1(b)
R. 45bis 7
R. 45bis 8
If the ISR issued by the main SA has raised a non-unity objection the supplementary search request should state the invention to be searched and may request a search of an invention other than the main invention identified by the main SA. The SIS is based on the application as filed and amendments filed under Art. 19 or Art. 34 will not be considered. The SIS is drawn up by the expiration of 22 months from the priority date and will be issued by 28 months from the priority date. The SIS is then transmitted to the IB and the applicant and will be treated as part of the ISR.
Patent offices (acting as ISAs) in Austria, Russia, Finland, Sweden and the EPO offer applicants a SIS include. Patent Offices in Korea, China, Australia and Brazil may consider offering a SIS in the near future but the USPTO, and national patent offices in Spain, Japan and Canada have no plans to consider offering an SIS service.
16.5 Written opinion (WO) of the ISA 16.5.1 Written opinion – substance R. 43bis
As mentioned above, the ISR is accompanied by the written opinion (WO) of the International Search Authority, the ISA-WO. The ISA-WO is a reasoned statement giving the examiner’s initial, non-binding opinion as to the novelty, inventive step and industrial applicability of the claimed invention. The WO also highlights any major clarity objections with the application. Patents Training Manual: Volume 1
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The WO is drafted and drawn up at the same time as the international search report and issued to the applicant and the IB with the ISR. The ISA-WO is not published with the search report but acts as a useful indication for the applicant as to the merits of the application and the examiner’s standpoint based on the prior art.
16.5.2 Written opinion – use and potential action to take There is no formal procedure for replying to the examiner on any points raised in the ISA-WO, unless a demand for International Preliminary Examination (IPE International phase Chapter II – see 16.7) has been filed. Informal comments on the written opinion can be submitted to the IB; these are not considered in the international phase and are merely placed on the file to await national phase (Chapter I) processing. As set out in Chapter 15, a full response to the WO will be required by the EPO within one month of entry into the European regional phase for at least those applications where the EPO acted as ISA and where the ISR and WO issued after 1 April 2010. In view of this short one month period for response in the regional phase, it is advisable to suggest that the applicant considers the comments in the WO. It is wise to have a note on the file of any points or positions that could be put to the EPO examiner if the application is pursued at the regional stage to act as a prompt and a starting point for a response. Although some applicants do take the opportunity to respond to the examiner, using the ISA-WO to inform a decision on whether to request IPE, it is not common practice to respond. The majority of applicants are pursuing a PCT application as a way to delay costs involved in a foreign-filing programme, they do not request IPE and they do not usually wish to respond to the examiner’s report and the written opinion. Speak to your trainer about their experiences and use of ISA-WO opinions and how best to deal with interpreting and explaining the opinion for the applicant. For a discussion on when it might be appropriate to file comments on the WO and the criteria to consider when advising on, or deciding, whether to file a request for IPE (Chapter II), see 16.7.6 and also look at 15.5.6. Certainly the least expensive option is to pretty much ignore the ISA-WO. In cases for which no demand documentation for IPE is filed, the ISA-WO is used by the IB to establish the International Preliminary Report on Patentability (IPRP) on behalf of the ISA. After the international stage, if such a case is proceeding to the national phase (via Chapter I – without IPE – see 16.9.3) then the IPRP is forwarded (along with the applicant’s informal comments, if any) to the designated national patent offices and made publicly available, after 30 months from the priority date.
16.6 International publication 16.6.1 International publication – responsibilities of IB Art. 21(2)(b), R. 48.4(a)
An international (PCT) application is published at, or very soon after, 18 months from the earliest priority or filing date. Earlier publication of the application is available at the specific request of the applicant and may be subject to a publication fee.
The IB is responsible for the international publication procedure and formalities. This involves the technical preparations for publication of international applications, publication of the PCT Gazette and communicating the publications as appropriate. Art. 90bis 1(a)
278
Technical preparations for publication are usually completed 15 calendar days before the date of publication. The IB will still take into account documentation relating to an application, e.g. amendment of claims, change of inventor name, etc, if it is received before completion of the technical preparations. Similarly, any request for withdrawal of the application must be made before completion of the technical preparations in order to prevent publication.
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16.6.2 International publication – method of publication Since 1 July 2006, publication of the application at the WIPO website – www.wipo.int/patentscope/search/en/ search.jsf or www.wipo.int/pctdb (although the service at www.wipo.int/pctdb is being phased out from October 2010 in favour of patentscope). The website publication has replaced publication by paper copy. The procedure followed by the IB is to issue the applicant(s) with a one-page notice of publication of the application. The notice informs the applicant(s) that the application is available to download from the WIPO website and directs them to the relevant section of the WIPO website from where a copy of the publication can be downloaded. Paper copies of the published application will still be issued to the applicant if the applicant submits a specific request for a paper copy. The notice of publication of the application is also sent to those offices designated in the application, and acts to alert them to access or download the application ahead of possible entry of the application into their national or regional phase. The PCT Gazette ceased to be published weekly from July 2006. Instead information and notices on procedural matters that would have been published in the PCT Gazette are available via the PatentScope Search Service. It is possible to browse by week function and select the ‘Notices’ tab for the appropriate PCT Gazette entry.
16.6.3 International publication – publication document The publication document itself comprises a front page with bibliographic details taken from the details in the request form, and an abstract. The published specification is the full text and drawings as filed by the applicant, along with the applicant’s amended claims, if submitted before the final preparations for publication were completed. The publication also contains the search report, but without the inclusion of the ISA-WO. Declarations and some other details may also form part of the international publication at the request of the applicant. In some states provisional protection for the subject-matter of the claims is available from publication, subject to filing the appropriate translation at the national office. It can be the case that during particularly busy periods for a RO and ISA international applications may publish without search reports. In that case, the entire application is then re-published later, once the search report has been established. Art. 48
The publication of the application may be in any one of the languages of publication (Arabic, Chinese, English, French, German, Japanese, Russian or Spanish, also Korean and Portuguese for applications having an international filing date after 1 January 2009). In addition, the title, abstract and search report are always available in English.
16.7 International examination 16.7.1 International Phase Chapter II – International Preliminary Examination (IPE) – general comments International Examination under Chapter II PCT is carried out by the appropriate International Preliminary Examining Authority (IPEA) for the application. Following the IPEA’s review of the case a report (International Preliminary Report on Patentability (IPRP)) is produced and issued to the applicant. The IPRP (PCT/IPEA/409) is a reasoned statement giving an initial, non-binding opinion as to the novelty, inventive step and industrial applicability of the claimed invention. Despite the relative rarity of applicants requesting International Examination the details of the procedure are provided here for completeness. You are unlikely to find many private clients and individual inventors opting to pay for this additional stage of examination. However, there are certain instances where an individual or private client might consider international examination a worthwhile investment, and a few such scenarios are discussed at the end of this chapter (see 16.7.6). Patents Training Manual: Volume 1
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If an applicant is considering the costs and benefits of examination it is worth mentioning that a report on patentability (IPRP) will issue in the international phase whether the PCT application proceeds via Chapter I or Chapter II. If a demand and the fees for examination are not filed then the IB will issue an IPRP for the ISA, that IPRP having the same content as the ISA written opinion. When you have finished this chapter, ask your trainer to discuss examples of the approach of different types of applicant to IPE, perhaps taken from their own experience.
16.7.2 International Phase Chapter II – timeline for proceeding Art. 39
As mentioned at the very beginning (16.1) of this chapter, for most PCT member states the deadline for entering the national phase (Chapter I) of an international application is 30 months from the priority date (but can be up to 31 or 32 months in some countries). An applicant can keep their options open and defer making decisions concerning where to seek protection until two and half years from the initial priority date.
For a few countries, however, the deadline for entering the national phase (Chapter I) is 20 or 21 months from the priority date. This shortened Chapter I deadline currently applies for Luxembourg, Tanzania and Uganda unless pursued within a regional application (e.g. before EPO, ARIPO). For those countries, entry can be delayed until 30 months from priority only by formally requesting (Chapter II) International Preliminary Examination (IPE) before 19 months from the priority date of the application. The office requirements and formal procedure for IPE under Chapter II (known as filing ‘a demand ‘) are set out below. It is worth noting that the few countries listed above are not popular countries in which to seek patent protection and in any case, protection is usually obtained in those five countries via a regional route (particularly via the EPO). Thus the practice of requesting IPE specifically for proceeding in any of Luxembourg, Tanzania and Uganda is not common.
16.7.3 Filing a request for IPE R. 53, R 90.2 & R. 53.8
The preliminary examination procedure is initiated with a formal request signed by, or on behalf of, the applicant. The request comprises application data entered on a completed Form PCT/IPEA/401; the Demand.
Art. 31(2)(a) R 54.2
In order to submit the demand the application must have been filed at the receiving office of an appropriate PCT state and, as with the initial filing, one of the applicants must satisfy the requirement of residency or nationality of a contracting state bound by Chapter II (all states).
R. 59
The demand should be filed at the appropriate, competent IPEA (International Preliminary Examining Authority). In the case of a PCT application filed with the IPO as receiving office and searched at the EPO, the EPO is the relevant IPEA.
16.7.4
280
IPE – due dates and timings
R. 54 bis 1(a)
A demand must be filed within three months of the date of issue (usually the mailing date) of the ISR or 22 months from the international filing (or priority) date (whichever is later).
Art. 34, R. 53, 57 & 58
IPE is undertaken by the relevant examining authority (IPEA) for the application. International examination begins once the formality requirements have been completed and the examining authority has received the Chapter II demand, along with the examination and processing fees.
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Art. 19, Art. 34(2)(b), R.69.1 R. 53.9
Any Article 19 amendments (claims only) and any subsequent IPE amendments (claims, description, drawings) are submitted with the demand. A statement concerning the amendments and the composition of the application to be examined must be included in the demand, if the amendments are to be considered by the IPEA.
R. 55.2(c)
A translation, if necessary, of the international application into a language of the IPEA must also be provided, when available.
16.7.5 IPE – substantive examination Art. 33(1), R. 64, 65 & 66.1(e)
The IPE assessment of the novelty and inventive step involved in the application and the consideration of the prior art is carried out along similar lines to the search and review by the ISA, as previously mentioned in 16.4.
R. 66.2(a)(vi), R. 68
Examination is directed towards the subject-matter of those claims searched by the ISA. The IPEA can raise lack of unity as an objection to the application and a provision for the payment of extra search fees (as for the ISA) is made. The applicant may specify a claim or group(s) of claims as the main invention for examination.
R. 66.2
In most cases, the written opinion of the ISA is considered to be the written opinion of the IPEA. A distinct IPE written opinion will be issued only in instances where the IPEA does not accept the work of certain national offices or search authorities.
R. 66.3
Applicants have an opportunity to respond to the examiner on points raised in the written opinion. Amendments to the claims, description and drawings may be made in an attempt to secure a favourable opinion from the examiner.
R. 66.4, 66.4bis Communications with the examiner, at this stage, are under tight time constraints, due to the limited time available before the examiner prepares and finalises his report International Preliminary Examination Report (IPRP). R. 69.2
The deadline for completion of the IPRP is 28 months from the priority (or earliest filing) date.
Art. 35(2)&(3) R. 70
The IPRP established by the appropriate IPEA constitutes a report on the patentability of the invention as claimed. Any amendments made by the applicant are set out in Annexes to the IPRP.
R. 71
The IPRP is made publicly available to the IB and the applicant.
Art 36(3)(a), R. 72.1
The IPRP is provided to, and used by, national offices during the national phase of the application, a translation into English may be prepared by the IB at the request of a national office.
16.7.6 International Phase Chapter II – why bother? International examination is used by some applicants as a useful supplementary stage in the PCT process. This is despite the additional fees and formalities involved. The IPE procedure provides an applicant with standardised review and examination of the application by an IPEA before proceedings start nationally. Thus, IPE allows the applicant a forum in which to comment on the ISA-WO, make amendments to the claimed invention and enter into a dialogue with the examiner. Patents Training Manual: Volume 1
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The end result for an applicant can be an indication of the likely outcome of their patent application. Some scenarios where an applicant may consider the IPE route and the various benefits of doing so are discussed in the following paragraphs. Business forecasting and risk management are important for large businesses with global concerns. A large business with sales territories and manufacturing sites around the world will be interested in taking any action, for example, requesting IPE, that may predict future costs and outcomes for the business. Having undergone international examination, a business can take stock, review the examination report (IPRP), consider the scope of protection available for the invention and consider how best to proceed. Decisions can then be taken on the number of countries in which to seek protection and the costs for obtaining and maintaining any granted patents. As the PCT is internationally recognised, great value is placed on the results of the international procedure by some, smaller, national offices. A national office may not always conduct its own substantive examination. For example, in an office with little substantive examination experience, perhaps where speed is of the essence, the office will rely heavily on the examiner‘s comments in the IPRP and other PCT materials such as the written opinion of the ISA. Therefore, a favourable IPRP in the international phase can assist and smooth the application through its prosecution and grant before the national offices. It is obvious that the outcome of substantive examination by a national office acting as IPEA will be particularly persuasive before that same office when the application enters the national or regional phase. For example, a positive IPRP issued by the EPO will be particularly persuasive before an EP regional phase examiner – see Guidelines for Examination of the EPO (Part E, Chapter IX, 6.4.2) stating that a report (IPRP) of the EPO is regarded as an opinion for the purposes of examination. However, it should be mentioned that the views of the IPEA do not carry the same weight and authority before all national offices. Even so, having the application in good order with a positive IPRP before proceeding with the national phase can be advantageous. The applicant can save time and money by avoiding the need to make the same amendments and arguments before multiple national offices. Apart from smoothing the way for the next phase of an application there are other reasons why an applicant (large or small) might choose to undergo preliminary examination in the international phase. For example, it can often be useful to assess the limits of the application and consider the opportunity that may exist for obtaining exclusivity in the field of the invention. This applies just as much for an established business as a small start up company considering investing significant funds in the next stage (national) of their international application. In both cases, the applicant will want some reassurance as to the likely success of the application and any business based on and built on the claimed invention. For an individual applicant or young, small business seeking funding from others, the ISA written opinion and the IPRP can be useful tools to promote the applicant’s case. A positive IPRP may assist the investor in their assessment of the situation and can provide some comfort prior to making an investment. The situation can be contrasted with the scenario where an applicant has not requested IPE. An unfavourable ISA-WO (where no IPRP exists to the contrary) may deter the investor or other potential business partner from embarking on a project which is the subject of the patent application, due to uncertain prospects and negative outlook for the application. If, despite communications to the examiner and perhaps amendments, the examiner issues a negative IPRP, all is not lost. An ex-PCT national phase application can be a fresh chance to present the case in substantive examination before the national offices.
16.7.7 Practical considerations You should always check with your trainer before suggesting IPE. It may be that clients have established procedures for PCT cases although, as mentioned, IPE is not used very often. Filing a request for IPE is rare for private individuals and for most small to medium sized companies, due to the cost involved. IPE is also rare amongst larger businesses, except perhaps those that are looking to forecast or take a longer-term view.
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Factors that will influence you to recommend filing a demand for IPE will depend on the details of the applicant’s, your client’s, specific situation. Your knowledge of the applicant’s business and your relationship with the applicant will guide your recommendations. For example, IPE might be useful for an applicant actively seeking funding or a licensing deal from an investor or business angel (investor demanding zero return). In that situation, the applicant in receipt of an ISA written opinion containing a harsh assessment of the merits of the application, may wish to respond to the examiner to obtain a more positive IPRP. A request for IPE and the pursuit of a positive IPRP could also benefit an applicant seeking swift grant of a European patent to address a potential infringement issue.
16.8 Amendments – What, When and Why? Amendments can be made during the international phase and subsequently, as set out in the time frame in this section. It is worth noting that, like the filing of a demand for IPE, most applicants do not consider that making amendments to their international application is worth the expense and effort. Applicants often prefer to wait before making changes as examination of the application in the national or regional phase will probably raise issues that require amendment. Many applicants decide to deal with amendments just once, at the later, national phase. R. 46.5, R. 66.8, 70.2
Any amendments submitted must be accompanied by a letter setting out the basis for the amendments in the application as originally filed. Without this any IPRP may be established as if the amendments had not been made.
Article 19 amendments
After issuance of the search report. At this stage it is permissible to amend the claims only, submitting an accompanying statement which explains the change. Article 19 amendments give the applicant an opportunity to amend in response to prior art or other matters raised in the search report. Any amendments to the claims will be published along with the International application at the 18 months stage (16.6.1). In some countries, provisional protection is available for an invention from publication of the application, based on a test of whether it would have been reasonable to believe, from the published application, that the act committed would have been an infringement of the eventual patent. The content and teaching of the published document and available public file become important when considering provisional protection. Although Article 19 amendments are not common, if an applicant is aware of a potentially infringing product, useful amendments can be made in order to make full use of any provisional protection available. In a situation where the applicant is worried about infringement, they may chose to alter the claims in view of the product of concern. An Article 19 amendment should also aim to retain a broad scope of protection for the invention and reflect any change in the applicant’s own focus or interest since filing. The amendment must not introduce matter which extends beyond the application as originally filed.
Article 34 amendments
Amendments can be submitted in response to the written opinion and the examination stage. Article 34 amendments are mentioned above (16.7.4) in the procedure prior to preparation of the IPRP.
An advantage of preparing and submitting amendments during the international stage is that it can be cheaper and simpler to have amendments and arguments considered centrally, in one procedure, rather Patents Training Manual: Volume 1
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than dealing with what may be the same issues at the national stage before individual patent offices and when translations may be required. However, amending in the international phase will cost the applicant time and resource that they may prefer not to use during the early stages of the application.
