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 3,000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
The Patents Training Manual
The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK.
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.
2022 Edition
Features include: • Authoritative chapters written by fellow IP professionals 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
The Patents Training Manual
Price: £75 I S B N 978-0-903932-72-1
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Editors: Gwilym Roberts and Debbie Slater
2022 Edition
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The Patents Training Manual Editors: Gwilym Roberts and Debbie Slater
2022
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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. © 2022. 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 and 2022 Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-72-1 Printed and bound by Hobbs the Printers Ltd – www.hobbs.uk.com Cover design by Jonathan Briggs Contact the editors at editor@cipa.org.uk
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The Patents Training Manual Contents
Introduction........................................................................................................................................v Guidance for trainers......................................................................................................................ix 1. History of patents and the patent profession...................................................................... 1 2. The role of the trainee............................................................................................................... 9 3. Business practice......................................................................................................................19 4. Legislative structure.................................................................................................................61 5. Sources of information............................................................................................................81 6. Patentability: general issues.................................................................................................99 7. Patentability: specific issues................................................................................................ 119 8. Other requirements for grant.............................................................................................. 145 9. Inventorship: ownership of inventions… ......................................................................... 163 10. Infringement and claim interpretation.............................................................................183 11. Structure of a patent application..................................................................................... 209 12. Drafting a patent application..............................................................................................217 13. Filing strategies: an introduction......................................................................................233 14. Filing strategies (UK)...........................................................................................................249 15. Filing strategies (EP).............................................................................................................271 16. Filing strategies (PCT)......................................................................................................... 291 17. Prosecution through to grant.............................................................................................321 18. Commercialisation of intellectual property................................................................... 347 19. Introduction to additional topics......................................................................................363 Index................................................................................................................................................. 371 Training log..................................................................................................................................... 377
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INTRODUCTION Purpose and structure of The Patents Training Manual By Debbie Slater (CPA, Prevayl Ltd) and Gwilym Roberts (CPA, EPA, Kilburn & Strode)
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his 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. Whilst we hope that this manual be seen as a useful primer and source of information, trainees should ensure that they read and consult with other books and sources of information available. There are many excellent books on the market and some of these are referenced in this manual. It is hoped that, in providing an overview of the main areas of practice for patent attorneys, it approaches this in a practical and pragmatic way with a focus on the real world of the patent attorney profession. Although mention is made of relevant qualifying examinations of the Patent Examination Board 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 https://www.cipa.org.uk/patent-examination-board and https://www.epo.org/learning/eqerespectively. The manual is split into a number of chapters, each one dealing with a different topic. The chapters do not necessarily have to be read in the order that they are presented but we would suggest that the first five chapters be read first.
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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. There is also a link to the relevant examination papers and to the IPReg Competency Framework (see https://ipreg.org.uk/sites/ default/files/IPReg-Skill-Set-Table-Patent_FINAL1.pdf). 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, referencesto the PCT and the UK Patents Rules mean the latest version. IPO means the UK Intellectual Patent Office. There is a constant churn of change of laws and procedures and the Training Manual is as up to date as publication deadlines permit and takes into account
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changes known to be on the cards. The reader is advised to cross check against the latest versions of laws where appropriate.
The editors 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 is Chair of Kilburn & Strode, Honorary Secretary of CIPA and Visiting Professor at Queen Mary, University of London. 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 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 the Patents Training Manual and his book A Practical Guide to Drafting Patents was first published by Sweet vi
& Maxwell and a new edition will be published by CIPA in 2022. Debbie Slater (CPA) began her career in the IP profession as a patent examiner at the EPO in 1983 after graduating with an honours degree in Physics from the University of Leeds. After a stint as IP manager for the engineering group Vickers in the late 1980s, she qualified as a patent attorney. As a patent attorney she has worked in private practice and in corporate environments. She is currently working in-house for a start-up company, Prevayl Ltd, based in Manchester. She has also spent time as an IP management consultant. She lived and worked in Australia between 2000 and 2012 and then again from 2017 to 2019. Debbie is Vice Chair of the CIPA Education Committee and is also closely involved in the development and delivery of the CIPA Introductory Patent Paralegal Course. She is currently working on developing the advanced course. She is a trained secondary school teacher having obtained a Graduate Diploma in Education and spent time teaching maths at a high school in Perth, Western Australia. She also holds a Diploma in Higher Education from the University of Bedfordshire.
The authors As well as the editors, other authors in this edition are: Martin Bell (CPA, EPA), Marks & Clerk Catherine Bonner (PhD, CPA, EPA), Murgitroyd Emily Dodgson (CPA, EPA), Abel + Imray Henry Edwards (barrister), 8 New Square Edmund Eustace (barrister), 8 New Square Jonathan Hewett (CPA, EPA), Venner Shipley LLP Ben Hoyle (CPA, EPA), Hoyle IP Services John Hull, Queen Mary, University of London and King’s College London Marco Morbidini (CPA, EPA), Kilburn & Strode Alexandra Orrin (CPA, EPA), Withers & Rogers Sue Ratcliffe (CPA, EPA), Synthomer James St Ville QC (barrister), 8 New Square Martin Shaw (MSci ), Murgitroyd Debra Smith (EPA, CPA), Mayfin IP Daniel Wolstenholme (EPA, CPA), Marks & Clerk
INTRODUCTION
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Authors from the first edition include: Andrea Brewster OBE (IP Inclusive) Alison Care (Haley Guiliano LLP) Tibor Gold MBE Richard Howson (Kilburn & Strode) William Jones (ip21) Alexander Korenberg (Kilburn & Strode) James Legg (Boult Wade Tennant) Heather McCann (EIP) Maria Nichol (Galapagos) Stella Wong (Hogan Lovells)
Disclaimer The contents of 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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GUIDANCE FOR TRAINERS By Debbie Slater (CPA, Prevayl Ltd) and Gwilym Roberts (CPA, EPA, Kilburn & Strode)
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his training manual is designed as a tool for trainees to guide and inform their training. As we mention in the introduction, the manual aims to be a focus for dialogue and discussion between trainees and those responsible for their training and development. It is not designed as an academic reference book, nor as something which – if the trainee learns everything in here – will mean that they will pass their exams. Rather, the aim is to identify topics, skills and knowledge that trainees should have exposure to, and develop experience in, during the early stages of their career. The idea is that the burden of the repetitive ‘rote learning’ aspect of training is shifted from you to the manual, freeing up your time, and allowing you to focus instead on the inevitable questions that will occur to the trainee as they go through a topic. We have presented the chapters in a logical order but your trainee does not need to run through them linearly – for example when a trainee is first exposed to a new aspect, they could read through the relevant chapter(s) first and then apply what they’ve learnt, with your help, to the task in hand. We hope that trainees will use this manual to help them assess the scope of their knowledge and practice and particularly to identify gaps in their learning. We encourage you to use this manual in the same way so that, in discussion with your trainees, you can provide them with a range of learning experiences that will help them develop in their practice.
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Each chapter has a section entitled ‘Guidance for trainer’. This sets out suggestions for ways in which you can provide additional support and information to trainees, in relation to the relevant chapter. This should be in addition to any further training that you give them, as well as courses that they attend, and private study that they undertake. The chapters are cross referenced to the IPReg Competency Framework which sets out the expectations from IPReg as to the skills and knowledge that trainees should develop during their trainee. The Framework can be accessed at https://ipreg.org.uk/sites/default/files/ IPReg-Skill-Set-Table-Patent_FINAL1.pdf. We encourage you to use this document, along with the examination syllabus for the PEB qualifying exams, to ensure that trainees can experience the range of skills that they need to qualify as a patent attorney. Each chapter also identifies legal texts and prerequisites for the chapter. Please make sure that these are available to your trainees. Finally, a training log is provided to accompany this manual. Trainees can use this to record their training. Going through this record with you, as their trainer, should enable you to monitor their progress, and for trainees to plan their future learning needs. Last, but not least, can we take this opportunity to thank you for the work that you do in supporting and developing the patent attorneys of the future.
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1
HISTORY OF PATENTS AND THE PATENT PROFESSION By Debbie Slater (CPA), Prevayl Ltd *
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. Guidance for the trainer: If you are in private practice, discuss the company’s own history in relation to the development of the patent profession. If you are in industry, discuss how patents have featured in the history of your company. Syllabus link: None. IPReg Competency Framework link: None. Time allocated: Two or three hours.
Learning outcomes By the end of this chapter you will be able to outline the background of our profession; these skills will allow you to appreciate just what a great job it is.
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1.1 Historic origin of letters patent It is believed that a form of patent right was available in Ancient Greece, although evidence of this is limited. The first formal patent system was in Venice in the fifteenth century. As Venetians travelled and sought similar protection elsewhere, other countries began to establish their own patent systems. The term patent derives from the term Literae Patentes or ‘open letters’, Patents 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 are referred to as open letters because they were not sealed up with a wax seal, as a common letter would be. They have a seal (the Great Seal) attached to the document to confirm its authenticity as a grant of monopoly by the Crown. Thus, the document can be read without breaking the seal. Letters Patent are still used today, for example for the appointment of Royal Commissioners. There is little room for discussion in this book, but a brief look at how one of history’s great diarists found the system is considered to be worthwhile. Samuel Pepys’ Diary for 16601 is much concerned with this latter type of letters patent and the task of 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: ‘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... 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
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obtaining a patent for Lord Mountagu, and getting his own patent. The diary also includes comments on the patents being obtained by all 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 25 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. On 12 July, Pepys writes that he went to the Privy Seal and got his bill perfected there, and at the Signet: and then on to the House of Lords, where he was directed to Mr Beale, the Deputy Commissioner of Patents, to get his patent engrossed in ‘Chancery-hand’ 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, Mr Beale, who was angry that he had not been given the task of writing Pepys’ patent (despite not having been available to do so), 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 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
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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.’
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 in the UK Patents are still a grant of monopoly by the state although, nowadays, in respect of inventions, this grant is handled by the patent offices of the various countries, or sometimes by supranational bodies, which may appear with different names and responsibilities. For example, in the UK, patents are examined and granted by the United Kingdom Intellectual Property Office (IPO), or by the European Patent Office (EPO). 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 goods and the merchant would be unwilling to divulge his source. Such granted monopolies were often considered to be an abuse by the monarch and grants by Queen Elizabeth I and King 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
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been granted was for the manufacture of stainedglass 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 workers 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, that 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 did exist 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.
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The next major change in patent law occurred with the 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 also 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, previously, it was unable to do. Under the previous Act only a lack of novelty was grounds for refusal. Both of these concepts are 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 1970.4 This Act also allowed the UK to enter into international agreements for the establishment of the European Patent Office 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. However, it was not until 1965 that the UK became a member of the International Patent Institute (IIB) founded under a diplomatic agreement between Belgium, France, Luxembourg and the Netherlands in 1947. One of the most significant international treaties must be that establishing the 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
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Treaty in 1970, a treaty which has now been signed – at the time of writing – by over 150 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. The creation of a single patent for European jurisdictions has been a goal for some time. The Community Patent Convention was signed by the nine original member countries of the European Economic Community as far back as 1989 but never became a reality. At the time of writing, the European Union, through regulations signed in 2012, propose a European Patent with Unitary Effect (a ‘Unitary Patent’) and a Unified Patent Court. A Unitary Patent will be a single patent, granted by the EPO, and valid in participating European Union (EU) member states. The Unified Patent Court will be an international court set up by participating EU member states to deal with the infringement and validity of both Unitary Patents and European patents. It is currently anticipated that the system will be in place in early 2022. In 2012, Registered Patent Attorneys were given the right to conduct litigation and the right of audience in the Intellectual Property Enterprise Court and on appeal from the UK Intellectual Property Office (IPO) in the Patents Court, both of which are part of the High Court. New entrants to the profession are now required to undertake and pass a litigation skills course within three years of qualifying to obtain an Intellectual Property Litigation Certificate. Global cooperation on patent protection – and intellectual property more generally – continues to be important, and patent systems continue to evolve to take into account developing technologies and the systems of global commerce.
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1.3 History of the patent attorney profession 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 – with William Newton continuing in practice with his sons, William Edward and Alfred Vincent at 66 Chancery Lane and also at Breams Buildings in London. 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 Institute’s meeting room and after whom it also named. 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 practicing in Birmingham, St. John Vincent Day practicing in Glasgow and Messrs. Wilson, Bristows and Carpmael of London. This resulted in a draft scheme that was submitted to the Board of Trade and 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 they were known to and recommended by an existing Fellow who would vouch for their good repute and capability, a practice which continues to this day.
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Chapter review Patents for inventions have developed over 600 years and provide protection to inventors in exchange for disclosing their new methods of manufacture and/or new or improved goods. 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.
The Council comprised a President, a Vice-President and eight Members, of whom the President, VicePresident 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 must retire annually but are eligible for re-election. In 1882, there were some 52 Members, one Associate and 22 Foreign Members. By 2019, this had grown to 2501 Fellows, 242 Associates, 66 Overseas Members, along with 1128 Student Members, 48 European Patent Attorney Members, and 392 Paralegal Members. Records indicate that the first female patent attorney in the UK was a Margaret Dixon in 1929. The first female Fellow of CIPA was a Margaret Alderton who was elected in 1936. It was not until
2003 though that Anna Denholm became the first female President of CIPA. But since then, there have been four further female Presidents, including the current Immediate Past-President Alicia Instone. In 1891, 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 and included in a new logo in 1992 and again for the current logo in 2021. A 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. Historically, qualification as a patent attorney in the UK was through examination and that is still the case today. In the UK, it is not required to be a Registered Patent Attorney (RPA) to act before the IPO. However, only an RPA or European Patent Attorney (EPA) can call themselves a patent attorney or patent agent. To act before the EPO, a person needs to be registered as an EPA, and qualification as an EPA is also by examination. Most patent attorneys in the UK are dual-qualified RPA and EPA although not all are. Fellows of CIPA are entitled to use the title Chartered Patent Attorney (CPA).
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. • IPReg’s website can be found at www.ipreg.org.uk
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CHAPTER 1: HISTORY OF PATENTS AND THE PATENT PROFESSION
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Under the Legal Services Act 2007, CIPA is an Approved Regulator for the patent attorney profession. To clearly separate its regulatory and representational roles, CIPA and the Institute of Trade Mark Attorneys (now the Chartered Institute of Trade Mark Attorneys) set up an independent regulatory body for the Patent Attorney and Trade Mark Attorney professions: the Intellectual Property Regulation Board (IPReg). IPReg comprises the Patent Attorney Regulation Board and the Trade Mark Attorney Regulation Board. One of IPReg’s roles is to lay down the regulations for qualification as a patent attorney and to accredit bodies that are able to deliver qualifying examinations for registration as a patent attorney. The Patent Examination Board (PEB) is an independent committee of CIPA and is accredited by IPReg to deliver qualifying examinations for registration as a patent attorney in the UK. IP qualifications are also provided by some universities and which can used instead of some of the PEB examinations in order to gain qualification as a patent attorney.
of patents post-grant, including some elements of overseas law. IPReg requires that RPAs take part in regular continuing professional development to ensure that their professional skills are maintained so as to adequately serve the public and their employers. CIPA continues to represent patent attorneys in both private practice and industry. It works with all stakeholders to represent the profession externally and provides support for its members through its variety of committees and working groups.
* This chapter was first written by Dave Bradley (CIPA President 2008-09) in 2008. It was revised and updated by Debbie Slater (CPA) in 2021.
The patent attorney profession is now a graduate entry profession in which most of the entrants have a first scientific degree and a few may have a postgraduate qualification in intellectual property law. Training and qualification can take several years and often require a combination of external study and on-the-job training to ensure the quality of persons entering into practice. Skills in patents, trade mark, design and copyright, are tested, some to a greater extent than others, whether it is drafting, specifications, prosecution of patent applications or dealing with matters of infringement or validity
Notes and references 1. See www.pepysdiary.com/diary/1660 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
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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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THE ROLE OF THE TRAINEE By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter prepares the trainee in the basics of dealing with their new working environment. It outlines the roles of the trainee and trainer and some of the key considerations in making sure the trainee role is productive and fulfilling and of mutual benefit for both trainee and trainer.
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 IPReg Rules of Professional Conduct and the Practice Development Guidance.1 If you work in private practice, make sure you know your firm’s standard terms of business and any HR policies. If you work in an industry environment, become familiar with your corporate structure, reporting lines and internal processes. Legal documents: There are no legal documents required to study this chapter. Guidance for the trainer: 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 them to quickly grasp the essential context within which we all work. For those of you working in industry, whilst there will not be a client in the traditional meaning, the term client should be construed to mean those with whom you work and to whom you provide services. Involve your trainee 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 organisation (especially accounts and formalities departments) to see the way your systems operate and how the various functions interact. Stress from the outset the need to produce, as soon as possible after induction, work which reflects a real contribution to your organisation and which is produced in a way that generates goodwill inside and outside the business. If you have local or regional groups of trainees such as the Informals or know of similar self-help units encourage your trainee to make contact with them.
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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. IPReg Competency Framework link: General Legal (Skill Sets: Communications Skills; Client Relations; Management of Workload, Business Awareness; Working with Others). Time allocated: Two half-days.
Learning outcomes By the end of this chapter, you should be able to outline the relationships between a trainee and their trainer(s), colleagues, and clients whether in private practice or industry. You should be able to start identifying your training needs and to develop, with your trainer, a pathway to optimizing your role within your organisation from trainee to qualified patent attorney.
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2.1 Your new environment Nowadays, there are many routes by which you might have arrived in your present role. You could be a graduate in their early twenties. Alternatively, you could have transferred from another department in the same company, or you could be a 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.
2.2 At the beginning Starting a new career can be bewildering at the start. 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 or even months. Do not be put off; we all felt that way at the start. 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 firstdegree level in the technology that your organisation 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 specialty. You will be surprised at how quickly you can begin to do this. 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 become an effective and valued member of the team. Make sure that your employment contract sets out the expectations for your training period. Make sure key performance indicators are explained and set out. Agree a training plan at the outset and agree terms such as the qualification route and timings, who will pay for textbooks, examinations and courses, and how much study leave you will be allowed. Join the Institute of Professional Representatives before the European Patent Office (known as epi), CIPA and the Informals group for trainees and, if you can, get yourself a mentor: another trainee within your firm who is further along the qualification process. WWW.CIPA.ORG.UK
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2.3 The trainer-trainee relationship In the ‘old days’, trainees were referred to as Technical Assistants (TA in shorthand) and often as TA to a particular person. Training to be a patent attorney is still very much based on that apprenticeship model. You may be attending a university-based course for some of your training. Nevertheless, a lot of your learning will come through on-the-job training. The way in which your training is structured will depend upon your organisation, but you will, in all likelihood, be working closely with a trainer who will be responsible for directing your learning and with whom you will be working closely. In essence, the relationship between trainer and trainee is one of mutual benefit: the trainer provides training and support in return for assistance with their job and a fully-fledged qualified individual at the end. Trainees may leave the organisation at the end of training, but when this happens (as it often does), the trainer will still benefit by recruiting new employees trained elsewhere. As your knowledge and experience grows, your trainer will give you more and more responsibility and allow you to work more autonomously: you will be very much part of the team. It is important to remember that your trainer will probably have multiple responsibilities and may not even be doing much of what they qualified to do any more. Many will be running the personnel in a team and helping to run a commercial business. If you are struggling to get time with your trainer, talk this through with them if you can or discuss it with your human resources professional. A constructive and mutually beneficial relationship between trainee and trainer will benefit your training. If there are any issues which make this difficult, make sure you raise the matter through the usual HR processes.
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2.4 Mastering office procedures The work of a patent attorney is very much a team effort. Whilst you may spend significant amounts of time working alone on a task, a patent attorney does not work in isolation and you will usually have a team of people working with you. Members of your team may include paralegals, secretarial staff, accounts and IT personnel, and records managers. Getting to know how your team works, and mastering the procedures laid down for the smooth running of your organisation, are an imperative. Take time to speak to people within your organisation to find out what their role is and how you will be expected to work with them so that they, and you, can do your job effectively. Ask them to explain what they do and how they do it. If possible, arrange to shadow them for a while to get a deeper understanding. Don’t be afraid to ask questions if you are unsure of anything. You will find that office procedures and practices will be well systemised and should also be well documented. Make sure that you read the documentation available and avail yourself of any training that may be offered. Be willing to lend a hand with such things as register checking, Internet searching and the like. This will contribute an understanding to how the organisation works and will be helpful for those times that you find yourself alone in the office and need to get something done!
2.5 Developing analytical skills The work that you will be asked to do on a day-to-day basis will (and should) be varied. Some of this may be quite basic, particularly at the outset. As time goes on, you will probably be given more responsibility and asked to work autonomously. Whatever you are asked to do, use it as a learning opportunity where you can, bearing in mind that everything that goes out from your firm constitutes effectively a work product for which the organisation as a whole is responsible. Try, nevertheless, to look at all the work you are given in these early stages in a broad context because
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everything can help you acquire two essential skills you are going to need throughout your career in this profession. The first skill 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 the ability to put that recommendation into an understandable form, whether verbal or written, in order for others to make an informed decision based on your recommendation. You will find information and precedents all around you in the files you are given to work on. Read them. See how your predecessors have crafted their patent specifications, drafted their patent claims, written formal and informal communications and then question your trainer as to why things were done in that way. Analytical skills may be required in a variety of contexts. You may be required to analyse an invention or a piece of prior art or may need to analyse an issue of infringement or freedom-to-operate. You may need to consider the commercial implications of your work. All of this needs to be communicated appropriately to the recipient. These skills take time to develop. Try and get exposure to as many different cases and see how others use their skills.
2.6 Producing practical, usable work In the first couple of years of your training, you will be supervised in close detail. As time goes on you should aim to get to a position where your work requires minimal intervention. Do not feel that you need to slavishly copy the style of your trainer but ensure that what you produce provides something practical and useful for the recipient. In terms of drafting patent specifications, it will become clear that patent attorneys all have their own style and so should you. There are, of course, conventions and structure for specifications and these should be followed. Reading a variety of specifications from different people will give ideas on how to approach drafting. In other areas of work, whether you are writing a letter, an opinion, or talking to someone in a meeting, present your analyses in words that come naturally to you in
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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 them to pass your work forward with minimum editing. Towards the end of this chapter, we have provided a worked example of what we are talking about here.
2.7 Time management You will soon learn that patent systems are date driven. Meeting important deadlines is a fact of life for patent attorneys and it is important that you factor this in. Furthermore, if you are working in private practice or in industry where your time is billed out as a cost centre, you will need to be able to account for your time. This all requires an efficient use of your personal working time. This does not mean doing everything quickly, nor does it mean producing it all by this time tomorrow. Anyone who tries to do either of these things ends up overworked and missing deadlines. They will also make repeated mistakes because they deprive themselves 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 WWW.CIPA.ORG.UK
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likely have a due-date progress management system which you can use to set task completion deadlines to make sure you don’t overlook it. Work forwards from the date you received it rather than 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 to use 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. Try to develop stress management techniques to help you when things become stressful and try to avoid becoming overwhelmed by the pressures. You may often find yourself multitasking. If you find this difficult, seek the advice of colleagues or friends who may be able to provide you with tips, or see if there are any courses or webinars that may be helpful. 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 of chapter 3 considers this topic with practical suggestions for coping with such deadlines and time constraints.
2.8 Dealing with clients Dealing with clients well is crucial. The client may be a fee-paying customer if you are in private practice. If you work in industry, your client may be anyone in your organisation for whom you deliver a service. In both cases, they will judge you on the usefulness to them of your output. This will be largely a product of your personal style and presentation. If you succeed, PATENTS TRAINING MANUAL: 2022
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then you are building trust and what is commonly called ‘good will’ with the client. 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. If you handle your client’s business in this way, then they will continue to use your services. Being prompt doesn’t mean doing everything overnight. 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 weeks’ 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. 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. Be aware of unconscious bias: that is the social stereotypes about certain groups of people that individuals form outside their own conscious awareness. We all have unconscious biases, and it is important that we develop an awareness of those that we hold and should seek to eliminate them where we can. When you first meet a client for the first time, try not to make assumptions about them based on that first impression. After that first encounter, perhaps take some time to reflect on whether you may have been guilty of any unconscious bias. Unconscious bias training is available and can be very enlightening. Clarity starts to come naturally when you really understand your job and the law and practice underlying it. 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. 14
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 firm has presented to them. 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 they won’t calm down until they do. 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.
2.9 Earning your keep In private practice, and as a trainee, you will become aware of the tension between the cost to your firm of your employment and training, and your ability to earn fees for the business. The concept of earning fees to generate a profit generally underpins the way the whole profession operates – certainly in private practice – and you will quickly become familiar with it. It should be noted too, that industrial patent departments are often viewed as cost centres and they operate on fundamentally the same philosophy. In the early days, you will generate little by way of fees and often will find that billable hours will be written off and not charged to a client. Do not be put off by that: taking on a trainee is an investment in you and your capacity for future earnings. Nevertheless, it is important that a firm’s expectations around fee earning be clearly set out when you start work and how that is likely to change over time. If they are not: ask.
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Do not forget that the fee-earning power in a profession like this one is significant. Even as a new trainee you will notionally, if not actually, have a charge-out value placed on your time and that value may 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. So, find out from your firm 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 chapter 3, section 3.8.
2.10 Coping with professional exams and courses The regulations for registration as a patent attorney in the UK are laid down by our regulator, IPReg. To register as a European Patent Attorney, you will need to pass examinations set by the European Patent Office. Some of the examinations will be taken as part of a course, whilst others – such as the qualifying exams from the Patent Examination Board – will be standalone examinations. Whilst some of the exams test knowledge and reasoning ability, the examinations will also test your ability to do the job 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. These examinations will present you with a distinct set of challenges because you will be working full time. Your trainer and your colleagues will prepare you for individual exam papers. Nevertheless, you will need to be quite self-directed and this will require a degree of self-discipline. You may be surrounded by friends and/or colleagues who are studying to pass these same exams and with whom you will form - in timehonoured 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 firm on a formal basis during working hours. But bear in mind the following points whatever your personal working background opportunities. WWW.CIPA.ORG.UK
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You may find there is pressure to try to pass exams as quickly as possible. The reasons are 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 discomfited by them. You won’t pass the exams until you can show the examiners you are ready to be registered and, in the meantime, you have a full day job to cope with. Study the examiners’ comments from previous years. You will find that there are some consistent messages in the reports. Two of the most frequent themes 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, 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 firm. 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
Chapter review This chapter has introduced you to the nature and dynamics of the relationship between trainee and trainer in the context of a working environment and the expectations on both parties.
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Notes and references 1. See https://ipreg.org.uk/ pro/practice-development 2. LawCare – https://www.lawcare.org.uk/ 3. Jonathan’s Voice – https://jonathansvoice.org.uk/
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 trainer should assess you at least annually on your overall progress. Your progress or lack of it in exams will only be a part of that assessment and your trainer does not normally expect to have to monitor it as distinct from mentoring it in individual cases. Some firms now have someone employed to deal (either exclusively or significantly) with training matters: make sure you use their expertise. But 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 become good at. It should be acknowledged that these professional exams may be the first instance of failure for some
people and it can come as a big shock to the system. If you have come from an environment where you have been at the top of the ladder, for example in academic environment where you have been the foremost expert in your research area, and then find yourself at the bottom of the ladder on joining the profession, this can be a trigger point for a lot of stress and selfdoubt. You are not alone in this and it is important that you seek support and help if you find yourself overwhelmed – see 2.11 Looking after yourself below.
2.11 Looking after yourself It is important that you take time to look after your mental and physical health. There are some great organisations out there that can provide support and guidance for you. LawCare2 and Jonathan’s Voice3 are such organisations and the details are provided in Notes and regerences. Your workplace may also have an employee assistance programme which can provide mental and physical health services and support. There may well be a mental health first aider at your workplace also.
* This chapter was first written in 2008 by William Jones (CPA, EPA, ip21 Ltd). It was revised and updated by Debbie Slater (CPA, Prevayl Limited) in 2021.
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. Time management is crucial in this profession. Any general text or management guidebook 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 devoted entirely to it. As to passing exams, get hold of the examiners’ comments made available by the PEB 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. Use webinars provided by CIPA to enhance your learning and study. For stress management, consider techniques such mindfulness and meditation. There are plenty of apps out there to assist. Many firms have access to support programmes to help with your mental health.
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Further work After you have read this chapter, set time aside to discuss this chapter with your trainer. Discuss with them the issues raised and how they reflect their own understandings and philosophies. Use this discussion to clarify any questions you may have around your planned career progression and training pathway.