16.9 National phase entry 16.9.1 Article 22 PCT – time limits The time limit for the PCT application to enter into the national phase of the applicant’s country of choice will depend on the individual country laws and requirements. In general, the international phase ends at, the earliest of, 30 months from priority or (earliest) filing date. However, certain countries have extended this to 31 or even 32 months. The previous chapters have dealt with PCT originating UK and European applications and the requirements for national phase entry into those countries. Specifically, the details and timings for entry into the European regional phase are covered in chapter 15 and the procedure for the UK national phase of a PCT application is set out in chapter 14. Note also the relevance of the WO for a European regional phase application for a PCT application having the EPO as ISA, as noted above at 16.5.2. The list below sets out the time limits for a PCT application to enter the national phase in some of the typical countries where an applicant may consider pursuing their international application. • •
30 months – the US, Japan, Malaysia 31 months – Australia, New Zealand, Korea, India, Europe (EPO), Norway, UK
Provisions exist at many national offices for early entry into the national phase without waiting until the 30-month or 31-month deadline. Early entry can be requested should the applicant wish to accelerate the prosecution of an application in a particular country or region. For example, an applicant may wish to start country proceedings if they were beginning to sell or manufacture a product covered by the application or if there was the possibility of an infringement in a particular country.
16.9.2 Article 22 PCT – application procedure Entry into the national or regional phase marks the end of the PCT process and the international application is converted into a number of national applications in the countries of the applicant’s choosing. The procedures and formalities for an ex-PCT national (or regional) application are governed by the national laws of each particular country. Therefore, at this stage each national (or regional) application should be handled directly by a patent attorney qualified in that country. The local attorney should be able to advise on any formal requirements necessary for the application to proceed in their country, as well as handling the ongoing prosecution of the case in the national phase. At the point of entry into the national phase the formal parts of the application and the procedures followed are, broadly speaking, the same or similar for a large number of countries.
16.9.3 Article 22 PCT – documents supporting the application Some examples of the common elements required for a national (ex-PCT) application are set out below; • • • • •
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You may find that your office prepares the above list of information as a standard set of instructions ready to be sent out to the applicant’s representatives (foreign patent attorneys) in the various countries of choice. Talk to your trainer or administrative support to find out how this is handled. The foreign representatives act for, and on behalf of, the applicant before the national patent offices. A power of attorney authorising the representative to act for the applicant is, therefore, an important part of the application documentation. Some attorneys may have provided your office with copies of their standard power documents, which can be sent to an applicant straightaway. Alternatively, the foreign attorney will provide their forms after receiving instructions in the case and the supporting documentation is submitted after filing. For the US and Canada, where the applicant is the inventor, additional declaration and assignment forms must be prepared. Other details of the case and its history, such as search reports and prosecution of the priority application, may be provided at the request of the local attorneys. Those details, along with an electronic copy of the specification, can be useful for the representative creating a file and record for the case. The file history details are also useful as the application proceeds to substantive examination in the national phase. It is not usually necessary to provide a copy of the published PCT application (or the ISR). The ISR routinely forms part of the international publication which should be available for the local attorneys to download from the PCT website, although some attorneys will request that a hard copy be sent with the national phase instructions anyway. In addition the IPRP (based on the ISA-WO) and any informal comments from the applicant are available from the PCT website as part of the online file. The online file is publicly available at 30 months from the priority (filing) date, and very likely to be available at the time the applicant is entering the national phase.
16.9.4 Article 39 PCT – application procedure Proceeding into the national phase after filing a demand (Art 39 PCT) is a less common route to take. As outlined above (16.7.1 and 16.7.6) most applicants take no active involvement during the international stage of the PCT application and do not take part in international examination. This is particularly so now there are relatively few countries that continue to notify the IB of the non-applicability of the new 30-month time limit for entering into the national phase (see list in 16.7.2).
16.9.5 Article 39 PCT – use and benefit Earlier sections in this chapter have highlighted scenarios where applicants may still find requesting International Preliminary Examination (IPE) useful. The nature of the IPE procedure is such that dialogue with the examiner is possible. As mentioned in previous sections, an applicant concerned about a negative written opinion can address the examiner and hope to influence the IPRP and examination outcome and a positive IPRP can be persuasive before some smaller, national patent offices in countries such as Malaysia, New Zealand, and Thailand.
16.9.6 Article 39 PCT – documents supporting the application Entry into the national or regional phase after IPE will require the documentation listed above for entry under Art 22 PCT. The case file provided to the foreign attorney representative will, of course, reflect the IPE and the full IPRP generated by the examiner. Therefore, in addition to the items in the above list, the IPRP (with any amended pages annexed to the report) can be made available.
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16.10 Corrections R. 92bis
It is possible to make changes to details relating to the applicant such as recording a transfer of rights in the invention or to change inventor details, such as their names, addresses, the number of inventors, etc during the international phase of the application.
R. 26bis
It is also possible to make corrections such as reinstating or withdrawing a claim to priority in a PCT application. Obviously, the most desirable situation is one where the application and applicant details are correct on filing, making any changes later will incur significant, unforeseen costs for the applicant (your client) and potentially your firm. The PCT system does, however, allow for cases where mistakes have been made or circumstances have changed.
R. 91
The PCT provisions for completing any correction and review during the international phase are useful as the changes are considered centrally by the IB or appropriate examining authority. This is cheaper and simpler than trying to make the correction at each national office once the application has entered the national phase. There is no PCT remedy for errors in paying fees once an application is considered to be withdrawn, or for other mistakes resulting in missing a PCT deadline and the failure of the application. Although note Rule 26bis.3
In such a situation Article 24 provides a review and excuse procedure, at a national level, R. 26bis 3 Art. 24(2), 25, allowing an application to proceed nationally, if the relevant national office is happy with the results of its review of the applicant’s case and circumstances. 26 & 48, R. 82bis & 82ter It is reiterated that your goal and aim should always be ‘right first time ‘. However, if you believe any errors or mistakes have been made in an application process these should be discussed immediately with your trainer. You will find that the proverb ‘A stitch in time saves nine‘ is very true.
16.11 Common filing strategies We expand here on the comments in chapter 13. As you become familiar with the PCT system and with filing PCT applications, you will see that there are some common filing techniques and strategies used by many of the applicants. A few, well-used, application routes are mentioned below.
16.11.1 A UK applicant with significant interest in the UK (probably with UK based legal and IP advisors) is likely to file an initial UK application (GB01) and later a PCT application claiming priority from the initial UK case. The applicant may continue with the UK application (GB01) in parallel with their PCT application to obtain a granted patent (from GB01) first in the UK. Later, a UK national application (GB02) may arise from the PCT application or from the European regional phase of the PCT application. Assuming that GB01 and GB02 relate to the same invention, the applicant would usually abandon the original GB01 in favour of the later GB02. By abandoning GB01 and retaining GB02 the applicant gains an additional year of patent protection (assuming the PCT application was filed at 12 months from the priority date). The term of protection for a granted patent GB02 runs for 20 years from the PCT filing date, whereas the patent term for any patent granted from the priority application (GB01) will be 20 years from the priority filing date.
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Of course, there may be compelling reasons why the applicant would wish to keep GB01 instead of GB02, if the patent granted from GB01 was being used to pursue an alleged infringement, for example.
16.11.2 If an applicant has a particular interest in for example Japan, China or Taiwan where examination and grant traditionally take many, many years, then the applicant may file a PCT application in parallel with national applications in those countries of interest. If European patent protection is required, the swiftest route is to file a PCT application and pursue the European application after the international stage, preferably requesting IPE before the EPO as IPEA.
16.11.3 A large US corporation, with primary interest in the US market, may file a US application (USA01) as well as a PCT application (PCT01). The parallel applications leave options open for international protection but allow the applicant to prosecute the US case separately. In some cases, the applicant may exclude the US from the PCT01 (specifically withdrawing the US from the ‘all states‘ designation of states on filing). This means that the history and file wrapper (prosecution history) of USA01 are not connected to the PCT application. The two cases remain separate and a US court cannot rely on any matter raised during the prosecution of the PCT01 (or national phase applications from PCT01) in a litigation action on the US case (USA01). The above strategies involving the filing of parallel national and PCT applications will all involve additional costs for the applicant. The expense may be considered worthwhile for the benefits of added security or speed of prosecution.
Work-based examples Scenario 1: An applicant has filed an initial GB application with no priority claim. Now, nine months later the applicant sees the potential worldwide market for their invention and comes to you for advice. The applicant has been approached by a large company offering a potential licensing deal in the US and Spain. These are some possible recommendations: It seems that the applicant needs worldwide patent protection, therefore, you could recommend that he file a PCT application at the end of the 12-month priority period. The international application will include protection in the US and Spain where there may be licensing opportunities. First, suggest that the applicant obtains a UK search report by filing a Form 9A requesting a search and paying the necessary fees (for UK filing, see chapter 14). The search report should be available within three months and will give the applicant an idea of the relevant prior art and the strength of the application prior to commencing a foreign filing programme. A licensee is likely to be just as interested in a deal offering exclusivity and access to the licensor’s product or technology in their particular territory based on an international application as they are in a national right. The company may want to see an indication of the likely success, or otherwise, of the patent application. Search reports and ISA written opinions will be useful for this – suggest that the applicant takes an active role in the PCT process, when the time comes, in order to work towards a positive IPRP. Additionally, if early grant is important for the deal – consider separate national US and Spanish applications as well as a PCT application. The additional applications will start the national procedure ahead of the equivalent national application pursued via the PCT route, they may raise additional interest in the applicant’s invention from potential licensors. Urge the applicant to seek full legal advice prior to signing a licensing deal.
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Scenario 2: Another applicant has a GB application, filed on the same day as the above and also without a claim to priority. The applicant states that the market for the product protected by the application is UK only. The applicant is considering manufacturing the product in China and Brazil. As above, filing a PCT application at the end of the 12-month priority period would be the best approach if the applicant can afford to do so. The applicant considers the market to be ‘UK only ‘ but the option for protection abroad can be left open at this stage in a PCT application, in case the position and/or market conditions change. Highlight that protection in China and Brazil with national filings at the 30-month stage will be expensive, as translations will be required. Consider an EP application if other European countries become important. Suggest the applicant also considers protection in neighbouring or closely related markets – e.g. South American states such as Mexico, Chile and new markets in China, Taiwan and Vietnam. Advise the applicant on the timescales involved and the likely lengthy European procedure to grant. Some advice on the difficulties of enforcing patents in foreign countries such as China, Brazil, etc may be of use to the applicant. Ask your trainer for their views and experiences. Scenario 3: An applicant with an International application becomes aware of a competitor product on the market in the UK. The competitor product includes the same advantageous, compact packaging feature forming the subject of the international application and which the applicant believes to have been originally invented at their offices. In this scenario, where the applicant is aware of a potential infringement matter in the UK, it is important to obtain a granted patent with which to pursue the alleged infringer. Early entry into the UK national phase should be recommended. Usually the national phase in the UK starts at 31 months from the earliest filing, or priority, date, subject to the payment of certain national fees and formalities. However, the applicant may request that the UK phase starts early by filing a copy of the international application, submitting an express request for commencement of the national stage and paying the filing fees. The applicant should also request accelerated examination of the application and, if the application is as yet unpublished, early publication as well. The statement supporting the request for accelerated processing should cite the potential infringement. Scenario 4: Your client, a small start-up company, with just a few GB applications and a single PCT application, phones you in a panic as they have received an ISR on their PCT application. The ISR examiner has found some citations in category X, and issued a negative WO. The applicant is about to commence a round of venture capital funding and is concerned about the impact of the examiner’s views. You might suggest analysing the citations, considering their relevance and if necessary submitting comments to the examiner and claim amendments in an attempt to obtain a positive IPRP. If the EPO was the ISA and a European regional phase application is contemplated a response to the negative WO will need to be prepared and submitted shortly after entering the European regional phase (see chapter 15 – R. 161/R. 162 EPC) so the client will need to address the WO opinion then as well. At least prepare a ‘to whom it may concern‘ letter explaining the distinction(s) between the client’s invention and the prior art to be presented to the potential investors along with the PCT history. Scenario 5: Set out the pros and cons of filing a demand to your large multinational client. Some pros: Early indication of likely scope of protection; possible to have dialogue with international examiner; standardised procedure; defers costs for almost two and a half years before national fees must be paid. Some cons: Delay before national proceedings are commenced, not all national offices take heed of the views of the international search examiners and the conclusions in the IPRP – a potential waste of time (and money) to engage with the examiners in the international stage only to have to repeat those arguments before the various national offices.
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Test your knowledge 1. List the minimum requirements that must be present in an application to obtain an international filing date. 2. When are the filing and search fees due for an international application? Where must the fees be paid? What is the consequence of not paying the fees? 3. Explain what happens if the search examiner considers an application lacks unity. What steps can be taken if you (and the applicant) disagree with the examiner‘s view? 4. An international application is filed on 30 July 2006 with no claim to priority. When will the application publish? What steps must be taken, and by when, in order to prevent publication? 5. Same question as in 4 above but now for an international application filed 30 May 2007 with a claim to priority of 30 May 2006. 6. List two countries for which the deadline to enter the regional/national phase (Chapter I) is 20 months from the filing or priority date (whichever is the earliest). List three countries where that deadline is 30 months.
Suggested chapter answers and comments 1. The minimum requirements to secure an international filing date are; an applicant entitled (by residence or nationality) to file an international application, application papers including a description, a claim and the identity of the applicant in a language accepted by the receiving office. The application must also include an indication that it is intended to seek an international application, including the designation of all possible states. See Article 11 PCT. The formalities of submitting the necessary information are dealt with by completing the international application form (Request PCT/RO/101). 2. Filing and search fees are due one month from the filing date. Fees are payable at the receiving office. If the due date is missed, or if insufficient fees have been paid by the due date then the RO will issue the applicant with an invitation to pay. The invitation will detail the fees to be paid and the date by which they must be paid (usually two months from the date of the invitation). A late payment charge of 50% of the missing or unpaid fees is levied and must be paid along with the outstanding fees. The consequence of a failure to pay the fees by the invitation due date results in the application being considered as withdrawn due to non-payment of fees. 3. The search examiner will raise a lack of unity objection considering that the application relates to more than one invention. The examiner will, most likely, search the claims of the first invention (as claimed) and invite the applicant to pay further search fees if a search of the other one or more inventions claimed is required. A protest can be lodged if the applicant disagrees with the examiner’s finding of non-unity. A protest fee must be paid to the RO. The protest is submitted along with a reasoned statement countering the examiner’s view and setting out the unity of the claimed subject-matter. The ISA will conduct the additional search requested and review the lack of unity objection. If the objection is considered to have been unjustified the fee for the additional search(es) is refunded to the applicant. 16.4.2 gives further information concerning the role of the ISA. 4. The international application will publish promptly after 18 months from priority or earliest filing date – i.e. on or just after 30 January 2008. Patents Training Manual: Volume 1
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The technical preparations for publication are completed 15 calendar days before the publication due date. In order to prevent publication, the application must be positively withdrawn before the application is prepared for publication. In order to effect withdrawal the IB must be notified of the withdrawal in writing, the withdrawal must be signed by the applicant or his representative and must reach the IB before the technical preparations for publication are complete (i.e. by 15 January 2008). If a request for withdrawal is filed close to the deadline, it is a good idea to mark the correspondence ‘REQUEST FOR WITHDRAWAL – PUBLICATION IMMINENT‘ in order to highlight the urgency of the request. The PCT Applicant’s guide (paragraphs 304-317) gives further details of the publication schedule. 5. As above, publication due 30 November 2007, therefore a request for withdrawal of the application must reach the IB by 15 November 2007. In certain circumstances an applicant may consider postponing publication by withdrawing the priority claim (thus re-computing any dates, such as publication, calculated from the priority date). In this example, withdrawing the priority claim would prevent publication on 30 November 2007. Publication would instead be due 18 months from the filing date i.e. 30 November 2008. Procedurally, the withdrawal of a priority claim is very similar to the process outlined above for question 4 and withdrawal of the application. The withdrawal of the priority claim must be in writing, be signed by or on behalf of the applicant and reach the IB by the same deadline of 15 days prior to the completion of the technical preparations for publication (i.e. by 15 November 2007). A decision to abandon a priority claim should not be taken lightly. The applicant will have to consider the affect on disclosure dates, possible self disclosure if a priority application has already published and any intervening prior art. 6. 20 months for Luxembourg, Uganda; 30 months for China, Japan, Israel (for example)
Chapter review In summary, the PCT provides a cost effective method of pursuing patent protection. While an international application is pending, decisions about where to go ahead and seek patent protection can be taken. In most cases where protection in multiple jurisdictions is required a PCT application is the cheapest option for the applicants. The cost benefits of a PCT application apply even if the intention is to pursue foreign protection in perhaps just two or three territories (e.g. China and Europe, or the US, Japan and the UK). You should now know and understand enough about the PCT to advise an applicant how to use the PCT system to best protect their inventions.
Further study •
• •
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WIPO website, PCT part of the site and PCT resources section accessible at www.wipo.int/pct/en/index.html. In particular, sections; About the PCT, Legal documents, PCT offices and PCT-SAFE, procedures for electronic filing of applications. PCT Gazette Special Issue (published twice a year by the WIPO). Detailed information, in a concise format, relating to the receiving offices, ISAs, IPEAs and designated offices. Specific study of IPE (detailed provisions covering IPE procedures). Art. 31 to 42, R. 53 to 78 PCT and Part 6 – Administrative Instructions under PCT, PCT International Search and Preliminary Examination Guidelines.
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Prosecution through to grant
Outline Once the patent application has been filed, in most jurisdictions it is necessary to persuade the patent office that it meets criteria including patentability such that a patent can be granted. Elsewhere in the training manual the legal and procedural requirements are looked at in detail. In this chapter, we review these requirements broadly and place them in the context of the purely practical task of dealing with and overcoming objections from the patent office. This is one of the key areas where advocacy skills – both written and oral – are required.
Learning plan Prerequisites: The main requirement here is to build up as much experience as possible of the day-today practice of dealing with examination reports. Legal documents: It is worth reviewing some IPO hearing decisions and EPO Technical Board of Appeal decisions to see how cases are argued and decided by the patent offices. Trainer’s input: At the outset it may be worth sitting down with your trainer and talking through how they like to structure their responses to examination reports, dealing with both UK and European instances. Syllabus link:
UK Exams: P4 EQEs: Paper B
Time allocated: One to two days.
Learning outcomes By the end of this chapter you should understand how to analyse an examination report, how to report it/discuss it with your client and how to formulate a persuasive response. Substantively, you will see how to deal with IPO and EPO examination reports and we touch on how to handle examination reports from other offices.
17.1 Legal background The legal requirements that the patent application must meet are discussed in detail in chapters 4, 6, 7 and 8, and, in particular, the issues of patentability, including novelty and inventive step and other requirements such as sufficiency, support, conciseness, clarity and unity are dealt with. However, it is useful to recap these and further discuss them, specifically, in the context of the form of objections that the patent attorney is likely to meet and have to overcome in the patent examination procedure.
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17.1.1 Patentable inventions As discussed in chapters 6 and 7, the question of whether claimed subject-matter relates to a patentable invention can be subdivided into two areas, whether it is patentable, that is, meets the requirements for novelty, inventive step and industrial applicability and whether it is an invention, that is ensuring that it does not relate solely to excluded matter such as business methods, software and so forth. At the general level of this chapter, the main issues to consider are those of novelty and inventive step and these are reviewed below.
17.1.2 Novelty In order to meet the novelty requirement, the claimed invention must have a distinguishing feature over the prior art; that is, over all public domain information available before the earliest date (filing/priority) of the subject-matter. Every claim must meet this requirement but as the dependent claims by definition include all the features of the independent claims, in practice, this means that it is usually only necessary to show patentability of the independent claims. The prior art or state of the art includes all information placed into the public domain whether in writing, orally or by virtue of a sale or demonstration of the product and so forth. Typically in prosecution of a patent application the majority of the prior art encountered is in the form of published patent applications. This is because the patent offices have very good resources in this respect and because patent applications are very easily searchable by virtue of the international classification system. As a result, there can be a tendency to start treating patents as a special form of prior art but, with one exception, they are not. A patent application is a published written document just like any other and should have no more or less weight attached to it. It is slightly more confusing than other documents in that it includes a specific description (which is usually clearly written and comprehensible) and claims (which may not be to the layman). It is important to remember when assessing the extent of the teaching of the prior art this is done from the point of view of the skilled person – i.e. a scientist, not a patent attorney. As a result the claims often add very little to the specific disclosure of the document as a whole because we are looking at the information content of the document, not the scope of the claims. Although the claims should be looked at, therefore, this should be from the perspective of a skilled person who will see them as rather vague and unhelpful statements with little specific information in them. The one place where patents do differ from other prior art is in the case of patent applications which were filed before but published after the priority date of the application in suit. Unlike any other type of publication these can be relevant for patentability – but novelty only – and only in common jurisdictions with the patent in suit. It is also worth noting that the extent to which these constitute prior art differs outside Europe. In assessing the prior art, the first point to check is whether the cited documents were in fact published before the priority date. It is always worth bearing in mind that the priority date of the claimed subjectmatter may not be the earliest priority date of the patent application in suit as the subject-matter may have been added later. It is unusual in prosecution to have to consider whether the publication date of the prior art needs to be substantiated (normally it is a clear cut publication, rather than say, an allegation of a oral disclosure, as these are difficult to search and prove by the patent offices). It is also unusual to have to assess any enablement issues, that is, whether the prior art disclosure actually had detail in it enabling the skilled person to work out its content rather than being, for example, a black box, because, again, these do not tend to turn up in patent searches. As a result, the question of when the information was put into the public domain as against the priority date of the application in suit tends to be fairly clear cut. Once the relevant documents have been identified, then the novelty test is extremely methodical and extremely simple. Novelty is assessed on a document by document (or more broadly prior art instance by prior art instance) basis and it is enough to show that the claimed subject-matter is novel over each individual document. If some of those documents could be combined to give all of the features of the claimed subject-matter, then the claim is still novel but the issue of inventive step may need to be addressed. As a result novelty objections can be addressed and overcome in the following repeatable manner:
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1. Take the first prior art document relied on by the Patent Office. 2. Take the first independent claim of the patent application. 3. Go through every feature of the claim (including the introductory clause). Is there a feature in the prior art document which the claimed feature reads on to? 4. If this is the case for every feature in the claim then the claim is not novel over that prior art document. If the claim has any features which are not found in that prior art document then the claim is novel. 5. Repeat for each independent claim. 6. Repeat for each prior art instance. Where there are many prior art documents, then it may be worth preparing a table correlating the claimed features to where they can be found in the prior art. This can be augmented by indicating where the feature is found in the prior art document by page and line number and, if the feature is not found in the prior art document what it has instead. It may also be worthwhile doing this for dependent claims for the purpose of finding where possible amendments may lie. A very simple example table for a case with independent claim 1, dependent claims 2 to 4 and prior art instances D1 to D5 is as follows: Claim Feature
D1
D2
Independent claim 1 feature A
Yes page X line Y
Yes page X line Y
Independent Claim 1 feature B
No, instead D1 has...
D3
D4
D5
Independent Claim 1 feature C Dependent claim 2 feature D Dependent claim 3 feature E Dependent Claim 4 feature F It will be seen that, in addition to helping manage the information, this means that a quick reference is available for any further argument. It will also be noted that this does not leave much room for construing the various terms of the claim – in fact, in practice, this seems to happen very seldom. One of the reasons for this is that arguments with the patent office over the explicit meaning of a claim term seldom seem to win a case, especially for novelty – the feature is either there or it is not there. Indeed, submitting detailed semantic arguments about the meaning of a term can come back and haunt you in countries such as the United States where they will look to the file history of the case overseas to see what admissions you have made. Patents Training Manual: Volume 1
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17.1.3 Inventive step The case law before the English courts in relation to inventive step is frankly of little benefit in guiding the practitioner as to how to deal with inventive step objections before the UK Intellectual Property Office (IPO). The case law of the Technical Boards of Appeal and Enlarged board of the European Patent Office is slightly more helpful but, in both cases, a review of the IPO’s Manual of Patent Practice and the EPO’s Guidelines for Examination are probably the best resource. The basic approach, when considering inventiveness required for either patent office whether looking at a single or combined documents, is simple. Once you have shown novelty, you need to demonstrate why the novel feature(s) would not have been obvious over the prior art at the priority date. The way in which you do this can vary between the offices but usually comes down to the same thing – what advance or improvement does the additional feature give? If it is trivial, it is probably not inventive but if, (taking the EPO lexicon), it solves a problem, then it may well be inventive. The patent offices expect the practitioner to present their inventiveness arguments systematically and probably have a pretty good idea of what the practitioner is going to say most of the time. Half of the problems arise when, for example, the argument presented by the patent attorney relates to features not found in the claim, or inventive step arguments are presented in favour of features which have not been demonstrated as being novel. Although the requirements for inventive step are meant to be harmonised, there are, however, differences between the approaches before the IPO and the EPO, at least in terms of presentation of the argument, and it may be interesting to talk to your trainer about whether the inventive step levels required for grant differs between the offices in his or her experience. We look at the requirements before the respective offices separately below and at a very practical level. Starting with the IPO, from a review of the case law, it will be seen that the courts have often been swayed on inventiveness by evidential issues such as commercial success/long felt need, and expert opinions (this of course can go both ways). Little of this is relevant pre-grant. Evidence of commercial success is seldom used nor persuasive (and indeed is often unavailable because the product tends to be quite young). Expert reports and oral testimony are seldom used partly because of cost and partly because the evidential requirements differ such that statements on technical issues by the patent attorney, even though, strictly, hearsay are taken at face value. Typically, an obviousness attack by the IPO is either based on the invention being an obvious development of a single document or an obvious combination of two prior art documents. In the former case, as explored in more detail below, one way to overcome the objection based on a single document is to point to technical incompatibilities or inconsistencies or teachings that would make the novel feature non-obvious. In the case of two documents, in a similar manner, one looks for reasons why the two documents would not be combined. It is useful to note here that this is another point of distinction with the courts. Typically, the courts would not consider a combination of documents to be obvious simply because it would have been difficult for the skilled man to find both of them without being inventive straight away. The courts tend, instead, to treat obviousness as a combination of a single document with ‘common general knowledge’. One of the reasons this is less favoured or relied on before the IPO is because it difficult to establish what the common general knowledge was without detailed expert input. Before the UK office, then, quite often the argument can be approached in two ways – why it would not have been obvious to arrive at the invention (for example a prior art document teaches against it or its two prior art documents are incompatible and, hence, uncombinable) and why, in any event, the invention is better than what went before, that is, why it is inventive. In the specific case of the EPO, the well-known ‘problem-solution’ approach is adopted. In practical terms, the steps are fairly straightforward: •
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Identify the novel features over the closest prior art. Explain why those novel features solve a problem with the prior art. Explain why it would not have been obvious to import those features from other prior art documents.
A detailed discussion of how use problem-solution approach is presented later in this chapter. It is worth noting here, however, the importance of the concept of ‘closest prior art’. Whereas, in the UK, this concept is not rigidly defined, such that an inventive step argument may be approached from numerous starting points, in most cases the EPO will start from a single document and construct arguments based on that document such that the practitioner, unless they disagree with the assessment of the closest prior art, needs to replicate that approach and work from a single document rather than dealing with multiple starting points. The key to understanding inventive step, however, is that you need to explain why the novel features are not obvious from, and provide an advantage over the prior art – this level of simplicity is vital to ensure that you structure your response to an examination report simply, comprehensively and, most importantly, in the way that the patent office examiner expects.
17.1.4 Other requirements The main other issues typically addressed by the examiner in the examination report to ensure that the application meets the requirements for patentability are matter, sufficiency, support, clarity, conciseness, unity and formal requirements. These are all discussed at length in other chapters and so just a few practical comments are made here.
17.1.5 Added matter Once a patent application has been filed, the basic rule is that you cannot add information to it (ignoring the priority year for now). This provides security for third parties who can be confident that a published patent application will not extend beyond the published content (even though this can still, before grant, provide plenty of leeway). Added matter, at least in Europe, can take more subtle forms. For example if various features are disclosed in a patent application’s separate parts, then it may not be permissible to prepare a claim to the combination of those features, unless it can be shown that not only was that particular combination contemplated, it was contemplated in isolation of any of the surrounding information presented in the context of each of the combined features. In an even subtler form, removal of features from a claim can constitute added matter. At first sight, this seems counter-intuitive as this is clearly reducing the amount of information. However, the effect of removing a feature from a claim is to broaden its scope (as it now covers things whether or not they have the removed feature) and this may, therefore, be adding matter if that broader scope was not contemplated in the application as filed. There is no prohibition on claim broadening before grant and so a feature can be removed as long it doesn’t add matter up until grant of the patent, but it can be seen that care is required. The added matter provisions are treated extremely strictly in Europe and the UK, much more so than, say, the US, and it is always important to ensure that overseas practitioners understand just how strict the test is. For example, the EPO requires that any amendments be ‘clearly and unambiguously derivable’ from the application as filed. It is also important to bear in mind that, after grant, added matter is a ground of opposition or revocation of a patent, such that an ill-judged amendment can open a patent to attack even when no patentability attack is available, and again the patent applicant needs to understand this. A particular squeeze favoured by the EPO is where a feature to a claim during prosecution is then found during opposition proceedings to be added matter. This ‘inescapable trap’ can be an irremediable situation – the feature is not permissible but removal of it comprises an Patents Training Manual: Volume 1
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impermissible claim broadening and the patent can be irrevocably invalid in those circumstances. We discuss sufficiency and support below and, sometimes, there is some confusion between these and added matter. Added matter only relates to information added to a patent application after it is filed. To show that an amendment to a patent application is permissible, one has to show that there is ‘basis’ for it in the application as filed. One of the sources of confusion is that people sometimes talk about an amendment having ‘support’ in the application as filed. Support means something different and the sloppy use of terminology can cause significant confusion. We will discuss sufficiency and support in the next subsections but briefly sufficiency is a question directed at the description – does it have enough information to allow the invention to be performed? Support is a question directed at the relationship between the claims and the description – are the claims supported by the description? That is, does the description provide information about the invention across the scope of the claims? Added matter or basis simply asks ‘was that information there in the first place?’
17.1.6 Sufficiency Sometimes termed enablement (which can also mean many things), sufficiency relates to the requirement that the description of the patent application describes the invention in sufficient detail that the skilled person can put it into effect. At least in the mechanical and IT technical areas, it is very rare to see such an objection simply because, in reality, very little information would typically be needed for the skilled person to put the invention into effect, taking into account the usual level of background knowledge. In any event, even if such an objection is raised, it is very difficult to handle to the extent that amendment of the description is required as is almost inevitably adds matter. However, there may be cases where the invention is framed so broadly in the claims that some aspects of it can not be performed. There is a crossover here with the ‘support’ requirement discussed below, but amendment of the claims to reduce their scope may be available in these circumstances.
17.1.7 Support This is the requirement that the claims be supported by the description across their breadth. Once again, it does not arise frequently in patent prosecution pre-grant, at least in the mechanical and IT areas. Where it does arise, it may be dealt with by reduction of the claim scope, as otherwise added matter issues may arise.
17.1.8 Clarity The clarity objection can take various forms. At its most extreme, the claim simply doesn’t make sense and needs rewriting – this can occur because of translation issues and can be overcome, as long as there is not added matter problems in any such clarification. Two other main sources of clarity objection are that the claim simply recites a result to be achieved or that third parties could not work out, from the claim, whether or not they infringed. In terms of the result to be achieved, although in some circumstances it is permissible to frame claims in this way, this is only when there is no other way of doing it. Usually it is necessary to look for the technical features (which have basis in the application as filed) which give rise to the result and incorporate these into the claim. Where, from a reading of the claim, third parties cannot work out what the claim covers, the clarity objection can take various forms. In one form the claim can include limitations which are essentially subjective for example words like ‘vertical’ or ‘wide’. This can be overcome by providing dimensions, say, or seeing whether the width or orientation of the features can be expressed relative to another feature in the claim. In another aspect the problems can arise when an understanding of a claim is dependent on features are not themselves in the claim. For example, if a claim relates to a light bulb having various features including, say, a new kind of screw cap to match a new socket, the screw cap needs to be defined without reference to the socket into which it goes, assuming that the socket is not intended to be part of the claim.
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A further aspect is where, say, an apparatus claim having features which perform some kind of operation is defined in terms of those features while they are performing that operation. For example, this might be an engine having crankshaft defined in terms of an engine having a crank shaft rotating at X to Y RPM. It is not possible for a third party to assess a non-operating product to see whether it infringes or not. There, the amendment can be fairly cosmetic – instead the claim has to recite a crankshaft being ‘operable to rotate at’ the RPM or similar.
17.1.9 Unity and Conciseness The unity requirement is examined in other chapters but, in summary, whilst it is possible to have both independent method and apparatus claims these must relate to the same invention which, in practice, normally means a common point of novelty. Where independent claims relate to different inventions, then one or other needs to be rendered dependent (if not incompatible), deleted or placed in a divisional application. A separate objection is conciseness. This is where multiple independent claims in the same category relate to the same invention – so there is no unity objection – but define it in slightly different ways so that third parties can’t work out what is going on. In these circumstances, it is necessary to select one and delete the others formulating dependent claims, if necessary, for any leftover features.
17.1.10 Formal requirements Depending on the patent office you are dealing with, you may well be asked to carry out formal requirements including acknowledging trade marks, formatting of the application and so forth. Usually it is self explanatory but we will look, below, at a couple of European specific issues, namely introducing reference numerals into the claims and formulating the forms in two part form.