Work-based example A theme of this chapter is the importance of developing useful skills for your profession. One thing we have discussed is good communication with clients. As an example of this, 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
We refer to the meeting at these offices on 07.07.07.
Thank you for coming in yesterday to discuss 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 issues arising therefrom and the corresponding points which necessitate your consideration and on which we shall require your instructions
I am writing to confirm the main points we discussed and the broad advice I gave you.
Based on the materials which you handed to us and left with us, we have prepared a first draft for a proposed new priority-establishing Convention patent application and one copy of same is enclosed herewith for your approval.
To follow our discussions, we have prepared a draft patent specification and I have pleasure in enclosing a copy of this for you to check.
Would you be so kind as to specify any deletions and/or emendations that you require to see made to this draft, and either return same, appropriately annotated, or alternatively schedule your requirements for further consideration by us on receipt thereof pending dispatch for formal filing.
Would you please read this and let me know whether anything needs altering or adding? I do not need it returning to me, a phone call will do if this is the quickest way to deal with it. But I must hear from you before I can send it to the Patent Office and secure that all-important filing date.
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Work-based example (continued)
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ONE WAY
AN ALTERNATIVE
We refer now to your trade mark VERBOSITY and confirm that we have put in hand a search through such official records as are currently made available to the public at the Trade Marks Registry to ascertain whether or not this is available for use and/or registration within the UK. We cannot of course give any commitment as to the length of such searches nor as to their reliability and nor can we accept any express or implied guarantee of such. We shall report to you in this respect in due course and hopefully at an early date.
On the branding front, as agreed, Terry is searching to see whether your word VERBOSITY – or anything dangerously close to it in your field – is already registered or about to be registered as a UK trade mark. He tells me he expects to complete this no later than Friday of next week and he will write to you then. You already accept that no search can give you a cast-iron guarantee, but the databases we access have proved pretty reliable in the past and we are going ahead on that agreed assumption.
We cannot of course discount and must draw to your attention the very real possibility that further and even more damaging prior art might be revealed by international searches of wider scope and we accept no responsibility for your stated decision (which we record here specifically for this purpose) not to proceed in this context despite our strong advice that you should instruct us to do so.
An international search, of course, is a different matter. But you said you would tackle that as and when your business extends abroad. At the moment, and with that obvious risk, I think you can sensibly limit yourself to this UK-only clearance search from everything that I know of your business to date
Finally, with reference to British Patent No 1 234 567B of which you handed us a copy and in respect of which we have caused a search of the 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.
As far as the Jones’ ‘Autodidact’ UK patent is concerned, you can ignore it. It was not renewed; and he apparently died last week.
The writer will revert to these matters in due course and when full and final particulars are to hand. At that stage it is suggested that a further meeting between the writer and yourselves would be appropriate to discuss matters arising therefrom. To ensure attention any further communication must be addressed to this firm in writing and not to any named individual. Assuring you of our best attentions at all times.
Terry and I will write to you, as I said, by the end of next week. We shall then need to get together with you again and I shall contact you to arrange that appointment after you have had a chance to read the results of our work. In the meantime, ring or email Terry with any queries on all normal occasions but if he is not here, ask specifically for me. Both of us are fully briefed on this particular project which is certainly an interesting one. I am glad we have been able to advance it successfully for you so far.
CHAPTER 2: THE ROLE OF THE TRAINEE
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3
BUSINESS PRACTICE By Debbie Slater (CPA), Prevayl Ltd *
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; and attributes of a high-quality service.
The chapter also provides guidelines for conducting client meetings explores business development.
Learning plan Prerequisites: Before reading this chapter, you should have studied the IPReg Rules of Conduct for patent and trade mark attorneys and IPReg’s Competency Framework (both to be found on IPReg’s website at www.ipreg.org.uk), the EPI Code of Professional Conduct (available at https://patentepi.org/en/the-institute/rules-and-regulations.html) 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.
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Guidance for the trainer: Allow the trainee to ‘shadow’ your work as much as possible. In particular, let them listen in on phone conversations with clients and 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 them 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. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communications Skills; Client Relations; Management of Workload, Business Awareness; Professional Conduct; Working with Others). Time allocated: Five half-days.
Learning outcomes By the end of this chapter, you should be able to describe the relationships between patent attorneys and their clients and outline the day-to-day procedures and practices which help to optimise those relationships.
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CHAPTER 3: BUSINESS PRACTICE
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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 or, if we are working in industry, for our employer. The need to do right by our clients determines the way we work, the way we conduct ourselves, and 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’. WWW.CIPA.ORG.UK
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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. Similar provisions exist in the EPI Code of Professional Conduct.
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. For the in-house attorney, in contrast, there is usually only one client: the employer. On the dayto-day 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 Directors. 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, many areas in common. The in-house attorney is still bound by IPReg’s Rules of Conduct. They still need 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 PATENTS TRAINING MANUAL: 2022
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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 their 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 is instructing you. It will affect what and how you advise, and how you act on instructions. Once you have established who you are acting for, do not act on instructions from any other person or 22
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 is 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 government website https://www. gov.uk/get-information-about-a-company, free) 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. 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 trainer that the proposed arrangements are acceptable (and again make sure they’re clearly documented on the file and understood by all parties).
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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,
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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 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 ‘conflict 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 is a potential conflict of interest, ask yourself whether the two businesses could ever end up on opposite sides of a patentrelated dispute in the technical field in question. Also PATENTS TRAINING MANUAL: 2022
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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 they think they 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 24
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 is 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 their 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 them, you need to get this instruction in writing and also to write back to confirm that you will no longer be undertaking any work on their behalf. Invoice all your outstanding charges on their files (see 3.8.4 below). If the client is transferring their work to another attorney, you could continue to have obligations to them 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 their 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
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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.
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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 their 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: • 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 PATENTS TRAINING MANUAL: 2022
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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 their 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, they must advise their 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 their 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 their 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 26
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). Chapter 5 of this manual deals with sources of information. 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. There are also many online blogs and discussion boards such as IPKat (https://ipkitten.blogspot.com). See Chapter 5 of a more detailed discussion regarding sources of information. 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 is of interest to 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
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specific cases with colleagues and – in the case of general developments – with attorneys from other firms.
3.3.4 Technical knowledge A private practice patent attorney is not expected to be an expert in the technical fields in which their 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.
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 reached 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.
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.
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!).
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 clearcut 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
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 that they do not infringe a US patent, they are 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
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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 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 their 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 trainer for help. What is 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 they advise. 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.
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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.
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Show discretion at all times. Ensure that your colleagues, in particular support staff who will take their example from you, do the same. Beware lighthearted discussions about clients around the office, 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), emails, 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. • Take care when using email, as it may not be totally secure. Make sure your client is happy to exchange information and documents in this way and that the correct email addresses are used. • If you do use email, consider password-protecting sensitive attachments (but don’t divulge the password in the same email!) or using encryption software. WWW.CIPA.ORG.UK
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• Be careful who you copy correspondence to (especially emails: it’s all too easy to use the wrong ‘cc’ list, or to forward a chain of email 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 workrelated 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 trainer 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’ 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 PATENTS TRAINING MANUAL: 2022
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precaution of removing invoices, estimates and related documentation. It’s conventional in this profession not to share charging information with competitors.
3.4.4 Data protection How you treat client data is highly regulated and your firm will have policies and procedures to ensure that you adhere to the current regulations. It is important that you adhere to these. At the time of writing, the UK was still bound by the EU General Data Protection Regulations (GDPR). After the transitional provisions expire on the 31 December 2020, the GDPR provisions will be retained in UK domestic law but this may well change over time.
3.4.5 The in-house attorney For those training in industry rather than private practice, it is 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 whom 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 is 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 30
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. To be privileged, a communication must be for the dominant purpose of giving legal advice, so it is important to separate legal advice from other advice such as commercial advice. Businesses which operate in the US are likely to be particularly paranoid about this. Find out from your trainer 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 whom in your company they’re allowed to communicate with and how. Be especially careful about emails: your company may operate a secure ‘intranet’ system for internal communications but sending an email to an external contact will not be so secure, so consider passwording or encryption.
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.
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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 emails, in meetings both large and small, in 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 their files. Do so as promptly as you can, even if you only have time to say that there has 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 has happened, what the options are in response, the pros and cons of each and their implications, both short- and long-term. WWW.CIPA.ORG.UK
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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 videoconference or 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. When communicating by videoconference or phone, make a file note summarising what has been said and any decisions arrived at. Whenever you do work on a file, that too must be reported promptly to the client. Tell them what it is you’ve done and why, what the implications are and what’s likely to happen next. Again, send them 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 them with unnecessary paperwork. Not every client will need to keep a copy of the Japanese language version of their 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? PATENTS TRAINING MANUAL: 2022
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• 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.
3.5.4 Empathy One of the most important things about communication is understanding the recipient, and how they are likely to react to what you’re saying. Their 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 them, but also the types of things you communicate about, and how frequently. If you have a client who knows 32
relatively little about the patent system, you will need to contact them more frequently to explain what’s happening on their 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 is 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 their face? Often there is 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
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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 they don’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 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 your credibility, at worst lead to sub-standard advice. Check and double-check, then proof-read again. Never send out a document immediately after you have 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.
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3.5.6 Clarity It is obviously important that what you write, even in a simple email, 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 their 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?
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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.
3.5.7 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 email 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. • Email. 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). • 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 emails or video/ phone calls: you quickly learn which forms of communication suit someone and which are likely to be ignored. 34
Then, of course, you need to think about how quickly your message needs to reach its recipient, and whether you need confirmation that it has arrived safely. For speed, a document can be sent by email or via cloud-based services. Many patent offices have online filing systems such as epoline® from the European Patent Office. To be sure it has 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 UKIPO must go by Special Delivery, or online, but in other cases it will be up to the responsible attorney to decide on an appropriate delivery method. If sending by email, you may wish to request a ‘read receipt’. Email is 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 email, and also what types of enclosures or attachments it’s appropriate to include. Similarly, if the email contains a trail of preceding messages, check or remove them as embarrassing text can lurk down there. Make sure you know your firm’s policy, and your client’s tolerance threshold, in relation to following up with ‘hard copies’ of communications. 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 videoconference, telephone or a face-to-face meeting. Both can have considerable
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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. In meetings, you could use a PowerPoint™ (or similar) 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. The use of virtual communication, for example through remote video conferencing, is becoming increasingly adopted (and sometime necessary). Make sure that you are confident in using whatever platform you are using and that you have all the information and resources that you are going to use at your disposal. Make sure that your Internet connection is reliable and make sure that you have as few distractions as possible.
3.5.8 Presentation The written word is often the only tangible product that a patent attorney’s clients get to keep. It is 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 WWW.CIPA.ORG.UK
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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 emails. 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 they have not understood your advice: it’s up to you to try again until they do. 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 them as you can about why they want the work, what he’ll use it for, who else might see it, what level of detail they want, 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 PATENTS TRAINING MANUAL: 2022
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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 them. Above all, keep lines of communication open with all 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 they need 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 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-patentliterate managers. You will also need to be very aware of the business context of your advice.
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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. It is becoming more frequent for electronic document management systems to be used in which physical files are dispensed with completely. In either event, the same principles underpin everything. Into these files goes absolutely every document that crosses your desk or computer desktop. Every document belongs in a file; nothing is homeless. The ‘file’ (collectively the electronic and/or 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.
3.6 File maintenance
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 their employers and – though they may not know this – it matters to the clients.
3.6.1 Introduction
3.6.2 What goes into the file
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 sometimes be a physical file, bulging with relevant paperwork, and
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 them. 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
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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: • Copies of all letters, faxes, emails, 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, emails, 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. Telephone conversations, online conferences and meetings are so often inadequately documented yet are a vital part of the chain of events which the file has to chronicle. There is usually a ‘record’ function available in online video conferencing facilities. These can be useful but make sure you get permission from all attendees first. Audio files of these recordings can be stored electronically. • Copies of any documents you send out to the client, for example cited prior art documents. When you send physical documents with an annotated compliment 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. • 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 WWW.CIPA.ORG.UK
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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 telephoneconversation 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 they also need 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. PATENTS TRAINING MANUAL: 2022
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• Take special care when preparing documents which go through a number of revisions and 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 resave 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 physical 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. • 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 them as for yourself. They may need to ask you for documents which they have lost. They may at some stage need evidence that they 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 they 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 – physically and/or electronically. 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. As mentioned above, increasingly, some operate almost entirely paperless document management systems, in which all relevant documents are scanned for electronic storage and paper records are kept to a minimum. Others 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 – emails, 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.
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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 themselves. 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 any physical 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 they 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 their file(s) until they have 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 you to co-operate with the ex-client and their 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 WWW.CIPA.ORG.UK
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its main owner. Even worse, because the in-house attorney’s files may 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 2.7: 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 PATENTS TRAINING MANUAL: 2022
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it’s likely to cost and what input you want from them. 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 emails 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 have 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 Registered Delivery, for example, and you should also always attempt to make telephone contact to sort out the problem.
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 of one or two people) 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 cooperative 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. In some firms, one or more patent attorneys will have a dedicated paralegal who deals with a lot of the administrative and procedural aspects of your cases. Again, teamwork is essential.
These are the trickier 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 must 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.
Each firm has its own procedures for entering data into the 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 when correspondence arrives in an individual fee earner’s email inbox rather than through a central letterbox, 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.
You will be expected to stay late at the office if necessary, or to take work home, 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.
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.
3.7.3 Commercial deadlines
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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. • 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. • 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, redirect phone calls and get on with the difficult and/or urgent jobs. • Try not to be distracted by emails. 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 computers to crash, the Internet to go down 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 they are under, but don’t make unrealistic promises about
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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 them shortly. Tell them that an examination report has been received, and send them a copy, then promise to do a more detailed review for them 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 trainer 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. • 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 PATENTS TRAINING MANUAL: 2022
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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 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 emails; 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 them 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.
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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: • 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, emails 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 illustrator’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 WWW.CIPA.ORG.UK
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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.
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 may also be able to 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.
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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 is incurred . What this means is that you need to keep your ‘workin-progress’ (WIP) levels as low as possible. WIP is the charges which you have incurred (including time, fixed charges and disbursements) but not yet billed. HM Revenue & Customs will charge tax on WIP as though it were already profit. 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. Some firms prefer to invoice monthly, so you should invoice in accordance with your firm’s practice. 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, although, again, some clients (particular the larger enterprises) also prefer monthly invoicing. Invoicing a long time after a piece of work has been completed is not just bad for your firm’s finances, it can look unprofessional, and may take the client by surprise and more likely to result in a payment dispute. An unpaid invoice is almost as useless as not billing for the work at all. It may also help to discuss with your client how they would like to be invoiced.
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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 their 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 trainer 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 their 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 has 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.
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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. Don’t forget to add VAT charges and disbursements where required. 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 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 socalled ‘proforma’ invoice for the relevant amount. This is needed so that everyone’s books balance – yours and those of your client. 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 WWW.CIPA.ORG.UK
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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 they tend 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 they understand not just what you’re going to charge for the piece of work PATENTS TRAINING MANUAL: 2022
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instructed, but also about how costs might mount up over the longer term, for instance when their newly filed patent application reaches its twelvemonth foreign filing deadline, or enters the search and examination stage. Be open with the client about exactly what you’re going to do for them and what it will cost, however awkward it may seem to discuss such issues and however off-putting 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. Remember to clarify whether an estimate or quote is inclusive or exclusive of VAT. If you want to discount your firm’s usual charges (which is not uncommon), clear this with your trainer 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 them the chance to put the brakes on the work if they are 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. 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 their 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. 46
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. • 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 (https://www.gov.uk/ government/organisations/companies-house), 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 is coming up or more work is 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
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starting a new piece of work for a client, to make sure they have been paying their 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 they are 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 they have 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 their budget constraints are, and help them to keep within 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 WWW.CIPA.ORG.UK
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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.
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. Patent attorneys are also bound by the Money Laundering, Terrorist Financing and Transfer of Funds (Information on the Payer) Regulations 2017. IPReg provides guidance on money laundering (see https://ipreg.org.uk/pro/practice-development/antimoney-laundering) 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 trainer at once. You must not warn the relevant client PATENTS TRAINING MANUAL: 2022
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of your suspicion (this too is a crime), but nor must you do any further work for them 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 Before the meeting • Preparation is everything. It sounds obvious but do read the relevant papers. Check who is going to be at the meeting and their roles and status. Remind yourself about the purpose of the meeting. Collect 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. • 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 48
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 they want to proceed as anticipated. This helps them prepare and so makes the meeting more productive. It’s particularly useful for new clients. • Phone or email a few days in advance to confirm arrangements such as venue (or video call details) and timing, and perhaps also the agenda – this is common courtesy but it can also save wasted time and embarrassment.
3.9.3 At the meeting • Again, fairly obvious, but be punctual. • Dress to fit the occasion. • 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. 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 (on screenshare if virtual) 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 they are still confused, or uncomfortable, try again to
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explain. Make sure they understand 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 has 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 is 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 them 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.
3.9.4 After the meeting • Write up your notes if necessary, or at least tidy them up so they’ll be comprehensible to other people and/or in a few years’ time. Put them on the relevant file and copy them to other files they might impact upon. • 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 WWW.CIPA.ORG.UK
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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 has 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 or contact details. • 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 they don’t ultimately ask you to work for them. • If work is instructed, determine exactly who your ‘client’ is, and clarify billing arrangements. • If applicable, hand over an authorisation as PATENTS TRAINING MANUAL: 2022
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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 trainer 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 they pay you on the day, for example if you’ve asked for payment in advance. And afterwards: • Enter the client’s contact details onto the firm’s records, and store business cards/contact details safely on the file. • Send an ‘engagement letter’ setting out details of how the new business relationship will function, including what you’ve been instructed to do, who will do the work and perhaps their hourly charging rate, and billing arrangements. Your firm is likely to have a standard format for such letters but discuss with your trainer 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 their ‘invention’ is far enough advanced for a patent application, and whether 50
they 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 or video conference 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 they may need to learn quickly the art of generating succinct minutes.
3.10 Good client care 3.10.1 Introduction This is probably one of the most important things 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.
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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 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 they talk to their 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.
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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 them, with their level of IP knowledge and their 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 handholding through the patenting process. Do not merely answer the question the client asks, because they don’t necessarily know enough to ask the right question. Instead, think about what else they might need to know, and what they might have asked had they 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 their 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 emails, quickly. As far as humanly possible, always
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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, their business plan (perhaps even their intended exit strategy), budgetary constraints, market, customers and competitors. Keep this in mind when working for them, 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.
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 them 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 52
proactive: think what else might help the client, what else might be relevant to their patent position. For example, suggest regular IP review meetings, to discuss all the client’s patent files and their 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 their business, and usually their technical work, which will help you put your advice to them into context. Suggest extras to help the client manage their 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 timeconsuming. 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
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risk of disputes. Check with your trainer, 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.
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.
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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, i.e., 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 9001 & 9002, for which professional firms may register. These tend to focus on the systems and procedures by which the firm operates, rather than personal attorneyclient 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.
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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 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.
they keep instructing new work; they recommend you to others; and they pay your bills. Some of them may even thank you.
3.10.10 Quality control and the need for feedback
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 they want it to continue. Treat this as an opportunity. Far better a complaint than a silent withdrawal of support.
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;
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
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 safe-guard 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. 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 their 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.
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letter about the search results clear enough? Do they need any further information or advice, any followup? 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 their complaint to someone more senior in the firm if dissatisfied with the response from their 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 are 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 they’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 WWW.CIPA.ORG.UK
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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. 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 troublemakers. 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 them – politely of course – if you feel that appropriate, but never abandon them in the middle of a piece of work or close to an outstanding deadline.
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.
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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.
3.11 Business Development 3.11.1 General comments Business development is the creation of value for an organisation but is often thought of synonymous with marketing, although it is more than that. Nevertheless, at the root of it are relationships and the leveraging of those relationships for growth. Patent attorneys – particularly in private practice – are encouraged to see business development as part of their role.
3.11.2 Finding clients Bringing in new business is fundamental to the viability of any business. Trainee patent attorneys will be encouraged to help with networking and business development, although it is not usually a compulsory activity. Some firms do, however, include it in their key performance indicators. Business development does not come easily to everyone, but it is a skill that can – to an extent – be learnt. Activities that fall under the ambit of business development include networking events, presenting at conferences, writing news articles for journals, and using social media platforms such as LinkedIn® Twitter® and Instagram®. Whilst you might hate the thought of spending an hour or too with a drink in hand, the idea of writing newsworthy or informative articles for a website might be more up your alley. If
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. Your firm may also provide in-house training on business skills such as communication, client care and time management.
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you can, find something that piques your interest and volunteer to do that. If you find yourself making a connection with a potential new client all the advice about client care given above may be applicable here: courtesy, professionalism, empathy, credibility and communication may all serve to prompt a potential client to come to you for professional services. The satisfaction when that initial interaction ends in a business relationship is great. One word of caution: take care, at networking events where alcohol is involved. Be mindful of the risks of overfamiliarity and appearing unprofessional.
3.11.3 The in-house attorney Business development also applies to in-house attorneys. The focus may be different: it may be about promoting a product that your company sells rather than on your capabilities per se. Nevertheless, the same issues such as those of courtesy and professionalism are still valid: how you present yourself will reflect on the business and the goodwill of the business.
* This chapter was first written in 2008 by Andrea Brewster OBE (CPA, EPA). It was revised and updated by Debbie Slater (CPA, Prevayl Limited) in 2021.
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Test your knowledge 1. List the patent attorney’s key responsibilities to their 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 newlyfiled 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 trainer’s, and other colleagues’, views are on the type of documents that should be sent by email. 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 their 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? 12. List ten criteria on which to assess the quality of a patent attorney’s services to their clients. Discuss the extent to which you personally feel you can meet those criteria, and how you intend to address areas of weakness.
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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 inhouse 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 them 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 their several patent applications?
Answers overleaf.
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Suggested chapter 3 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 their 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.
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LEGISLATIVE STRUCTURE By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*
Outline This chapter is intended to 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, the legal professions in the UK are 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 further sources of information, please refer to chapter 5.
Learning plan Prerequisites: None. Legal documents: Patents Act 1977 (as amended), European Patent Convention (1973 as amended), Patent Co-operation Treaty 1970, Community Patent Convention 1975, Regulations (EU) No. 1257/2012 and 1260/20122 implementing enhanced cooperation in the area of the creation of unitary patent protection and Unified Patent Court Agreement 2013. Trainer’s input: To provide a general background on the legislative structure in the UK and to provide information on the patent system in the UK. Syllabus link: UK Exams: FC2, FD1 EQEs: Paper D IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); Technical (Skill Sets: Analysis and Advice; Infringement). 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 the patent system in the UK and for European patents (UK).
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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 (together with the devolved administrations of Northern Ireland, Wales and Scotland) 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 on the basis that they command the confidence of Parliament. Parliament is elected by the people in order to act in their interests. The UK, therefore, has a parliamentary democracy in which, subject to limited exceptions, every British, Irish or qualifying Commonwealth citizen resident in the UK (or a British citizen living abroad who has been registered to vote in the UK in the last 15 years) has the right to vote. Alongside 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 holding the government to account (through investigative select committees and asking government ministers questions) and examining, debating and approving proposed new laws in the form of statutes or delegated legislation such as statutory instruments. Parliament is the highest legislative authority in the UK (this is sometimes referred to as the principle of parliamentary sovereignty). It is made up of the House of Commons, the House of Lords and the Queen. Along with the House of Commons and the House of Lords, the Crown is an integral part of the institution of Parliament. Although over time, the power of the monarchy has reduced and is now broadly ceremonial, the Queen plays a constitutional role in opening and dissolving Parliament and approving bills before they become law. Members of the House of Commons (Members of Parliament – MPs) debate political issues and
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proposals for new laws. They are also responsible for scrutinising the work of the government. The House of Commons is also responsible for granting money to the government through approving Bills that raise taxes. Generally, the decisions made in the House of Commons must be 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 (so-called ‘Money Bills’ such as those dealing with 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 MPs in the House of Commons are democratically elected and Parliament, therefore, represents all the people of Great Britain and Northern Ireland. Over the years, Parliament has passed laws that limit the application of the principle of parliamentary sovereignty. These laws reflected political developments both within and outside the UK and include: (a) the devolution of power to bodies like the Scottish Parliament and Senedd Cymru (Welsh Parliament), (b) the Human Rights Act 1998, (c) the UK’s entry to the European Union in 1973 – and subsequent exit in 2020, (d) the decision to establish a UK Supreme Court in 2009, which ends the House of Lords function as the UK’s final court of appeal. These developments do not fundamentally undermine the principle of parliamentary sovereignty, because Parliament could repeal any of the laws implementing such changes. 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
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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) Money Bills (Bills designed to raise money through taxes or spend public money). The reigning monarch must approve all new laws; this process of approval is called ‘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 – Public Bills change the law as it applies to the general population and are the most common type of Bill introduced in Parliament. Ministers propose most Public Bills. • Individual MPs or Lords that are not government ministers – these are a form of Public Bill called a Private Members Bill. • Private individuals or organisations – called Private Bills. Private Bills are usually promoted by organisations, like local authorities or private companies, to give themselves powers beyond, or in conflict with, the general law. Private Bills only change the law as it applies to specific individuals or organisations, rather than the general public. 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
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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 is nowadays 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) 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 a legal framework. 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 is outside the power conferred by Parliament (known as ultra vires).
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4.1.3 Legal professions 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 new system of exams (the Solicitors Qualifying Exam or ‘SQE’) will be introduced from 1 September 2021 which means that it will no longer be required to complete a law degree (or law conversion course) and the legal practice course. Instead, to become a solicitor, a person will have to pass both stages of the SQE and complete two years of qualifying work experience. 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 or her 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
able to practise in court before completing the first six months of pupillage. Barristers practising at the independent Bar are generally self-employed and will usually join a set of chambers, which is an office consisting of a relatively small number of barristers often specialising in similar areas of practice. The professional body for barristers is called the General Council of the Bar (and commonly known as the Bar Council) and their regulatory body is the Bar Standards Board. Patent attorneys
There are of course many areas of specialisation within the legal system and we, as patent attorneys, occupy one such area. Patent attorneys are specially trained, examined and experienced in the drafting of patents and in the knowledge of intellectual property law. The title ‘patent attorney’ is protected by the Copyright, Designs and Patents Act 1988 (CDPA) and can only be used in the UK by a patent attorney entered on the Register of Patent Attorneys regulated by the Intellectual Property Regulation Board (IPReg) or by a qualified solicitor with specialist expertise in intellectual property law who is regulated by the Solicitors Regulation Authority (SRA). All those who are entered on the Register of Patent Attorneys must comply with the Code of Conduct provided by IPReg. Patent attorneys who hold an Intellectual Property Litigation Certificate have the right to conduct litigation and have rights of audience in the Intellectual Property Enterprise Court (IPEC) and on appeal from the UK Intellectual Property Office (IPO) in the Patents Court (both of which are part of the High Court). Registered Patent Attorneys can obtain further rights to conduct litigation, in matters relating to patents, designs, trade marks or technical information, in the form of a Higher Courts Litigation Certificate and, more broadly, in the form of a Higher Courts Advocacy Certificate.
To become a barrister, a person must join an Inn of Court and must pass one of the Bar Courses approved by the Bar Standards Board (these have replaced the Bar Professional Training Course). After this, the barrister must spend a year being a pupil barrister (known as a pupillage). They will not be
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4.2 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 two areas, criminal and civil, 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.