17.2 Procedural issues Once again, the basic life cycle of a patent application is dealt with elsewhere in this manual and so, here, we simply provide a brief recap on the main points of the process. Typically the substantive review of patentability goes through two phases, a search phase and an examination phase. In the search phase, the patent office provide prior art they think will be relevant categorising it into categories X (very relevant) category Y (relevant in combination with another document) and category A (background information) as well as a few other categories for specialist topics. A search report additionally carries information about which parts of the cited documents are considered relevant and which claims they are cited against. The EPO is now issuing written opinions with many of its search reports to give Extended European Search Reports (EESR). These written opinions carry comments on patentability and to a large extent mirror the likely eventual examination reports although EESRs do not cover all formal details. There is no obligation to reply to the search report or EESR but there can be procedural advantages in dealing with any problems early in the life of the patent application, as discussed in more detail below. The second stage is the Substantive Examination Report or Official Letter, or Office Action or some variant on this nomenclature, depending on where you work. This will be based on the prior art found in the search reports together with any other objections the examiner feels are relevant as outlined in the preceding subsections. This letter sets a deadline for response which, typically, is extendable, but failure to respond can lead to abandonment of the case and, even if you do respond, but not fully, this can also give rise to problems. The majority of the second part of this chapter deals with how to respond to the substantive objections raised either in a search report, written opinion or examination report. In the UK, the examination report typically sets a four month period for response with a two month extension available although this will always need to be checked on a case-by-case basis. The IPO is Patents Training Manual: Volume 1
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amenable to multiple iterations, that is an examination report, response, further examination report, further response and so forth, although, eventually the time periods will shorten, in view of the restricted period within which the patent must be granted. Exceptionally, a hearing may be appointed at the patent office in cases where agreement cannot be reached on a patentable form. At the EPO, once again, the examining division may issue further examination reports, if they are not satisfied by the response to the first one. However, they are at liberty to terminate the proceedings and move to oral proceedings (assuming that they were requested), if they feel that no further purpose is served by continuing the proceedings in writing. At the time of writing, the number of examination reports issued before oral proceedings are called is tending to reduce and, accordingly, the number of oral proceedings is increasing. It is worth talking to your trainer about whether this is something that suits your clients or inventors. In many cases, although a good way of finding a form of patent that can be granted, oral proceedings do take up a lot of time and resources and a thorough and convincing response to the first examination report is a more attractive way to close matters very quickly. At oral proceedings, if the patent application is refused, then an appeal is available, which will culminate in a further hearing, typically several years down the line, before a different group of people, in the form of a Board of Appeal. One other aspect of EPO practice can be implemented to improve the prospects of succeeding either in the written proceedings or in oral proceedings as appropriate and this is the use of ‘auxiliary requests’. According to this practice instead of relying on a single set of claims for argument, multiple fallback claims with different amendments can be submitted. In that case, each set of claims is considered in turn until one, if any, is found acceptable, at which point the patent can be granted on the basis of that set. This has the advantage of allowing discussion of multiple different options for patentability which, of course, can accelerate matters and multiple auxiliary requests are almost invariably a good idea before oral proceedings, given that the decision is given at the end of the proceedings and there is no opportunity for further debate, thereafter, except at appeal. British practitioners are often concerned that the upshot of this practice is that the Examining Division will simply go to the claim with the most limitations (and, hence, the commercially least worthwhile) as it is the most likely to be valid. In practice, this appears to be a very British concern – the continental practitioners appear to have no such worries and it is important to understand that the EPO is bound to consider each auxiliary request in the order in which they are presented and provide a fully reasoned decision for rejection of each, such that no short cut is available.
17.3 The role and duties of the patent attorney in prosecution matters The patent attorney’s duty is essentially to his/her client or industrial employer to act in their best interests subject to the basic ethical considerations we have to observe, as discussed in other chapters. This includes both short term and long term interests – there is seldom much point in grabbing a patent that you know to be weak if prior art is available and could be used post grant against you, especially as in those circumstances there is a risk that, at least in the English courts, discretion may be exercised adversely such that you are not allowed to amend over prior art of which you already had knowledge. Just as it is the job of the patent office to raise any objections in relation to grant of a patent, it is the job of the patent attorney to overcome those using advocacy skills. Indeed, the role of the patent attorney as advocate is often underplayed. Many patent attorneys would recognise that when they attend oral proceedings they are clearly fulfilling the role of advocate. However, our written advocacy skills are barely ever mentioned and yet we probably do more written advocacy than almost any other legal sphere, as every examination response we write involves us using our persuasive skills. When a patent attorney constructs a response, therefore, it vital to remember what our role is: that of someone who
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needs to frame our comments and arguments in such a way as to persuade the examiner that the patent should be granted. This can go far beyond inspired legal and technical arguments to making it easy for the examiner to correlate what we say with the objections he raised and to satisfy him or herself that, for example, the patentability criteria are met and that he can present a case for grant to the remainder of his examining division. And underlying all that, good manners are not a bad idea – if you manage to irritate the examiner then, to the extent that he has any leeway or discretion, he or she may exercise it to make himself feel a little bit better.
17.4 Reporting to the client This chapter now moves on to look more specifically, and at a more practical level, at how patent applications should be prosecuted. What follows is in two parts: this first part deals with reporting official communications – such as search reports and examination reports – to the client; the second part deals with responding to those communications. The phrase ‘client’ is used both in its more traditional sense to refer to an instructing principal who instructs an attorney in private practice and also to refer to a person or group within an industrial organisation who corresponds with an in-house attorney. Before looking at the reporting of communications, it may be useful firstly to look briefly at the different types of communication that you will find yourself having to report. You will no doubt have worked out that patent offices seem forever to be sending communications of one sort or another in relation to patent applications. These communications can generally be separated into two groups: those that relate to formal matters (i.e. matters of form) and those that relate to substantive matters (i.e. matters of substance). For example, communications on formal matters would include things that relate to procedural steps, such as a letter informing you of the impending publication of an application, a letter asking you to confirm that you wish an application to proceed to the examination stage, or a letter informing you that certain designation fees have not been paid. Communications on substantive matters would include letters that relate to the merits of a particular application, such as a search report or an examination report, in which comments are made on the patentability of the claimed invention. This chapter is concerned principally with substantive communications, although much of the general guidance should also be borne in mind when dealing with formal communications. It may also be useful briefly to consider the patent offices from which you are likely to receive communications. The IPO and the EPO will immediately spring to mind, but we should not forget that you will receive communications from other, foreign, patent offices relating to your client’s foreign applications pending before those offices. As communications from foreign patent offices will usually be forwarded to you by local agents, in the relevant foreign jurisdictions whom you are instructing (your firm may refer to these agents as your ‘foreign associates’), much of the work of reporting the communication may already have been done: you may need to do little more than pass on your agent’s comments. You should, however, check your agent’s comments in light of the guidance that follows.
17.4.1 General considerations As in many areas of the patent attorney’s job, common sense applies. In reporting an official communication to your client, you should, therefore, always bear in mind the object that you are trying to achieve. This object may vary somewhat from client to client, but, in general, it will usually be to further the client’s interests. More specifically, it will usually be to obtain a commercially useful patent in a cost-effective way. Your job in reporting an official communication is, therefore, to give the client the information the client needs to instruct you in a way that maximises the chances of this object coming about. This sounds simple enough, but the information that you will need pass on to your client will vary from case to case. The following factors should, therefore, be borne in mind.
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17.4.2 Who is the client? This is the most important factor. Again, common sense should advise you to put yourself in the shoes of your correspondent when addressing him or her, as this is the best way of ensuring that your correspondence has the desired effect. You might like to consider where on a spectrum of familiarity with UK or European patent practice your client sits, and to frame the reporting letter accordingly. At one end would be the client who is well experienced in matters of UK or EPO patent prosecution. Such a client may require little more than a copy of the official communication and any cited documents in order to provide you with good instructions. A good, experienced, foreign attorney or a battle-scarred in-house IP manager is likely to fall into this category. Providing such a client with a detailed explanation of the requirements for patentability – no matter how learned and lucid – may be unnecessary and result in avoidable charges being incurred in the case of a private practice attorney, and time being wasted in the case of an in-house attorney. Such overkill also risks alienating the person you are supposed to be serving. The other end of the spectrum is likely to be occupied by the private applicant faced with his first experience of the patent system. Clients at this end will require and welcome far greater guidance. Most clients however – including most foreign attorneys and those in-house with responsibility for IP – will lie somewhere in-between. They are likely to have an understanding of novelty and a grasp of inventive step, but are likely to be confused by some of the other aspects of UK and EPO practice, such as unity of invention, matters of clarity, certain formal requirements, and perhaps the specifics of how to frame an inventive step argument. This is especially the case with foreign attorney clients who may be confused by differences with corresponding requirements in their home jurisdictions. For example, and as mentioned earlier in 17.1.5, the approach in the US to ‘added matter’ differs significantly from that followed in the UK and by the EPO. Approaches to inventive step (or ‘obviousness’ as it is sometimes called) also differ in other jurisdictions. For these clients, you should explain the matters that would otherwise be likely to cause confusion. You should also consider distinguishing between matters raised in the communication on which detailed instructions or comments are needed and matters which you will be able to handle without troubling the client for detailed comments. For example, the attorney could offer to amend the description for conformity with the claims without troubling the client for detailed instructions as to how this should be done. By contrast, you are likely to need more detailed instructions for responding to a lack-of-inventive-step objection. Special consideration should be given to cases in which the client does not have English as his or her first language. In such cases, an attorney whose reporting letters are expressed in clear, simple, language increases his or her chances of receiving good instructions in return. Simple words and short sentences are generally preferred. Are there any standing instructions? There will be some special cases covered by standing instructions from the client to report official communications in a certain way. These are general instructions that were issued at some time in the past and that continue to apply. For example, for reasons of speed and economy, an attorney may have general instructions to report communications on certain applications without substantive comment. At the other extreme, an attorney may have standing instructions to prepare a draft response for sending the client with, or soon after sending, the official communication. You should ask your trainer whether any such standing instructions apply to a particular case. In general, however, the job of the attorney in reporting an official communication should be to give the client as much information as necessary to allow the client to provide the attorney with good instructions, but to avoid giving unnecessary information that wastes time and/or money and risks patronising the client.
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17.4.3 When is the due date? In some circumstances, only a very short period will be provided by the relevant patent office for responding to an official communication. Examples of this would be a IPO examination report issued towards the end of the four-and-a-half year statutory period provided for putting a UK application in order (the ‘Rule 34 period’), or a summons to oral proceedings before an EPO examining division, leaving as little as one month to file written submissions. In such circumstances, you should report the official communication without delay and consider doing so without substantive comment if this would otherwise cause a significant delay. You might then follow up with such comment as soon as possible.
17.4.4 How soon to report? In general, you should report to your client as soon as you are able to do so. Your aim should be to give your client as much time as you reasonably can in which to study the communication and provide you with instructions. In short, when it comes to reporting, it is often a case of: the sooner, the better. Unless you have standing instructions to the contrary, you should aim to report official communications within one week or within two, if that is not possible and if there is no deadline or the deadline is not imminent. There will of course, be times when pressure of work makes this difficult. In such circumstances you will need to prioritise your work. In doing so, you should always bear in mind the proximity of the deadline for responding (if any is set) and how long your client is likely to want in order to provide you with instructions. In summary, remember the following when reporting: • • •
Who is the client? Are there any standing instructions? When is the due date?
17.4.5 Information that should always be passed on Unless there is a clear understanding between the client and the attorney to the contrary, certain information should always be passed on when reporting an official communication to the client. Perhaps most important amongst this information is the due date for responding. If there is a due date for responding, this should be highlighted in the reporting letter. Some attorneys also give another, earlier, date by which they would like instructions from the client. If complied with, specifying this second, earlier, date can help you organise and plan your caseload so as to avoid last-minute work. In addition to noting the due date, you should also make it clear in whose court is the ball: are you now waiting for the client’s instructions or are you perhaps going to follow up with more information? You should also consider stating the action that you will take if the requested instructions are not received. For example, a letter reporting an examination report on a UK or European application might state that a two-month extension of time will be sought if instructions from the client have not been received by date X. A letter reporting an extended European search report (for which no due date for responding is set), might state that you will take no action and issue no reminders in the absence of instructions to the contrary. A letter reporting a partial European search report resulting from an alleged lack of unity of invention might state that no further search fees will be paid in the absence of contrary instructions by date Y. You will no doubt be able to think of further examples. The advantage of this approach is that it removes doubt as to how you should proceed if you fail to hear from the client in time.
17.4.6 Examination reports Most of the comments above apply to the reporting of examination reports – that is reports following substantive examination of an application – to the client. The reporting of search reports differs somewhat. This is dealt with below.
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17.4.7 IPO search reports and ‘un-extended’ european search reports In general, little will need to be said when reporting the establishment of a search report that consists of no more than a list of prior art documents that the examiner considers to be relevant. Search reports by the IPO and search reports by the EPO that are not extended European search reports fall into this category. Unless you have standing instructions to the contrary, it is usual to do no more than forward the search report to the client and to suggest that the client study the cited documents with a view to considering how best to proceed in the application. That the application may now be amended might also be brought to the attention of the applicant. Again, client’s less-familiar with seeking patent protection may require and welcome more in the way of explanation. The helpful attorney will also offer in his or her reporting letter to review the application and provide a view on how the applicant might best proceed. Such a review would assist in identifying those cases which the applicant may wish to consider abandoning, perhaps because the prior art discloses the very invention that the applicant wishes to protect.
17.4.8 Extended European search reports As is mentioned in 15.5.2 the EPO is establishing extended European search reports (EESRs) on all applications with a filing date on or after 1 July 2005. In an EESR, the usual list of documents that the examiner considers relevant is accompanied by an opinion on patentability. This opinion looks just like an EPO examination report, but differs in that no period is set for responding. As no period is set for responding, there is an understandable tendency not to respond to the EESR and instead to await issuance of the first examination report. To proceed in this way could, however, be considered as an opportunity missed. As there seems to be a tendency for EPO examiners to issue fewer examination reports before indicating that they are minded to refuse an application, there is a good case for treating the EESR opinion as if it were an examination report and responding accordingly. The examiner will have to issue at least one examination report subsequently and so responding to the EESR is a good tactic for ensuring that amendments and arguments are taken into account by the examiner. In colloquial terms, the applicant gets an extra bite of the cherry.
17.4.9 International applications The same principles should be borne in mind when reporting official communications from the relevant international authorities responsible for processing international applications under the PCT. For example, the international search report and written opinion of the International Searching Authority (this will usually be the EPO for UK-originating cases) may be treated in a similar way to an EESR: there is no need to respond, but doing so may smooth subsequent prosecution and afford the applicant an extra opportunity to argue the case. This is the case whether you are choosing to respond to the written opinion under Chapter I or under Chapter II PCT. You should bear in mind, however, the countries or regions in which the international application will subsequently enter the national or regional phase. For example, if the application is to enter the national phase in the US, you may wish to consider resisting certain amendments or arguments that are in accordance with good practice before the EPO, but that may not be in accordance good practice before the USPTO. This is a good topic for discussion with your supervisor.
17.5 Preparing a response If all goes to plan, you should receive good instructions at least a few days in advance of the relevant due date (if any). This section sets out how you should prepare an appropriate response based on those instructions. It starts by looking at the considerations that are common to responses to the IPO and to responses to the EPO – in other words, the things you should bear in mind regardless of whether you are working on a UK application or a European application – and then looks at considerations that are specific to each of the two offices.
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17.5.1 Reviewing the instructions Unless you have received instructions to the contrary, the first thing that the attorney should do upon receiving instructions is to review them. This review is to see whether or not the instructions allow you to prepare a complete and persuasive response. It is important that you perform this review soon after receiving the instructions; if you find yourself having to break it to your trainer the day before a response is due that you will need to go back to the client for further instructions, it is unlikely that you will win unfettered praise. In performing the review, you should check that you have instructions for responding to each point raised, in the official communication. If an objection of lack of novelty was raised it is preferable also to present arguments – albeit brief ones – on inventive step, even if no objection under this head was raised. More on this is set out below. If the instructions do not put you in a position to frame a complete response, or if you think the instructions are based on arguments that are not well founded, you should bring this to the attention of your trainer as soon as possible. In such circumstances, there are a number of options for proceeding. Your trainer will be able to discuss these with you in more detail than the pages of this manual allow. In general, however, these options include: seeking further instructions from the client; proceeding as the client instructs; and deviating from, or adding to, the client’s instructions. The most appropriate option will depend on factors such as the degree of discretion that the client wishes you to exercise, the time or cost that is to be devoted to the task, the proximity of the due date, and whether or not the client wishes to expedite prosecution of the application. In most cases, it is in the client’s interests for a response to an official communication to overcome all objections to the grant of a patent. The following guidance is framed accordingly.
17.5.2 Responding to the EPO and IPO – common considerations The following guidance is intended mainly as guidance for responding to examination reports from the EPO and examination reports from the IPO. It also applies, however, to responses to extended European search reports (for which also see 17.5.4 and responses to official communications issued in the international phase of an international (PCT) application (for which see 17.5.6 below). Whilst this guidance may also be used in preparing a voluntary amendment following the establishment of a conventional search report (i.e. a search report that merely includes a list of cited prior art documents and does not include an opinion on patentability), such a response would usually be much shorter and simpler. 17.5.3 below deals with voluntary amendments. Context As was the case when drafting the reporting letter in 17.4 above, you should bear in mind the object that you are trying to achieve. In most cases, this will be to overcome objections to the grant of a patent on the application in hand. This is best done by responding to each objection raised by the examiner in a way that the examiner will find persuasive. The response should therefore be framed in a way that makes it as easy as possible for the examiner to grant the case, whilst, at the same time acting in accordance with the client’s instructions and interests. Again, it helps if the attorney puts himself or herself in the examiner’s shoes. Whilst it should be clear that these comments apply to the substance of a response – such as the soundness of the legal arguments – the importance of the form of a response should not be underestimated. A response that is easy to read and that is presented in a polite manner is more likely to meet with success than one that is difficult to follow and aggressive or rude in its tone. Please note that this should not be taken as meaning that the attorney should not stand up to the examiner: it is possible to be quite firm and to tell an examiner he is wrong without being rude. Indeed, many attorneys would say that a healthy starting position is to assume that the examiner is wrong!
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Letter of response A response will nearly always include a letter of response. As a general rule, it is preferably to say no more in the letter than is necessary to overcome the objections. ‘Least said: soonest mended’ is a good maxim here. With every extra statement, the chances of saying something that could cause problems later are increased. For example, the attorney may make a statement in the response that the claim has a particular meaning which may later cause the claim to read on to a prior art document found subsequently by the examiner. Alternatively, a statement may be made that could be used against the applicant in court proceedings in the US, where statements made in the prosecution of patent applications even outside the US are fair game. Introduction The letter of response should start by identifying the communication to which it is a response, and also the application to which it relates. In most cases the application will be identified in the title of the letter. Amended pages If amended pages of the application are being filed, these should then be identified. It is preferably to identify clearly both the pages being cancelled from the application and the new pages that are being filed to replace them. Otherwise, things can become confused. This should be done as clearly and simply as possible. As already mentioned, it is in the client’s interests to make things easy for the examiner. Basis for the amendments The next section of the response should briefly identify any amendments made in the response and should direct the examiner to basis for those amendments. This is to forestall any objection that the amendments result in the application impermissibly disclosing subject-matter not contained in the application as originally filed, i.e. an objection that the amendment results in ‘added matter’. Added matter is dealt with in detail in 17.1.5. (As mentioned above, in some quarters people refer to ‘support’ for amendments. As this can lead to confusion with the requirement that the claims be ‘supported’ by the description, ‘basis’ is preferred in this chapter, when referring to the requirement that amendments must not result in an application disclosing new matter.) In directing the examiner to basis, it is preferable to list page and line numbers in the application as originally filed on which the amendments are based. Please note that this should be in the application as originally filed. As is set out in 17.1.5, added matter is judged with reference to the application as originally filed. For an application that is the regional or national phase of an international application, this, of course, means the international application as originally filed. The examiner’s task in identifying the amendments made in the response and in considering whether or not they result in added matter is simplified by the attorney additionally filing pages on which the amendments are highlighted either by handwritten amendments (sometimes referred to as ‘manuscript amendments’) or by the ‘track changes’ facility offered in some word processing software. For this reason, and if it can be done economically, filing such pages can be beneficial. The remainder of the letter of response will generally be determined by the objections raised in the communication. Whilst the attorney is at liberty to set out the letter of response as he or she prefers, the examiner’s job is likely to be simplified by following the order in which the examiner’s objections were laid out in the communication. You should comment on each objection and should make it clear to which objection you refer. There are many techniques for doing this: ‘In response to the objection raised at paragraph 2.1 of the communication, it is submitted that…’; ‘Independent claim 12 has been deleted. This overcomes the objection at 1.1’, and so on. The most common objections are those of lack of clarity, lack of unity of invention, lack of novelty, lack of inventive step, and objections of a more formal nature. These are dealt with separately below.
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Clarity There can be so many reasons for an objection of lack of clarity that it is difficult to cover them all here (further guidance is given in 17.1.8). In general, however, a lack of clarity will arise where the scope of the claim cannot be determined because the meaning of one or more terms in the claim is unclear. If you think of a claim as a Venn diagram with a boundary enclosing lots of different arrangements that embody the invention, the scope of the claim is the area inside the boundary. If one or more terms of the claim are unclear, then the boundary cannot be drawn with certainty. If this is the case, then it can be unclear whether or not an arrangement is within the scope of the claim. If one of these arrangements is a prior art arrangement, for example, then an arguable lack of novelty may arise. If one of these arrangements is the product of a competitor, the claim may be difficult to enforce. A lack of clarity in the wording used in a claim is usually addressed by amending the claim or by advancing convincing arguments that the wording would be clear to a person skilled in the art. Merely stating, however, that the wording is clear is unlikely to convince the examiner: evidence or sound reasoning will usually be needed to back up such a statement. EPO examiners often object that a lack of clarity arises because one or more independent claims does not (in the examiner’s view) recite all the ‘essential features’ of this invention. Whilst it can be argued that this should more appropriately be raised as an objection that the claim is obvious (particularly if the scope of the claim can readily be determined), the EPO nevertheless considers this to be a clarity issue. In any event, such an objection may or may not be well-founded: the use of functional language in a claim is not necessarily objectionable. (You are encouraged to read the Guideline C-III-4.7 for more on this.) One way of overcoming this objection is to ask oneself what technical problem the invention solves, and then to see whether or not the claim in question recites the technical features necessary to solve that problem. If it does not, then amendment may be needed. Unity of invention The requirements for unity of invention are dealt with in 17.1.9. An objection that an application lacks unity of unity of invention, if well founded, will be overcome by amending the application either to remove one or more of the independent claims, or to amend one or more of the independent claims such that there is a common or corresponding novel and non-obvious feature in each independent claim. The letter of response should draw any such amendment to the attention of the examiner and, if not immediately apparent, give brief reasons as to why this amendment overcomes the objection. In a response to the IPO, the attorney should be sure to reserve the applicant’s right to pursue in a divisional application the subject-matter of any claims that have been deleted or amended in this way. The examiner should then provide at least one further opportunity for filing a divisional before he forwards the present application for grant. Some would also suggest taking a similar approach before the EPO, although as the EPO will always provide warning of grant, the reasons for doing this are diminished. In any event, some consider it good practice – and it does no harm – to emphasise that the subject-matter of claims is not being abandoned. Novelty As is stated in 17.1.2, each independent claim, when compared to each prior art document in turn, must contain at least one feature that is not disclosed in that document. You are encouraged to revisit that section now. The feature of novelty can be different for different documents. In other words, it does not matter whether or not you can find all of the features of the claims in the prior art documents. As long as no single disclosure contains all of the features, the claim is novel. If a lack-of-novelty objection was raised in the communication, the examiner will usually have identified the prior art document and the independent claim or claims that he believes lack novelty in the light of that document. All that is necessary to overcome this specific objection is to point the examiner to a feature in
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the claim or claims in question (possibly as amended in the replacement claims filed in the response) that is not present in the document in question. Such features are sometimes referred to as ‘novel features’, ‘distinguishing features’ or ‘features of difference’. As this is akin to trying to prove a negative, one approach that can help to establish the absence of a feature from a prior art document is to identify what that document has in place of the feature in question. For example, if the claim is to a mousetrap with a magnet to hold in place a special variety of ferrous cheese that is surprisingly appealing to mice, identifying that the prior art instead discloses using a spike to secure cheese helps to show the absence of the claimed magnet feature. If the examiner has made no further objection of lack of novelty based on another prior art document, then no more need be said: the examiner’s objection has been overcome. You should, however, satisfy yourself that the claims now on file are novel over each prior art document, even if you make no reference to this in the letter of response. If, however, you consider that there is a good reason for also demonstrating the novelty of the independent claims over others of the prior art documents, then appropriate comments should be made. One reason might be that the attorney foresees that the examiner may consider one or more of the independent claims to lack novelty over one or more of those other documents. Making appropriate comments now may forestall any such objection and streamlines the prosecution by avoiding the issuance of a further official communication. The reason for checking that the independent claims are novel over each document relied upon by the examiner is to be sure that you do not seek grant of a claim that you know, or should have known, to be invalid. If an invalid claim is pursued, a UK court may not allow the applicant (or rather the proprietor as the applicant would then be) the opportunity to amend a patent eventually granted on the application. Such amendment can be vital in court proceedings in which the validity of the patent is challenged. This sort of covetous behaviour by or on behalf of the applicant may also restrict the proprietor’s ability to recover damages for infringement of the patent. UK courts have, however, considered it reasonable for an attorney not to consider documents categorised as ‘A’ citations, i.e. documents classified as of background relevance only. Inventive step The ways in which the IPO and the EPO approach the question of whether or not a claimed invention involves an inventive step differ markedly from each other. These approaches are, therefore, dealt with below in the sections that are specific to practice before those offices. Common to each office, however, is the approach that is advisable where the examiner has raised a lack of novelty objection but has made no reference to inventive step. (If you think about it, the question of inventive step does not arise when the claims lack novelty: if you do not have a difference over the prior art, how can you consider whether or not that difference would have been obvious?) Although it may be tempting to avoid commenting on inventive step in such circumstances – no objection has, after all, been raised – in most cases this is not advisable. As usual, you should put yourself in the shoes of the examiner – without arguments on inventive step from the attorney, is the examiner likely to grant the application? In many cases, there are reasonable arguments both for and against the claimed invention involving an inventive step. Without contrary arguments from the attorney, the examiner may well be drawn to those arguments that suggest the claimed invention does not involve an inventive step when he comes to re-examine the application in the light of the response; the absence of arguments by the attorney leaves the way open for the examiner to do so. The attorney is, therefore, well-advised to advance at least brief arguments on inventive step, together with demonstrating the novelty of the claimed invention. We look at how to formulate those arguments below. Amendments to the description If the claims have been amended, it is often the case that statements of invention (sometimes referred to as ‘consistory clauses’) in the description require amendment, in order to maintain conformity with the amended claims. As a statement of invention is a statement setting out the essential features of the invention, any discrepancy between such a statement and the independent claims, which also define the
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essential features of the invention, can cast doubt on the extent of protection conferred by the claims. Any such doubt could be exploited by an infringer to argue that the claims should be interpreted as covering the prior art and, hence, lacking novelty, or as not covering the alleged infringement. The statements of invention should therefore be amended for consistency with the claims. This can be done either by ensuring that the statements of invention are a word-for-word repetition of the features of the claims or by replacing the statements of invention with a phrase such as ‘According to one aspect of this invention, there is provided [a widget] as defined in claim 1 of the claims.’ An advantage of the latter approach is that subsequent amendment of the description to take account of further amendment to, in this example, claim 1 would be avoided. A respective statement should be included for each independent claim. Concluding comments It is usual for the letter of response to conclude with a statement noting that the application is now believed to be in order for grant, but requesting a further opportunity to respond to any remaining objections. Practice before the IPO and the EPO differs in this respect and is looked at separately below.
17.5.3 Voluntary amendments A voluntary amendment is an amendment, or set of amendments, made of the applicant’s own volition, rather than in response to an invitation to respond to objections which would lead to a loss of rights if not complied with (such as in the case of an examination report). An example of a voluntary amendment would be an amendment filed after receipt of a search report, to which there is no obligation to respond. A voluntary amendment may be accompanied by a letter explaining the amendments. Ideally, this should follow the approach set out above in clearly identifying the pages that are to be replaced and in indicating basis for the amendments. The attorney may also wish to forestall objections that the application lacks novelty or an inventive step by presenting appropriate submissions. Generally, however, the attorney should keep his comments to the minimum necessary to achieve his or her aim.
17.5.4 Responding to the EPO – specific considerations The problem-and-solution approach to inventive step The EPO uses an approach called the ‘problem-and-solution’ approach in assessing whether or not a claimed invention is obvious and so involves an inventive step. Although there is no requirement for the attorney to follow this approach in presenting his or her arguments on inventive step (indeed in some cases he or she may be well advised to avoid this approach), EPO examiners do think in these terms more often than not. A reasonable argument that follows this approach therefore stands a very good chance of convincing the examiner. The approach has four steps. These are set out below. Step 1 – identify the closest prior art The first step is to identify the closest prior art disclosure. This is the disclosure, such as a prior art document, that represents the ‘most promising’ starting place for an obvious departure leading to the claimed invention. In other words, it is the starting point that is most likely to render the claimed invention obvious. This closest prior art disclosure will usually be directed to a similar purpose as the claimed invention and will usually be in the same technical field. In many cases, it will also be the disclosure that has the greatest number of features in common with the claimed invention, although this may not be the closest prior art if it is in a different technical field or is directed to a different purpose. Step 2 – identify the distinguishing features The second step is to identify the features of novelty over the closest prior art. These are the features of the independent claims that are not known from the closest prior art. These are referred to as the ‘distinguishing features’. Patents Training Manual: Volume 1
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Step 3 – formulate the objective technical problem The third step is to identify a technical problem that is solved by the presence of the distinguishing features. This is referred to as the ‘objective technical problem’ because it arises (so it is said) objectively from the problem-and-solution approach. This distinguishes the problem from the ‘subjective’ problem with the prior art that is sometimes discussed at the start of a patent application. It is in identifying the objective technical problem that the skill of the attorney can be important. The problem can often be formulated in several different ways. Again, it can be useful to think in terms of a spectrum: at one end of the spectrum are problems that make the invention sound really obvious; at the other end are problems that make the invention sound very clever. The job of the attorney is to formulate a problem that is as far away from the ‘really obvious’ end and as far towards the ‘very clever’ end as is reasonable. An example may be of use here. Consider the invention of the chair. The closest prior art is a stool. The distinguishing feature of the independent claim to the seating apparatus (as the chair be might called in the claim) is the provision of a seat back against which a user can lean. How should the objective technical problem be formulated? At one end of the spectrum – the ‘really obvious’ end – would be a problem such as ‘to provide support structure that supports a user’s back when sitting on seating apparatus’. Formulating the problem in this way makes the claimed invention seem obvious because the problem contains pointers that take you straight to the claimed solution: as the problem mentions providing support structure and supporting a user’s back, anyone, starting with a stool, and facing this problem would think of adding a ‘back’ to the stool. For this reason, the problem should not be formulated in a way that contains pointers to the solution. Moving away slightly from the ‘really obvious’ end of the spectrum would be a problem such as ‘to prevent the user falling backwards off seating apparatus’. This is not quite as bad – there is no clear pointer to providing support structure – but the reference to falling off backwards still seems to hint at the solution. A better problem that is still further from the ‘really obvious’ end, and perhaps half-way towards the ‘very clever’ end of the spectrum, would be ‘to provide seating apparatus that is more comfortable’. This does not contain any pointers to the solution and so does not make the claimed invention seem obvious. It is, of course, possible to keep moving towards the ‘really clever’ end of the spectrum. In doing so, however, the attorney risks formulating a problem that may appear to the examiner to be unreasonably general and vague. For example, the problem could be generalised to become ‘to provide improved seating apparatus’ or even ‘to provide alternative seating apparatus’. Whilst these kinds of problems may be perfectly reasonable in some circumstances, in the present example, it is possible to formulate a more specific problem that does not make the invention seem obvious. The goal in formulating the problem can, therefore, be thought of as finding a problem that is as specific as possible, but that does not make the claimed solution seem obvious. Step 4 – would it have been obvious? The fourth step is to consider whether or not it would have been obvious to a person skilled in the art, starting from the closest prior art, and faced with the objective technical problem, to adapt the closest prior art and thereby arrive at the claimed invention. In this fourth step, due account may be taken of teachings in the art as a whole (i.e. from several documents), but due account must also be taken of teachings in the closest prior art document. It should be noted that the question here is not could the skilled person have adapted the closest prior art, but would he have done so Whilst a good degree of attorney skill is also necessary in the fourth step, there is generally a series of arguments that should be considered and, if applicable to the case in hand, advanced. These arguments are set out below. •
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The appreciation of the problem itself is actually part of the invention. The problem would not, therefore, occur to the skilled person and so he would never even consider trying to solve it. For this
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to work, the problem really ought not to be acknowledged in any of the cited prior art documents. Where this argument can be advanced, the invention is sometimes referred to as a ‘problem invention’. This is another reason not to over-generalise the formulation of the problem. •
The closest prior art document is concerned with a different problem and/or provides a solution that in some way would lead the skilled person in a direction away from the claimed invention. This is sometimes referred to as the closest prior art ‘teaching away’ from the claimed invention.
Where the examiner has relied on a combination of one or more other documents with the closest prior art document to argue that the claimed invention does not involve an inventive step, the following arguments should also be considered in relation to each of these other prior art documents in turn. •
The other prior art document does not address the objective technical problem. The skilled person would not, therefore, expect to find a solution in this other document to the objective technical problem and so the document would not provide the skilled person with the necessary incentive to modify the closest prior art. This argument can be summarised as ‘the other document does not address the problem’.
•
The other prior art document does not disclose the distinguishing features missing from the closest prior art document. Therefore, even if the skilled person were to consult the other document, he would not arrive at the claimed invention. This argument can be summarised as ‘the other document does not disclose the solution’.
•
The other prior art document contains a teaching that would prevent, dissuade or in some way make it difficult for the skilled person to adapt the closest prior art and thereby arrive at the claimed invention. Thus, even if the other prior art document does disclose the distinguishing features, the skilled person still would not arrive at the claimed invention. An example of this would be where the arrangement disclosed in the other prior art document is somehow inherently technically incompatible with that of the closest prior art document.
It is usual to use more than one of these arguments. For example, you could use ‘the other document does not address the problem’ argument, and follow this with an argument that, in any event, ‘the other document does not disclose the solution’. All the appropriate ones of the arguments can be deployed in this way. In presenting arguments that follow the problem-and-solution approach, you should clearly identify the relevant points at each stage. In the letter of response, you should therefore: (i) identify the closest prior art (and if it differs from that identified by the examiner, state why your choice is the closest); (ii) identify the features of difference; (iii) identify an objective technical problem solved by those features; and (iv) give reasons why it would not have been obvious to the skilled person to arrive at the claimed invention starting from the closest prior art when faced with that problem. Each of the first three steps can be done in a few words; but the fourth step usually requires a few paragraphs of well-reasoned argument, perhaps based on the outlines given above. An example of this is given below. Template for a problem-and-solution argument A template inventive step argument is set out below. This is based on two documents, D1 and D2 having been relied on by the examiner. You should bear in mind that this is just one suggested way in which an inventive step argument might be constructed. Other approaches will be equally valid and may be more appropriate in certain cases.