4.2.1 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 Courts were established in the late 19th century to meet the need for a system to deal with small claims. Originally there were hundreds of county courts in England and Wales, but since 22 April 2014 (pursuant to the Crime and Courts Act 2013), there has been one County Court, in the sense of a single centrally organised and administered court system, that sits in numerous locations. 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. All County Court centres can deal with contract and tort cases and recovery of land actions. Some hearing centres can also deal with more specific matters such as bankruptcy and insolvency or cases relating to wills and trusts. 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, in the Rolls Building on Fetter Lane and in WWW.CIPA.ORG.UK
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other buildings) but it has the jurisdiction to sit and hear cases at any place in England and Wales. Like the County Court, 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 (established by s. 69 of the Patents Act 1977 which has now been repealed and replaced by s. 62(1) of the Senior Courts Act 1981) that specialises in patent and registered design actions. The Queen’s Bench Division also has several specialist courts, including a Commercial Court, an Admiralty Court and a Technology and Construction Court. In 2017, business and other civil dispute resolution in the Chancery and Queens Bench Division were brought together under a single structure called the Business and Property Courts of England and Wales. They act as single umbrella for business specialist courts across England and Wales and include the Commercial Court (shipping, sale of goods, insurance and reinsurance), Business PATENTS TRAINING MANUAL: 2022
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List, Admiralty Court, Commercial Circuit Court (previously the Mercantile Court), Technology and Construction Court, Financial List (banking and financial markets), Insolvency List, Companies List, Competition List, Property Trusts and Probate List, Revenue List and Intellectual Property List (including the Patents Court and Intellectual Property Enterprise 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 aimed to improve the transparency of Parliament by formally separating its 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 66
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; and maintains and develops the role of the highest court in the UK as a leader in the common law world. While the UK was a member of the EU, the Supreme Court had to 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 had to refer to the European Court of Justice (ECJ) in Luxembourg any question of EU law where the answer was not clear and it was therefore necessary for the ECJ to give judgment. The UK exited the EU on 31 January 2020. The transition period in the Withdrawal Agreement ended at 11pm on 31 December 2020 and ended the application of EU law and jurisdiction of the ECJ in the UK (except for Northern Ireland). The Human Rights Act 1998, which came into force in October 2000, makes available remedies for breach of the European Convention on Human Rights (ECHR) in the UK courts and imposes an obligation on the courts to interpret legislation so as that it is compatible with the European Convention on Human Rights, in so far as it is possible to do so. Therefore, in appropriate cases, all UK courts including the Supreme Court are tasked with deciding whether public bodies have acted in a way that is compatible with the ECHR. Those courts,
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including the Supreme Court, have to take account of decisions of the European Court of Human Rights in Strasbourg. The ECHR and European Court of Human Rights exist separately from the EU. The Supreme Court’s relationship with the Strasbourg Court is not, therefore, changed by the UK’s exit from the EU.
4.2.2 Where to start a case A civil case may not be started in the High Court unless the value of the claim is more than £100,000 (in a case including a claim for damages in respect of personal injuries, the value of the claim must be £50,000 or more). Subject to these financial requirements, whether a claim should be started in the High Court is dictated by the financial value of the claim, its complexity, the importance of the outcome to the public in general and strategic decisions of the parties. Each court has the power to transfer cases to another if appropriate. In practice the main strategic decision to be made in patent and registered design cases is whether to start a claim in the Intellectual Property Enterprise Court (IPEC) or the Patents Court. In more general IP cases the choice is usually between the IPEC or the general Intellectual Property List of the Chancery Division in the High Court – although under Rule 63.13 of the Civil Procedure Rules (CPR) some cases can be heard in a County Court hearing centre where there is a Chancery District Registry.
4.2.3 Case management tracking system In general, High Court claims are subject to the ‘track’ 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 £10,000 are allocated to the small claims track. Straightforward cases worth over £10,000 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 £25,000, WWW.CIPA.ORG.UK
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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. In patent cases the way in which claims progress depends upon their value and the court in which they are begun. In the IPEC they are dealt with either in the small-claims track or the multi-track. The small-claims track is for suitable claims in the IPEC with a value of up to £10,000. Costs orders on the small claims track are highly restricted. The IPEC multi-track has a limit on damages of £500,000. Costs orders are proportionate to the nature of the dispute and subject to a scale for individual steps and an overall cap of £50,000 to determine liability and a further £25,000 to determine the amount of any financial claim (which is referred to as ‘quantum’). Claims in the Patents Court are allocated to the multi-track and costs orders usually reflect the level of costs actually incurred (subject to the court’s control of ‘costs budgets’ in claims valued less than £10 million).
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 a County Court Judge is normally appealed to the High Court, and a decision of a High Court Judge (or Enterprise Judge in the IPEC) is normally appealed to the Court of Appeal (different rules apply to decisions of procedural judges called District Judges, Masters and Registrars). By way of exception, in very limited circumstances, a civil case in the High Court may be appealed directly to the Supreme Court. This is known as the ‘leapfrog’ procedure. Permission for a second appeal (e.g., from the Court of Appeal to the Supreme Court) requires stringent examination and is not often granted.
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4.3 Retained EU law in the UK after Brexit The UK became part of the European Community (now the European Union (EU)) in 1973, with the passing of the European Communities Act 1972 (ECA). This had significant implications for the British legal system. Some of the laws generated by the EU institutions became part of the UK law. Some did not become UK law but could be directly applied by the British courts under certain circumstances. In addition, the European Court of Justice could deliver opinions that bound the British courts. The European Union (Withdrawal) Act 2018 repealed the ECA and converted the existing body of currently directly applicable EU law into domestic UK law. This law is referred to as ‘retained’ EU law and covers EU-derived domestic legislation, direct EU legislation and other EU rights which were recognized and available in UK law before 11 pm on 31 December 2020 (IP completion day). Regarding case law, broadly speaking, principles laid down, or decisions made by the Court of Justice of the European Union (CJEU) before completion day remain binding on domestic courts, although the UK Supreme Court can choose to depart from them.1 CJEU decisions decided after IP completion day are not binding but regard can be had to such decisions in so far as they are relevant (i.e., they may well be persuasive in the English court).
4.4 Patents in the UK – legal bodies The Intellectual Property Office (IPO), Intellectual Property Enterprise Court (‘IPEC’) and Patents Court
In England and Wales, proceedings for all types of patent action may be brought either in the Patents Court or in the IPEC. In addition, certain patent proceedings (such as entitlement proceedings under sections 8 to 13 and/or 82 to 83 of the Patents Act 1977, proceedings to revoke a patent under section 72 or for a declaration for non-infringement of a
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new patent under section 71) 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, registered designs and trade marks. It is an Executive Agency sponsored by the Department for Business, Energy & Industrial Strategy 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.
4.4.2 The IPEC Why use the IPEC?
The IPEC is the successor to the Patents County Court (PCC).2 It provides an alternative venue to the Patents Court for hearing proceedings concerning intellectual property rights. The IPEC is meant to be a cheaper, simpler, faster and more informal option for patent proceedings. In particular, it has a strong emphasis on providing access to justice for small and medium-sized enterprises who, when seeking to enforce or defend patent claims, may benefit from using the IPEC instead of the Patents Court. The IPEC has caps on overall recoverable costs (capped at £50,000 for the trial of liability and a further £25,000 to determine the amount of any financial claim), with costs being contributory according to a scale rather than compensatory, and summarily assessed by the Enterprise Judge dealing with the case rather than a more complex and expensive process of ‘detailed assessment’. The IPEC does not hear appeals from the decision of the Comptroller and has limits on the amount of the financial award it can order, however, its jurisdiction is otherwise the same as the Patents Court. The maximum amount of damages and/or account of profits that can be claimed in the IPEC is limited to £500,000 and the trial process is streamlined so the trials almost always last for two days or less. The
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IPEC also has a small claims track that can further reduce the costs of litigation. Claims on this track are limited to those worth up to £10,000 and usual only very limited legal costs are recoverable (essentially limited to Court fees). A claim brought in the IPEC need not just be a monetary claim and may include claims for injunctions to stop or make a person do something, orders for delivery up of items which are alleged to infringe a patent and orders for publication and dissemination of the judgment at the Defendant’s expense. Unlike the PCC, the IPEC is a specialist list of the Chancery Division of the High Court and is located at the Rolls Building in London. A patent attorney may conduct the action before the IPEC
A registered patent attorney may be granted an Intellectual Property Litigation Certificate; Higher Courts Litigation Certificate; and Higher Courts Advocacy Certificate.3 These give the patent attorney rights to conduct litigation and rights of audience before certain courts on certain matters. The Intellectual Property Litigation Certificate can be applied for upon completing a basic litigation skills course that is compulsory for all attorneys either prior to qualification or within three years of entry on to the Register of Patent Attorneys.4 This allows patent attorneys to conduct all stages of proceedings before the IPEC, meaning they may act for a client throughout an action and they are also permitted to be heard before the IPEC (in the same way as a barrister or a solicitor). The Enterprise Judge
An enterprise judge is a judge authorised by the Chancellor of the High Court to sit in the IPEC.5 Transferring a case to the Patents Court
The court has a discretion to transfer a case from the IPEC to the Patents Court and vice versa. The factors to be considered when the judge makes this decision include: 1. whether a party can only afford to bring or defend the claim in the IPEC; 2. the value of the claim (including the value of an injunction); 3. the complexity of the issues; 4. the estimated length of the trial. WWW.CIPA.ORG.UK
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4.4.3 The Patents Court The Patents Court is a court of the High Court within the Chancery division6
The Patents Court has the same jurisdiction as the IPEC, however, in addition, it also has jurisdiction to hear appeals from the Comptroller General of Patents, Trade Marks and Designs.7 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 • a decision under rules which are excepted by rules from the right of appeal. Note that a decision of the Comptroller cannot be appealed to the IPEC.8 For the purpose of hearing appeals, the Patents Court usually consists of a single patents judge. 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 Cases in the Patents Court are allocated to the multi-track and cases in the IPEC are allocated to the multi-track or the small claims as appropriate. In multi-track cases, the Court has the ability to deal with cases of widely differing values and complexity and has the flexibility to manage cases in a way that
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is appropriate to its particular need. In multi- track cases a judge gives directions by way of a casemanagement conference soon after every party that intends to do so has filed a defence.
4.4.5 Appeals from the IPO, IPEC 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 IPEC or Patents Court can be made to the Court of Appeal and from there, with permission, to the Supreme Court. Where an appeal lies to the Court of Appeal, the judge may in rare circumstances certify that the appeal may be made directly to the Supreme Court (the ‘leap frog’ procedure).
4.4.6 The streamlined procedure and Shorter Trial and Flexible Trial schemes The streamlined procedure is available in the Patents Court and aims to speed up a patent action and limit its cost. The Shorter Trial and Flexible Trial schemes are available in all cases in the Business and Property Courts, including the Patents Court. 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 cross- examination 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 70
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. The Shorter Trial and Flexible Trial schemes are innovations dating from 2018 which operate in the Business and Property Courts including the Patents Court and general Intellectual Property List (but not the IPEC which already has its own streamlined active case management procedure). The Shorter Trial schemes is designed for case where the trial can last four days or less. All claims are allocated to a designated High Court judge or to a Chancery Master if the parties consent, at the time of the first case management conference (CMC) or earlier if necessary and all proceedings are normally heard or determined by that designated Judge or Master (except urgent or vacation applications if the designated Judge is not available). Costs management does not apply to claims in the Shorter Trials Scheme unless the court directs otherwise. Many features are similar to the IPEC (without caps on costs or financial recovery): • Statements of case in a specified form and accompanied by the documents relied upon. • Special provisions for disclosure, witness statements and witness and expert evidence. • At the Pre-Trial Review (PTR) the judge fixes the trial timetable including the time for opening and closing speeches and cross-examination. • The trial is managed to ensure the time estimate is adhered to and cross-examination is strictly controlled by the court.
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• The court endeavours to hand down judgment within six weeks of the trial. • Costs are summarily assessed. The Flexible Trial scheme enables the parties by agreement to adapt the court’s standard litigation procedure, including disclosure, witness evidence, expert evidence and submissions at trial, to suit their particular case. The purpose of the scheme is to encourage parties to limit disclosure and to confine oral evidence at trial to the minimum. Its aim is to reduce costs, reduce the time required for trial and to enable earlier trial dates to be obtained. Under the scheme the parties may agree to invite the court to determine identified issues on the basis of written evidence and submissions. If necessary, the court may call for oral evidence to be given or oral submissions to be made on any of the identified issues. Where an issue is to be determined in writing it is not necessary for a party to put its case on that issue to the other party’s witnesses. There is a standard trial procedure (the Flexible Trials Procedure). This may be varied by agreement between the parties. This is less likely to be used in patent cases because the Patents Court has long used its powers to manage cases actively outside the strictures of this scheme. In Smart Reamer Drilling Systems v Nov Downhole Eurasia [2018] EWHC 2469 (IPEC), His Honour Judge Hacon used the scheme to transfer a case from IPEC to the Patents Court whilst continuing to apply the procedural rules which apply in IPEC, including the costs caps.
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.
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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 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 Patents, Designs and Marks Act 1986, Copyright, Designs & Patents Act 1988, Patents and Trade Marks (World Trade Organisation) Regulations 1999 (SI 1999/1899), Patents Regulations 2000 (SI 2000/2037), Regulatory Reform (Patents) Order 2004 (SI 2004/2357), Intellectual Property (Enforcement, etc) Regulations 2006 (SI 2006/1028), Patents Act 2004, Intellectual Property Act 2014, Intellectual Property (Unjustified Threats) Act 2017 and a number of other acts and statutory instruments. It is therefore essential to work from an up-to-date consolidated version (which can be found online or in an up-to-date practitioners text such as the Patent Encyclopaedia, Terrell on the Law of Patents or the CIPA Guide to the Patents Acts). 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 Cooperation Treaty procedure if required.
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4.5.2 The Patents Act 1977 The Patents Act 1977 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 set out the new domestic law. Part II provided the machinery for the incorporation of the European Patent Convention, Community Patent Convention 1975 and the Patent Cooperation Treaty. Part III dealt 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 (currently the Patents Rules 2007, SI 2007/3291). 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. A patent granted under this Act is not a royal grant of a monopoly but is a collection of rights conferred by the Patents Act 1977 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. Such a patent has effect throughout the UK and the Isle of Man. The Patents Act 1977 does not contain a definition of an ‘invention’ or a ‘patent’ but instead describes the criteria to be satisfied by a patentable invention.9 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);
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(c) it must be capable of industrial application; and (d) it must not be excluded by the Patents Act 1977 – excluded matter includes a ‘program for a computer’, method for ‘doing business’, method for ‘performing a mental act’, method for ‘playing a game’, a ‘discovery, scientific theory or mathematical method’, a ‘literary, dramatic, musical or artistic work or any other aesthetic creation’, and ‘the presentation of information’ (but only to the extent the patent relates to that thing as such) and inventions the commercial exploitation of which would 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. In addition, when assessing novelty, the state of the art will also include the content of patent applications which were filed or have an earlier priority date but published on or after that date. 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. 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 person skilled in the art’ or ‘skilled person’) to make the claimed product or process.
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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 person 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.
granted, although there is a qualified right to recover damages retrospectively for acts committed after the publication of the specification. It is very important that any letters sent prior to the commencement of proceedings (or any other communications about the patent) are only sent with a client’s instructions and that the content of such letters (and to whom they are sent) is carefully considered because infringers may sue for making unjustified ‘threats’ of patent infringement proceedings.
Term of protection
Under sections 70 to 70F of the Patents Act 1977, where any person that threatens another person with a ‘threat of infringement proceedings’, the ‘person aggrieved’ by the threats may bring proceedings against the person making them. The sections give rise to a right to a declaration that the threats are unjustified, an injunction against the continuance of the threats, a right to damages and, in the context of the resulting proceedings, orders for costs against the threatening party. There are exceptions to these provisions. For example, although legal representatives used to be liable for unjustified threats actions, in general they no longer bear the risk for threats issued on the instructions of a client, so long as that client is properly identified at the time of the threat. Also, giving notice that a patent exists or making enquiries to determine if a patent has been infringed or by whom may not constitute an actionable threat if the letter doing so is carefully formulated. However, carefully crafted letters which implicitly threaten proceedings although purporting not to do so have often been found by the courts to constitute actionable threats. There are similar provisions governing threats of trade mark infringement proceedings and proceedings for infringement registered and unregistered design rights.
Protection in the UK lasts for 20 years from the filing date provided renewal fees are paid.
Infringement – nature of the infringing act
Exclusions to patentability
The following are excluded from patentability under the Patents Act 1977 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 Patents Act 1977 also provides that a patent shall not be granted for an invention the commercial exploitation of which would be contrary to public policy or morality. Exploitation is not regarded as contrary to public policy or morality only because it is prohibited by any law in the UK.
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
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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: 2022
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Where the invention is a process, it is an infringement to use the process in the UK when the person knows, or it would be obvious to a reasonable person in the circumstances that use would be an infringement 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 means of 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 suitable for putting and intended to put the invention into effect in the UK. As a basic rule, the person who actually performs the infringing act is liable. Companies are usually vicariously liable for the acts of their employees. In addition, a person who has acted in concert with another person may also be liable under the general law of common design (this can encompass directors of companies and other companies involved in an infringing course of conduct). There are exceptions to infringement set out in the Patents Act 1977. The most commonly encountered exceptions are acts done for private use or experimental use. Further exceptions to infringement include those in respect of studies, tests and trials necessary for an application for authorisation of a generic medical product. Construction of patent claims and the scope of protection
In order to determine whether a patent has been infringed, it is necessary for the court to interpret its claims: that is construe or interpret their meaning. This process is referred to as ‘construction’ of the claims and is part of the process of determining the ‘scope of protection’ provided by the claims. The UK courts use a process of ’normal’ or ‘purposive’ construction, interpreting the claims from the point 74
of view of a skilled person taking into account the description and the drawings of the patent and the technical purpose of the words used to arrive at an understanding of what the skilled person would have understood the patentee to have used the language of the claim to mean. Actavis v Eli Lilly [2017] UKSC 48 introduced a doctrine of equivalents into English law in accordance with Article 69 of the European Patent Convention and the Protocol on the interpretation of Article 69 as it was amended in 2000. As a result, 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 as a process of ‘normal’ interpretation, but also if it is a variant that only varies from the invention in a way (or ways) which is (or are) immaterial (the doctrine of equivalents). The ‘normal interpretation’ is a matter of purposive interpretation that ascertains the objective meaning of the claim as it would be understood by the person skilled in the art. This means that the patent claims are construed in a practical context in the light of the specification and the drawings. The question of equivalents is addressed by a series of analytical questions which are explained in chapter 10. Validity
The grounds on which the validity of a patent can be attacked are set out in the Patents Act 1977. 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 Patents Act 1977; 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 person to perform the invention using his or her skill and knowledge without invention or prolonged research – if it does not, the patent is invalid for insufficiency); or • it includes ‘added matter’ (over and above the original application as filed); or • the claims of the patent have been extended after grant by amendment (claim broadening).
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A UK patent granted by the IPO under the Patents Act 1977 is only subject to attack before the IPO and UK courts. As explained below a European Patent is subject to attack in the EPO on some of the above grounds in post grant ‘opposition proceedings’ (up to nine months after publication of the grant) and the bundle of national patents generated can also be the subject of attack in national courts. So, the validity of a European Patent (UK) can also be attacked in the UK. Remedies for patent infringement
A successful claimant may seek: • 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, and interest on those. • A declaration that the patent is valid and has been infringed by the defendant. • The costs of the litigation.
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 Patents Act 1977. The European patent system is primarily a patent granting system and, although providing a framework, does not provide a mechanism for enforcement in infringement actions or deciding disputes as to inventorship and ownership (known as ‘entitlement’). 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, 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
4.6 The European Patent Convention The UK is a contracting state to the European Patent Convention (EPC). The EPC is separate from the EU (and so is unaffected by Brexit) and since 1 November 2019 had 38 member states (including all the EU countries but also non-EU countries), two extension states and four validation states. Under the EPC10 a bundle of national patents (for countries which are party to the EPC) may be awarded based on 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.
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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;
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3. schemes rules and methods for performing mental acts, playing games or doing business and programs for computers; and 4. presentations of information. Again, these are only excluded to the extent to which the European patent relates to such subject matters or activities ‘as such’. In addition, a European patent may not be granted where the invention would be contrary to ordre public (a French term akin to ‘public policy’) 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 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 Patents Act 1977. Beyond the opposition phase, a European (UK) Patent may only be revoked before the UK courts or the IPO. 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.
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.
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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. The description and drawings must be used to interpret the claims (in accordance with Article 69 EPC) and the extent of protection is determined taking due account of any element which is equivalent to an element specified in the claims (in accordance with the Protocol on the Interpretation of Article 69 EOC). As a result, in the UK, in the same manner as set out above the scope of protection is determined by a process of ‘normal interpretation’ and consideration of whether there is infringement by equivalence in accordance with the approach set out by the Supreme Court in Actavis v Eli Lilly. 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 and/or the EPO 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 and/or EPC countries. There are more than 150 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 or regional 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 Patents Act 1977. Accordingly, if the application is withdrawn or deemed to be
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Further study Some parts of chapter 5 overlap with this chapter and can be used as revision.
withdrawn under the PCT it is treated as withdrawn under the Patents Act 1977. 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 Patents Act 1977. 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 Unitary Patent and Unified Patent Court 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 including high costs, legal uncertainty, cross-border litigation and forum shopping. Forum shopping involves a party choosing to initiate an action before a certain jurisdiction on the basis that they are likely to be treated more favourably than in another jurisdiction. 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. As a result, the existing system is costly for all parties involved. The creation of a Community wide patent has therefore been a long-held desire of the EU. The most recent embodiment of this desire is the ‘Unitary Patent’, which is in an advanced stage of
Notes and references 1.
European Union (Withdrawal) Act 2018, section 6.
2. The Patents County Court was reconstituted as the IPEC on 1 October 2013. 3. IPReg Rights to Conduct Litigation and Rights of Audience and Other Reserved Legal Activities Certification Rules 2012, rule 2.1. 4. The IPReg Rights to Conduct Litigation and Rights of Audience and Other Reserved Legal Activities Certification Rules 2012, rule.4.2, and the IPReg guidance note on CPD Requirements for Litigators. 5. CPR rule 63.1(2)(h). 6. Section 6(i) of the Supreme Court Act 1981 (c.54). 7. Governed by Civil Procedure Rules Part 52 (CPR 63.17). 8. Governed by Civil Procedure Rules Part 52 (CPR 63.16). 9. See Section 1(i) of Patents Act 1977. 10. The Convention on the Grant of European Patents (Munich, 5 October 1973; TS 20 (1978); cmnd 7090).
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adoption. If its implementation is completed the proposed Unitary Patent will be a particular type of European patent, granted under the EPC, that will make it possible to get patent protection in up to 25 of the 28 EU Member States by submitting a single request to the EPO. The Unitary Patent applies to the states who participated in the enhanced cooperation procedure under which the measures were adopted. The unitary effect will mean that infringement and validity can be dealt with as a whole by a single new court called the Unified Patent Court. The Unified Patent Court will also be able to deal with European patents. Twenty-four of the 27 EU Member States (all except Poland, Croatia and Spain) have signed the Agreement on a Unified Patent Court. On 18 December 2020, the German Federal Assembly (Bundesrat) approved the law on the Agreement on a Unified Patent Court of 20 June 2013, one of the final obstacles to the implementation of the Unitary Patent Court. On 27 September 2021, Germany
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ratified the Protocol on the Provisional Application of UPC Agreement (PAP-Protocol). On 15 October 2021, Slovenia ratified the PAP-Protocol. At the time of writing, one last ratification is needed for the Unified Patent Court to enter the final phase of its set-up. Although the UK had previously ratified the Unitary Patent Court Agreement in April 2018, it withdrew this ratification on 20 July 2020. The UK will therefore not be participating in the Unitary Patent Court. Brexit also means that the UK will not be part of the Unitary Patent system.
* This chapter was first written by Stella Wong (a solicitor at Hogan Lovells) in 2008. It was revised and updated in 2021 by James St Ville, Henry Edwards and Edmund Eustace (barristers at 8 New Square).
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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 choose to use the Intellectual Property Enterprise Court? 5. What does the Intellectual Property Office do? 6. What rights does a UK patent owner have? How long do they last? What can the patent owner do if someone is using technology falling within the scope of protection of its patent without a licence or other permission? 7. In order to be patentable, what conditions must the invention satisfy? 8. What types of inventions are excluded from patentability? 9. Why might a person attack the validity of a patent? On what grounds can validity be attacked? 10. What is a European patent? Who grants a European patent? What is a Unitary patent? Who grants a Unitary patent? 11. 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?
Answers overleaf.
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Suggested answers and comments for chapter 4 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 4.4.1 6. 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 and the nature of an infringing act. 7. See 4.5.2 on patentability. 8. See 4.5.2 on exclusions to patentability. 9. 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. 10.A European patent is a bundle of national patents granted by the European Patent Office upon a single application. A Unitary patent, if its implementation is completed, will be a single unitary patent for 25 of the 28 EU states granted by the European Patent Office. 11.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.
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CHAPTER 4: LEGISLATIVE STRUCTURE
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5
SOURCES OF INFORMATION By Debbie Slater (CPA), Prevayl Ltd *
Outline This chapter provides a guide to sources of information, including for legal research, for prior art identification, for patent status information, IP analytics and competitor information. 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 sources of information from patent offices, 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 understand 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: UK Patents Act 1977 (UKPA), European Patent Convention (EPC), Patent Cooperation Treaty (PCT) to look through; EPO decisions G2/88, T1385/15, 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. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice;) and Technical (Skill Sets: Analysis and Advice) Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will be able to identify sources of information available for research and use them to address legal questions. You will also be able to identify relevant prior art searching, IP analytics databases and legal status information as sources of information.
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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: • for national law in the UK – the UK Patents Act 1977 (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 (in the case of the UKPA) or multilateral, inter-governmental conferences (in the case of the EPC and 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 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 82
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 crossreference the articles/sections and corresponding rules, although a number of reference works exist (discussed below in 5.5) which do so in great detail. The HTML version of the EPC (available at www. epo.org/law-practice/legal-texts/html/epc/2016/e/ma1. html) does provide hyperlinks to the relevant Rule from the Articles. 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-todate version of the relevant legal text. Your firm/ employer may make up-to-date paper copies of legal texts available but since these are not always re-published when changes occur, the safest way to ensure that an up-to-date legal text are used is to use the relevant online versions of that text. The relevant patent offices and organisations make consolidated versions of the relevant texts available online (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
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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 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? See section 5 UKPA, Article 87 EPC). These questions are addressed by decisions by the relevant patent offices or the Patent Courts in the UK. As discussed in more detail in chapter 4, a major difference between the European Patent Office (EPO) and the UK Patent Office (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 Boards of Appeal. Furthermore, case law under the national UK law can arise not only from appeals from first instance Patent Office Divisions but also in interparty 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 Boards 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 nonunity during the International Search when the EPO is the International Searching Authority, which is WWW.CIPA.ORG.UK
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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 nonbinding 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 5.9). As set out in chapter 4, decisions of the IPO are appealable to the Patents 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 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 Intellectual Property Enterprise Court (IPEC) 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 PATENTS TRAINING MANUAL: 2022
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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 judgment will contain statements that define the decision, and this constitutes the binding ratio decidendi. The judgment may further contain other remarks that 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, although even these can be subject to further interpretation or clarification), 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 84
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 5.9) 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 employer’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 Glanville 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
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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, known as a Petition for Review, in the case of a substantial procedural violation or criminal behaviour on the part of the Board of Appeal, is available). 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 decisions or opinions on points of law when a Board of Appeal considers that it would reach a decision that diverges 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 in the Continental tradition of written law such that the Boards 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 Boards 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 Boards 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 WWW.CIPA.ORG.UK
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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 Préparatoires 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, 5.9) and publishes an annual review of the Boards 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 Boards 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 Boards 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.
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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. • 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 Boards 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 86
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: 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 G, Chapter IV, 5.4), for which there is no legal basis anywhere in the EPC: and this is acknowledged in the Guidelines. In 2021 the Enlarged Board of Appeal, in its decision G4/19, endorsed this existing approach of the EPO as set out it in the Guidelines notwithstanding the lack of legal basis in the EPC. 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.
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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 appendices, are for reference only and that it cannot be considered safe to rely solely on the information from the PCT contracting states provided in the relevant appendices 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. Official Journal information is all available through the IPO part of the gov.uk website. Relevant links are provided in section 5.9 below. WWW.CIPA.ORG.UK
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The EPO Official Journal has been briefly mentioned above (5.2.2) in relation to the publication of Boards 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 in the Ancillary Regulations book published by the EPO and also the EPO publication ‘Case Law of the Boards of Appeal’, 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 all of which is available 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. PATENTS TRAINING MANUAL: 2022
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Other UK statutes may well also be relevant. One example is 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 a member of the European Union, the UK was bound by the Acquis Communitaire, the combined body 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). However, upon leaving the EU in 2020, this was no longer the case. However, aspects of EU law may be incorporated into UK domestic law and, of course, EU law is still important to consider. Obvious examples of European law in the intellectual property arena are the regulations and directives harmonising design and trade mark law and enforcement of patents. Whilst the UK may have left the EU, aspects of EU law and regulation may be relevant for clients. 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 that 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 88
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 Boards 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
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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 on daily practice and may, in particular, form a useful starting point for further research. Regarding the UK, the CIPA Guide to the Patents Act (the ‘Black Book’) is 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 Visser’s Annotated EPC by Dirk Visser separately 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. Case law and legal texts can also be accessed via the Internet. As an example, Darts IP is a case search interface which enables you to search for cases around the world based on several criteria – see www.darts-ip.com/ip-cases-database. LexisNexis is another source of online case law and legal texts – see www.lexisnexis.co.uk. 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 WWW.CIPA.ORG.UK
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example, in particular for overseas law are newsletters and other publications which you and your firm/ organisation may receive from foreign associated firms, legal updates and discussions circulated within your firm/organisation, e-mail bulletins, blogs and alerts such as IPKat, the Yellow Sheet, and, of course, face time with your trainer and others (e.g. paralegals) 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 upto-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 emails. By simply storing these emails in a designated folder, you can use your email 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. As mentioned in 5.5 above, searchable databases providing access to case law are available. 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 PATENTS TRAINING MANUAL: 2022
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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 Some online patent databases require a subscription, and some are available free of charge. The level of information can vary: typically, those requiring payment provide more detail and have more functionality. The EPO’s Espacenet or the United States Patent and Trademark Office (USPTO) website, both of which are listed in section 5.9 below, enable searching using keywords, applicant and inventor details, or patent classification. 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 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.