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[Paragraph 1: the closest prior art] ‘The present invention is in the technical field of X and is concerned with the purpose of Y. This is clear from lines… [perhaps refer to the introduction?]. As is clear from lines… of D1, D1 is in the technical field of A and is concerned with the purpose of B, which is similar to that of the present invention. As is clear from lines… of D2, D2 is also in the technical field of A, but is concerned with the very different purpose of C. D1 can therefore be taken as being representative of the closest prior art.’ [Note: in many cases, the examiner will have suggested a document that he considers to be the closest. Unless you can reasonably run a good argument starting from another document, you may, therefore, wish to state no more than, ‘The Examiner suggests taking D1 as being representative of the closest prior art’, and then move on to the other steps of the problem-and-solution approach. One advantage of this is that it avoids making statements about the prior art that you may later regret.] [Paragraph 2: the distinguishing features] ‘The distinguishing features of the claimed invention not known from D1 are…’ [list the features here, possibly as (a)…, (b)…, (c)… and so on. If you have already identified these features in your comments on novelty, you might also state something along the lines of, ‘These are the novel features identified above.’] [Paragraph 3: objective technical problem] ‘The objective technical problem solved by the claimed invention providing these distinguishing features is that of…[insert problem here]’. [Paragraph 3.5: technical effect/advantage] [If it is not immediately clear, or if it provides for persuasive argument, it can be a good idea to include a paragraph setting out how the distinguishing features solve the objective technical problem and explaining the technical effect of the solution. This effect might be a technical advantage provided by the claimed invention.] [Paragraph 4: would it have been obvious?] It is submitted that the claimed solution would not have been obvious to the skilled person starting from D1 before the priority date of the present application. Firstly,… [Does the closest prior art address the objective technical problem? Does it disclose a solution that would lead the skilled person away from the solution of the claimed invention? If so, say so and give supporting reasons.] The skilled person would not, therefore, arrive at the claimed invention from D1 when taken alone. Furthermore, D2 would be of no help to the skilled person in arriving at the claimed invention because…[Would the skilled person have been deterred from combining D2 with D1? Does D2 address the objective technical problem? Does D2 disclose the distinguishing features missing from D1? Does D2 include or suggest something that makes it in someway incompatible, such as technically incompatible, with D1? If so, say so and give supporting reasons.] Requesting oral proceedings In proceedings before the EPO, the applicant has a right to present his case in a hearing, known as ‘oral proceedings’, upon making an appropriate request. As discussed in chapter 15 it is, therefore, good practice in responding to an EPO examination report to make a precautionary request for oral proceedings. The request should normally be phrased such that it is triggered as a last resort in the event that the Examining Division would otherwise refuse the application. An appropriate request might take the form: ‘Should any objection remain to the grant of a European patent on this application, a further communication under Article 96(2) EPC, or failing that a telephone call with the undersigned representative, is hereby requested. In the event that the Examining Division would otherwise refuse this application, oral proceedings
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within the meaning of Article 116 EPC are hereby requested.’ This requests a further examination report as a first preference, a telephone call as a second preference, and then oral proceedings as a last resort. Extended European search reports In preparing a response to an EESR, you should bear in mind that there will always be at least one subsequent examination report if objections remain – this is a requirement of the EPC. The application will not, therefore, be refused if the attorney fails to overcome, or even address, all of the objections in a response to an EESR. Accordingly, there is no need to request oral proceedings in a response to an EESR; there will be an opportunity to make a precautionary request for oral proceedings in the first examination report, if objections remain. That said, some would say that it is no bad thing to make an early, precautionary, request for oral proceedings. Your trainer will have a view on this. Article numbers and rule numbers EPO examiners tend to make reference to the relevant articles and rules of the EPC in their communications. Some attorneys follow suit in their responses. For example, rather than stating, ‘Claim 1 is therefore novel’, an attorney might state, ‘Claim 1 is, therefore, novel within the meaning of Article 54(1) EPC’. Whilst it is unlikely that much will turn on the approach used, the latter approach is preferred in the European Qualifying Examination. Less use tends to be made in prosecution before the IPO of the relevant section numbers and rule numbers. Auxiliary requests You may also file fall back amendments and arguments in the form of Auxiliary Requests as discussed in chapter 15.6.2.
17.5.5 Responding to the IPO – specific considerations Inventive step The IPO does not follow the EPO’s problem-and-solution approach. Indeed, a UK examiner is likely to be somewhat surprised by the sort of detailed, four-step, problem-and-solution analysis recommended above. The correct approach for assessing inventive step in the UK is that expounded in the decided case of Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd., [1985] RPC 59. Whilst this approach is usually followed in the courts, it is not usually necessary to make explicit reference to it in a response to a communication from the IPO. For this reason, the ‘Windsurfing’ approach will not be examined in this section in detail. The central question from the Windsurfing approach should, however, always be at the front of the attorney’s mind: do the novel features constitute steps that would have been obvious to a person skilled in the art? The job of the attorney is, therefore, to advance arguments (although usually no more than one good argument is necessary in a response to the IPO) to demonstrate that this question should be answered in the negative. The substance of the arguments is much the same as for the EPO, but the presentation may differ. This is often done by considering one or more well-recognised indicators of the presence of an inventive step. Some of these are set out below. Technical advantage In cases where one or more of the novel features results in a technical advantage, this can be indicative of an inventive step. The reasoning for this is that, given that a technical advantage results from the claimed invention, if the invention was obvious, someone would have put it into practice before in order to gain the advantage. This argument can be strengthened by demonstrating with appropriate reasoning that the technical advantage could not easily have been foreseen, such that it is unexpected or – better still – surprising. Patents Training Manual: Volume 1
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Usually, a reasonable argument that the claimed invention results in a technical advantage will be enough to demonstrate to the IPO examiner that the claimed invention involves an inventive step. In some less-straightforward cases, however, the attorney may have recourse to the other indicators of inventive step listed below. (Note that the EPO, in theory may also consider these). Overcomes a technical prejudice A claimed invention may well involve an inventive step if it goes against the generally accepted views and practices in the art. Thus, if the prior art relied upon by the examiner states or suggests that a particular feature or arrangement should be avoided, and if the claimed invention includes that feature or arrangement, then this is suggestive of non-obviousness, particularly if an advantage results. Fulfils a long-felt want Evidence that others have tried for a long time to achieve the effects provided by the claimed invention is also indicative of the claimed invention involving an inventive step. Commercial success Evidence of commercial success resulting from the presence of one or more of the novel features can also be indicative of the claimed invention involving an inventive step. Caution should be exercised however: could the success be due to clever marketing, low price, or some such other factor unconnected with the novel features? Combining documents In order to argue against an objection that a claimed invention is obvious based on a combination of documents, you should consider taking a two-stage approach. The first stage is usually to argue that the skilled person would not have considered the two documents together. Factors such as whether or not the documents are in the same or neighbouring technical fields, the presence of references in one document to the other document, and any apparent incompatibility between the documents should be considered. The second stage is to argue that, even if he would have considered them together, the skilled person would have arrived at the claimed invention. Factors such as technical incompatibility or the absence or one or more feature of the claimed invention from both documents are factors here. Any reasonable argument that occurs to you may, however, be advanced. This can be helpful before the EPO too. Foreshadowing divisional applications In a response to the IPO, you should consider reserving the applicant’s right to pursue in a divisional application the subject-matter of any claims that have been deleted or amended in this way. The examiner should then provide at least one further opportunity for filing a divisional before he forwards the present application for grant. Divisional applications cannot be filed once the application has been allowed. Do not request oral proceedings The term ‘oral proceedings’ has no meaning under the UKPA. There is provision for hearings in front of a IPO hearings officer before an application can be refused, but there is no need to make a precautionary request for such a hearing in a letter of response.
17.5.6 International applications The guidance set out above should be borne in mind when responding to a written opinion in the international phase of an international application filed under the PCT. As mentioned at 17.4.9, however, you should bear in mind the countries or regions in which the international application will subsequently enter the national or regional phase and apply the principles set out above accordingly. You should also bear in mind the goal you are trying to achieve and the surrounding circumstances. If, for
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example, the EPO is the International Searching Authority (ISA) and your goal is to obtain a favourable international preliminary examination report under Chapter II PCT, your chances of success would be maximised by following the guidance set out above for responding to the EPO. If however, you merely wish to place some comments on file in response to the written opinion of the ISA, you do not intend to enter Chapter II PCT, and would like your comments to be taken into account by national and regional offices in the national and regional phase, you should consider avoiding an approach that is peculiar to the EPO. For example, you might avoid at least some of the EPO jargon of the problem-and-solution approach (such as ‘objective technical problem’), or perhaps even avoid that approach altogether. The less-formulaic, and perhaps more universal, UK approach to arguing for non-obviousness may instead be preferable. Again, this will be an interesting topic to discuss with your supervisor and you should look at the detailed discussion at chapter 16.7.6.
Test your knowledge 1. Your GB patent application was filed 1 June 2004. Another GB patent application was filed 1 April 2004 and published 1 October 2005. Is it relevant as prior art? To what extent? What if the earlier patent application had been an EP patent application? What if it had been a US patent application? 2. Your GB patent application has one individual claim directed to features A, B, C and D. A first prior are citation discloses features A and B. A second prior art document discloses feature C and D. Is this novelty destroying? 3. Your GB patent application has one independent claim to features A, B, C and D and a dependent claim to feature E. A prior art document has features A, B and C – Is it novelty destroying? What if the prior art document has features A, B, C, D and F?
Suggested chapter answers and comments 1. See 17.1.2 2. See 17.1.2 3. See 17.1.2
Chapter review In this chapter, we have reviewed the legal objections that can be raised in an examination report, practical issues surrounding formulating a response and the role of the patent attorney as advocate. Possible approaches to structuring a response have been demonstrated and differences and similarities between EP and GB practice have been highlighted.
Further study Familiarise yourself with some recent files and review the responses submitted on them. Ask your trainer to involve you in the preparation of responses for GB and EP cases as well as other representative jurisdictions including the US and Japan.
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Preview of main features of next volume
In this first volume of the training manual we have concentrated on the core areas that you must understand in order to be able to perform the basic tasks which you are likely to face on a daily basis and have provided at least a feel for some of the other issues that might come up. However, there is a range of matters that tend to come up less often but which you may have to handle at some point during your working life and these will be examined in the next volume of the training manual. Here we give a quick listing of some of the topics that will be addressed together with a very brief summary of the issues involved. The topics principally centre around post grant procedures and include: • • • • •
Renewals Infringement actions Attacking patents Entitlement actions IPO opinions
In addition we will be looking at extraction of value from IP transactions. Dealing with each of these very briefly for the purposes of the present volume:
Renewals After grant of a patent it is usually necessary to pay a fee to a patent office on a regular basis to keep the patent in force. As an aside, it is worth noting that these renewal fees (also termed annuities or maintenance fees) are a significant proportion of the income of the patent office and often patents do not pay for themselves unless they are renewed for several years. The period of the renewal fee varies but is generally annually (the US being a significant exception) and the timing of payment of the renewal fee is computed from the filing date, not the priority date, meaning that the patent application can actually live a year longer than you might have thought, if you used the full priority year. Sometime renewals fees are due before grant – pending European patent applications have renewal fees paid for the third year (which turns out to start two years after the date of filing for various reasons) and each subsequent year it is pending – once it is granted renewal fees are paid for each of the countries in which it is validated. If a renewal fee is missed there are ways of getting it back fairly easily within a limited period – typically six months upon payment of a surcharge. If more rigorous conditions are met it can be revived even later than that – in the UK and EPO it may be retrievable up to one year from the missed date, again assuming that certain conditions are met. The renewals system raises some significant business considerations – payment of the renewals fees is purely an administrative task and yet if one is missed it can be catastrophic such that a good understanding of the system and a sensible practice is required. Many people use external agencies, not least because it can be the most cost effective approach, but also to shift the liability. Patents Training Manual: Volume 1
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A related issue is the maximum possible duration of the patent which in the UK and Europe at least is 20 years from the filing (not priority) date. The topic of the patent ‘end game’, when a patent for an important commercial product or process expires, is an interesting one and some of the strategies that can be adopted and the caution required are worth discussing with your trainer. Here, it is worth repeating, however, a comment passed on by a long-retired patent attorney – ‘20 years isn’t actually a very long time’.
Infringement action In the present training manual volume, a lot of attention has been paid to the manner in which claims are formulated, patent applications are written, validity is considered and the scope of protection is determined. We have touched a little on some of the remedies available and the acts in relation to which infringement can be alleged. There has, however, been minimal discussion of an actual infringement action. Many patent attorneys during their career will become involved in infringement actions and take various roles from, at the sharp end, running the entire litigation and appearing before the courts as advocate in the guise of a patent agent litigator, through running a case generally but instructing counsel for the advocacy to supporting a full litigation team of solicitors and barristers. In later volumes, we will look at some of the procedures and fora including High Courts, Country Courts and (very unusually) the IPO. We will also look at multinational infringement actions – infringement remains a matter of national law such that if infringement is occurring in multiple jurisdictions then you may have to take action in all of those jurisdictions. On the other hand, various strategies have arisen for reducing the burden and often multiple concurrent actions do not run but instead a couple of key jurisdictions are selected. Some of the practicalities of infringement actions also need to be taken into account. A full infringement action takes up huge amounts of attorney and client time and can be enormously expensive. Even though, in the UK, a good proportion of legal costs are refunded to the winning party, it is still an expensive operation and can cause a smaller business to lose focus altogether while the litigation is going on. Often the threat of litigation is the main requirement to get negotiations started and some of the tactical issues here will be examined together with alternatives such as mediation and arbitration.
Attacking patents Although we have looked at validity in some detail, this has principally been from the perspective of a patent office or court challenging the validity of a patent on your books. However, another possibility is that you are responsible for attacking someone else’s patents for example because your client wants to avoid an infringement action. In the UK and Europe such an attack can take three forms, third-party observations, revocation and opposition and we will look at all these some detail including the grounds available. In summary, third-party observations (touched on in chapters 14 and 15) can be submitted anonymously before the relevant patent office (IPO or EPO), pre-grant in the case of a UK application or pre- or post-grant before the EPO. They do not mean that proceedings are commenced and so you will need to continue to watch the register to see what other side say in response. The ability to hide the identity of the attacking party can be useful. The power of these observations is limited and it is worth talking to your trainer about the circumstances in which they would consider submitting third-party observations – many people will only use them if there is a fairly strong knockout piece of prior art available as detailed and subtle arguments are difficult to follow up within the confines of the procedure.
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Revocation proceedings are available on a country-by-country basis in Europe and lead to the revocation only of the national patent even if it derives from a European patent. The grounds available and the procedures involved need to be understood and the manner and timing of revocation actions can be important. Oppositions are available in relation to granted European patents and, if successful (subject to any appeal) lead to the revocation of the European patent across Europe. As a result they can be much more powerful than revocations and, oddly, can be much cheaper than a single UK revocation action. There are limitations to the opposition procedure and in particular any opposition must be filed with an inextensible nine-month period from the grant of patent. In addition, a restricted set of grounds is available. Once again the procedures, timings and strategies need to be understood and we will look in a little more detail at matters such as oral proceedings which, as a European patent attorney, many people are likely to be attending fairly regularly during their working life.
Entitlement actions We have looked in the present volume of the training manual at who is entitled to patents. Here, we will go into in more detail the nature of entitlement actions, the crossover with appropriation of confidential information which the courts now feel is a closely related issue and the way that the EPO (which does not itself have any say in relation to entitlement) deals with cases which are subject to a national entitlement action.
IPO opinions Dealt with briefly in chapter 14, these are a relatively new development in the UK but have met with significant success. In summary, any party can apply to the IPO for an opinion on validity or infringement of a patent and will receive a non-binding opinion back. Give that the opinion is nonbinding, some have questioned the value of these opinions but in practice they are working out well and the courts are taking notice and we can examine not only the form that the opinion procedure takes but also some of the reasons why you might seek one.
Extraction of value from IP transactions Often the intention with a patent or patent portfolio is not to sue all comers but to set up a favourable commercial position around important technology. For example, this can take the form of a licensing strategy and we will look at how such a strategy can be developed and on what terms. In addition, patents are increasingly becoming a significant asset behind spinout companies and the development of a company, its technology and its IP portfolio. Therefore, initial commercial positioning and subsequent potential for further funding rounds or buy-out are a topic that will be examined.
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Index Notes: The UKPA and the EPC2000 have not been indexed due to the number of references to these texts throughout the manual. All references are to chapters or sections. WBE = Work Based Example exercise for the chapter given LP = Learning Plan for chapter given
A Absolute novelty 6.2.5, See also Novelty Abstract 11.3.9, 11.4, 12.5.6 Accelerated Prosecution of European Patent Applications (PACE) 15.6.4 Accounts See Billing Acquis Communitaire 5.4 Acts, See Legislation (UK) and named Acts Acts of infringement 10.1.1, 10.1.5, 10.2.2 Added matter 8.6, 11.1.1, 11.2.1, 11.2.2, 17.1.5 Advocacy 17.3 Aerotel Ltd v Telco Holdings Ltd 7.2.4 Aesthetic creations 7.2.3 Ambiguity and non-standard use of terms 10.5.1, 10.5.6, 10.5.7 Amendment 3.6.4, 8.6.1, 8.6.2, 8.6.3, 8.6.4, 10.5.6, 13.3, 15.3 , 14.1.4, 14.2.2, 14.3.3, 14.3.4, 15.3,15.4, 15.6.7 16.4.5, 16.8, 16.10, 17.1.5, 17.5.2, 17.5.3, 17.5.5 Analytical and drafting skills 2.6, 11.1.1, 12.1, 12.2, 12.4 Ancillary Regulations (EPO) 5.3.2 Animal varieties 7.3.2 Appeals 4.2.4, 4.4.5, 15.6.6, See also Boards of Appeal Applicant’s Guide (PCT) 5.3.1, 16 Application See Filing strategies Application routes 16.11, 16 (WBE) Asahi Kasei Kogyo KK’s Application 6.2.2 Authorisation to instruct 3.2 Auxiliary requests 15.6.2, 17.2, 17.2
B Barristers 4.1.3 Best Mode (USPTO) 8.2.2, 8.2.4, 11.3.5, 12.6
Best practice in the workplace 3.3.2 Bibliographic information 11.5 Billing 2.3, 3.2.2, 3.8 Bills See Legislation (UK) Biogen v Medeva 8.2.2 Biological samples 14.4.5 Biotech Directive (98/44/EC) 7.1, 7.3.4 Biotechnological inventions 7.3.4 Boards of Appeal (EPO) 5.2.2, 5.5, 6.2.2, 6.2.4, 7.2, 7.3, 8.6, 17.1.3, 17.2 Business methods (patentability) 7.2.4 Business Practice Chapters 2 and 3, 5.6, 6.2.1, 8.3.1, 8.3.2, 11.1.1, 11.2.3, 12.1, 12.2, 12.4, 12.6, 13.3, 13.4, 15.6.2, 14.1.7, 14.2.4, 16.4.4, 17.3, 17.4, 17.5.1, See also Clients
C CIPA See Chartered Institute of Patent Attorneys CPD See Continuing Professional Development Case law See Legislation (UK) and (Europe) Case management tracking system 4.2.3 Catnic v Hill and Smith 10.6 Charging See Billing Chartered Institute of Patent Attorneys 1.3, 2 (LP), 3 (LP), 3.1.3, 3.2.4, 3.2.5, 3.3.3, 3.4, 5.4, 5.5, 5.8, 9.1 Civil Aviation Act 2006 5.4 Civil Procedure Rules 9.1 Claims 4.5.2, 4.6.1, 6.1, 6.2, 6.2.5, 7.2, 8.2.2, 8.3.1, 8.3.2, 8.5, 10.2, 10.3, 10.5.3, 10.5.5, 10.5.8, 10.5.9, 10.5.10, 10.5.11, 10.5.12, 10.8.3, 11.1.1, 11.1.2, 11.3.7, 11.4, 12.4, 13.1, 13.1.1, 13.5.1, 17.1.2, 17.1.5, 17.1.8, 17.1.9, 17.5.2 Clarity 3.5.6, 8.3.1, 10.5.11, 10.5.12, 11.1.1, 11.2.3, Patents Training Manual: Volume 1
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17.1.8, 17.5.2, See also Interpretation Clients Chapters 2 and 3, 6.2.1, 11.4, 12.1, 12.6, 17.4, 17.5.1 Code of Practice See Manual of Patent Practice (IPO) Combining documents See Prior art Commercial awareness 3.10.5, 13.3 Commercial aspects of a patent 11.1.1, 11.2.5, 11.2.6, 11.2.7, 13.2, 13.3 Common general knowledge See Obviousness Communication 2.4, 2.6, 2.7, 2.9, 2 (WBE), 3.3.4, 3.5, 8.3.1, 8.3.2, 11.2.3, 12.1, 12.6, 15.6.2, 16.4.4, 17.4, 17.5.1 Community Patent Convention 1.2, 4.8 Companies House 3.2.1, 3.8.9 Complaints 2.9, 3.3.5, 3.10.11 Computer programs (patentability) 7.2.4 Confidentiality 3.4.1, 3.4.2, 3.4.3, 3.4.4 Confidentiality agreements 6.2.1 Conflicts of interest 3.2.4, 3.2.5 Conciseness 8.3.2, 11.3.7, 17.1.9 Context of the claim 10.3.3, 10.4.6, 10.4.7 Contracts of employment 9.7.5 Contributory infringement 10.1.2 Continuing Professional Development 3.3.3 Convention on International Classification of Patents 1.2 Co-ownership 9.6 Co-pending applications 6.2.3 Copyright 7.2.1, 7.2.3 Copyright, Designs and Patent Act 1988 3.4.2, 5.4, 7.2.3, 9.7.2 Corrections 10.5.6, 14.3.4, 16.10 Could vs would approach 6.3.6 Council of the European Union 4.3.1 Courts (UK) 4.2, 9.5.4, See also Patents courts Credit control 3.8.8
D Databases 5.6, 5.7, 5.8.1 Delegated legislation See Legislation (UK) Dependent claims 10.5.8, 10.5.9, 10.8.3, 11.3.7, 11.3.8, 12.4.2, See also Claims Description 10.4, 11.1.2, 11.3.5, 11.3.6, 11.4, 12.3, 12.5, 17.5.2 Designation of inventor See Inventorship Direct-filed application 15.2 Directives (European Union) 4.3.2 Disclosure 6.2.1, 6.2.2, 6.2.4, 6.4, 8.2, 8.4, 13.1,
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13.1.5, 14.1.2, 14.4.1 Discoveries 7.2.2 Disputes See Inventorship Divisional applications 8.6.4, 14.2.2, 15.4, 17.5.5 Drafting 2.6, 4.5.2, 5.7, 5.8, 6.2, 8.3.1, 8.3.2, 9.8, 11.1.1, 11.2.3, 11.2.5, 11.2.6, 11.2.7, 11.3.2, 11.3.3, 11.3.4, 11.3.5, 11.3.6, 11.3.7, 11.3.8, 11.4, 11.7, Chapter 12, 17.1.2, 17.1.3, 17.1.8, 17.1.9 Drawings 10.4, 11.3.5, 11.4, 12.3, 12.5.4 Due dates 2.8, 3.7, 14.2.4, 17.4.3 Duty of disclosure 14.4.1 DysonTM 13.5.5
E EPC See European Patent Convention EPI See European Patent Institute EPLA See European Patent Litigation Agreement EPO See European Patent Office Eli Lilly and Company v Human Genome Sciences Inc 6.4 Employee inventions 9.7 Employment 3.4.3, 3.4.4, 6.2.1, 9.7 Enabling disclosure 6.2.2 End of priority year 13.4.2 Enforcement of patents 4.5.2, 10.8, 13.3 Entitlement to ownership 9.5.1 Equivalents in claim interpretation 10.5.13, 10.6 Espacenet 5.7 Estimates 3.8.6 European Commission 4.3.1 European Court of Justice 4.3.1 European Legal System 4.3.1 European Legislation See Legislation (Europe) European Parliament 4.3.1 European Patent Convention 1.2, 4.6, 5.3.2, 6.2.3, 6.3, 7.2, 8.1, 9.5.3, 10.1.5, 10.5.11, 10.6, 9.2.1, 13.1, See also European Patent Office and Filing Strategies (EP) European Patent Institute 5.5 European Patent Litigation Agreement 4.9 European Patent Office 1.2, 3.3.3, 4.6, 5.2.2, 5.3.1, 5.3.2, 5.5, 5.7, 5.8, 6.2.2, 6.2.4, 6.3.5, 7.2, 8.6, 12.4.1, 12.4.2, 12.5.2, 15.5.2, 15.6.4, 15.7, 17.1.3, 17.2, 17.4.8, 17.5.4 Evidence of infringement 10.2.3, 10.2.4 Examination 1.2, 14.1.2, 14.1.7, 15.6, 16.7 Examination opinion See Written opinion
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Examinations (Education) 1.3, 2.10 Examples (Prophetic and Worked) 8.2.1 Exceptions to infringement 10.1.3 Exceptions to patentability 7.3 Exceptions to the right to be named 9.3.2, See also Inventor Exclusions from patentability 4.5.2, 4.6.1, 7.2 Ex-PCT filing in the UK 14.2.3 Expectation management 2.9, 3.10.6 Experimentation 6.3.6 Extended European Search Report 15.5.2, 17.2, 17.4.8, 17.5.4 Extensions of time14.1.7, 14.2.4 Extent of protection 4.5.2, 11.2.5, 11.2.6
F Faccenda Chicken v Fowler 9.7.5 Fee-earning See Billing Fees 14.1.3, 14.1.7, 14.4.3, 15.2, 15.3, 15.4, 15.5, 16.2.4, 16.4 Field of invention 11.3.2, 12.5.1 File, inspection 14.4.2, 15.7 File wrapper (USPTO) 10.3.4 File maintenance 3.6, 3.7.4 Filing strategies, Chapter 13, See also Filing strategies (UK), (European / EP) and (PCT) Filing strategies (European / EP), 7.2.6, 8.6.1, 8.6.4, 13.1, 14.2.1, Chapter 15, 17.2, 17.4.8, 17.5.4, 17.5.5, See also European Patent Convention and European Patent Office Filing strategies (PCT) 5.2.2, 13.1, 13.1.5, 14.2.1, 15.3, Chapter 16, 17.4.9, 17.5.6, See also Patent Cooperation Treaty and World Intellectual Property Office Filing strategies (UK) 3.6.4, 5.7, 6.2.3, 7.2.6, 7.3.4, 8.6.1, 8.6.4, 9.2.2, 13.1.2, 13.1.5, 15.7, Chapter 14, 17.2, 17.4.7, 17.5.5 First filing overseas 13.1.5 Fleet Street Reports 3.3.3 Foreign attorneys 13.4.3, 17.4 Formal requirements 15.1, 15.2, 15.3, 15.4, 16.2, 16.3, 16.4, 17.1.10, 17.2
G Games (patentability) 7.2.4 Gazette (PCT) 5.3.2 General Tire & Rubber Co. v
Firestone Tyre & Rubber Co. Ltd 6.2.2 Gene sequence 7.3.4, 14.4.5 Gillette defence See Squeeze Government 4.1.1 Grace period 6.2.5, 13.1.5 Grant of monopoly 1.2, 4.4.4 Grant of patent 1.2, 14.1.8, 15.6.7 Guide to the Patents Act (CIPA) 5.5 Guidelines for Examination (EPO) 5.2.2, 5.3.1, 17.1.3
H Harris’ Patent 9.7.2 Hearings 14.3.2, 15.6.3, 17.2, 17.5.4, 17.5.5 Henry Bros. v Ministry of Defence 9.2.2 Historic development of claim interpretation 10.6 Hughes v Paxman 9.5.3, 9.6 Human body (patentability) 7.3.2 Hypothetical infringement 10.2.2
I IIB (Institut International des Brevets) See International Patent Institute IPC See International Patent Classification IPReg See Intellectual Property Regulation Board IPO 1.2, 3.3.3, 4.4, 5.2.1, 5.2.2, 5.3.1, 5.3.2, 5.8, 7.2, 9.2.2, 9.3, 9.4.1, 9.5, 9.5.4, 9.7.3, 9.7.4, 14.1.3, 14.1.7, 14.4.2, 14.4.3, 14.4.4, 17.1.3, 17.2, 17.5.5 ISA See International Searching Authority ITMA See Institute of Trade Mark Attorneys Implicit disclosure 6.2.2 Independent claims, See also Claims, 10.5.8, 10.5.9, 11.3.7, 12.4.1 Industrial application 4.5.2, 6.1, 6.4, 7.2.2, 8.2.1 Inescapable trap 8.6.3, 17.1.5 Information gathering (for drafting) 9.8, 12.1, 12.6 Information management 5.6, 12.1, 12.6, See also Communication Information sources 2 (LP), 3 (LP), 3.1.3, 3.2.4, 3.2.5, 3.3.3, 3.2.1, 3.4, 3.7.4, 3.8.9, 3.9, Chapter 5, 6.2, 9.1.1, 11.3.3, 11.4, 11.5, 12.1, 12.5, 14.1, 15.7, 16.2, 17.1.2, 17.1.3, 17.2, See also Legislation Infringement 4.5, 4.6, 5.7, Chapter 10, 13.3, 11.2.6, 11.2.7, 11.4, 13.3, 17.1.2, 17.1.3, 17.2, Infringer 10.1.4 In-house attorneys 3, 6.2.1 Patents Training Manual: Volume 1
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Institute of Trade Mark Attorneys 1.3, 5.4 Instruction 3.2.1, 3.2.3, 17.4.2, 17.5.1 See also Authorisation to instruct Intellectual Property Regulation Board Chapter 2, Chapter 3, 3.1.3, 3.1.4, 3.2.4, 3.2.5, 3.3.1, 3.3.2, 3.3.3, 3.4.1, 3.5.8, 3.6.6, 3.10.11 International exhibitions 6.2.4 International Bureau 16.1, 16.2, 16.6, See also Filing Strategies (PCT) International Patent Classification 14.1.3 International Patent Institute 1.2 International Phase Chapter II See International Preliminary Examination International Preliminary Examination 16.5.2, 16.7, 16.8 International Search Authority 5.2.2, 16.4.1, 16.4.2, 16.5, 17.4.9 International Search Report 16.4, 17.4.9 International standards 13.3 Interpretation of a claim 4.5.2, 4.6.1, Chapter 10, 11.4, 17.1.2, 17.1.3, 17.2 Invention 8.2.1, 9.1.2, 9.2.1, 9.7, 10.4.4, 11.3.2 Inventive step 4.5.2, 4.6.1, 6.1, 6.3, 11.1.1, 11.1.2, 12.5.2, 17.1.3, 17.5.2, 17.5.5 Inventor 9.1.2, 9.2.2, 9.3, 9.8, 9.4, 14.1.6, See also Inventorship and IPO Inventor’s rights See Inventor Inventorship Chapter 9, 14.1.6, See also Ownership
J Japanese Patent Office 14.1.7 Joint Examination Board 1.3 Judicial guidance (Interpretation of a claim) 10.3.2 Jurisdiction 10.7, 11.4, 13.1
K Kakkar v Szelke 9.5.3 Kelly & Chiu v GE Healthcare Ltd 9.7.3 Kirin-Amgen Inc v Hoechst Marion Roussel Limited 10.3.2, 10.6
L Lancashire Fires v S.A. Lyons 9.7.5 Latchways 9.5.3 Legal Ombudsman 3.10.1, 3.10.11
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Legal System (Europe) 1.2, Chapter 4, 5.2.2, 5.4, 11.1, See also Legislation (Europe), Patentability and Infringement Legal System (UK) Chapter 4, 5.2, 11.1, See also Legislation (UK), Patentability, Infringement and IPO Legislation (Europe) 3.3.3, 4.3.2, 4.8, 4.9, 5.1, 5.2, 5.2.2, 5.3.2, 5.4, 7.1, 7.3.4 Legislation (UK) 1.2, 3.4.2, 3.8.9, 4.1.2, 4.5.2, 5.1, 5.2, 5.4, 5.8, 6.2.1, 6.2.2, 6.3, 7.2.3, 7.2.4, 8.2.2, 9.1, 9.2.2, 9.5, 9.7.1, 9.7.2, 9.7.5, 10.3.2, 10.6, Letters Patent 1.1 LIFFE Administration & Management v Pavel Pinkava 9.2.2, 9.7.2, 9.7.5 Local novelty 6.2.5, See also Novelty London Agreement 15.6.7 Long felt want See Inventive step Luxim Corporation v Ceravision Ltd 9.5.4
M Macrossan’s Application See Aerotel Ltd v Telco Holdings Ltd Manual of Patent Practice (IPO) 5.3.1, 17.1.3 Markem Corp. v Zipher Ltd 9.2.2, 9.5 Mathematical methods 7.2.2 Mayne Pharma Pty Ltd, Mayne Pharma Plc v Pharmacia Italia SpA and Mayne Pharma Limited, Mayne Parma plc v Debiopharm SA, Sanofi-Sythelabo 10.6.3 Medical treatments / diagnosis 7.3.2 Medicines (Marketing Authorisations, etc) Amendment Regulations 2005 4.5.2 Meetings with clients 3.9, 12.1 Memco-Med’s Patent 9.7.3 Mental acts (patentability) 7.2.4 Mertz Pharma GmbH & Co K GaA v Allergan Inc 10.6.3 Missing parts 14.1.2 (UK) Money laundering 3.8.9 Monopoly 11.2.5, 11.2.7, 13.1.5, See also Grant of monopoly Morality 7.3.3 Multiple dependency claims 11.3.8 Multiple inventions 13.5.3, 14.1.3 Multi-track system 4.4.4
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N National Laws of the EPC Countries 5.5 National phase entry 16.9 National regional phase 13.4.3 Negligence 3.3.5 Non-disclosure agreement See Confidentiality agreement Non-search 15.5.3 Novelty 4.5.2, 4.6.1, 6.1, 6.2, 6.2.5, 11.1.1, 11.1.2, 13.1, 13.1.1, 13.5.1, 17.1.2, 17.5.2
O Obviousness 17.1.3, 17.5.5, See also Inventive step Office procedures 2.4 Official Journals 3.3.3, 5.2.2, 5.3.2 Oncomouse 7.3.4 Opinion (foreign patents) 10.7 Opinions, post-grant 14.4.4 Oral disclosure 6.2.1 Oral proceedings See Hearings Organisational skills 2.7, 2.8, 3.7.5, 3.7.6, 5.6 Overseas, first filing 13.1.5 Ownership Chapter 9, See also Inventorship
P PACE see Accelerated Prosecution of European Patent Applications PCT See Patent Co-operation Treaty Paris Convention 1.2, 5.4, 13.1 Parliament 4.1.1 Partial search report 14.1.3, 15.5.4 Patent application See Structure of a patent application and relevant Filing strategies Patent attorneys Chapter 1, 2.6, Chapter 3, 4.4.2, 5.4, 6.2.1, 10.7, 11.1.1, 13.4.3, 17.3, 17.4, Patent Co-operation Treaty, 1.2, 3.3.3, 4.7, 5.1, 5.3.1, 5.3.2, 5.7, 5.8, 9.4.2, 9.5.3, 13.1, 16.2.1, 16.6, See also Filing strategies (PCT) and World Intellectual Property Office Patent courts 4.4.2, 4.4.3, 4.4.4, 4.4.5, 4.4.6, 5.2, 9.5.4, 9.7.3, 9.7.4, 10.8.1, 11.1.1 Patent pending See Provisional protection Patent Prosecution Highway 14.1.7 Patentability 3.4.1, 3.4.2, 3.4.3, 3.4.4, 4.5, 4.6, 5.2.2, 5.5, Chapters 6, 7 and 8, 11.1.1, 11.1.2, 11.2.1, 11.2.2, 11.2.3, 11.2.4, 11.2.5, 11.2.6, 11.3.2, 11.3.7,
13.1, 13.5.1, 14.1.2, 14.1.7, 14.2.2, 14.4.5, 17.1.2, 17.1.3, 17.1.5, 17.1.6, 17.1.7, 17.1.8, 17.1.9, 17.2, 17.5.2, 17.5.5 Patenting System (UK) See Legal system (UK) Patents Rules 2007 5.1, 9, 14.1 Pepys, Samuel 1.1 Performance management See Quality control Person skilled in the art 6.3.2, 6.3.4, 6.3.6, 8.2.1, 11.3.2, 17.1.2 Plant varieties 7.3.4 Preliminary examination 14.1.2 Presentation of information 2 (WBE), 3.5.7, 3.5.8 Presentation of information (patentability) 7.2.5 Prior art 5.7, 5.8, 6.2, 6.3, 7.2, 10.5.4, 11.3.3, 11.4, 12.5.2, 17.1.2, 17.1.3, 17.2, 17.5.5 Priority 5.7, 13.1.2, 13.1.3, 13.1.4, 14.2, 16.3.2 Priority year 13.4.2, 13.5.2 Problem-solution approach 6.3.5, 12.5.2, 17.1.3, 17.5.4 Proceeds of Crime Act 2002 3.8.9 Professional colleagues 2.5, 2.9, 3.3.2, 3.10.8, 13.4.3 Professional competence 2.6, 3.3, 3.3.4, 11.1.1, 13.4.3 Professional examinations See Examinations Professional indemnity insurance 3.3.5 Prosecution through to grant 3.5.6, 8.5, 12.4.2, Chapter 17, Protection See Extent of protection and Provisional protection Provisional protection 13.3, 14.1.5 Public policy 7.3.3 Public use 6.2.1 Publication 13.5.2, 14.1.5, 15.5.5, 16.6
Q Quality control 3.10.9, 3.10.1
R Ready Mixed Concrete v Minister of Pension and National Insurance 9.7.1 Records department 3.7.4 Receiving Office See Filing strategies (PCT) Regional phase application 15.3 Register of files 15.7 Registered Designs Act 1949 9.7.2 Regulations (European Union) 4.3.2, 5.1 Re-instatement of applications 14.4.3 Related inventions 13.1.5, 13.5 Patents Training Manual: Volume 1
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Relationships 2.5, 2.9, 3.2.1, 3.2.3, 3.2.5, 3.2.6, 3.3.2, 3.5.3, 3.5.4, 3.9.5, 3.10.3, 3.10.8, 13.4.3, 17.3 Relative novelty 6.2.5, See also Novelty Remedies for infringement 4.5.2, 4.6.1 Reports of Patent, Design and Trade Mark Cases 3.3.3, 5.2.1 Requirements for grant See Patentability Responses to official objections 14.1.7 (UK), 15.6.2, 16.4.4, 17.4, 17.5 Right to be named See Inventor Rights of the inventor See Inventor Rights to employee inventions See Employment Rules of Professional Conduct (CIPA) 2 (LP), 3 (LP), 3.1.3, 3.2.4, 3.2.5, 3.4 Rules Relating to Fees and Protocols 5.1
S Scientific theories (patentability) 7.2.2 Scope of monopoly 11.2.5, 11.2.7 13.1.5, See also Grant of monopoly Searches (Prior art, status and infringement) 5.7, 17.1.2, 17.1.3, 17.2 Search report (filing strategies) 14.1.3, 14.1.7, 15.2, 15.5.1, 16.4, 17.4.7 Selection inventions 6.2.6 Sequence listing 14.4.5 Shanks v Unilever Plc & Ors 9.7.4 Solicitors 4.1.3 Squeeze 11.3.7, 17.1.5 Staeng’s Patent 9.5.3 State of the art See Prior art Statement of invention 11.3.4, 12.5.3 Status of the employee 9.7.1, See also Employment Statute of Monopolies 1.2 Statutes See Legislation (UK) Statutory Instruments See Delegated legislation Streamlined procedure 4.4.6 String of inventions See Related inventions and Multiple inventions Structure of a Patent Application 4.5.2, 5.7, 5.8, 6.2, 8.2.4, 8.3.1, 8.5, 8.6, Chapter 11, 12.1, 12.3, 12.4, 12.5, 14.2.1, 17.1, 17.2 Substantive examination 14.1.7, 16.7.5, 17.2 Sufficiency 8.2, 11.1.1, 11.2.1, 17.1.6 Supplementary International Search (SIS) 16.4.6 Supplementary search report 15.5.5 Support 8.4, 11.1.1, 11.2.4, 17.1.7
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Supreme Court of the UK 4.2.1, 5.2.1 Swiss form claims 11.3.7, 12.4.1
T TRIPS See Trade Related Aspects of Intellectual Property Teaching See Prior art Technical advantage See Inventive step and Obviousness Technical prejudice See Inventive step and Obviousness Third party observations 14.3.1, 15.6.5 Threats action (infringement) 10.8.4 Time management 2.8, 3.7, 3.8.3, 3.10.4 Time taken to report 15.6.4 Timeline 14.1 Title (patent) 11.3.1 Trade Related Aspects of Intellectual Property 5.4 Trainer 2.5 Training See Examinations Transfer of disputes from IPO to Patents courts 9.5.4 Transferring files See File maintenance Translations 15.3, 15.6.7, 16.3.2 Treaties (European Union) 4.3.2, 5.4
U USPTO See United States Patent and Trade Mark Office Unauthorised disclosure 6.2.4 United States Patent and Trade Mark Office 5.7, 5.8, 7.2, 8.2.1, 8.2.4, 9.4.2, 9.8, 10.3.4, 11.3.5, 12.4.1, 12.4.2, 12.5.5, 12.6, 13.1.5, 14.1.7 Unity of invention 8.5, 11.3.7, 12.4.2, 14.1.3, 17.1.9, 17.5.2 University of Southampton’s Applications 9.2.2 Ultraframe v Fielding 9.7.1 Urgent filings 13.4.1 Use inventions 6.2.6
V Validity of a claim 4.5.2, 4.6.1, 10.5.10 Viziball’s Application 9.5.2 Voluntary amendments 17.5.3