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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 (or application that may be granted) 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
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have the relevant resources and expertise within your organisation. Carrying out prior art and infringement searches requires some skill and if you wish to have an in-depth search carried out that this is probably best done by a skilled patent searcher. Some firms employ in-house searchers, and there are organisations and individuals who can do it for you. With Internet access, you can access databases such as Espacenet and you may be able to do some basic searching using classification codes, applicant or patentee names and inventor names, or possibly key words. However, you must take care when doing your own searching as you should consider whether you have the expertise to perform a search of as accurate and exhaustive as that of a patent office or a specialist searcher. This may have insurance repercussions and, if you do not have the relevant expertise, then you should consider carefully whether you should get a specialist searcher to do it for you. 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 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, and to be aware that WWW.CIPA.ORG.UK
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there may be ‘non-practising-entities’ in your client’s market, who do not compete, but who will enforce IP. 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 (called Ipsum). In addition, the EPO and the IPO provide 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 cost-effective way to get an initial idea of the status of an international patent portfolio. Global Dossier is an interface that provides secure access to patent prosecution histories from the USPTO, the European Patent Office, as well as the national offices of Japan, South Korea and China (collectively, the IP5). This can be accessed through Espacenet and the USPTO and removes the need to visit different websites to look up the prosecution histories for the different jurisdictions. WIPO provide online access to PCT application file histories and status history via Patentscope.
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Espacenet can provide machine-language translations of documents – see www.epo.org/searchingfor-patents/helpful-resources/patent-translate. html. However, it is important to understand the limitations of machine-language translations and care should be taken not to rely on these particularly in relation to determinations (or not) of infringement. If you are working in an industry environment, you should be able to establish a regular searching strategy based, for example, on key competitors, specific patent classification codes or key words. This will provide some insight as to what is happening in your industry and, for example, competitor patents and patent applications.
5.8 Patent analytics
can be very useful for developing an IP strategy or when looking to raise capital or establish commercial partnerships such as joint ventures or licencing agreements. WIPO and the EPO often produce reports about trends and developments in intellectual property which can provide insights.
5.9 Web links and references 5.9.1 Websites You may wish to bookmark these in your web browsers but be prepared to keep these up to date if you encounter changes. EPO
The increase in available patent information has enabled the development of tools providing detailed insights and analytics in relation to companies and industries. IP landscaping provides a snapshot of the IP position for a particular technical field either in a specific country, regions or globally. This information
• Home page: www.epo.org • European Patent Convention: – Sixteenth Edition 2016: www.epo.org/lawpractice/legal-texts/html/epc/2016/e/index.html – Previous editions: www.epo.org/law-practice/ legal-texts/epc/archive.html
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 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.
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• London Agreement: www.epo.org/law-practice/legal-texts/ london-agreement.html • Case Law of the Boards of Appeal (Ninth edition 2019): www.epo.org/law-practice/case-law-appeals/ case-law.html • Guidelines for Examination in the EPO: www.epo.org/law-practice/legal-texts/html/ guidelines/e/index.htm • Guide for Applicants: www.epo.org/applying/ european/Guide-for-applicants/html/e/index.html • Boards of Appeal search interface: www.epo.org/law-practice/case-law-appeals/ advanced-search.html • Official Journal: www.epo.org/patents/law/legal-texts/journal.html • EPO Bulletin: www.epo.org/searching-for-patents/ legal/bulletin.html • EPO Academy (online learning modules): www.epo.org/about-us/office/academy.html
• Manual of Patent Practice: www.gov.uk/government/publications/patentsmanual-of-patent-practice • Patents and Designs Journal: www.ipo.gov.uk/types/patent/p-os/p-journal/p-pj • IPSUM: www.ipo.gov.uk/p-ipsum.htm • Practice Notes: www.gov.uk/government/collections/ patents-practice-notices • Patent Decisions: www.gov.uk/search-patent-decisions UK case law
• UK Court and Tribunal Service: www.gov.uk/government/organisations/hm-courtsand-tribunals-service • British and Irish Legal Information Institute: www.bailii.org • British Library Patents Collection: www.bl.uk/subjects/business-and-patents
IPO
• Home page: www.gov.uk/government/ organisations/intellectual-property-office • Patents Act 1977 (consolidated and as enacted) www.legislation.gov.uk/ukpga/1977/37/contents • The Patents Rules 2007: www.gov.uk/government/publications/the-patentsrules-2007-and-patents-fees-rules-2007
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/ meetings/en/topic_type.jsp?group_id=242
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/employer 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. 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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Prior art searching
• Esp@cenet: http://gb.espacenet.com • USPTO: www.uspto.gov/patft • Google Patents: www.google.com/?tbm=pts Patent registers
• EPO Register plus: https://register.epoline.org/espacenet/regviewer • IPSUM (IPO Patent Search page): https://www.ipo.gov.uk/p-ipsum.htm • PatentScope (PCT online file inspection): www.wipo.int/pctdb/en • PAIR (USPTO): http://portal.uspto.gov/external/portal/pair Additional sources
• World Patent Information (a journal for intellectual property information and its retrieval, documentation, classification, search, analysis and IP management): www.journals.elsevier.com/ world-patent-information • Patent Information Users Group: www.piug.org • IPKat (interesting IP blog): http://ipkitten.blogspot.com • MIP Week (weekly IP periodical): www.managingip.com • yellowsheet.wordpress.com – Official blog of the Informals Committee of CIPA.
5.9.2 Printed texts • Adams, S.R., 2011. Information sources in patents. Munich: K.G. Saur • Cornish, William. Cases and Materials on Intellectual Property. Andover: Sweet & Maxwell • CIPA. CIPA Guide to the Patents Acts (The ‘Black Book’). Andover: Sweet & Maxwell • Hoekstra, Jelle. References to the EPC. Eindhoven: Hoekstra • Terrell on the Law of Patents, Sweet & Maxwell – https://www.sweetandmaxwell.co.uk • Visser, Derk. The Annotated European Patent Convention. Veldhoven: H. Tel • Williams, Glanville L., (2020) 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.
5.9.3 Analytics and Insights • Clarivate Analytics: https://clarivate.com/ • LexisNexis: www.lexisnexis.co.uk • Patsnaps: www.patsnap.com/solutions/ip-intelligence/ • Iplytics: www.iplytics.com/
* This chapter was first written in 2008 by Alexander Korenberg (CPA, Kilburn & Strode). It was revised and updated by Debbie Slater (CPA, Prevayl Limited) in 2021.
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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? 4. 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. 5. How (if at all) would your answer change for a new non-medical use? Hint: look at G2/88 and T1385/15 (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. 6. Spend some time using the patent registers of the IPO, EPO, USPTO and WIPO. Compare the functionality of the different registers. 7. On Espacenet, have a go at searching for prior art using selected key words. Search in a technical field with which you are familiar. If you change the keywords, how does this change the results you get? If you get too many results, look at ways of changing your search strategy to result in a useful number of results. How confident can you be that the results are helpful? 8. Explore the International Patent Classification (IPC) from WIPO at www.wipo.int/classifications/ipc/en/. What is the Cooperative Patent Classification (CPC)?
Answers overleaf.
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Suggested answers and comments for chapter 5 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 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 offices, that is the practice manuals 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 website, Boards 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. 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).
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5. 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 that should be interpreted in line with the EPC, in accordance with section 130 UKPA. 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 decisions that contradict 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 affect 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’). 6. You may notice that the different sites use different formats for data entry so take care when entering search terms such as patent application numbers or dates: a ‘No Result’ may be a consequence of an data input such as an incorrect format, not that a document doesn’t exist. The data that is searchable and available also varies. 7. The broader and more generic the terms used, the more results you will tend to get. However, too many results can be meaningless. Too few results and you may wish to consider using broader search terms. The aim is to find a happy medium. Think laterally: What synonyms can be used instead of the terms you have used? What about alternative spellings? What about truncating a term? 8. The IPC is an extremely useful search parameter. If you are having problems identifying a good IPC for searching, look at known patent documents and see how they were classified. Be mindful that patent documents can be misclassified. The CPC is an extension of the IPC and is managed by the EPO and the USPTO. You may find for some newer technologies that the CPC is a better search field than the IPC.
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6
PATENTABILITY: GENERAL ISSUES By Martin Bell (CPA, EPA), Marks & Clerk*
Outline This chapter provides an overview of three fundamental criteria that must be met for an invention to be patentable, namely that it is new, involves an inventive step, and is capable of industrial application. Particular emphasis is paid to the requirements of the UK Patents Act (UKPA) and the European Patent Convention (EPC), although a brief discussion of certain issues that are relevant in the US is also given. Another requirement, that the invention is not something that is specifically excluded or exempted from patentability, is discussed in detail in chapter 7, while other important considerations, such as sufficiency and clarity, are discussed in chapter 8, as well as chapter 17.
Learning plan Useful references for this chapter: • • • • •
Sections 1 to 4 UKPA and Articles 52-57 EPC. Sections 2 to 4 of the Manual of Patent Practice (MOPP). The Guidelines for Examination in the European Patent Office (EPO), Parts G, I, III to VII. Study guide to the Patents Act, Doug Ealey (CIPA). The C-Book – How to write a successful opposition and pass paper C of the European Qualifying Examination, Chandler/Meinders (CEIPI, Heymanns Intellectual Property)
Case law: • • • • • • • • •
Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] R.P.C. 59 Pozzoli Spa v BDMO SA & Another [2007] EWCA Civ 588 Dr Reddy’s Laboratories (UK) Limited v Eli Lilly and Company Limited [2009] EWCA Civ 1362 Synthon v SmithKline Beecham [2005] UKHL 59 [2006] RPC 10 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995) 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 (Availability to the public)
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Guidance for the trainer: • Discuss examples of EP and GB search and/or examination reports with the trainee, including how the examiner has structured the objections, whether they are correct and how the applicant might want to respond. It may also be helpful to discuss how to go about looking at a case for the first time, such as what to read first and how to get to grips with an invention quickly and efficiently. • If the trainee is working on an application that you have drafted, it might be helpful to talk through how you drafted the claims and what prior art you were aware of at the time, perhaps starting with the invention disclosure that you received from the inventors. • If a suitable one springs to mind, you might want to provide an example of an opposition that the trainee can read over to see how different novelty and inventive step attacks are made against the different claims in a patent. The trainee might then want to review the decision to get an idea of the reasons why the opposition division did or did not find the attacks convincing. • More generally, the trainee might find it helpful to read through the files of a few granted cases to understand what issues came up during prosecution and how they were dealt with. If the trainee works predominantly in a particular technical area, then they might benefit from looking at cases from another field to gain exposure to a broader range of issues and argumentation. Syllabus link: U K Exams: FC1, FC3, FD1-FD4 European Qualifying Examination (EQE): Pre-exam, Papers A- D IPReg Competency Framework link: https://ipreg.org.uk/pro/admission-to-register/training-and-supervision Time allocated: Between one and two days.
Learning outcomes By the end of this chapter, you should be able to express and explain the main criteria required for a patentable invention. You should be able to identify how novelty and inventive step are assessed at the IPO and EPO and list some of the arguments you can use in overcoming objections arising because of these requirements.
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6.1 Introduction The broad requirements for an invention to be patentable are common to most patent systems. As a starting point, we will consider Section 1(1) UKPA, which sets out that, for an invention to be patentable, it must be: (a) (b) (c) (d)
new; involve an inventive step; be capable of industrial application; and not be specifically excluded or exempted from patentability (e.g. abstract ideas).
The corresponding provisions in the EPC (Article 54) and Patent Cooperation Treaty (Article 33 PCT) are very similar. Inventions are of course defined by claims, so the reference to an ‘invention’ here and throughout this chapter should be read with the word ‘claim’ in mind. Although each of the listed conditions must be fulfilled for a patent to be valid, issues arising from a lack of industrial applicability are rare in most technical fields. Issues arising because of excluded subject matter are more common, and these are dealt with in chapter 7. The main focus of this chapter is therefore on the requirements of novelty and inventive step, which are central to every patent. These two requirements are linked because an invention can only involve an inventive step if it is at least in some sense new. However, it is important that the two requirements are dealt with one at a time as the legal tests for them are quite different and it is possible to overlook important details and arguments if you try to consider them both simultaneously. It is also worth keeping in mind that although the general requirements for novelty and inventive step exist everywhere, there can be important practical differences between one jurisdiction and another, such as how inventive step is assessed, what counts as prior art for the application, and the availability of grace periods for disclosures of an invention occurring before an application is filed. Finally, although clients are usually most interested in patents, it is also worth remembering that utility WWW.CIPA.ORG.UK
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models, in the countries where they are available, can sometimes offer a valuable form of protection for inventions that might not the meet the relatively high bar set for patentability.
6.2 Novelty 6.2.1 The state of the art The requirement for an invention to be new arises from the principle that a patent should not stop someone making use of knowledge that was already ‘freely’ available to everyone. In other words, a patent cannot be new if it claims subject matter that was already known to the public and which, if performed, would necessarily result in infringement of the patent. Section 2 of the UK Patents Act 2004 (UKPA) spells this out by defining novelty as follows: 2.(1) An invention shall be taken to be new if it does not form part of the state of the art. (2) The state of the art in the case of an invention shall be taken to comprise all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way. The key words in this section are: • ‘All matter’ including: written disclosures, e.g. patent publications, PhD. theses, marketing materials, catalogues, websites; oral disclosures, e.g. academic lectures, conversations not in confidence; public use, e.g. demonstration, sale, or testing of a prototype in a public place; or any other types of disclosure that you can think of. • ‘Made available to the public’: at least one member of the public, anywhere in the world, would have been able to gain knowledge of the subject matter without there being an obligation of confidentiality, either explicitly or implicitly. It is not necessary that anyone actually did gain access to a particular document, for example, merely that they could have, e.g. because the document was PATENTS TRAINING MANUAL: 2022
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indexed as part of a publically accessible library or archive. • ‘Before the priority date’: any time before the filing date of the application, or the filing date of an earlier application from which the application validly claims priority. Subject matter made available to the public on the priority date does not form part of the state of the art. Priority is discussed in more detail chapter 13. In order for a disclosure to form part of the state of the art, it must be ‘enabling’. In other words, it must provide enough information for a skilled person to practice the relevant teaching from the disclosure, taking into account what is available as ‘common general knowledge’ in the technical field at the time. As an example, the disclosure of the chemical structure of a compound, with no details of how it should be made, might not be enabling if significant research (‘undue burden‘) was required to find a viable synthetic route for the compound. On the other hand, a product or substance is no longer new if it is the inevitable result of a method or process that has already been disclosed. More generally, a product or substance is disclosed implicitly if it would have been possible to identify its components or composition, such as after it had been sold, regardless of whether or not anyone would have been motivated to try to do so (see decision G 1/92 of the Enlarged Board of Appeal of the EPO). Such types of ‘implicit’ disclosure extend only to what can be inferred directly and unequivocally from what is provided explicitly in the disclosure together with common general knowledge. Merely displaying a device discloses only its visible features, although if the device was operated or relevant material was displayed alongside it then this additional information would have to be taken into account too. A leading case that discusses some of these issues is Merrell Dow v HN Norton, in which Merrell Dow had a patent relating to an acid metabolite of an antihistamine drug called terfenadine. Although terfenadine itself was known, and was the subject of an earlier patent, Merrell Dow subsequently found that the reason it was effective was because it was metabolised in the liver to form a particular acid metabolite. HN Norton argued the patent was invalid 102
because it was anticipated by ‘prior use’ of the acid metabolite as a result of its inevitable production in the livers of patients who had been given terfenadine during a drug trial. Ultimately, this attack failed because making matter available to the public within the meaning of section 2(2) was held to require ’communication of information‘. Therefore, acts done secretly or without knowledge of the relevant facts – such as the unwitting production of the acid metabolite in the patients’ livers – do not count. It is only the information that is made available from the prior use that enters the state of the art. Nevertheless, HN Norton went on to argue that the earlier patent had already made the acid metabolite available to the public under the description ‘a part of the chemical reaction in the human body produced by the ingestion of terfenadine and having an antihistamine effect’. The patent was consequently revoked because this description was held to have provided sufficient information for the public to work the invention by ingesting terfenadine deliberately, rather than unknowingly, in order to produce the acid metabolite. The issues of disclosure and enablement were also discussed in Synthon v SmithKline Beecham. In this case, SmithKline Beecham’s patent for a crystalline form of an antidepressant compound called paroxetine methanesulfonate (PMS) was attacked as lacking novelty over an earlier application belonging to Synthon. The patent had previously been upheld because experienced chemists were unable to prepare crystals of the compound using the information in the application, leading to the conclusion that the earlier application was not an enabling disclosure of crystalline PMS. It also did not help matters that an infrared spectrum included in the application that was supposedly of crystalline PMS was shown to be incorrect. However, on final appeal by Synthon, it was established that the requirements for disclosure and enablement should be treated separately, so that the relevant questions in this case were therefore: (i) was the crystalline form of PMS disclosed in the earlier application? And then (ii) would a skilled person have been able to make the relevant crystals of PMS? The patent was revoked because the answer to both questions was found to be ‘yes’. In particular, it was found that a skilled person would have understood
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from Sython’s earlier application that PMS could be crystallised and, knowing this information would have been able to make crystalline PMS, albeit with some amount of trial and error. Assessing novelty
For a claim to be novel, there must be at least one difference (‘distinguishing feature’), no matter how apparently minor or trivial, between the claim and what is described in the prior art. Whether the difference involves an inventive step is another matter. For example, if a prior art document describes an engine management technique applied specifically to a two-stroke engine, it is enough for a claim to specify the same technique for a four-stroke engine in order for it to be new, assuming there is no other relevant prior art. Similarly, changing a single amino acid in a protein sequence of an earlier disclosure would make the modified sequence novel over the earlier disclosure. Assessing novelty therefore requires a forensic analysis of what a skilled person would understand was described in the prior art, either explicitly or implicitly. It is not permissible to combine pieces of prior art, or even different embodiments described in a single document unless there is a specific direction in the document to do so. When reading a prior art document it is crucial to keep track of precisely what is being described. You should also try to avoid thinking that something mentioned in the reference is ‘close enough’ to what you are looking for. For example, are the parts of the reference that an examiner has pointed to actually describing different embodiments? Is the reference actually unclear or ambiguous about a particular feature? It is also important to remember that a feature in a claim should be given its broadest technically sensible meaning, even if the same feature happens to be used in a more specific sense in the description. Indeed, sometimes an objection involving a lack of novelty can appear puzzling at first sight because the examiner has taken one or more of the features in a claim to have a broader meaning than you expected. Written disclosures
Written disclosures are by far the most common type of disclosure to be cited because they are generally WWW.CIPA.ORG.UK
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the easiest to find, and their contents and publication date are rarely called into question. Any document can be cited provided that even a single member of the public could have read it before the effective filing date of the application. Whether someone actually did read it is irrelevant, as are its language of publication or physical location. The target audience of the document is also irrelevant, which explains why, for example, the IPO was able to cite ‘The Beano, No. 2015 page 1’ against an application directed towards an ‘Entry Signal System for Dogs’ (GB2117179B). Information disclosed on the internet can also be cited, such as webpages, online databases, or electronic repositories of ‘pre-prints’ of scientific articles. The need to pay to access certain information does not stop it becoming part of the state of the art. With these types of disclosure, there can sometimes be difficulties in establishing precisely when the information was made available to the public, but the publication date can often be inferred from computer generated timestamps, such as those associated with webpages retrieved from the Internet Archive. Patent applications that are unpublished at the filing or priority date of the application in question, can also be an important type of written disclosure, as discussed later in this chapter. Oral disclosures and public prior use
Oral disclosures and public prior use are other forms of prior art that are just as important as written disclosures, although they are much rarer in practice. The challenge for these forms of disclosure is that many questions need to answered in order to determine their effect on the patentability of an invention, in particular ‘when, who, what, how and under which circumstances?’. Typical examples of oral disclosures are lectures or presentations at conferences, television or radio broadcasts, or even non-confidential conversations. Written accounts of what was said may be provided as evidence of an oral disclosure, although it is important to distinguish between the date of the written account and the date of oral disclosure itself. If an oral disclosure is relied on in litigation, such as during PATENTS TRAINING MANUAL: 2022
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opposition proceedings at the EPO, then it is usual for witnesses to testify as to the content of the disclosure. A famous example of prior use occurred in Windsurfing v Tabur Marine [1985] R.P.C. 59, which is discussed in more detail later on in this chapter with respect to inventive step. In this case, it was found that the use of a homemade ‘sailboard’ built by an enterprising young boy during the summer holidays anticipated what was a very valuable patent for Windsurfing International Ltd. The use was in public and there was nothing to prevent someone from seeing how it worked, as established by a video recording of the use made by a member of the public. Confidentiality
Where a disclosure takes place under obligations of confidentiality, that disclosure has not been ‘made available to the public’ and therefore does not form part of the state of the art. One of the most common ways in which an obligation of confidentiality can be guaranteed is to ensure that any disclosure of an invention to a third party is made under a confidentiality agreement. However, even in the absence of such an agreement, confidentiality may be implied by the circumstances under which a disclosure occurs. This type of situation may arise, for example, where the disclosure takes part during a business 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, e.g. discussions where one company is seeking to find a marketing partner for a new product. In such cases, both parties have an incentive to maintain confidentiality. Nevertheless, it is important to remind inventors that disclosure of an invention to even a single person may be novelty destroying if it is made in circumstances where there is no obligation of confidentiality. Dealing with impending disclosures
News of a forthcoming disclosure may crop up suddenly, such as when your client or colleague informs you at the last moment about their plans to present their latest results or their new product at a conference. You may then have to take immediate action, perhaps with only days (or hours) to prepare and file an application before the disclosure is due 104
to take place. If you work in-house, you should familiarise yourself with your company’s publication approval policy. If there is not one in place you should strongly recommend instigating one. These systems are never foolproof, but if 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. In some cases, an application may be filed simply to establish a priority date for the subject matter that is about to be disclosed and it might not include any claims, for example. There are several potential pitfalls with this approach. The other disclosure will be relevant for the assessment of inventive step for any subject matter that was not included in the priority application, but later turns out to be important for the invention. This can be particularly problematic when only specific embodiments were disclosed in the priority application and there is no appropriate broader language on which more general claims can be based. There may also be issues with insufficiency if, for example, only very limited technical details were available when the priority application was drafted. For the most pressing situations, it is worth bearing in mind that a disclosure on the same day as your filing date is not part of the state of the art. Therefore, provided that your application is filed somewhere prior to or on the day the disclosure was made then that is enough to preserve novelty. In the worst case, a client may even come to you having already disclosed their invention publically (although it is always worth finding out precisely what has happened). However, depending on the specific circumstances, it is possible that some protection might still be available, as discussed below.
6.2.2 Exemptions from the state of the art Under certain, limited circumstances, public disclosures of an invention occurring before an application is filed can be prevented from being considered to form part of the state of the art. These
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circumstances include the invention being displayed at certain ‘International Exhibitions’ or the disclosure being made in breach of confidence. Some countries also have grace periods for a disclosure made by the inventor. In all cases, the application must be filed within a certain time of the disclosure taking place, usually within six or 12 months. If you think there is the possibility that public disclosure of an invention might take place then it is almost always better to file an application preemptively rather than seek to rely on a grace period or exemption. It is also important to realise that in most cases only applications filed soon enough after the disclosure are able to benefit from these exemptions, i.e. the six or 12-month period runs backwards from the filing date of the application and not from its priority date. A ‘usual’ filing strategy involving an initial first priority filing in a single country (such as the UK) followed by a later second filing (such as a PCT application) might therefore not work if the priority-claiming application is filed too late. This was the case in the application considered Enlarged Board of Appeal at the EPO in G 3/98, for example. International exhibitions
If an inventor displays an invention at a recognised ‘International Exhibition’ then this disclosure will not be considered part of the state of the art provided that, (i) within six months of the exhibition, they file a UK application stating that the invention was so disclosed and (ii) provide, within four months of the filing date, evidence to support this statement. In practice, 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 fewer than four per year worldwide. The EPO publishes a list of qualifying exhibitions which can be checked if there is a possibility that a disclosure will fall into this category. Unauthorised disclosures
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considered to form part of the state of the art, provided an application is filed within six months of the disclosure. This exception is designed to protect applicants from unlawful actions by a third party. In practice, however, an inventor or applicant might not be aware of an unauthorised disclosure until sometime after it has happened. It is therefore generally advisable to file an application as soon as possible after an unauthorised disclosure has come to light, or preferably beforehand if you think there is a risk that one might occur. For example, to be really safe, it might be better in some cases to file an application before an invention is disclosed to any third party, even if there is a non-disclosure agreement is in place. Grace periods
Some countries have ‘grace periods’ exempting disclosures made by the inventor during a specified period (usually 12 months) prior to the filing date of an application. Although it is better not to have to rely on these provisions, they can be sometimes very valuable. Of most interest in this respect is the US, which has a 12-month grace period, but other countries with 12-month grace periods include: Japan, South Korea, Canada, Australia, Brazil, Mexico and Singapore. Russia has a six-month grace period. The patent system in the US has some important differences from Europe and the UK, which are highlighted here in case you encounter them. • There is a one-year grace period for disclosures made by the inventor or joint inventor, or for disclosures made by someone who had obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor [see 35 U.S.C. § 102 (b)(1)(A) and (B)]. • The grace period also applies to priority applications, regardless of where they are filed, so a US application filed more than one year after the above types of disclosure can still benefit from the grace period by claiming priority to a US or foreign application that was filed before the grace period expired. • An applicant’s ‘own’ earlier-filed, later published applications are not prior art. More specifically, PATENTS TRAINING MANUAL: 2022
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there is an exemption if the claimed invention and subject matter disclosed in an earlier application were owned by the same person or subject to an obligation of assignment to the same person [35 U.S.C. § 102 (b)(2)(A) and (C)]. The rules in the US concerning earlier-filed, later published applications are also different. In contrast to the situation in the UK and Europe, which is discussed in the next section, these types of application are relevant to both novelty and obviousness in the US.
potentially both be granted. However, when the earlier application is published only on or after the priority date of the later application, an additional mechanism is needed to avoid a patent being granted for the later application. An example of such a situation is shown on the hypothetical timeline below in which a patent application (EP2) was filed in the period between another application (EP1) being filed and then published. Double patenting is prevented in this case by extending the definition of the state of the art for the later application (EP2) to include the earlier application (EP1), provided that certain conditions are met. Article 54(3) EPC does this as follows:
6.2.3 Novelty-only prior art – section 2(3) UKPA 2004, Article 54(3) EPC Most patent systems are designed to reward only whoever was first to file a patent application for a particular invention. In situations where there are two applications for the same invention, a patent should therefore be granted only for the ‘earlier’ application, i.e. the application that is entitled to the earlier priority date. Of course, there is no issue when the earlier application is published before the later application: it simply becomes part of the state of the art for the later application and the risk of so-called ‘double patenting’ is avoided because the later application lacks novelty (and/or inventive step) in the usual way. Similarly, two applications filed for the same invention by different applicants, but which are entitled to the same priority date could
(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the [priority date of the application] and which were published on or after that date, shall be considered as comprised in the state of the art. In the above example, EP1 is prior art for EP2 because EP1 is (i) a European patent application; and (ii) was published on or after the priority date of the later European patent application (EP2). The first condition ensures that double patenting is prevented only for European patents, so that an earlier-filed US patent application, for example, does not affect the validity of a later-filed European patent. The second condition ensures that applications that will never be granted (because they are never published) remain
Hypothetical timeline - patent application (EP2) was filed in the period between another application (EP1) being filed and then published.
priority GB filed DE filed
Jan 2020
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EP1 published
EP1 filed
April 2020
EP2 filed
EP2 published
Jan 2021 July 2021 April 2021 Oct 2021
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irrelevant. Section 2(3) of the UKPA has a similar effect, except that it applies to both EP and GB applications, so that double patenting in the UK by either route is prevented. The table below summarises the different territorial requirements. Importantly, this kind of ‘section 2(3)’ or ‘54(3)’ prior art is relevant for the assessment of novelty only. This is consistent with the goal of preventing more than one patent being granted for the same invention and also makes sense because this prior art was, by definition, not publically available at the priority date of the later application to render it obvious. There are a few details to keep in mind when assessing novelty with respect to ‘novelty-only’ prior art: • Any subject matter that was present in the priority document (GB in the example above) but was later deleted in the subsequent filing (EP1) will not be considered to have been ‘published’ and thus does not form part of the state of the art. • If there is subject matter in the earlier application (EP1) that is not entitled to the earlier priority date (i.e. was not present in the GB priority application) then the prior art effect of the two applications may be reversed. For example, subject matter that was first included in the later priority application (DE) and then published in the later application
(EP2), forms part of the state of the art for the earlier application (EP1). • Publications that happen in spite of a request for the application (EP1) to be withdrawn, because technical preparations for publication have been completed, do not form part of the state of the art. • The abstract of an application that is novelty-only prior art is not taken into account (see Article 85 EPC and Section 14(7) UKPA). It is important to have a good understanding of priority to be able to determine the effects of prior art of this kind. Priority is discussed in more detail in chapter 13, which you might want to read this in combination with the present chapter. Issues to do with novelty-only prior art and priority are very common in the opposition paper (Paper C) for the European Qualifying Examination (EQE).
6.2.4 Specific novelty considerations Selection inventions
A general principle is that a generic claim is anticipated by a specific example in the prior art falling within the claim. For example, ‘fixing means’ is anticipated by welding or riveting, whilst ‘copper’ anticipates metals in general. The converse to this
Different territorial requirements Type of earlier-filed, later-published application
Section 2(3) UKPA prior art?
Article 54(3) EPC prior art?
GB
Yes
No
EP
Yes
Yes
PCT application that has validly entered the GB national phase
Yes
No
PCT application that has validly entered the EP regional phase
Yes
Yes
None of the above, e.g. a US or JP application
No
No
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principle is that a more specific invention may be patentable over a more general disclosure, in which case the invention may be referred to as a ‘selection’ invention. This situation arises most commonly in: 1. chemical applications, e.g. where the prior art discloses that a chemical group may be selected from a wide range of groups (e.g. alkyl), and the invention relates to a particular advantage (e.g. increased solubility) which is associated with a narrow subset of these groups; or 2. methods / processes, e.g. where the prior art discloses that a particular method may be carried out at between 1-200 °C, but the invention has identified that if it is carried out between 175-195 °C a greatly improved yield is obtained. In order for these types of invention to be considered patentable, the selection must be purposive, not merely different from the prior art in an arbitrary way. Therefore, all members of the new selection must provide the advantage claimed. It is therefore important when drafting an application to describe appropriate ranges for any parameters that are necessary to achieve a particular technical effect. In Dr Reddy’s Laboratories v Eli Lilly, the novelty of selection patents was considered in relation to Eli Lilly’s patent for an anti-psychotic agent called olanzapine, which is used for treating schizophrenia. According to Dr Reddy’s Laboratories, olanzapine had already been disclosed in their earlier application, which included a general chemical formula that covered 1019 compounds and a second ‘preferred’ class of 86,000 compounds, both of which happened to include olanzapine. This argument was rejected, however, based on the principle that the disclosure of a large class of items is not considered a disclosure of each and every member of the class, it being ‘at least faintly, ridiculous to say that a particular leaf has been made available to you by telling you that it is in Sherwood Forest’. Rather, an ‘individualised description’ is required for anticipation. Looked at another way, using the compounds covered by the earlier application would not necessarily result in infringement of the patent. Indeed, this would only happen with one out of a very large number of compounds. 108
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, i.e. there is novelty of purpose. This can often be seen applied to medical use applications, where a second medical use of a new compound may be protected. One example of this is provided by Rapamycin, a naturally occurring compound which was isolated from a species of Streptomyces bacteria. The composition itself was protected by a patent filed in 1974, which was the first disclosure of this compound. At this stage, rapamycin was thought 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. Medical use claims may be worded as ‘Substance or composition X for use in the treatment of disease Y’ and the scope of the claim is limited to the substance or composition in the context of its medical use. This scope is different from that which would follow under the usual interpretation of the word ‘for’ as meaning ‘suitable for’, as would normally be applied to device and apparatus claims, for example. 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 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. For example, the fact that a substance might already be used as friction reducing additive would not invalidate a claim directed to use of the same substance for the purpose of inhibiting rust formation (even if the substance would have also inhibited rust formation when used for friction reduction, see G 2/88). The new use, whether it is medical or non-medical, must satisfy the usual patentability requirements, namely that it is novel and inventive. It should be remembered, though, when considering a new invention, that an earlier disclosure of a compound
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will not prevent a later application to a specific use of this compound being patentable. Specific uses are therefore important fallback positions in case the compound is not novel. Negative limitations
Although inventions are normally defined in terms of their positive features, it is also possible to include negative limitations in a claim to state that particular features are not present. Negative limitations can be problematic because a competitor might be able to ‘design around’ a claim by somehow including in his product the feature that the claim requires is absent. There can also be issues with lack of clarity. Nevertheless, there are some circumstances where they are helpful, such as to restore novelty to a claim by excluding certain subject matter, e.g. using wording along the lines of ‘wherein the composition does not include XYZ’. In some exceptional circumstances, it is permissible to introduce such ‘disclaimers’ in a claim even if there is no basis for doing so in the application as filed. You should at some point familiarise yourself with how the EPO treats disclaimers so you can understand when and how they can be used.
6.3 Inventive step After novelty, the next hurdle for any invention to clear is that it must involve an inventive step. According to Section 3 UKPA and Article 56 EPC, the question to consider is whether, taking into account the state of the art known at the priority date of the invention, the invention would have been obvious to a person skilled in the art. The state of the art here excludes the special type of ‘novelty only’ prior art mentioned above. The lack of a more precise legal definition of what an inventive step entails means that a range of facts and circumstances can be taken into account when deciding whether a particular invention satisfies this requirement. Although there is no ‘one-size-fits-all’ way of defining when an invention involves inventive step, a structured approach is normally followed to avoid the need to tackle the question of whether the invention is obvious head on. Different countries have adopted different tests, such as the Windsurfing/Pozzoli WWW.CIPA.ORG.UK
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approach used in the UK and the problem-solution approach used by the EPO. Before getting into the details of how the legal tests for obviousness work, it is perhaps helpful to consider briefly what is usually meant when something is described as ‘inventive’. Lord Hoffmann (in Biogen Inc v Medeva plc [1997] RPC 1) provided the following guidance: ‘Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge.’ The inventive idea, he explained, might be doing something that no one had previously thought of doing, or finding a way of doing something that others had wanted to do but could not think how, perhaps because a particular problem was standing in their way. An invention therefore involves doing something that goes beyond what a skilled person might have been expected to do based on the state of the art at the time. The skilled person
The ‘skilled person’ is not a real person, but a legal fiction that is supposed to provide a more or less objective way of assessing obviousness (amongst other things). In litigation, expert evidence is often provided to help establish some of the attributes given to the skilled person, such as what would have been familiar or routine to someone working in a particular technical field. Nevertheless, the skilled person is generally accepted to have the following characteristics: • Is neither an ordinary member of the public, nor a highly skilled expert, such as a Nobel Prize winner. • Knows the common general knowledge (CGK) in their particular technical field, such as techniques and methods standard in the field and the contents of standard text books. CGK also includes information that the skilled person knows they can look up, but it is not generally considered to include information from patent applications (or other highly specialised disclosures), unless there is a specific reason otherwise, such as the field being so new that patent applications would be the first point of reference. The common general knowledge is PATENTS TRAINING MANUAL: 2022
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•
•
• •
evaluated on the day before the priority date of the invention. Holds prejudices common to the field in question. The skilled person might therefore discount a particular option that was nevertheless available to them where popular opinion in a particular field was against it. Undertakes routine work and experimentation, and seeks out solutions to problems they encounter, but is unable to think laterally or exercise inventive ingenuity. Is able to correct obvious errors in the prior art. May be a multi-disciplinary 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 team of biologists, chemists and pharmacologists.
In the UK, the skilled person is assumed to read all publically available documents, but having read each document forgets it before moving on to the next, unless it forms part of their common general knowledge or there is a cross-reference from one document to another. This is an important point in practice as it makes it harder for an invention to be found obvious over a combination of documents, as is commonly the case in Europe or the US. When drafting an application, it is therefore generally better to avoid acknowledging anything as being common general knowledge unless you are sure that such an acknowledgment is indisputable. The skilled person also appears in a different guise for assessing sufficiency, which is the requirement for an application to describe the invention clearly and completely enough for it to be performed by a skilled person. In this case, the skilled person or the ‘skilled addressee’ for assessing sufficiency may be different from the hypothetical skilled person used to assess obviousness. For example, the skilled person or team for assessing the obviousness of an invention involving a vacuum cleaner using cyclone technology (as was the case in Dyson Appliances Ltd v Hoover Ltd RPC 22) would not have included a cyclone expert because ‘no-one had the wit to bring one in’ when researching how to build a better vacuum cleaner. By contrast, the skills of a cyclone expert would be expected to be called upon by a team that was trying 110
to implement the invention, the team having already been provided with the idea of using cyclones.
6.3.3 Inventive step in the UK: Windsurfing / Pozzoli The IPO and courts in the UK generally follow the so-called Windsurfing/Pozzoli approach to assessing inventive step, which involves the following steps: (1)(a) Identify the notional ‘person skilled in the art’. (1)(b) Identify the relevant common general knowledge of that person. (2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it. (3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed. (4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? The reference to Windsurfing comes from the case Windsurfing v Tabur Marine which established this approach. Pozzoli comes from a reformulation of the approach that was given in Pozzoli Spa v BDMO SA & Anor, which placed identifying the skilled person (and their common general knowledge) as the first step, rather than the second. The Windsurfing case is also notable because of the prior use, mentioned above. The patent in question claimed, in essence, a sailboard with a triangular sail (‘Bermuda rig’) that is supported by an ‘unstayed’ spar (mast) attached to the board with a universal joint, with the sail being held taut in between a pair of arcuate booms (a ‘wishbone’ boom) that can be gripped by the user for steering the sailboard. The prior art considered for the assessment of inventive step was an article that had been to members of the Amateur Yacht Research Society. The article described a sailboard with a square-rigged (diamond-like) sail supported by a mast that was inserted into a socket of the board, which was to be operated by the user standing with their back to the sail.
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The steps of the test can be applied to the Windsurfing case as follows. 1. The skilled person would have been a designer of small boats, who would have been 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 also be aware that the square rig was less manoeuvrable and furthermore, they would also have been aware of wishbone booms. The magazine article would have been part of their common general knowledge. 2. The inventive concept is the ‘free-sail’ concept, i.e. the selection of a unstayed spar and rig that allowed the user to steer the sailboard, but which could be released by the user to stop the sailboard if they got into difficulty. 3. The difference between the claimed invention and the article was the use of a Bermuda rig and a wishbone boom, instead of a square rig with a straight boom. 4. A skilled person considering the sailboard in the prior art publication and the problems with this sailboard would have appreciated that these problems could be overcome by the use of a Bermuda rig. If a Bermuda rig was substituted for the square rig then a wishbone boom rather than a crossed spar would be required. The patent was therefore held to be obvious. The inventive concept must be derived from the claim that is being considered and not from some general teaching provided in the description. It is concerned with identifying ‘the core (or kernel, or essence) of the invention – the idea or principle of more or less general application … which entitles the inventor’s achievement to be called inventive’ (see Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12, [2009] RPC 13). It is not the same as the ‘technical contribution’ provided by the invention (see chapter 7), which relates to how the state of the art has been advanced as a result of the inventive concept. It will be helpful to read through a few UK court judgments to get a feel for how the above steps are applied in practice. A good starting point might be Pozzoli Spa v BDMO Sa. WWW.CIPA.ORG.UK
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It is worth noting, that although this Courtformulated test applies equally before the IPO, the manner in which inventive step is argued there may take a slightly less rigorous line, e.g. without acknowledging very much about the skilled person (in case any such admission might become a problem later on). Practical details of prosecuting applications are explored further in chapter 17.
6.3.4 The ‘problem-solution’ approach The EPO uses the so-called problem-solution approach to assessing whether an invention involves an inventive step. Although its use is not mandatory, it is almost always used in practice in both examination and opposition proceedings. Demonstrating that you know how to apply it correctly is also a central part of the European Qualifying Examination. The problem-solution approach is usually presented as a three-step test, but in most cases what needs to be done can be broken down into the following steps: (a) Identify the ‘closest prior art’ (CPA). (b) Determine the differences (distinguishing features) between the claim and the CPA; (c) Assess the technical effect (i.e. result) that arises directly and causally from the differences; (d) Define the ‘objective technical problem’ to be solved, but without including any pointer to the solution provided by the claimed invention, e.g. by mentioning the distinguishing feature; (e) Examine whether or not a skilled person would have modified or adapted the CPA when solving the objective technical problem, i.e. whether the skilled person would have introduced the distinguishing features in order to obtain the results achieved by the claimed invention over the CPA. This generally needs to be done: 1. from the CPA either alone or together with common general knowledge; and 2. from the CPA in combination with any other citation. According to the Boards of Appeal of the EPO, the correct use of the problem and solution approach ‘rules out an ex post facto analysis which inadmissibly PATENTS TRAINING MANUAL: 2022
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makes use of knowledge of the invention when assessing inventive step’. However, it is clear from step (a) that some amount of knowledge of the invention (i.e. hindsight) is required to select the prior art that is ‘closest’ to the invention. The CPA is the single reference that is provides the most promising starting point for arriving at the invention, usually a reference that shares the same or a similar goal as the invention and that requires the fewest structural and functional modifications to get to the invention. When an inventive step objection is raised during prosecution of an application, the examiner generally indicates what they think is the CPA, but this choice can be contested, e.g. if it is not a realistic starting point that would have been considered by a skilled person. In such cases, the CPA might instead be a reference that was mentioned in the application, for example. There is, however, often not much to be gained by arguing against the examiner’s choice if it will be more difficult to argue a claim is inventive from what you think is the CPA. As an abstract example of how steps (b)-(c) work, consider a claim that is distinguished from a reference, D1, by a single feature that achieves a particular technical effect. Starting from D1 as the CPA, the objective technical problem might then be essentially ‘how to achieve the technical effect’ or perhaps some rephrasing of ‘how to achieve a particular advantage that arises because of the technical effect’. In some cases the technical effect or problem might have been described in the application as filed. In others, it might be a ‘reformulated’ problem that is based on a different technical effect, which is allowed providing the effect can be derived from the application as filed. It is important that the claimed features really do solve the problem. It is all too easy to rely inadvertently on features that are not actually in the claim when working out the technical effect, particularly if the application is not very clear about the significance of the distinguishing features. If the technical effect arising from the distinguishing feature is unexpected or goes beyond what would previously have been expected then this may be a compelling reason that the claim is inventive. In some cases, however, the distinguishing feature(s) might lead to the same technical effect as that found in the CPA or no technical effect at all. In these cases 112
the objective technical problem might be finding an alternative to the solution provided in the CPA. Step (e) is often where your arguments can make a real difference. There are generally two stages to examining whether it would have been obvious for a skilled person to arrive at the invention from the CPA. The first stage considers the CPA alone, taking into account the common general knowledge of the skilled person and perhaps combinations of embodiments within the CPA, although it is always worth remembering that the authors/inventors of the CPA did not themselves arrive at the invention. The second stage considers the CPA in combination with any other references. Continuing with the example started above, supposing that the distinguishing feature mentioned above is disclosed in another reference, D2. The relevant question is then whether a skilled person starting from D1 would been motivated to look to D2 when solving the problem and, having done so, would then have adapted D1 based on D2 to arrive at something falling within the scope of the claim. Relevant factors for answering this question include whether: • D2 is in the same or a similar or neighbouring technical field as D1, such that a skilled person would have looked there. • D2 is in a broader general technical field that a skilled person might be expected to know about as part of his or her general technical knowledge. • D1 recognises the problem, so that a skilled person would have been motivated to look for solutions to it, possibly in a different technical field from D1. • Either the problem and/or the technical effect is mentioned in D2, such that a skilled person would realise that D2 provides a solution to the problem. • D2 is technically compatible with D1. • D2 and/or D1 provides reasons that ‘teach away’ from combining the two references. Considering the sailboard claim of the Windsurfing case, the sailboard article might be regarded as the closest prior art as it is directed towards the same purpose as the alleged invention. Claim 1 differs from the earlier article in that it uses a Bermuda rig and wishbone boom rather than a square rig and straight
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boom as in the printed publication. A technical effect of this difference is that the manoeuvrability of the sailboard is improved. The objective technical problem is therefore how to make the sailboard described in the article more manoeuvrable. In this case, a skilled person would have been aware of a Bermuda rig and wishbone spar and the advantages they offer as part of their common general knowledge. They would also have been aware of the need to make sailboards more manoeuvrable. Based on these considerations it would have been obvious for a skilled person to have replaced the square rig and crossed spar with a Bermuda rig and wishbone boom and in so doing, to have arrived at claim 1.
6.3.5 Further considerations and arguments for inventive step The step-by-step approaches discussed above are useful to establish the relevant context to an invention, but they do not remove the need to actually decide the fundamental question of whether it is obvious. There are many forms of argument that can be made to try to tip the answer one way or another. 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 programme, but following all the available options is often not feasible, therefore, the choice of a direction leading to success, can be considered to be an inventive contribution. For example: an established process in the art for the production of a compound 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. WWW.CIPA.ORG.UK
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Although a person of skill in the art could try every combination of changes to see whether they 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. Reasonable expectation of success?
This is in some ways an extension of the argument 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 not obvious by showing that a skilled person would not have tried a particular approach if there was not a reasonable expectation of success that it would work. For example, the difference between the compound disclosed in the prior art and the compound claimed in an application may be a small modification to one of the side chains of the molecule. A medicinal chemist may be well aware of the effects that can be expected to result from changes to a particular molecule but he or she 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
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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 or 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: if the development of the invention was obvious, why was it not done earlier?
6.4 Industrial application An invention is only patentable if it is apparent that it has at least one practical, real world use. If this were not the case, someone who was quick off the mark might be able to obtain a commercial monopoly over an unexplored technical field by filing a purely theoretical or speculative patent application and without providing something of practical benefit in return. In legal terms, the invention must therefore be capable of industrial application. Closely related to this requirement are the statutory exclusions for what is not to be regarded as an invention, such as mere discoveries or abstract ideas, which are discussed in more detail in chapter 7. Section 4(1) of the UKPA states that an invention is capable of industrial application if it ‘can be made or used in any kind of industry, including agriculture.’ Industry in this case is understood to be broader than just anything involving manufacturing and machinery. Essentially it is anything that can be exploited practically for a concrete benefit qualifies. For the most part, it is easy to identify some kind of industrial application for an invention that has been brought to you by a client. After all, most applications are filed to protect products that the applicant wants to sell, or methods/services that may be exploited for
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 how 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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commercial gain. However, if it is not self-evident how the invention could be used in practice then this must be specified in the application as filed. Of particular relevance in this aspect are inventions relating to gene or protein sequences. Advances in biotechnology have meant that sequencing of nucleic acids has become commonplace, which has contributed to some applicants adopting a strategy of filing applications for sequences before any specific use for them has been identified. These applications do not meet the requirement for industrial applicability. Note that it is generally not possible to get around this problem by including a long list of potential uses for the sequence. If a proposed use is not substantiated to the extent that skilled person would find it credible, then it is held not to be supported in the application as filed. In such cases, the claims are sometimes referred to as ‘reach-through’ claims. These considerations are also relevant to the requirement for sufficiency (which is described in chapter 8), i.e. that the invention must be disclosed sufficiently clearly and completely enough for it to be carried out by a skilled person. A relevant decision on this subject in the UK courts is Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33. 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 that 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 opposite decision on the same case in opposition proceedings. Another well-known class of applications that sometimes fall foul of the industrial applicability requirement are those directed towards ‘inventions’ that contravene well-established physical laws. In particular, applications directed towards ‘impossible’ machines, such as perpetual motion devices, are often refused on the ground that something cannot be applied industrially if there is no way it could possibly work. Insufficiency is another insurmountable hurdle for these applications for the same reason. Of course, WWW.CIPA.ORG.UK
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there is nothing to say that an invention cannot in principle result from someone realising that some commonly accepted theory is wrong, but in this case the burden would be on the applicant to prove that their invention works.
Work-based examples Scenario 1: A client calls from a conference where they have just finished presenting some of their most recent results. They want to know if there is anywhere that they 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 did not render the invention obvious, then there is a possibility that you can argue that invention is novel and inventive over it 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 was 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 the UK it should be an EP (or PCT) application rather than a UK application that is filed and it should generally not then be used as a priority document for a later application. (c) Does the client have a copy of their results (e.g. a draft of a paper) that they 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. If time is really of the essence, a priority filing be made in a country located in a time zone where there are more hours left in the day. (d) If all else fails, protection may still be obtained in countries with a grace period (e.g. US, JP, CA, MX, BR); PATENTS TRAINING MANUAL: 2022
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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. They want 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 document was published stating that for correct sealing it was necessary to have the two functions separated to 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 an argument that invention involves an 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.
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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, but they have failed to identify a specific industrial application of this sequence. Any filing in which is there is no apparent 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 programme rather than an invention per se. The inventors need to identify the appropriate use for the sequence before filing.
* This chapter was first written in 2008 by Maria Nichol (CPA, EPA) at Galapagos. It was revised and updated by Martin Bell in 2021.
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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 characteristics does a ‘person of skill in the art’ possess? 4. 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 5. What is meant by the ‘problem-solution approach’
Answers overleaf.
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Suggested chapter 6 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. See section 6.3 above. 4. (a) 1 June 2007
(b) 1 June 2007
(c) 1 June 2008
5. See section 6.3 above.
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7
PATENTABILITY: SPECIFIC ISSUES By Ben Hoyle (EPA, CPA), Hoyle IP Services*
Outline Certain forms of invention are barred from patent protection. This chapter discusses exclusions to patentability, i.e. things that are not considered to be inventions, and exceptions to patentability, i.e. inventions that are not allowed patent protection. These exclusions and exceptions differ between jurisdictions. Companies often need to be advised on whether the exclusions and exceptions apply to their ideas. This chapter provides useful information for review of inventions in the fields of software, medicine, and biotechnology.
Learning plan It helps if the trainee has first read: Core areas of the law: • Sections 1, 4A and 76A and Schedule A2 of the UK Patents Act (UKPA) and the accompanying sections of the Manual of Patent Practice; • Articles 52 and 53 and Rules 26 to 29 of the European Patent Convention and the associated sections from the Guidelines for Examination in the EPO (Part B-VIII, 2; Part G-I and II, G-VII 5.4).1 Core legal cases: • UK: Aerotel Ltd v Telco Holdings Ltd (and others) [2006] EWCA Civ 1371,2 HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451,3 AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat)4 and Macrossan’s Application [2006] EWCA Civ 1371 • Europe: T 0208/84 (VICOM),5 T 641/00 (COMVIK), T 0315/03 (Oncomouse®), G 1/83 (which provides the basis for the ‘Swiss-type’ second medical use claims) and G 3/08 (programs for computers) • US: Alice Corp. v CLS Bank Int’l, 573 U.S. 208 (2014),6 Mayo Collaborative Services v Prometheus Laboratories, Inc., 566 U.S. 66 (2012)7 and the USPTO Guidelines on Subject Matter Eligibility.8
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Trainer’s input: This can be a highly subjective area. Discuss with the trainee any cases where exclusions or exceptions from patentability have arisen. Please feel free to add weight to your field of practice. It may be worth including qualified colleagues in other areas for brief sessions. Syllabus link: U K Exams: FC1 and FC5 EQEs: Papers A, C and D IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills); Technical (Skill Sets: Analysis and Advice; Validity; Drafting; Prosecution). Time allocated: One to two days.
Learning outcomes By the end of this chapter you will be able to express the exceptions and exclusions to patentability. You will have learnt to identify inventions that may fall into these areas and be able to explain how to address to objections raised under these provisions.
7.1 Introduction 7.1.1 Chapter organisation This chapter is organised as follows. First the different legal requirements for obtaining a patent are split into sections respectively covering exclusions from patentability and exceptions to patentability. These requirements have differing legal bases and different bodies of supporting case law. For brevity, determining whether the exclusions or exceptions apply is often referred to as a ‘patentability’ review. Exclusions and exceptions need to be considered when evaluating new ideas prior to preparing a patent application. In certain cases, an inventor may need to be advised that patent protection is not possible. In other cases, claims may need to be carefully drafted to avoid the risk of falling within the exclusions and exceptions. The issues discussed herein may also arise as part of objections during prosecution of a patent
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application, or as part of an argument for invalidity after grant. The exclusions to patentability are open to interpretation and have been extensively debated in the case law of many jurisdictions. The legal basis under UK and European patent law naturally defines different sub-areas of exclusion. These are discussed in turn under different sub-sections. The exclusions to patentability are particularly relevant for computer-implemented inventions such as those relating to software and artificial intelligence. The exceptions to patentability are more narrowly defined and typically only arise in particular fields of practice, including biotechnology, drug treatments and medical devices. The exceptions to patentability often require care when drafting patent claims. Three different areas are discussed in different sub-sections. The sections on exclusions and exceptions are presented from a UK and European perspective. A fourth section then looks at approaches in a few other main jurisdictions including the US. For those
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that work in fields of technology affected by the UK and European provisions, a working knowledge of practice in at least the US is beneficial. Following the presentation of the law, a series of simplified examples based on actual cases is presented in a fifth section. These can form the basis for discussion between the trainer and the trainee. A sixth section follows with a series of questions to test your knowledge. Key take-home points are summarized in a seventh section, followed by guidance for further study.
7.1.2 A starting point for UK and Europe The legal basis for exclusions and exceptions to patentability is similar in the UK and Europe, due to harmonisation of the UK Patents Act (UKPA) and the European Patent Convention (EPC). In the Chapter 6, a first set of criteria for patentability were discussed. To obtain a patent, an invention must be novel, inventive and have an industrial application. These criteria are set out in sub-sections (a) to (c) of section 1(1) UKPA and in paragraph (1) of Article 52 EPC. Exclusions
A patent may only be granted for ‘inventions’. Inventions are defined negatively in the law by a series of exclusions, i.e. certain things are considered not to be inventions. They typically relate to non-engineering or non-technical fields, or to generalised points of knowledge. These are referred to in section 1(1)(d) UKPA and paragraph (2) of Article 52 EPC.
Exceptions
For ideas that are considered ‘inventions’, the law also defines certain exceptions to the ability to obtain a patent. These are narrow areas and relate to immoral inventions, things that are plants or animals, and methods of treatment. These are referred to in section 1(1) (d) UKPA and paragraph (2) of Article 52 EPC. In the UK, they are further set out in sub-sections 1(3) and (4) and section 4A UKPA.
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. These other areas are discussed in other chapters. Throughout this chapter, the main emphasis will be on how these exclusions and exceptions are applied by the UK Intellectual Property Office (IPO) and the European Patent Office (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. Although the provisions cited above are the starting point for evaluating whether an idea is excluded from patentability or relates to an exception for patentability, they do not provide much help for how the law is applied. A feel for this comes from study of examples from the case law, and from exposure to examples in daily patent prosecution.
Having read this section you should know that there are certain exclusions and exceptions to patentability where it is not possible to obtain a patent. You should also know the relevant provisions in the UKPA and EPC that define these.
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7.2 Exclusions from patentability 7.2.1 What is excluded subject matter? Section 1(2) of the UKPA and paragraph (2) of Article 52 EPC describe four sets of ‘things’ that are not considered to be an invention. These include: a) discoveries, scientific theories and mathematical methods; b) aesthetic creations, such as a literary, dramatic, musical or artistic work; c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and d) presentations of information. They cover assorted areas that were deemed, during the drafting of the EPC, to fall outside of the desired scope of patent protection. They reflect certain public policy decisions and areas that are better protected by other forms of intellectual property. 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. It is sometimes useful to think of the four sets of things as relating to the following forms of subject matter: i. matter which has other forms of protection (e.g. aesthetic creations or computer programs themselves which are protected by copyright); ii. matter which is highly abstract and that does not have in itself an industrial application (discoveries, scientific theories and mathematical methods); or iii. matter which provides no technical or engineering contribution (e.g. business methods, certain types of software or presentation of information).