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W WIPO See World Intellectual Property Office WTO See World Trade Organisation Websites 5.8, 15.7, 16.3.2, 16.6.2 Windsurfing International Inc. v Tabur Marine Great Britain Ltd. 6.2.1, 6.3 World Intellectual Property Office 1.2, See also Filing strategies (PCT) and Patent Cooperation Treaty World Trade Organisation 5.4 Written description (USPTO) 12.5.5 Written disclosure 6.2.1 Written opinion (search) 14.1.3, 14.1.7, 16.4, 16.5
Y Yeda Research v RhĂ´ne-Poulenc Rorer 9.5
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Training log The following tables provide you with the framework to record your training progress. Although the structure is based on the chapters within this manual, you may find that some of your activities relate to one or more of the sections – this merely reflects how inter-related many of your work activities will be and it is to be expected that one activity may provide you with experience of more than one area of competence. Although space for your trainer to sign off your activities has been included for all sections, please use this column as appropriate to your needs and company training requirements. The structure of each section reflects the topic being covered.
Chapter 1: History of patents and the patent profession Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Discussion with trainer Record date(s) and topic
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Chapter 2: Role of the trainee Initial activity:
Trainer’s initials
Notes:
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Chapter 3: Business practice Notes:
Trainer’s initials
Activities specific to Date Personal comments: business practice (3): completed
Trainer’s initials
Initial activity: Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
Been assigned a mentor (if applicable) and had an initial meeting with them.
Read any company manual on billing/client relationships/ communication/file maintenance, etc. Conducted a company search via Companies House.
Requested a client credit check.
Viewed clients’ internal files (to understand content and structure).
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Chapter 3: Business practice (continued) Activities specific to Date Personal Comments: business practice (3): Completed
Trainer’s initials
Estimated the cost of work (whether submitted to the client or not).
Discussed file management with records manager.
Observed a client meeting.
Drafted formal documents to include: a letter to a client, a more formal report, meeting note and a response to a patent office communication. Started a client file and opened a billing account. This should include the creation of a client invoice. Lead a client meeting.
Started a personal CPD diary.
Other related activities in the work place.
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Chapter 3: Business practice (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 4: Legislative structure Initial activity: Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 4: Legislative structure (continued) Date Activities specific to Personal comments: legislative structure (4): completed
Trainer’s initials
Visited one or more type of court.
Visited your national patent office.
Attended a meeting with a solicitor or barrister as an observer. Consulted a solicitor with regard to your own client file. Other related activities in the work place.
Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Chapter 5: Sources of information Initial activity:
Trainer’s initials
Notes:
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
Activities specific to sources of information (5): Obtained copies of all legal documents required in the learning plan and studied them carefully.
Used websites in section 5.8 or other database to locate an Act and a Statutory Instrument.
Traced the legal history of three cases (taking an old case and working forwards or a new case and locating those cited).
Explored the EPO and IPO sites thoroughly – so that you would be able to show a colleague the main elements of each site.
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Personal comments:
Trainer’s initials
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Chapter 5: Sources of information (continued) Activities specific to Date sources of information (5): completed
Trainer’s initials
Personal comments:
Used the EPO website to locate decisions from the five Boards of Appeal. Worked through all available modules of the EPO online learning provision. Read at least three copies of the Official Journal via the EPO and/or the IPO website or in printed form. Searched for a European patent using the Esp@cenet database – try using different search options. Searched for a US patent via the USPTO website – try using different search options. Other related activities in the work place.
Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Chapter 6: Patentability – general issues Initial activity:
Trainer’s initials
Notes:
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer
(This is to include the work based examples given in this chapter)
Record date(s) and topic
Activities specific to patentability (6): Read through a number of files considering the aspects of novelty, inventive step and commercial application. Considered any files relating to infringement on grounds relating to novelty, inventive step and commercial application. Drafted advice to a client with regard to novelty, inventive step and commercial application.
Drafted advice to a client regarding disclosure of their invention.
Other related activities in the work place.
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Personal comments:
Trainer’s initials
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Chapter 6: Patentability – general issues (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 7: Patentability – specific issues Initial activity:
Trainer’s initials
Notes:
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer
(This is to include the work based examples given in this chapter)
Record date(s) and topic
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Chapter 7: Patentability – specific issues (continued) Activities specific to patentability (7): Located from either company files or external reports, cases where an invention has been refused a patent on grounds mentioned in this chapter.
Drafted advice to a client with regard to their invention being excluded or excepted from patentability.
Discussed any arguments that have been presented in response to an invention being excluded or excepted from patentability.
Followed up the Enlarged Board of Appeal cases noted in further study. Are there other cases of note? Discuss these with your trainer.
Other related activities in the work place.
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Personal comments:
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Chapter 7: Patentability – specific issues (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 8: Other requirements for grant Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 8: Other requirements for grant (continued) Activities specific to other Date requirements for grant (8): completed Located from either company files or external reports, cases where an invention has been refused for lack of sufficiency or would have been if the application had not been redrafted. This may require assistance from your trainer.
Identified cases where the ‘best mode’ has been used in the drafting process.
Considered a number of files with the concepts of clarity, conciseness and support in mind. Would you have approached the drafting in the same way?
Considered files where amendments have been required, pre and post grant. Also considered divisional applications, if available to you.
Other related activities in the work place.
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Chapter 8: Other requirements for grant (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 9: Inventorship – ownership of inventions and disputes about ownership Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 9: Inventorship – ownership of inventions and disputes about ownership (continued) Activities specific to Inventorship (9): Considered case files where the invention’s identification was complex (through employee status, co-ownership or company ownership).
Considered cases (by reading files or through involvement in the dispute process) where the inventor has had disputes. Be aware or at least one case pre-grant and one case post-grant).
Completed the forms to designate the inventor as part of your drafting experience.
Advised a client where ownership may be an issue (e.g. employees’ rights are involved). This should also include discussion of compensation and the contract of employment.
Other related activities in the work place.
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Personal comments:
Trainer’s initials
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Chapter 9: Inventorship – ownership of inventions and disputes about ownership (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 10: Infringement and claim interpretation Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 10: Infringement and claim interpretation (continued) Activities specific to infringement and claim interpretation (10): Become familiar with the key cases regarding infringement and claim interpretation to a level that these can be discussed with your trainer and peers.
Submitted patents to your trainer for discussion where the passages that refer to claim interpretation have been highlighted.
Reviewed a patent, compiling a table of alleged infringements (as per 10.2.1).
Considered each of the interpretation issues (10.5) and highlighted these in a number of patents, for discussion with your trainer.
Other related activities in the work place.
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Date Personal comments: completed
Trainer’s initials
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Chapter 10: Infringement and claim interpretation (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 11: Structure of a patent application Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 11: Structure of a patent application (continued) Activities specific to structure of a patent application (11):
Date Personal comments: completed
Trainer’s initials
Read a number of patent applications prepared by your organisation (granted and not granted) to become familiar with the overall structure. Read the same or other patent applications with the points in section 11.2 in mind.
Prepared (and presented to your trainer) comments on a patent from the perspectives of reading for prior act and for infringement. Other related activities in the work place.
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Chapter 12: Drafting a patent Initial activity:
Trainer’s initials
Notes:
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
Activities specific to drafting a patent (12):
Date completed
Personal comments:
Trainer’s initials
With your trainer, taken part in the gathering of the information required for a patent to be drafted.
Gathered the information required for a patent with minimal supervision.
Drafted a patent from the beginning to the end of the process, under supervision.
Submitted a patent, with minimal alteration by your trainer, to the IPO.
Other related activities in the work place.
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Chapter 12: Drafting a patent (continued) Activities specific to drafting a patent (12): Located from either company files or external reports, cases where an invention has been refused for lack of sufficiency or would have been if the application had not been redrafted. This may require assistance from your trainer. Identified cases where the ‘best mode’ has been used in the drafting process.
Considered a number of files with the concepts of clarity, conciseness and support in mind. Would you have approached the drafting in the same way?
Considered files where amendments have been required, pre and post grant. Also considered divisional applications, if available to you.
Other related activities in the work place.
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Personal comments:
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Chapter 12: Drafting a patent (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 13: Filing strategies – an introduction Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 13: Filing strategies – an introduction (continued) Activities specific to filing strategies (13): Read through a number of files with the filing strategy in mind. Discussed with your trainer those where other options would have been acceptable.
Read files and discussed with your trainer any cases where the first filing was overseas – pay particular attention to any difficulties with working through a third party.
For a client, drawn the timeline for the options for their filing strategy (for a single invention). Make sure that costs at each point have been included.
Either for a client or hypothetically for your trainer, drawn the timeline for a string of related inventions.
Other related activities in the work place
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Personal comments:
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Chapter 13: Filing strategies – an introduction (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 14: Filing strategies (UK) Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 14: Filing strategies (UK) (continued) Activities specific to Date filing strategies (UK) (14): completed Read files of previous applications, paying attention to the official documents – search report, publication, examination opinion and the grant of patent.
Been involved in cases where the following have been considered – divisional applications, ex-PCT applications, and those claiming priority.
Made a pre-grant amendment to an application.
Prepared and submitted a UK patent application.
Other related activities in the work place.
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Chapter 14: Filing strategies (UK) (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 15: Filing strategies (EP) Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 15: Filing strategies (EP) (continued) Activities specific to filing strategies (EP) (15): Read files of previous applications, paying attention to any problems arising (as highlighted in 15.2) and official documents within the files.
Located cases where the search report has found items as categorised in section 15.5.
Considered cases where an appeal could have been made against the decision. Present these arguments to your trainer.
Prepared and submitted an EP patent application.
Other related activities in the work place.
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Date completed
Personal comments:
Trainer’s initials
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External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 16: Filing strategies (PCT) Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 16: Filing strategies (PCT) (continued) Activities specific to filing Date strategies (PCT) (16): completed Completed and submitted a PCT application form If available in your work place, use the PCT-SAFE online filing system. Alternatively, try to attend a training session on this system, if appropriate. Observed the process of instruction an overseas patent attorney acting on behalf of your organisation.
Drafted a response to an unfavourable International Search Authority Written Opinion (to include an International Preliminary Examination, if available) and argued your case with your trainer.
Discussed with a client the appropriateness of a PCT application (positive or negative, depending on their circumstances). This should include an indication of costs and the timeline of the events in the life of the application.
Other related activities in the work place.
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Chapter 16: Filing strategies (PCT) (continued) Trainer’s initials
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
Chapter 17: Prosecution through to grant Initial activity:
Notes:
Trainer’s initials
Chapter reading Start date: End date:
Test your knowledge Start date: End date:
Discussion with trainer Record date(s) and topic
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Chapter 17: Prosecution through to grant (continued) Activities specific to prosecution through to grant (17):
Date completed
Personal comments:
Trainer’s initials
Traced the steps outlined in this chapter when reading completed case files (at least three).
Drafted a response to the IPO using a live case.
Drafted a response to the EPO using a live case.
Drafted a response to an Extended European Search Report.
Other related activities in the work place.
External education: Attendance at a training event covering this topic – event details and notes: (e.g. Informals event, IPO session, training company seminar, completion of online training modules, etc.)
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Page 1
The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys (also known as patent agents) in the UK. The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 1800 registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 3000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
Ensuring that your trainee patent attorney receives the training that they need can be a valuable but time-consuming task. Base your training programme on the newly-updated CIPA Training Manual, and you have a structured framework of study already prepared.
The Patents Training Manual
Features include: Authoritative chapters written by fellow patent attorneys based on their practice experience Encouragement to the trainee to play an active role in the their learning and tie in their studies with practice in the workplace A training log allowing the both the trainer and the trainee to chart and monitor progress in both study and work experience Suggestions as to further study and links to examination syllabi Real-life scenarios to challenge the trainee Volume 1 covers core patenting tasks, Volume 2 will explore post-grant procedures and Volume 3 will consider international patents.
The Patents Training Manual
The Patents Training Manual
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