Check that you know the areas of exclusion and compare for yourself the wording of UK and EP provisions to confirm that they are similar.
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7.2.2 ‘As such’ Both bodies of law also add an important caveat: the exclusions only apply only to the extent that the patent or patent application relates to these sets of things ‘as such’. This is set out in the last part of section 1(2) UKPA and in paragraph (3) of Article 52 EPC. Much of the body of case law concerns what this ‘as such’ means. It is often misunderstood. Many outside the patent profession, and even some within it, will state that you cannot obtain a patent for software, as ‘programs for computers’ are excluded subject matter. This is incorrect; the EPO actively grants patents for software every day. The ‘as such’ allows for ‘programs for computers’ to be protected if they provide a technical effect or a technical contribution. This caveat also means that inventions that embody scientific theories, discoveries or mathematical methods may be protected under UK and European patent law. In this case, the ‘as such’ is interpreted to allow inventions that provide a concrete and practical embodiment of a more general piece of human knowledge. This also has similarities with practice in the US, despite different legal terminology. The sub-sections below consider in more detail how the ‘as such’ caveat is interpreted with regard to each of the areas of exclusion.
7.2.3 ‘As such’ in the UK – Aerotel/Macrossan In the UK, the so-called ‘Aerotel/Macrossan’ test, as set out in paragraph 40 of Aerotel Ltd v Telco Holdings Ltd, is often used as a framework to determine whether a patent claim relates to excluded subject matter ‘as such’, i.e. is excluded from patentability. It is often used in UK patent examination and by the UK courts. The test comprises four steps: 1. Properly construe the claim; 2. identify the actual contribution;
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3. ask whether it falls solely within the excluded subject matter; and 4. check whether the actual or alleged contribution is actually technical in nature.
Check that you are familiar with the ‘Aerotel/ Macrossan’ test and how it is applied.
Step 1 is approached in a similar manner to an analysis of claim construction for novelty and inventive step. It involves clarifying and interpreting features of the claim. Step 2 is similar to the analysis of inventive step. However, the UK courts in cases such as Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463,9 have indicated that the ‘contribution’ may differ from the ‘inventive step’, in that the former does not need to consider the relationship of the claim to the prior art. In practice this means that the ‘actual contribution’ may be considered more broadly than a technical contribution providing an inventive step. In practice, it is often presented as a paraphrased version of the claim, concentrating on the core aspects of the invention and how they provide a benefit. This is one important area of difference with practice at the EPO. Step 3 is the core of the test and is where the ‘as such’ caveat is considered. This is seen in the ‘falls solely within’ terminology. It is commonly applied as a mapping between the contribution of the claim in step 2 and one of the four areas of exclusion in section 1(2). If you wish to demonstrate that the claim relates to an ‘invention’, you must provide evidence that portions of the contribution fall outside of the exclusion areas. Step 4 is an additional cross-check that harmonises practice with the EPO approach. It is often applied in computer program cases to require a further technical effect over and above the technical effect provided by a computer running a program.
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Read the Aerotel case. Ask your trainer or a colleague for references to cases that have patentability objections (if these are unavailable use the claim from Lantana or another of the cases cited at the beginning of the chapter). Practice applying each of the Aerotel steps and review the results with your trainer. You should be able to provide a few sentences of reasoning for each step.
7.2.4 ‘As such’ in Europe – technical solution to a technical problem In Europe, the case law has developed around the term ‘technical’ as found in the Implementing Regulations to the EPC (e.g. see Rules 42(1)(a) and 43(1) EPC), and as applied in the context of the problem-solution approach used for the evaluation of inventive step. Indeed, Article 52 EPC was amended in 2000 to refer to ‘all fields of technology’. Under a European interpretation an ‘invention’ is a concrete piece of technology as opposed to abstract knowledge.
Read T 641/00 (COMVIK) and section G-VII of the Guidelines for Examination in the EPO.
According to the EPO approach, as long as a claim has features that do not relate entirely to one of the exclusions of Article 52(2) EPC, the exclusions are analysed as part of an analysis of inventive step under Article 56 EPC. For example, a claim to ‘a method of mentally calculating a number’ would fall solely within the ‘mental act’ exclusion of Article 52(2)(c) EPC, i.e. would be a ‘mental act’ as such according to Article 52(3) EPC, and so would be objected to under that provision. However, a claim to ‘a method of calculating a number using an electronic circuit’ would not solely relate to a mental act, i.e. it would not be a ‘mental act’ as such according to Article 52(3) EPC (as it PATENTS TRAINING MANUAL: 2022
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relates to a method performed outside of the mind). It could however be objected to based on one of the exclusions, but this analysis would form part of an inventive step objection under Article 56 EPC. In practice, when examining inventive step under Article 56 EPC, the EPO looks at the novel features and determines whether they provide a non-obvious technical solution to a technical problem. However, only ‘technical’ novel features are deemed capable of contributing to an inventive step. Whether a feature is ‘technical’ or ‘non-technical’ is determined by considering its contribution to the total solution, and looking to see whether it can be said to fall within one of the excluded areas of Article 52(2) EPC. For example, consider the following claims being examined by the EPO: a) a mobile phone where the novel feature relates to how icons are presented on the home screen. b) a neural network where the novel feature relates to a new method of factorising a polynomial equation; c) a computer system where the novel feature relates to steps of processing a medical record; and d) a cycle helmet where the novel feature relates to a particular pattern of colouring on the helmet.
Discuss with your trainer or a colleague which exclusions might apply in each case and what objections the EPO may raise.
In each of the above cases, the claim may fulfil the requirements of novelty and the novel feature may be non-obvious. However, the novel feature may be deemed to relate to an excluded area and so be deemed not to contribute to an inventive step, despite not being known.
7.2.5 Discoveries, scientific theories and mathematical methods Particular aspects of each of the excluded areas will now be considered in turn. 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 cannot be sufficient to grant a monopoly over its operation without further contribution from the inventor. Typically, an inventor needs to apply the scientific theory to provide a useful outcome; this is often used as a definition for ‘technology’. 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 entity already existed and the inventor’s
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contribution is locating and describing 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 a particular chemical compound posed specific problems, then it may be possible for this to result in the chemical being considered more than a mere discovery. In these cases, the invention may comprise a method of manufacturing the chemical compound. 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 than routine purification and isolation methods. The policy decision to exclude discoveries, scientific theories and mathematical methods is also a practical one. It seeks to curtail the scope of patent protection and prevent protection for general principles extending across multiple fields. Such protection may provide a barrier to innovation. In practice it means that claims must be directed to a particular use or application, and this will typically be governed by the scope of the preamble. It also makes search and examination of a patent application a tractable task. Industrial application
The requirement for industrial applicability was discussed in chapter 6. When considering the exclusions to patentability specifically, it can be argued that a scientific theory does not have a direct industrial application. 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. 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 WWW.CIPA.ORG.UK
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been specifically designed to exploit this pathway, e.g. by targeting a particular point, may be patentable.
Essentially, this first area 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.
The exclusions of discoveries and scientific theories tend to arise more often in the fields of chemistry and biotechnology, whereas the exclusion of mathematical methods arises more often in the fields of signal processing, artificial intelligence, and machine learning.
7.2.6 Aesthetic creations This area of exclusion is specified to avoid overlap between copyright and patent protection. For example, it would be generally unfair for a work to be covered by both copyright and patent protection (although, as discussed below, this often happens with different aspects of computer software). This is seen more explicitly in the UKPA where section 1(2)(b) PA purposely mirrors section 1(1)(a) of the Copyright, Designs and Patents Act 1988 (CDPA), referring to ‘a literary, dramatic, musical or artistic work’. This exclusion also avoids an analysis of inventive step being confused with subjective evaluations of aesthetic worth or beauty; a patent claim is considered from the viewpoint of prosaic technical utility. When evaluating ideas in so-called ‘invention harvesting’ or ‘brainstorming’ sessions, it is often useful to categorise different aspects of ideas as relating to the different areas of intellectual property protection. Aspects that have technical utility are considered ‘inventions’ for patent protection; aesthetic elements may be considered for copyright or design protection.
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Consider with your trainer or a colleague a selection of well-known consumer products – maybe start with your mobile phone. What aspects relate to aesthetic characteristics and so may be excluded by section 1(2)(b) UKPA or Article 52(2)(b)? Could these be protected by copyright or design? Can you think of any features that combine both aesthetic appeal and technical function? How would you argue that these do not relate to an aesthetic creation ‘as such’?
It is worth noting that where it can be demonstrated that an 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’.
7.2.7 Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers This exclusion typically arises most often for computer-implemented inventions. It is often the hardest exclusion to understand for those outside of the patent profession, as the group covers rule- and logic-based systems that are often seen as a form of technology. The disparate areas of the present group were combined as examples of ‘non-technical’ contributions where it was desired to curtail the monopoly right of patent protection. An example of what happens without this restriction may be seen in the US before the Supreme Court judgment in Alice v CLS Bank.
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For this exclusion, the ‘as such’ caveat is key. The general rule is that even if a patent claim contains a subset of features that are deemed to fall within these categories, if you can demonstrate that a practical or engineering problem is being solved in a new way, then the exclusions does not apply ‘as such’. It should also be noted that the exclusions are weighted towards method claim features (‘schemes’, ‘rules’, and ‘methods’). Apparatus claims may formally fall outside of the exclusion. However, both UK and European practice has developed to avoid overcoming the exclusion by a mere rewrite of a claim category. In the UK, the second step of the Aertoel/Macrossan four-step test identifies the ‘actual contribution’ of a claim, which may differ from the surface form. For example, ‘a computer device for online shopping’ may technically fall outside the present exclusion but the ‘actual contribution’ under the second step may be deemed ‘a method for online shopping’, and thus be seen to solely fall within the exclusion under the third step. Hence, under UK patent law, an excluded subject matter objection would be raised under Section 1(1)(d) and 1(2)(c) UKPA. In Europe, the analysis of technical features under Article 56 EPC means that only novel features are evaluated with respect to excluded subject matter. This allows a certain distance from the form of the claim. With the same example, ‘computer devices’ per se may be deemed to be part of the state of the art. Therefore, the novel feature is an adaptation ‘for online shopping’. But this novel feature is a ‘method for doing business’, falling within the exclusion, and so cannot contribute to an inventive step. Hence, under European patent law, an inventive step objection would be raised under Article 56 EPC. A body of case law has grown in both the UK and Europe that adds certain sub-categories of exclusion to the listed areas. For example, in Europe so-called ‘administrative methods’ are seen to fall under ‘schemes, rules and methods for performing mental acts or doing business’. These include Information Technology administration (such as assigning user roles and permissions), managing of medical records,
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and logistics. The EPO often refers to a ‘requirements specification’, which is a set of non-technical rules or requirements that are handed to a skilled person (such as a computer developer or engineer). The requirements specification is seen to be prepared by a non-engineer, such as a business manager. Any feature that does not require engineering considerations, such as memory or processor management, is deemed non-technical and may be said to form part of the ‘requirements specification’. In this manner, European patent examiners can often disregard a whole claim bar a preamble to a ‘computer device’ or a ‘computer-implemented method’ as being part of the ‘requirements specification’. If you wish to argue that a feature should be considered for inventive step, it is good practice to demonstrate that only someone with an engineering degree or qualification could come up with the feature. When dealing with computer-implemented inventions, the UK courts have provided further guidance to determine whether the ‘as such’ caveat applies. As the UK approach does not consider the state of the art, it is often difficult to disentangle a technical effect or contribution provided by a computer running as a computer and a computer running the specific computer program of a claim. This is especially the case when applying the third step of the Aerotel/Macrossan four-step test. This further guidance is provided in the form of a set of signposts or further questions to apply to the claim. These were originally set out in AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat), and were reformulated in a more user-friendly manner in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451.
We recommend that you read at least paragraphs 33 to 59 of the HTC judgement, including the signposts as set out in paragraph 50.
The signposts are optional but are often used to assess whether the exclusions apply by both UK examiners and UK courts. They consist of determining, with respect to a claim for a computer-implemented invention: WWW.CIPA.ORG.UK
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1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; 2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; 3. whether the claimed technical effect results in the computer being made to operate in a new way; 4. whether there is an increase in the speed or reliability of the computer; 5. whether the perceived problem is overcome by the claimed invention as opposed to being merely circumvented.
Prepare some rough draft claims for well-known computer-related inventions (e.g. an e-commerce basket, a music-streaming client, a mobile operating system function). Practise applying the Aerotel/Macrossan test and then applying the AT&T signposts at the third step.
The signposts are generally a tool for determining whether there is a further computer engineering style technical effect rather than an effect that results from an automation of a non-engineering set of rules or procedures. The signposts focus attention on lowerlevel technical details, such as how the electronics of the computer device is 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 may not been the case. For inventions such as business methods, the net result is often the same; both the IPO and the EPO are reluctant to grant claims to business methods without a clear technical effect. The differences between the IPO and the EPO have traditionally been largest for computer-implemented inventions. The EPO has traditionally granted claims to computer programs that provide a technical effect, whereas the UK approach may see those same claims being refused for being a computer program as such. PATENTS TRAINING MANUAL: 2022
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In the UK there is often wide variation between different examiners and different technical areas. The European approach is more consistent. In both jurisdictions certain areas have traditionally been seen as valid inventions, such as sound and image processing. At the time of writing both jurisdictions were inclined to view neural network architectures as valid inventions, although this may change as they become more widespread. In certain cases, inventions that are seen as nontechnical in Europe may not be excluded in the UK. For example, the EPO typically finds natural language processing and IT administration nontechnical, but it may be possible to convince a UK examiner or judge of a technical contribution.
You should be aware of the areas in which the EPO and the IPO differ in their evaluation of excluded subject matter. Discuss this with your trainer or colleagues. You should be able to advise companies and clients on appropriate filing strategies for ideas that may fall within the excluded areas.
7.2.8 Presentations of information The final exclusion covered by section 1(2) UKPA and Article 52(2) EPC is anything that relates to the mere presentation of information. This exclusion has overlaps with the exclusion for ‘aesthetic creations’. However, it covers cases where the information may not be traditionally ‘aesthetic’. For example, it covers graphs and charts showing non-technical information, icons and graphical user interfaces. At least at the EPO, it also covers audio and haptic presentations of information.
Read G-II 3.7 of the EPO Guidelines10 and Gemstar–TV Guide International Inc v Virgin Media Limited [2010] RPC 10.11
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The Boards of Appeal at the EPO have developed the idea of ‘cognitive content’ as a tool to help evaluate whether a claim feature relates to the presentation of information. ‘Cognitive content’ is deemed to be content that is perceived and mentally processed by a user. It covers ‘what’ is presented and may be seen as related to the concept of semantics. The ‘cognitive content’ of the presented information may provide an inventive step if it relates to an internal state of a technical system and enables a user to properly operate this technical system. For example, presentation of a delivery status (either on a screen or via a voice assistant) may be deemed to relate to non-technical cognitive content but presentation of a battery level may be deemed to relate to technical cognitive content. It is often useful to distinguish ‘what’ is being presented by ‘how’ it is presented. The ‘how’ may provide a technical contribution in both the UK and Europe. For example, a new way of controlling screen elements or an electro-acoustic transducer may be seen as a patentable invention, regardless of the information that is being presented by those devices. 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. Like the exclusion to aesthetic creations, the exclusion to the presentation of information also prevents subject matter being protected by both patents and registered designs. Subject matter that is
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seen to relate to the mere presentation of information, such as user interfaces or user interface elements, may be suitable for protection with registered designs.
The exclusion to the presentation of information often arises when patenting consumer electronics and graphical user interfaces. You should be able to identify when a feature might lead to an objection in the UK or Europe. You should also be able to advise on whether a feature may be best protected by patents or registered designs.
7.2.9 – Practical considerations In practice, if you work in this area, you need to become familiar with the subject matter that is seen as technical and non-technical in Europe, and that is seen as excluded as such or allowable in the UK. The main way to do this is to keep up to date with the case law (hearings and court cases in the UK, Board of Appeal cases in Europe). The IPO’s website provides a database of past patent decisions,12 where ‘excluded subject matter’ may be selected as a keyword or phrase. The decisions of the EPO Boards of Appeal are also searchable.13 Relevant decisions may be found by search under Article 56 EPC and the keyword ‘technical’ or ‘non-technical’. It should further be noted that objections to excluded subject matter in this area are traditionally difficult to overcome. Around 90% of UK hearings that consider this exclusion conclude that the exclusion applies. In Europe, Boards of Appeal prefer to confirm that an application lacks an inventive step based on the state of the art, but do not shy away from deeming certain novel features non-technical. In all jurisdictions, when drafting applications to subject matter that could be seen to lie in an excluded area, it is important to emphasize all technical aspects of the invention and all technical problems solved to increase the chances of grant. It is good practice to set out separate technical problems and solutions for each substantial dependent claim position, to provide different fall-back positions WWW.CIPA.ORG.UK
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if an objection is raised towards an independent claim. Having basis in the description for a technical solution to a technical problem will greatly help your chances of overcoming objections raised by the patent offices and provide a stronger patent.
7.3 Exceptions to patentability 7.3.1 – What subject matter is covered by the exceptions to patentability? In the sections above, we considered subject matter that was deemed not to be an ‘invention’. In this section, we consider subject matter that is deemed to be an ‘invention’, i.e. is not excluded, but falls within a defined exception to patentability, which means that it is not entitled to patent protection. The exceptions to patentability cover three main areas: methods of treatment or diagnosis, inventions that are contrary to morality or public policy, and certain biotechnology inventions. They tend to arise in the life sciences sector. The first area of exception may also arise when patenting medical devices, and so those in the electronics and engineering fields should also have a working knowledge of this section. By and large these exceptions are designed for social and practical reasons. The extent to which an exception applies to the subject 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 UKPA and Article 53(c) EPC define an exception for methods of treatment and diagnosis. The logic behind this exception to patentability is a highly simple one, namely that a doctor should not be limited in their 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 PATENTS TRAINING MANUAL: 2022
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particular course of treatment or using a particular diagnostic method. In the UK, this exception was implemented by seeing these forms of invention as not being industrially applicable. However, it has now been accepted that this was an artificial objection and, therefore, in the 2004 amendments to the UKPA these exceptions were moved to a standalone section. The UKPA is thus now slightly clearer in defining these exceptions. It states that a patent may not be granted when the claims relate to either: (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.
claim for a medical device, e.g. a device that is already protected by an earlier independent method claim. Both section 4A UKPA and Article 53(c) EPC also explicitly state that inventions which relate to compositions for use in the excluded methods, such as pharmaceutical compositions for surgery and therapy may still be subject to patent protection. Similar to medical devices, the present exception may be applied to a ‘method of use’ claim, where the pharmaceutical composition is presented in an earlier independent claim. Care should be taken when defining these method claims. 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
Check that you know what forms of methods are deemed not patentable and the basis in the UKPA and EPC.
Although the intention is to protect the practising doctor, the exception is a relatively narrow one, e.g. as compared to the previous exclusions, and still leaves a significant area of protection in the medical field for pharmaceutical and biotechnology companies. A first point to note is that both methods are defined in relation to ‘the human or animal body’ (i.e. ‘treatment of’ and ‘diagnosis practised on’ respectively). If the method of treatment or diagnosis is not practiced on the human or animal body, it falls outside of this exception. This includes diagnostic kits where the method is practiced on samples removed from the human or animal body and other in vitro methods. A second point to note is that the exception applies to ‘methods’. Apparatus and devices such as tools for use in therapy or surgery may be protected. Where this exception often arises is when additionally defining an accompanying ‘method of operation’ 130
With respect to methods of treatment, this is not only limited to methods that will provide a cure. Any method which could lead to an improvement in the symptoms of a disease may be considered 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. Methods that do 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.
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Where a particular method may have nontherapeutic (i.e. patentable) and therapeutic (i.e. non-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 also 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.
Discuss with your trainer or a colleague in the life sciences field inventions that may be deemed to fall within this exception. You should be able to distinguish what claims may fall within the exception and provide reasoning for certain claims that the exceptions do not apply.
(a) (ii) A method of treatment by surgery
This area was considered by the Enlarged Board of Appeal in decision G0001/07.
It’s worth reading G0001/07 to get an understanding of the EPO approach in this respect.14
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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 Enlarged Board of Appeal also clarified that you 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 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. For example, 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 are drafted to exclude any steps that are performed on the human or animal body, there is the question of whether it still falls under the exception. As another example, consider 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. PATENTS TRAINING MANUAL: 2022
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If the method was written out in full, it may 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, the method steps may be drafted from a 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. In the above case, is it possible in this case to arrive at a patentable invention just by omitting the step of physically obtaining the sample? Decision G0001/04 of the Enlarged Board of Appeal at the EPO addressed this case.
Again, it’s worth reading G0001/04.15
In this Decision, the Enlarged Board of Appeal indicated that the method steps need 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. Hence, care is required when drafting claims that might be seen to fall within this exception. If steps that would regularly involve the human or animal body are omitted, care should be taken that the remaining claim is not seen as insufficient.
7.3.3 – Contrary to morality or public policy both UK and Europe have specific exclusions for inventions that are deemed contrary to morality or public policy. These feature in Sections 1(3) and 1(4) UKPA and Article 53(a) EPC. Although potentially of wide applicability, they are rarely applied in practice by the patent offices and the courts. It should be noted that these provisions relate to the exploitation of the invention, rather than the invention itself. It is also clarified in the provisions that legality or illegality under UK or European national law is not at issue; use of an invention may be illegal but it may still be patented if it is not deemed to be contrary to public policy or morality. An example of an invention that might not be excluded is a handgun. In the UK it is illegal to own a handgun; however, it does not necessarily follow that the use of a handgun would be immoral. This provision may generally only be applicable in certain narrow fields. These include those where the exploitation of an invention may cause extreme human or animal suffering. Fields where this may apply include military and police equipment, munitions, farming equipment, and inventions that involve genetic manipulation. For example, a torture device or a genetic weapon may be excluded from patentability. One notorious invention that may be deemed contrary to morality or public policy is the landmine. However, it should be noted that many inventions that could potentially cause suffering are often not excluded; the exception is applied narrowly and only in areas with widespread agreement.
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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 biotechnological inventions.
Under UK patent law, these are covered by Section 76A and Schedule 2 UKPA. Under European patent law, these are covered by Rules 26 to 34 EPC. Make sure you read and understand these provisions.
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.
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However, once a use for a gene has been identified, in accordance with the Biotech Directive, the applicant is entitled to claim the gene, per se, assuming that the gene fulfils the requirements of novelty and inventive step. This may be directly compared to the situation for a chemical compound. A gene is essentially a large, highly complicated chemical compound. While the discovery of a gene or chemical compound is not patentable per se, a use of that gene or chemical compound, or a novel and inventive method of producing that gene or chemical compound, is patentable. In order to obtain protection for a gene sequence or protein, it is essential the industrial use is described in detail in the application as filed. It is not permissible to file a patent application covering the sequence or protein alone and then provide an industrial application at a later stage (indeed this would be seen to add subject matter). If the use requirement is not satisfied in the application as filed, the application will be refused. It should also be noted that, as the sequencing of the human and other genomes has become readily 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 this context, it is important to clearly demonstrate that the identification of the gene and its function provides an inventive step, and that it was not 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 UK and European patent law that inventions may not be granted for the human body (see Part 3 of Schedule 2 UKPA and Rule 29 EPC). PATENTS TRAINING MANUAL: 2022
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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 has 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 and 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 which, in terms of the production of the stem cells for commercial purposes, would clearly fall within this exclusion. 134
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. (d) Modifying genetic identity of animals causing suffering without a medical benefit
The key decision is this area relates to the Oncomouse® decision – T 0315/03. 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
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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 alongside each other – matter that does not fall WWW.CIPA.ORG.UK
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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 exception to patentability relates to methods of breeding or otherwise producing plants and animals that are commonly used, for example, methods of generating higher producing varieties by crosspollination of known species. Under European patent law, it is covered as a specific exception in Article 53(b) EPC; patents shall not be granted for: ‘plant or animal varieties or essentially biological processes for the production of plants or animals.’
Not included in this exception are processes for the fermentation of micro-organisms and related methods. For example, it is possible to patent an improved fermentation process for the production of a compound via micro-organisms. This exception was considered in the ‘Tomato’ and ‘Broccoli’ Enlarged Board of Appeal cases G2/07, G1/08, G2/1216 and G2/13.17
If you work in the field of biotechnology read at least decisions G2/12 and G2/13. If you work outside of this field, find and read a review of these cases.
In the first round of these cases, the Enlarged Board of Appeal defined which processes are excluded from patentability (e.g. methods involving sexual crossing and selection) and which processes are patentable (e.g. methods involving genetic modification (GM)). PATENTS TRAINING MANUAL: 2022
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In the second round of cases, the relevance of this exclusion to product claims covering plants and plant material, such as plant parts or fruit, was considered. 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 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. Matters have been further complicated by ‘Tomato’ and ‘Broccoli’ cases, which some feel creates a tension between EPO practice and national law in certain European countries.
If this is an area that is important within your field of practice, please discuss it 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.
7.4 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. In other countries practice varies more widely, however, in the last few years there have been concerted efforts (both explicit and implicit) to harmonise national practice. China
China is a growing country of interest for many applicants. Chinese exclusions are set by Article 25 of the Chinese Patent Statute. In sentiment, they mirror the exclusions of Section 1(2) UKPA and Article 52(2) EPC, and also the exceptions of Section 4A UKPA and Article 53(b), (c) EPC. They cover: 136
1. 2. 3. 4. 5.
scientific discoveries; rules and methods for intellectual activities; methods for the diagnosis or treatment of diseases; animal or plant varieties; substances obtained by means of nuclear transformation; and 6. designs that are mainly used for marking the pattern, colour or the combination of the two of prints. For ex-International patent applications, China has been known to take a similar stance to the EPO, with a slightly more liberal approach in several areas. For example, claims that feature business method features are not excluded per se if they include technical features and solve a technical problem.
Chinese patent attorneys in both the software and life sciences often hold CIPA and internal law firm webinars that cover patentability in China. We recommend that you attend these as part of your training. We also recommend building relationships with Chinese patent attorneys in your field.
US
US practice on excluded subject matter has shifted within the last ten years (2010-2020). For several decades prior to 2010, the US had a liberal view to patentability. The case of Diamond v Chakrabarty, 447 U.S. 303, 309 (1980) famously established that ‘anything under the sun made by man’ was patentable. This led to patents being granted for methods of performing financial transactions. Officially, US patent law holds 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 – often referred to as ‘section 101’). There are no explicit exclusions similar to those in UK and Europe under US patent law. However, since 2010 the US Supreme Court has sought to reign in the potentially wide scope of the patent monopoly right by imparting certain restrictions on what can be protected. This brings US patent law more in line with UK and Europe.
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If you work in the field of software, IT or electronics, read Alice v CLS Bank. If you work in the life sciences, read Mayo v Prometheus. (For bonus points, read both cases!) Discuss what changes these entailed with your trainer.
Although the case of Alice v CLS Bank is typically cited as changing the tide in the US, the earlier decision of Mayo v Prometheus in 2012 set most of the groundwork for a change in position on the interpretation of 35 U.S.C. §101. The lever on which exclusions pivot in the US is so-called ‘abstract’ subject matter. As opposed to a set of statute-defined exclusions or exceptions, the Supreme Court in Mayo v Prometheus and then Alice v CLS Bank took the general position that abstract ideas, laws of nature and natural phenomena cannot be patented. This can be derived from the reference to ‘machine, manufacture, or composition of matter’ in the US statute. It also harmonises the US position with the general philosophy behind many of the exclusions defined by the UKPA and the EPC. For example, the US position finds parallels in the exclusions of Section 1(2)(a) and (c) UKPA (discoveries, scientific theories or mathematical/ mental/business methods) and the exception of Article 53(b) EPC. The decision of Mayo v Prometheus considered subject matter in the life sciences field. Here, the Supreme Court held that the claimed subject matter was not patent eligible because it was merely a discovery of a work of nature. In particular, the claims covered a naturally occurring correlation between a set of metabolites and their therapeutic toxicity or efficacy – this was a natural law and so was not patentable. The court also held that the claims did not provide any further features over and above routine and conventional activity to provide patent eligibility. This is similar to UK and European decisions that find features relate to discoveries that are excluded under Section 1(2)(a) UKPA or Article 52(2)(a) EPC, and where there is no additional technical effect or technical contribution. However, as the underlying statute and case law is not harmonised WWW.CIPA.ORG.UK
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there is still room for differences in opinion and judgement. Alice v CLS Bank followed the tone that was set by Bilski v Kappos, 561 U.S. 593 (2010) and considerably changed how the US Patent Office and lower courts examine business and computer-implemented claims under 35 U.S.C. §101. The Supreme Court followed the path set by Mayo v Prometheus in the life sciences sector. They established a series of tests for patent eligibility under 35 U.S.C. §101. Again, while based on different statute and legal reasoning, these tests had echoes of the UK approach to computerimplemented inventions. At a high level, the process in the US for analysing patentability is similar to that in the UK and Europe:
1. – Be aware of the relatively short statutory exclusions and exceptions; and 2. – Have a working knowledge of example claims that have been found to be eligible and noneligible, and the judicial reasoning behind each decision.
This forms the basis of the two-step test developed by the US Supreme Court in Alice v CLS Bank. In particular, the two-step for evaluating whether you can obtain a patent in the US is as follows: 1. Does the subject matter of the claim fall within one of the four categories set out in 35 U.S.C. §101? (I.e. ‘process, machine, manufacture, or composition of matter’.) a. If no, then the subject matter is excluded from patentability. b. If yes, go to step 2). 2. Is the subject matter directed to a judicial exception? (I.e. does the subject matter relate to an area that the US courts have deemed not to be patentable?) a. If yes, then the subject matter is excluded from patentability (such to an ‘as such’ style caveat) b. If no, then the claims are eligible subject matter.
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USPTO practice is still developing. There is now much useful guidance on the USPTO website (e.g. search for ‘USPTO subject matter eligibility guidelines‘,18 which will guide you to many helpful training materials, and see chapters 2105 and 210619 of the US Manual of Patent Examining Practice), including the flowchart below.
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As is the case for China, there are numerous US Patent Attorneys that present webinars on subject matter eligibility every year, e.g. either via CIPA or patent law firms. We recommend attending one of these as part of your training.
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7.5 Test your knowledge: Work-based examples The best way to train in the area of patent exclusions and exceptions is to be familiar with the case law examples and be able to apply the analysis discussed above to new examples. There is typically a split between the life sciences (which may include chemistry) and information technology (which may include mechanical subject matter). While it is good to have a general awareness of practice in areas outside your own working area, we recommend concentrating on examples within your working area.
7.51 – Example scenarios (the ‘Test’) To help apply your learning, we present a number of scenarios below for you to evaluate. Run through these yourself and then with your trainer, before reviewing our comments on each case in the next section. Life sciences
Scenario 1: A coloured label which indicates whether food is in date Your client or a company inventor has developed a label which changes from white to pink on detecting the chemicals emitted by food that is degrading. What would you advise? Scenario 2: A diagnostic test for the common cold Your client or a company inventor has developed a test that consists of a stick which a patient places in their mouth for a set period of time. When the stick is removed the presence or otherwise of the common cold is indicated on the handle of the stick. What would you advise? Scenario 3: A human gene sequence Your client or a company inventor tells you they have identified a human gene sequence that they believe is involved in pancreatic cancer. What would you advise?
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Scenario 4: An animal stem cell Your client or a company inventor comes to you as they run a company that develops transgenic organs for human transplant. Their technology is based on genetically modified animal stem cells. They also have a research pipeline based on human stem cells. For this they have developed a new method of culturing primate pluripotent stem cells. What would you advise? Information technology
Scenario 5: A method for visualising a geosurvey Your client or company works in the oil and gas sector. They have developed an algorithm for use on survey ships that receives petroleum reservoir mapping data and that integrates different plug-in data processing modules. What would you advise? Scenario 6: A feed system for cattle Your client or company works on a farm. They raise rare-breed cattle that require labour intensive care. They have developed a mobile phone app where the farmer can enter information about the cattle (such as height and weight) or stream sensor data from stall and cleaning sensors. The app compares the measured data with known healthy ranges and provides an alert if the animal is sick. They are working on a feed hopper to integrate with the system that controls salt and mineral additives to supplied foodstuffs. They also want to licence the technology as part of a veterinary service. What would you advise? Scenario 7: A mobile e-commerce app Your client or inventor works in a large e-Commerce company. They have developed a system to help shoppers. The system receives data from the mobile device in the form of a list of products to be purchased, matches them with shop records stored in a central database, and then using received GPS data, plots an optimal route between physical stores to purchase the listed products. What would you advise? Scenario 8: A video game Your client or inventor works in a large games developer. They are about to release their new football game. As part of the game dynamics they have developed a new algorithm for helping a user track all the players on screen, especially those they are not immediately controlling. What would you advise? PATENTS TRAINING MANUAL: 2022
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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. b. c. d.
discoveries; aesthetic creations; business methods / software; and 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’. This chapter discussed how the ‘as such’ is evaluated for the different areas. 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.
After working through this chapter, and reading the indicated references, you should be familiar with subject matter that may fall into one of these groups and with the legal tests used to evaluate that subject matter in at least UK, Europe and the US.
It should be noted that the extent to which exclusions and exceptions apply often depends on the form of the patent claims. Patent applications can be drafted with specific emphasis on technical features that solve a technical problem, and with claim language that falls outside of the defined exclusions as such and the exceptions. This approach allows a patent application to be drafted that reduces a risk of objection in all jurisdictions.
As ongoing continuing professional development, you should keep abreast of new case law decisions in at least UK, Europe and US. This is especially important if you regularly work in the life sciences or computer software sectors.
Via knowledge of how the courts and patent offices apply the objections, patent specifications may be prepared based on allowed subject matter and known dis-allowed subject matter may be avoided.
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7.5.2 – Comments on scenarios (‘Answers’) Life Sciences
Scenario 1: A coloured label which indicates whether food is in date 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.
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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. 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. Information Technology
Scenario 5: A method for visualising a geosurvey Here, a number of exclusions could apply, including mathematical methods, mental acts, methods of business, programs for computers and presentations of information. Considering the number of exclusions that could apply, you may receive different objections from the IPO and EPO based on their differing bodies of case law. In the UK, you would need to apply the Aerotel four-step test and demonstrate that the inventive concept does not fall entirely within PATENTS TRAINING MANUAL: 2022
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excluded subject matter. In Europe, you would need to demonstrate that the novel features provide a technical solution to a technical problem, and that they do not simply provide improved cognitive content for a user. To see how the IPO actually decided this case, see the Landmark decisions (e.g. O/155/18)20. It might actually be easier to get a similar case granted in the UK rather than Europe or the US due to this precedent. Scenario 6: A feed system for cattle In the UK and Europe, a system claim to a cattle monitoring system would not be excluded as such. In the UK, care would need to be taken when applying the Aerotel four-step test that the actual contribution was not a method for doing business or a program for a computer. If applying the AT&T signposts, there may be scope for arguing the first signpost applies: there is a technical effect outside the computer. In Europe, novel features would need to be identified. The risk in Europe is that prior art may be found that anticipates all of the hardware features, leaving only the software process flows as the novel features. In this case, the EPO may object on the grounds that they relate to a business or administrative method. It is recommended to demonstrate the system is a better system for lifestock care, rather than concentrate on the benefit to the lifestock. In both jurisdictions care would need to be taken that any methods claims were not seen as relating to the exceptions of ‘methods of diagnosis’ or ‘treatment by therapy’. In the US, this example is presented as the fourth example in the USPTO’s October 2019 update. A claim to just a monitoring system would found to be patent ineligible. Although it was deemed to cover one of the four categories in 35 U.S.C. §101, it failed the second test for relating to a judicial exception in the form of an ‘abstract idea’; the system was found not to provide any further technical effect over and above a programmed computer system. However, a second dependent claim that also included a feed hopper that was controlled based on the animal analysis was deemed patent eligible.21
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Scenario 7: A mobile e-commerce app This example will likely be evaluated differently in different jurisdictions. In the UK, it would be difficult to demonstrate that the actual contribution was more than a business method or a computer program as such. In Europe, the main technical features of the claim would be deemed known in the art (in the form of a distributed computer system). The difference would then be the method of scheduling shopping destinations, which would be seen as a business method and so not contribute to an inventive step, leading to a likely refusal under Article 56 EPC. (This example is actually case 1670/07 and forms the basis for the example in G-VII – 5.4.2.1).22 In the US, the example is on the borderline of what has been allowed under the newer section 101 guidance. An e-Commerce system was considered in DDR Holdings, LLC v Hotels.com et al., 113 USPQ2d 1097 (Fed. Cir. 2014) and even though the claim related to problems of advertising on the Internet, it was found to be patent eligible as the solution was necessarily rooted in computer technology and was not an abstract idea. Also claims towards a GPS system in SiRF Technology Inc. v International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010) were found to be patent eligible as they improved usefulness of a GPS technology in a particular setting. Scenario 8: A video game This case is on the borderline in all jurisdictions and could go either way depending on the invention, the prior art and the examining team. In the UK, there is a risk that the actual contribution in step 3) of the Aerotel step could be seen as lying solely within the excluded fields of rules for playing games, a program for a computer or the presentation of information. However, there may be room to argue that a claim to the data processing steps that enable a new display format are not solely within one of these fields and provide a technical effect, i.e. the games developer has a similar challenge to an aircraft engineer designing a new heads-up display and the solution is a technical solution to fundamental physical or engineering
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Notes and References 1.
See courses at https://www.epo.org/law-practice/legal-texts/html/guidelines/e/j.htm and https://e-courses.epo.org/course/view.php?id=151. E-course on patentability in specific fields https://e-courses.epo.org/course/view.php?id=52 2. Aerotel Ltd v Telco Holdings Ltd (and others) [2006] EWCA Civ 1371 – https://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html 3. HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 – https://www.bailii.org/ew/cases/EWCA/Civ/2013/451.html 4. AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat) – http://www.bailii.org/ew/cases/EWHC/Patents/2009/343.html 5. T 0208/84 (VICOM) – https://www.epo.org/law-practice/case-law-appeals/recent/t840208ep1.html 6. Alice Corp. v CLS Bank Int’l, 573 U.S. 208 (2014) – https://supreme.justia.com/cases/federal/us/573/208/ 7. Mayo Collaborative Services v Prometheus Laboratories, Inc., 566 U.S. 66 (2012) – https://supreme.justia.com/cases/federal/us/566/66/ 8. USPTO Guidelines on Subject Matter Eligibility – https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility 9. Lantana v Comptroller-General of Patents [2014] EWCA Civ 1463 – http://www.bailii.org/ew/cases/EWCA/Civ/2014/1463.html 10. G-II 3.7, EPO Guidelines – https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_3_7.htm 11. Gemstar–TV Guide International Inc v Virgin Media Limited [2010] RPC 10 – http://rpc.oxfordjournals.org/content/127/4/257.abstract?sid=d46cf02e-1c1b-4516-91f6-0206745be31a 12. https://www.ipo.gov.uk/p-challenge-decision-results.htm 13. https://www.epo.org/law-practice/case-law-appeals/advanced-search.html 14. G0001/07 – http://documents.epo.org/projects/babylon/ eponet.nsf/0/cdd5fb0c3153e9c3c12576cb00563d2d/$FILE/G1_07_en.pdf 15. G0001/04 – https://www.epo.org/law-practice/case-law-appeals/recent/g040001dp1.html 16. G2/12 – https://www.epo.org/law-practice/case-law-appeals/recent/g120002ex1.html#q 17. G2/13 – http://www.epo.org/law-practice/case-law-appeals/recent/g130002ex1.html#q 18. USPTO subject matter eligibility guidelines – https://www.uspto.gov/web/offices/pac/mpep/s2106.html#ch2100_d29a1b_139b2_397 19. https://www.uspto.gov/web/offices/pac/mpep/s2106.html#ch2100_d29a1b_139b2_397 and https://www.uspto. gov/web/offices/pac/mpep/s2106.html#ch2100_d29a1b_139b2_397 20. O/155/18 – https://www.ipo.gov.uk/p-challenge-decision-results/ p-challenge-decision-results-bl?BL_Number=O/155/18 21. https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_app1.pdf 22. 1670/07 – https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_5_4_2_1.htm
challenges. However, it may be difficult to demonstrate that one of the AT&T signposts is met.
was potentially an outlier and benefitted from a Japanese style description.
In Europe, if the novel features were a new method of processing simulated position data (e.g. physical location and orientation of ‘players’) so as to provide an improved view of the state of a technical system (the game state), then there may be an argument for a technical effect. In the case of T 928/03, the Board of Appeal found a similar invention to be patentable for improving a ‘man-machine interaction’. However, more recent case law indicates this case
In US, this again could be found either way. A refusal would be in line with cases such as Digitech Image Tech., LLC v Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), where image processing operations were deemed to be an abstract idea, and Planet Bingo, LLC v VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014), where a computer system for implementing game rules was deemed to be an abstract idea at its core. However, one of the July
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2015 USPTO examples that related to dynamically relocating textual information within a window was said to be patent eligible: the claimed method is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.
In many cases, there is no ‘right’ answer as to whether a refusal or objection is to be expected. Trainees should adopt a risk perspective and be clear about likelihoods of the exclusions or exceptions applying based on cited case law examples.
* This chapter was first written in 2008 by Maria Nichol (Galapagos NV). It was revised and updated by Ben Hoyle (Hoyle IP Services) in 2021.
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8
OTHER REQUIREMENTS FOR GRANT By Alexandra Orrin (CPA, EPA), Withers & Rogers*
Outline This chapter introduces additional requirements that must be fulfilled in order to obtain a patent. In brief, these requirements can be summarised as follows: 1. Sufficiency: the invention must be sufficiently described to allow a person skilled in the art to reproduce the invention across the full scope of the claims. 2. Clarity, support and unity ‑ the claims must be: • clear and concise; • supported by the description; • relate to only one invention or to a group of inventions linked to form a single inventive concept. 3. Added matter: The application must not contain matter added after the filing date. Some of these requirements need to be considered at filing, others during the lifetime of the patent application.
Learning plan Key reading: • The European Patent Convention (EPC) Articles 82, 83, 84 and 123. • The UK Patents Act 1977 (‘UKPA’) section 14 (making of an application), and section 76 (added matter). Additional reading: • The EPO Guidelines for Examination, sections corresponding to Articles 82, 83, 84 and 123. • EPO decisions from the Enlarged Board of Appeal (‘G-decisions’) related to added subject matter, in particular G1/03 and G1/16 (disclaimers) and G1/93 (the ‘inescapable trap’). • The UK Manual of Patent Practice, passages corresponding to sections 14 and 76 of the UKPA. • Articles and EPO decisions on ‘plausibility’ as applied to sufficiency.
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Trainer’s input: It is useful for the trainee to have practical experience of situations where these issues might be raised. Suggestions for this are as follows: • Analysing clarity, unity and added matter objections in a UK or EP examination report or written opinion and summarising these in a short report. • Analysing an opposition file where sufficiency is raised; or discussing any interesting cases where sufficiency is determined from the EPO website or the UK courts. • Drafting a claim or claim set which is likely to avoid common clarity objections. • Preparing amended claims which have basis and are likely to avoid Art 123(2) issues; or assessing instructed amendments for basis and providing basis arguments for the instructed amendments. Syllabus link: U K Exams – at least FC1 (or foundation exemption university course); FD1; FD2; FD3. European Qualifying Examinations – at least Papers A, B and C IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice;) and Technical (Skill Sets: Analysis and Advice) Time allocated: One day.
Learning outcomes By the end of this chapter you should: • Be able to identify added matter, sufficiency, clarity and unity objections in an examination report or written opinion from the UKIPO or EPO, and summarise these objections and some options for addressing them in a short report (for example to a client); • When drafting a patent application, be able to review it and identify if you have included any common clarity objections; • Be able to explain to a client why an invention must be sufficiently disclosed in a draft patent application when it is filed; and • Be able to explain to a client added matter, the added matter ‘inescapable trap’ and how it can be avoided, and the additional hurdle for added matter in a divisional application.
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8.1 Introduction In previous chapters we have identified that the invention at hand is novel, inventive and susceptible of industrial application (chapter 6) and we have determined that it does not fall foul of any of the exclusions 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 you will need to keep in mind, both at filing and during prosecution in order to enable you to obtain a granted patent. Some of the additional requirements that a patent application needs to satisfy are covered by sections 14 and 76 of the UK Patents Act 1977 (UKPA) and the equivalent provision in the EPC, namely Articles 82, 83, 84 and 123. These requirements are as summarised above, and fall into the main headings: sufficiency, clarity, and added matter. While the UK’s Intellectual Property Office (IPO) and the European Patent Office (EPO) are not by any means identical in their approaches to assessing these criteria during examination, there are overlapping principles that underpin these criteria. These principles and how to approach them in practice are discussed in this chapter. While all of these requirements apply to patents irrespective of technology, some concerns are more significant in certain areas. So, two main examples are used here to illustrate the requirements, a mechanical invention and a pharmaceutical invention. For the mechanical invention, the main example considered is an egg timer having a spring-loaded cradle for an egg. The timer has a thermostat which triggers the timer when the water starts boiling and a spring release which pushes 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: WWW.CIPA.ORG.UK
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R1 = H, halogen, C1-C6 alkyl R2 = CH2, CO, SO2, NH R3 = H, halogen, C1-C6 alkyl In this hypothetical example, results have demonstrated that these compounds are cytotoxic (toxic to cells) and the inventor believes that they may be of use in cancer therapy.
8.2 Sufficiency UK: Section 14(3) UK Patents Act 1977 EP: Article 83 EPC
This requirement, stated very simply, is that the invention should be disclosed in sufficient detail to enable a person skilled in the art to work the invention as claimed, across the whole scope claimed. The sufficiency requirement stems from the exchange offered by the patent system – that in exchange for a monopoly of the 20-year patent term, society is provided with teaching of how the invention works, so that it can be worked by others when the patent expires or is no longer in force. A patent application and any subsequent granted patent that is insufficient, i.e. does not describe the invention in enough detail for it to be carried out by the skilled person, does not hold up the applicant’s or proprietor’s end of this bargain. 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 disclosed 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 PATENTS TRAINING MANUAL: 2022
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requirement is fatal to the application because any amendment is likely to fail added matter assessment.
8.2.2 Chemical example
8.2.1 Mechanical example
Role of specific embodiments – prophetic vs. worked examples
For simple mechanical inventions, in practice, sufficiency objections raised during prosecution are rare. Equally, during post-grant proceedings, sufficiency objections are rarely successful. Taking a simple example of a mechanical product invention, the description will typically cover what the invention is, its components (their shape, what they are made of, how they fit together) and how it works. This will usually be accompanied by simple drawings of one or more embodiments of the invention. In theory, the sufficiency requirement for a simple mechanical invention could be met by one drawing and a short paragraph of description. Descriptions of mechanical inventions in patent applications are always longer than this – not necessarily to meet the sufficiency requirement, but for other reasons, such as providing suitable options for amendment to the claims during prosecution. One specific situation where sufficiency may be a point of contention in a mechanical invention, is where a claim includes a clause ‘such that parameter X is achieved in situation Y’ clause. In this example, the inventive step underpinning the invention is built on parameter X being achieved in situation Y. If the skilled person cannot create the invention from the teaching of the patent application so as to achieve parameter X in situation Y, then there is a lack of sufficiency. As an example, a claim for a raincoat states: a raincoat having an outer layer, a middle layer and an inner layer, the outer layer having pores dimensioned so as to wick fluid from the middle layer at a rate of 2 ml per minute at a temperature of 27 degrees Celsius. If the patent application is sufficient, the skilled person should be able to recreate the invention so as to achieve that rate at that temperature from the teaching of the specification.
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The ideal circumstance under which you would choose to draft a patent application would be when the invention has been developed fully. In this situation, the following can be provided: 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 drawings, and examples of the object in action In a chemical invention, for example taking the example of the chemical genus, meeting the sufficiency requirement would involve including information on: • how the compounds claimed are to be synthesised and purified (if required); and • 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-ofconcept 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.
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This can certainly be the case in the chemical arena. 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 50 have been synthesised. While 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.
8.2.4 How to produce the invention It is important to teach a skilled person how to produce the invention that you claim. In the mechanical arena it may largely be selfevident, as touched on above, but even so, it might be good practice to include as much information as possible, subject to the intention of the client or inventor. The client may be motivated to keep certain details out of the patent application – for example those that they wish to protect using trade secrets, or use as the basis for a further patent application once a specific feature of the product is more developed. As noted above, a finding of a lack of sufficiency can be fatal to a patent application or patent, so it is worth carefully considering how to balance these competing motivations. While the basic configuration and interaction of the components may be considered to be the ‘structure’, 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 WWW.CIPA.ORG.UK
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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: 1. 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. 2. 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. 3. 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.
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8.2.5 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 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: • they are toxic in a cell-based proliferation assay; and • they may be dosed to animals, without resulting in toxicity at a level sufficient, to reach a therapeutic effect; and • there is a link between the target of these compounds and the pathways thought to be involved in the disease.
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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.
8.2.6 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 claim scope does not often extend 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. 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 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: ‘The use of a compound according to Formula I in the preparation of a medicament for the treatment of cancer.’
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However, it would not be reasonable to include a claim along the lines of: ‘The use of a compound in the preparation of a medicament for the treatment of cancer.’
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.
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.
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. The corresponding provision in the EPC is Rule 31.
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 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: 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 in the following sections.
8.2.7 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. Although it may be possible to submit data to the patent office at a later date in order to support the WWW.CIPA.ORG.UK
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8.2.8 Commercial success vs sufficiency There is a difference between an invention which is sufficiently disclosed 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 has been or will be commercially successful, you just need to demonstrate that it can be used and sufficiently teach a person of skill in the art how to achieve the technical effect that your inventive step is based upon. Taking the hypothetical chemical example, it is not necessary to demonstrate that the claimed compounds would be successful in a clinical trials setting.
8.2.9 Final comments Hopefully you will see at this point that, regardless of the technical field of the invention, you should always make clear to your clients and inventors, that it is important that they disclose in full to you how to perform their invention. You can then decide, taking into the sufficiency requirement explained above, what to include. 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, could lead to refusal of their patent application or invalidation of their patent.
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8.3 Clarity, conciseness and unity UK: Section 14(5) UK Patents Act 1977 EP: Article 82 EPC, Article 84 EPC
It is a requirement of the UKPA and the EPC that the claims clearly and concisely define the scope which you wish to protect.
8.3.1 Clarity As a general rule, a person skilled in the art should be able to determine what scope you are intending to cover in a claim by reference to the claims themselves only, without having to refer to the description. The clarity requirement is key to all other patentability requirements. If a claim is unclear, it is not possible to understand with certainty what the scope of the claim is. This has a knock-on effect on assessment of patentability and infringement. A claim that is unclear could be interpreted in more than one way – and could be interpreted narrowly or broadly. In a broad interpretation, it could not be novel, while in a narrow interpretation it could be novel. Equally, in a broad interpretation it may be infringed, while in a narrow interpretation it may not be infringed. In practice, the scope of clear claims can almost always be argued, and it is rarely possible in practice to have a claim that could be interpreted in only one way by different people. Because of this, in a litigious situation, or freedom to operate exercise, a substantial amount of time is often invested in understanding possible different interpretations of terms of a claim, regardless of how clearly it has been written. The clarity requirement that is examined during prosecution that claims be clear effectively means that the claims should be as clear as possible, and clear enough for an Examiner to know what the claim means. In the UK, it is not possible to have a patent, once granted, revoked for lack of clarity. Before the EPO, lack of clarity similarly is not a ground of opposition.
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The aim of this requirement is to provide certainty to patent office examiners that their patentability assessment is correct, and certainty to third parties trying to avoid infringement. As noted above, it may not be possible to create a perfectly clear claim that stands up against different people reading it (examiners, third parties, patent attorneys, judges) who will read it with different perspectives, applying their own view of what the skilled person would read. However, certain terms in claims commonly face objection during prosecution, some of which are highlighted in the following. Relative terms
Examples of relative terms include: ‘wide’, ‘high’, ‘strong’. Relative terms can introduce ambiguity, as it is unclear how wide wide is, how high high is. As a consideration for drafting, generally, such relative terms are best avoided in the claims. However, there may be a suitable reason to include a relative term in a claim when drafting. In such a case, it is good practice to include a very clear definition of the term in the description, so that the claims can be amended during prosecution to include a clarifying amendment or definition if required at a later date. It may be the case that you encounter an objection to an unclear relative term in a claim when an objection is raised in an examination report. If you face such an objection, one option is to consider whether a clarifying amendment is possible. If this is not commercially useful or there is no basis for a clarifying amendment (i.e. it would add matter – which will be explained shortly) then you should consider whether the term has an established meaning in the art (e.g. ‘high-frequency amplifier’). In this case, it may be possible to argue against a clarity objection raised by an examiner by explaining that the term is established in the art, and that its limits are known to the skilled person even though they are not explicitly listed in the claim. Terms such as ‘substantially’, ‘about’, ‘approximately’
These terms can be ambiguous as they may be interpreted differently in different fields, and interpreted differently over time. Where the
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word ‘about’ is followed by a parameter, such as a temperature, this is interpreted during European prosecution (at the time of writing) as being as accurate as the method used to measure it. As noted above with relative terms, if you have the opportunity to add a definition to the description when drafting as a potential fall-back position during drafting, then it is often best to do so. Dimensional reference to unclaimed features
This clarity consideration is more common with mechanical applications than chemical applications. A claim to a product might include a dimensional reference to an unclaimed feature. An example of this is, for example: A seat cover for a car seat, wherein the seat cover has an outer ridge dimensioned for attachment to an underside of the seat. In this example, the seat itself is not a claimed feature, but the ridge – a claimed feature - is defined with reference to this unclaimed product. There are specific situations where this may allowable, which can be found in the EPO Guidelines for Examination and Manual of Patent Practice, but as a rule of thumb the practice should be avoided. Chemical specific
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. Result to be achieved
Result to be achieved claims are as the name suggests – they attempt to claim the overarching advantage of the invention rather than the means with which it is achieved. Examples include: a silicon solar panel having an efficiency of over 20% (without claiming any features that cause this efficiency); a cardiovascular stent having a success rate of X% (without claiming any features of a coating having a specific drug elution rate that make this possible). In some cases, the EPO permits a result to be achieved, an example of an allowable case given in the Guidelines for Examination is an ashtray in which a smouldering cigarette end will be WWW.CIPA.ORG.UK
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automatically extinguished due to the shape and relative dimensions of the ashtray. This is justified in the Guidelines as: ‘the latter may vary considerably in a manner difficult to define whilst still providing the desired effect’. Again, though, the practice should be avoided where possible. Lack of antecedence
An objection of lack of antecedence can be avoided by careful drafting and amendment. If you encounter a lack of antecedence objection during examination, it is likely to take the form: Feature A comprises B and C, and the arm of B connects with the arm of C. Such an objection may be easily addressed by amending to: Feature A comprises B and C, each having a respective arm, the arm of B connecting with the arm of C. Final comments
In practice, the clarity requirement means that the terms you use when drafting or amending a claim should be readily understandable and the claims should set out what you consider to be the essential features of the invention.
8.3.2 Conciseness The conciseness hurdle relates both to the terms used in a claim and to the total number of claims. With respect to the individual claims, while in general you are free to use any 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, or where there is more than one independent claim in any particular category. 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 PATENTS TRAINING MANUAL: 2022
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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.
8.3.4 Support Often seen as a minor formality, 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 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 (in the UK) or opposition (before the EPO). 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 they have 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 154
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 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.
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8.3.5 Unity of invention 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. The requirement of unity of invention aims to stop an applicant trying to include various different inventions in a single patent application, and getting a search and examination of multiple inventions, while paying a single set of fees for the application. If the examiner finds that your application contains more than one invention that are not linked to form a single inventive concept, they will require you to select one invention for prosecution in the presently pending application, and remove any independent claims to other inventions. A divisional application or applications could be used 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).
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: • composition of matter claims to the compounds per se; • methods for the production of the compounds; • uses of the compounds in the treatment of cancer. 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 patent applications. 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.
In theory it is possible to argue against a unity objection, but in practice, the cases where such arguments are appropriate or likely to be successful are low. Turning to the egg timer example, possible claims that meet the unity requirement might be a claim to the apparatus – ‘An egg timer having a springloaded 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 nonoverlapping set of features gave rise to another advantage, then it might be commercially useful 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.
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R1 = H, halogen, C1-C6 alkyl R2 = CH2, CO, SO2, NH R3 = H, halogen, C1-C6 alkl 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.
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‘A priori’ and ‘a posteriori’
You may see two terms used in relation to unity assessment: a priori and a posteriori. An a priori lack of unity results from considering the claims in relation to any prior art. An a posteriori lack of unity applies once relevant prior art found has been taken into account. A lack of unity 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 lack of unity 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 cannot be maintained. The example given above relates to a finding of lack of unity a posteriori, where lack of unity 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 lack of unity 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 one of: • administering “rose clear”; • supplying a population of ladybirds to the plant; and • mechanically removing the infestation using a strong water jet.’ In this claim (setting aside a 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 lack of unity a priori and ask the application to select which invention they would like to be the subject of the search.
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It should be noted that lack of unity is not a ground for revocation/opposition of a UK or EP patent once granted. Therefore, if it becomes apparent after grant that your ‘single inventive concept’ no longer exists, this should 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 raise a lack of unity objection.
8.4 Added matter UK: Section 76 EPC EP: Article 123 EPC
One of the key restrictions on your ability to amend your application after filing is that you cannot add any subject matter after the filing date that extends beyond what is taught in the application as filed. This will be discussed specifically with respect to three stages: pregrant, post-grant and in a divisional application. The added matter requirement stems from the legal consequences of obtaining a filing date. A filing date can have significant implications in terms of assessment of prior art, the term of a patent, and the timeline for prosecution. For various reasons it may advantageous to have a filing date that is as early as possible. The added matter requirement stops an applicant from filing an application containing certain subject matter, obtaining a filing date and its associated benefits, and then piling in new subject matter at a later date. The added matter requirement also provides a degree of certainty to third parties, for example competitors of the applicant who do not want to infringe a granted patent.
8.4.1 Pre-grant amendments During examination, it is highly likely that an amendment to the claims and description will be needed. Freedom to amend the application during the
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prosecution process is regulated by section 72(1)(d) UKPA for a UK application and Article 123 EPC for a European patent application. While the principle behind added matter assessment is the same for a UK patent application and a European patent application, in practice the assessment of added matter before each office is different. While the IPO and EPO in practice have slightly different ways to assess added matter, a simple assessment to apply to understand whether there is added matter, as a first step, is: Is the skilled person presented with new information by an amendment, that they were not taught in the application as filed? If the answer is yes, then the amendment is likely to have added matter.
When making an amendment to the claims, before both the IPO and the EPO, you will need to provide ‘basis’ in the application as filed. This means that for the subject matter or feature now claimed, you will need to point the examiner to the location of this feature in the application as filed. This could be as simple as pointing to a dependent claim, i.e. saying ‘Basis for this amendment can be found in claim X of the application as filed’. In a slightly more complicated case this involves pointing to a location in the description. In some cases, you will need to point to highlight a location in the description or figures, and explain or argue why that text or figure discloses the feature now claimed. You may also need to explain why the feature now claimed in combination with other features of that claim is taught in the application as filed. In these latter two cases, arguments before the EPO often require more explanation or argumentation to substantiate a basis argument for an amendment, than simply citing a line and page number.
Added matter in practice
In a hypothetical scenario, the drafter of a patent application would have a thorough understanding of European patent law, an idea of most if not all prior art that could be raised, and have considered all potential fall-back positions that may need to be relied upon, to provide the perfect wording in the application as filed to set the application up well for all possible amendments during examination. In practice, this is not the case, for at least the two following reasons. Firstly, it is not always in the applicant’s interest to have a pre-filing search carried out, and even if they did, new prior art could be (and often is) raised by the thorough patent office searches during prosecution. It is not possible to know all prior art out there even after a pre-filing search or patent office search. Secondly, not all priorityfounding applications are drafted by attorneys familiar with European patent law, so often UK or European priority-claiming patent applications have not been drafted with European added matter requirements in mind. Even if they have been drafted with these requirements in mind, the subtleties of how these requirements are applied can change over time. These reasons, among many others, mean that you will often have to consider amendments to the claims during examination which had not been anticipated when the application was drafted or filed. WWW.CIPA.ORG.UK
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The simple test above (‘Is the skilled person presented with new information by an amendment, that they were not taught in the application as filed?’) is a good first step in any added matter assessment. However, often added matter arguments will need to apply the specific tests set out in case law, summarised in the Guidelines for Examination (for EP law) or the Manual of Patent Practice (for UK law). Intermediate generalisation
There are many different added matter tests that you will encounter. One that it is worth being aware of early, for EP prosecution, is intermediate generalization. An added matter objection related to ‘intermediate generalisation’ may even be raised by an Examiner without the examiner using this term to describe the objection. Taking an example of a corkscrew, claim 1 as filed could state: ‘A corkscrew comprising a handle, a stem and a helical barb’. And the description as filed states: ‘The corkscrew comprises a ledge and two peripheral arms’. Claim 1 is amended during examination to state: ‘A corkscrew comprising a handle, a stem, a ledge and a helical barb’. In the application as filed, the skilled person is told that the corkscrew has a ledge and two peripheral arms. In amended claim PATENTS TRAINING MANUAL: 2022
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1, the skilled person is arguably presented with new information, as there is new teaching that the corkscrew can have a ledge without also having the arms. In such a case, if such an amendment is to be argued for, the test for allowable intermediate generalisation given in the EPO Guidelines for Examination should be applied. General examples
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. As touched on above with the intermediate generalization summary, 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:
R1 = C1-C6 alkyl (only) R1 = C1 alkyl (only) C6 alkyl (different use)
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: 158
Description: R1 = C1-C6 alkyl, C1-C4 alkyl, C1-C2 alkyl Examples: 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 fallback positions should define intermediate levels
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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. 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, these sections cannot be used as basis for amendments.
8.4.2 Post-grant amendments If you need, or choose, to amend your patent after grant then the added matter requirement still applies. In other words, post grant, you still may not add any matter compared to the application as filed. In addition to this, there is a further restriction. The amendment must not broaden the claims to compared to the claims as granted. This restriction exists to protect third parties; they should be able to have certainty that once a patent is granted the proprietor cannot seek broader protection in the same patent (other than via a divisional application filed before the application granted). Therefore, due care should be taken when seeking to amend a patent post-grant to ensure that both of these requirements are met.
8.4.3 The ‘Inescapable trap’ When amending claims during prosecution, there is a further reason (other than objections before grant or post-grant opposition or revocation) why it is important to ensure that you meet the requirements of section 76 and Article 123 EPC. This is often referred to as the ‘Inescapable Trap’. This issue arises where a feature is added during prosecution that limits the claims, but this added feature does not have basis in the application as filed. WWW.CIPA.ORG.UK
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In this case, the feature represents added matter – as there is no basis for this limitation in the application as filed, so the feature cannot remain in the claim. However, deletion of this feature in opposition at the EPO (or other post-grant proceedings before national courts) would result 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. Bear in mind that it does not matter if the proposed amendment was suggested by the EPO Examiner. Any amendment needs to be considered forensically. As an example, the application as filed describes springs. The application is limited during examination to coiled springs, and the patent proceeds to grant. ‘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 constitutes added matter, so a granted claim cannot be maintained with this feature present. However, if this feature is deleted, the scope of the claims would be broadened, which is also prohibited. In this case, there might be no salvaging the granted patent.
8.4.4 Corrections 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, because in a case where both the mistake and 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 approximately 20°C than approximately 200°C and, thus, correction PATENTS TRAINING MANUAL: 2022
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to the appropriate value should 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.
8.4.5 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 by the deadline for doing so before the respective office. For a European divisional application, this is while the parent is pending (Article 76 EPC and Rule 36 EPC). For a UK divisional application, this is before the parent has granted or is terminated or withdrawn, and by the deadline of three months before the ‘Compliance deadline’.
disclosed in the parent application as filed, it will not be entitled to the earlier date. In practice, these two requirements for divisional applications come to the fore when the claims of a divisional application are amended. For European applications at least, not only will you need to justify that there is basis in the application as filed, you will also need to justify that there is basis in the parent application as filed. 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.
* This chapter was first written in 2008 by Maria Nichol (CPA, EPA) at Galapagos. It was revised and updated by Alexandra Orrin in 2021.
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
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 how 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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Test your knowledge 1. May a UK patent be revoked for lack of clarity? 2. What are the restrictions on amendments made to an application pre-grant? 3. What is the difference between a lack of unity of invention a priori and a posteriori?
Answers overleaf.
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Suggested chapter 8 answers and comments 1. No. Where a lack of clarity is apparent in a granted patent, this could be used to an opponent’s advantage to interpret the claims a specific way to form an added matter, novelty, inventive step or insufficiency argument. 2. They may not contain any added matter. 3. Lack of unity of invention a priori is where lack of unity is apparent from examination of the claims, before relevant prior art is considered. Lack of unity a posteriori is when lack of unity is found after relevant prior art is considered.
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9
I NVENTORSHIP: OWNERSHIP OF INVENTIONS, RIGHTS TO APPLY FOR A PATENT, DISPUTES ABOUT OWNERSHIP AND EMPLOYEE RIGHTS By Sue Ratcliffe (CPA, EPA), Synthomer*
Outline This chapter deals with a number of issues which ultimately affect the exploitation and ultimately the value of a patent. These issues include: 1. 2. 3. 4. 5. 6.
the concept of invention and inventor, the right to apply for a patent and the right to be mentioned as inventor; ownership and co-ownership of inventions and patents; the law and procedure of determining disputes about these matters; remedies; and 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 with various amendments of the Rules being ongoing. Rule numbers in this chapter refer to the 2007 Rules. Students must therefore make sure that they study fully updated versions of the Act and the Rules. Another useful resource is the Intellectual Property Office Manual of Patent Practice (MoPP) and in particular sections 7, 8, 9 and 10. Legal documents: • UK Patents Act 1977 (as amended) – (UKPA) • Patents Rules 2007; Patents (Fees) Rules 2007 • European Patent Convention, Arts. 60-61 • EPC Implementing Regulations, Rules14-15 & 19 -21
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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.) Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15 Thaler v The Comptroller-General of Patents, Designs and Trade Marks [2020] EWHC 2412 (Pat). – DABUS patent application Co-ownership Hughes v Paxman [2007] RPC 2 at page 34 Transfer of jurisdiction Luxim Corporation v Ceravision Ltd [2007] RPC 33 p.797 Employees’ rights Harris’ Patent [1985] RPC 19 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 (2019) UKSC 45 on Appeal from (2017) EWCA Civ 2 Ultraframe UK Ltd v Fielding [2004] RPC 24 Trainer’s input: Discuss your own work to provide examples of entitlement or inventorship issues or disputes you’ve handled, your best practices or any past problems establishing ‘outstanding benefit’. Syllabus link: U K Exams: FD1 EQEs: Paper D IPReg Competency Framework link: https://ipreg.org.uk/pro/admission-to-register/training-and-supervision Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will be able to explain the principal elements of the topics in the outline above and will be able to outline the questions you should ask your clients to ensure the designation of inventorship in their patent applications is correct and complete. You will be able to draft preliminary opinions relating to ownership and inventorship disputes and in addition prepare basic documentation and give advice about ‘employee compensation’ issues while noting where you will need further information and advice from specialists e.g. issues relating to employment law.
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9.1 General introductory remarks 9.1.1 Overview This chapter is slightly unusual in the context of the Patents Training Manual because many of the issues that arise only come to light when there is a dispute between parties. In particular, the statutory provisions relating to entitlement that are set out in the UKPA are very complex and consequently there are multiple detailed cases that have been decided and which are used to clarify and shed 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 we deal with such as patent drafting and prosecution and move into issues relating to ownership of property, which of course is what a patent is. Before looking at the issues in more detail, there are a few points that are worth making. This chapter deals with a number of situations in which inter partes, contested proceedings may occur and those proceedings are subject to The Patents Rules 2007 (as amended in 2020) – which is a consolidation of Patents Rules 2007 (SI 2007 No. 3291) and the Patents (Fees) Rules 2007 (SI 2007 No. 3292), incorporating all amendments in force up to and including 6 April 2018. – see https://www.gov.uk/government/publications/ the-patents-rules-2007-and-patents-fees-rules-2007. 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, that expense that can be saved and handling cases in ways that are proportionate and so that a matter is dealt with expeditiously and fairly taking into account the importance of the case and its complexity and the parties’ financial position. 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. WWW.CIPA.ORG.UK
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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 defined in the Act and so various tests have been developed to determine its meaning. 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 understand 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. 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 employeeinventors the invention and the ensuing patent will usually be their employer’s if the invention was made 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 applicable overseas laws to determine ownership the reverse is not always true. For example, when filing a US patent application the inventor used to be always the applicant (although this changed in 2012 where the employer can now be named) but who can be named as applicant needs to be checked on a country-by-country basis. 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 9.4) and various related statutory matters.
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As with any property a 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 chapters 15 and 18. Finally, at a practical level most attorneys are unlikely to deal with entitlement issues regularly to the extent that they become contentious between parties, but it is vital to understand the possible consequences of an error in ownership from the outset and to safeguard your client’s rights accordingly. This is especially so where there may be multiple parties working on developing an invention e.g. a research project and where the exploitation of a patent resulting from the collaboration may not be by all of the owners of that invention.
9.2 Concepts of the ‘invention’ and the ‘inventor’ The rules about who is inventor and thus who is the owner of a patent depend initially on the definition of ‘invention’ and ‘inventor’.
9.2.1 Invention ‘Invention’ is not defined in the UKPA and this was probably intentional so as not to restrict the future development of the law as to what could be an invention. However, patentable inventions are defined by the exclusions in sections 1, 2(6), 4 and 4A 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. Therefore, the term ‘invention’ is much broader than mere patentable inventions and certainly is capable of including all the matter excluded from 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. This means that an invention can still be an invention but it may not necessarily be a patentable invention because section 7 mentions applying for as well as obtaining a patent. 166
There have been many attempts by judges to explain ‘actual deviser’. One thing is clear: the inventor must be a natural person, it cannot be a legal person such as a company. This needs to be contrasted with the definition of a ‘person’ that can make an application for a patent, which may include one or more individual or a corporate body but not a firm – see sections 7.02 and 7.03 of the MoPP. The actual inventor of the inventive concept needs to be distinguished from a contributor. 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; 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 also important not to make a mechanistic approach to determining inventorship as set out by Christopher Floyd QC, sitting as a Deputy Judge in the Patents Court, in Stanelco Fibre Optics Ltd’s Applications [2005] RPC 15. 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, in LIFFE Jacob LJ suggested that where there is clear lack of novelty the UK Intellectual Property Office (IPO) should not waste its time determining the dispute over inventorship because if there is no invention then there can be no inventor. As J Jacob puts it – ‘where there was “self evidently no bone”, the dogs (should) be prevented from fighting over it’. Markem.
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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: Please ask for a copy in your office or study it on the IPO website at www.ipo.gov.uk/patent/p- forms/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. If a properly completed Form 7 is not completed in time the application is deemed withdrawn and not published. Normally the inventor’s home address is required but a c/o address can be used. 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, i.e. 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 to have their name mentioned WWW.CIPA.ORG.UK
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before publication of the application, subject to a reason for the waiver to be applied for and that the application for the waiver and the reason for doing so is accepted by the Comptroller. When the inventor seeks only their 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 (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, where if an inventor’s home address was given they may become targets of unlawful harassment and physical attacks. However, as stated above, a c/o address, e.g. a work address, is accepted by the IPO.
9.4 Co-ownership As has been stated already, patents and patent applications are property. Property may be co-owned. English law recognises 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’. 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. PATENTS TRAINING MANUAL: 2022
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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.
9.5 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.
9.5.1 Procedures for resolution The forum for resolving a dispute is the IPO. The procedure is laid down in section 13(3) and Rules 76- 87, within a framework laid down in Rules 7375. Form 2 and a statement of grounds, both in duplicate, are to be used for initiating a dispute. Rule 76. However, it is often the case that there is a concurrent inventorship and ownership dispute of the invention/application. In certain circumstances, discussed below, the IPO may transfer the ownership dispute to the court but there is no corresponding power in the UKPA to transfer the inventorship dispute as well. 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 – see sections 8(3), 12(6) and 37(4) of the UKPA.
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Inventorship disputes can have practical consequences even though ownership rights in the invention/patent vest in an employer (see the discussion of section 39 below at 9.6.2). In many industries an inventor may acquire kudos from being named on a patent and also by virtue of section 40 (see 9.6.3 below) it seems that an employee cannot obtain any financial benefit unless their name is on the patent in question. Therefore, it is important to make sure that all inventors are correctly named to avoid employee/employer disputes, especially if an employee is feeling aggrieved, which can have further consequences in a business.
9.5.2 Seemingly unimportant to get it right? Getting it wrong is a potentially fatal mistake. By default in the UK the inventor is the first owner of the patent but if an incorrect inventor is named then an applicant linked to that inventor will not be entitled to the patent, which means it will be invalid. 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 correctable and the patent can 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 and ask probing questions rather than taking all information at face value as sometimes the ramifications of getting things wrong may not be properly understood by those involved. Explaining that if a third party wants to try and question the rights to a patent then they would start looking at
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ownership and entitlement to the invention may help you to persuade a client to get the documents you need to check the situation for them even though this may involve a degree of work and administration for the client.
9.6 Law and procedure 9.6.1 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 manual but 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. As with any property there may be circumstances, such as a bereavement or bankruptcy, where the property reverts to another owner. As a patent or patent application there needs to be a determination as to who can own this property in the first place so that the rights pass from the inventor to the applicant correctly. Yeda has clarified that we must look to section 7 only for a substantive determination of entitlement issues. This decision overruled Markem, which said that entitlement was based on another rule of law such as breach of contract or confidentiality. 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, once the initial ownership has been established via who is the inventor then who subsequently is entitled to the invention can be determined by other matters of law such as by contract between the inventor and a third party (usually but not always: a contract of employment between the employee-inventor and their employer) or by a rule of law, enactment, operation of law such as the law of insolvency or the law of succession. ‘Rule WWW.CIPA.ORG.UK
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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 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. A is entitled, not because B made his application in breach of a duty of confidence but because A 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.’ PATENTS TRAINING MANUAL: 2022
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Section 7(4) is important and in essence it says that whoever files first is on the face of it entitled to the patent and the onus is on anyone disputing this to prove that the applicant or co applicant is not entitled to file the application under section 7(2) of the UKPA. Another take-home message, reinforced by Yeda is to identify the inventor and then determine entitlement rather than knowing who the inventor is and then working out who is entitled to the invention if there is a dispute between two companies. 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 under section 25(1) the date of grant is the date when the notice of grant is published so there is a period of hiatus between the notice that the application is in order and the publication of the notice of grant when entitlement proceedings cannot be progressed. 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. By Rule 7 the procedure-starting documents are, again, a Form 2 and a statement of grounds, both in duplicate.
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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. The IPO has no power to declare an application void ab initio so a later application can be filed in its place while in contrast the EPO can suspend an application until the outcome of entitlement proceedings is determined. 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 work 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).
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.
The remedies set out in section 8 speak for themselves but notable remedies include the power to order the disentitled matter to be excised from the disputed application and, if desired, there is the provision 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.
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
Note also that the section and associated Rules contain elaborate provisions for notifying all interested parties; and by virtue of section 11(3) and
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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).
9.6.2 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 un-cooperative co-applicant a free, personal, non-assignable, non-revocable licence under the application transferred to the other coapplicant 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 WWW.CIPA.ORG.UK
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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 ‘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. PATENTS TRAINING MANUAL: 2022
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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 sections 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 original owner knew 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 there is no precedent to guide us, how one can establish what the proprietor ‘knew’ but it alludes to there being an element of dishonesty
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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 its 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 sections 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 sections 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 sections 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
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See the the this country. The EPC Protocol on Recognition is determinative as to which national court of an EPC member state has exclusive jurisdiction.
transfer against the powers, expertise and experience of a hearing officer as compared with those of a judge.
By section 82(3) the section applies only to a question arising before the grant of a European patent.
9.7 Employees’ inventions
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.
9.6.3 Transfer of disputes from the IPO to the court Entitlement disputes can be handled either via 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’ sections 8(7), 12(2). Such matters may e.g. be when the dispute is connected with other claims such as breach of contract under a foreign law or an intricate case of breach of confidence or contract. 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 provided some principles. It states that there is no bias in favour of retention of cases by the IPO and the complexity of case was the decisive factor in allowing a transfer or not. 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 the overall need to judge whether to WWW.CIPA.ORG.UK
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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.
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9.7.1 Status of the employee Firstly, but sometimes overlooked, the inventor has some form of employment status, whether this is being self-employed, an employer or an employee. That word employee has been the subject of considerable case law outside the field of patents and can give rise to many important rights, e.g. not to be unfairly dismissed. Secondly, being an employee requires the existence of an employer and a contractual relationship to exist between them, typically by way of a contract of employment. An employment contract sets out the minimum 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 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 there is no definition of what these terms actually mean. 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. However, there are many areas of difficulty, such as the status of 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. There are situations where some people describe themselves as consultants but are only working for a single entity and in fact they would be treated as employees by
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HM Revenue & Customs. This is happening more and more in the ‘gig economy’. Ask about their PAYE status to try and resolve the correct employment status. The definition of employee has changed over the years but now is contained in section 230 (1) of the Employment Rights Act 1996. Although a design right case, Ultrafram sets out factors that should be taken into account when determining is someone is employed, amongst which is the element of control that over the person that is employed and this case uses the rather arcane reference to a servant/master relationship. Secondees can also be a problem; whose employees are they as they are by definition working for more than one entity? 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 or are they employed for research duties and if so, into what? Medical researchers can often be employed by both a university and an NHS trust so again it is important to check when the invention was made and under which employment contract. There are many complexities which will not be discussed further here but it is important not to assume that everything is as clear cut as it may seem. It is important to note that section 43 contains 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’ which is not defined. 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.
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9.7.2 Rights to employees’ inventions Section 39 is a complete, self-contained code for determining ownership of employees’ inventions and by reference to invention only it is clear that 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 because previously the question was determined by principles developed by the common law. The applicability of common law has now been removed as a result of the wording of the preamble to section 39(1), which refers to ‘Notwithstanding anything in any rule of law’. In addition, section 39 refers to ‘this Act’ which makes it clear that the provisions relating to employee inventions under sections 39 to 42 apply to inventions made by an employee where (a) he/she was mainly employed in the UK or (b) he/she was not mainly employed elsewhere or the place of employment could not be determined but the employer had a place of business in the UK was attached whether or not they were also attached elsewhere as clarified by section 43. 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. Note that section 39 refers to employees, so non-employees are excluded from this section unless there is a contractual obligation e.g. contract research from a non-employed person. Although section 39 refers to employees section 43(3) does make it clear that this can be where an employee makes the invention alone or with another person but a mere contributor is excluded – see Kelly. 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
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determining the status of the employee and the nature of his/her duties. The subsection recognises 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 subsection 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 been specifically assigned to them. ‘Normal duties’ require an examination of the contract of employment with its express and implied terms and any agreed 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. WWW.CIPA.ORG.UK
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Both Harris and LIFFE agree that the reference to ‘an invention’ in section 39(1) means an invention in general rather than the specific invention where there is question about ownership. At the same time Harris makes it clear that for inventions covered by sections 39(1)(a)(b) 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 employeeinventor 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 just to innovate but also, for instance, managerial. The nature of these higherlevel 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, they are 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. 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 them immunity from copyright and design right PATENTS TRAINING MANUAL: 2022
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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(1) in the UKPA sets out circumstances in which an employee may get ‘compensation’ and section 41(4) lists factors to take into account when calculating how much compensation may be paid. It is also important to contrast sections of the UKPA where the employer always owned the invention with those where initially the employee owned the invention. Sections 40 (1) covers the situation where it was determined under section 39 that the invention has always belonged to the employer. Section 40(2) provide for the case where a determination of ownership under section 39 was resolved in favour of the employee who then subsequently assigned their rights to, or exclusively licensed, the employer. Section 40(1) stipulates the following conditions before compensation may be paid to an employee. • 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 non-payment 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. 176
Section (40(2)(c) covers the situation where the employee initially owned the invention and it was assigned to the employer and in this case 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. For 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 one 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’). 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 them in as 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. £1 million, may be of outstanding benefit to a business with an annual turnover of £1-3 million while not being particularly significant to a mega-business turning over £1bn. This is explored further below.
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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 having to pay compensation for an invention belonging originally to the employee unless there is a collective agreement in place which presumably would have set out what, for example, members of a Union may be entitled to. This is much like the provisions in Germany and Sweden where employees are entitled through Work Council agreements to have payments for inventions that belong to their employers and calculations have been agreed as wo what should be paid to the employee. 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 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 Dr Kelly, Dr Chiu and others 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 protection’ mentioned in section 43(4) does not include regulatory data exclusivity (RDE) regimes which do not give monopoly rights. WWW.CIPA.ORG.UK
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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 Chiu 1%. There was nothing in the evidence to compel the judge to find that it would be unjust for compensation to be paid.
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… The elements of section 41 are set out in section 41(4) for employer-owned inventions and section 41(5) for originally employee-owned invention. PATENTS TRAINING MANUAL: 2022
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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. After a 13-year battle there has been a more recent judgment that sheds light on what employees are entitled to. On 23 October 2019, Kitchin LJ concluded a dispute originally bought by Professor Shanks in 2013 before the IPO. 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 as was a standard procedure in the Unilever Group. Unilever did not exploit the patents itself but instead gained profits from non-exclusive licences. In his claim before the IPO, Professor Shanks brought an employee inventor compensation claim against Unilever under section 40(1) but the hearing officer found that the patents and integral with that the benefit provided by the patents was not outstanding. This decision was upheld by the High Court in 2014 and the Court of Appeal in 2017.
The case came before the Supreme Court and three questions were asked: 1. Who is the relevant employer? 2. What are the principles governing the assessment of the outstanding benefit to an employer, in effect, can an employer be so large to have to pay? 3. How should a fair share of an outstanding benefit be assessed and can the time value of money be accounted for? For the first point the question was whether when considering the outstanding benefit should the employer’s undertaking be CRL or the larger Unilever Group, which was making billions of pounds in turnover. The hearing officer and the lower courts had reached the conclusion that the Unilever business as a whole should be considered to receive the benefit but LJ Kitchin took another approach and stated the following interpretation for section 41: ‘Where, as here, a group company operates a research facility for the benefit of the whole group and the work results in patents which are assigned to other group members for their benefit, the focus of the inquiry into whether any one of those patents is of outstanding benefit to the company must be the extent of the benefit of that patent to the group and how that compares with the benefits derived by the group from other patents for inventions arising from the research carried out by that company. This gives practical and commercial effect to the language of section 41 and involves a comparison of like with like. Furthermore, it is, in my opinion, the approach which sits most comfortably with the next aspect of the analysis, namely the relevance of the size and nature of the employer’s undertaking.’
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 (the 9th edition is dated 2019 with its latest updating supplement dated December 2020); and also the IPO Manual of Patent Practice (MoPP).
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In the Court of Appeal, Shanks had argued that Unilever’s turnover was so large as a whole that this would dwarf any benefit derived from the patents so in effect it could never be proved that the benefit derived. LJ Kitchin agreed with this and said that for large companies with many different divisions, sales will be generated by a range of different products that have nothing to do with the technology that is the subject of the patent and in paragraph 54 of his judgment stated: ‘I find it very hard to see how a failure materially to affect the aggregated sales value or overall profitability of the business could, in and of itself, justify a finding that the benefit of a patent has not been outstanding.’
This shows that the comparison is not with the overall turnover when considering the meaning of ‘outstanding’ but in fact a like for like comparison should be made. The courts should look at the commercial realities of intergroup company situations. Unilever earned an estimated £24 million, so in accordance with the original IPO hearing officer’s assessment Kitchin LJ agreed on a compensation amount of 5% of £24 million, which was initially suggested by the IPO hearing officer in 2013. As there has been some time that had passed since Unilever received its income LJ Kitchin adjusted the amount of the award to take into account the ‘time value of money’, for inflation to arrive at the awarded amount of £2 million.
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 them 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 WWW.CIPA.ORG.UK
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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-contractingout 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 this question as 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 expressed but if not expressed, definitely implied, in every contract 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., that are owned by the employer and more often than not are not in the public domain. If employees who made an invention that makes use of such matter but overall actually belonging to them and apply for 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.
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Jacob LJ recognised 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 their 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 states that sections 39-42 do not apply 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. Note subsection (5A) where the employer’s benefit from the invention is limited up to the date of cessation of the patent, Again there is discussion as to what is meant by benefit and in particular as to what ‘money’s worth’ means.
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 as the Edwards Life Sciences AG v Cook Biotech Inc (EWHC 1304 (Pat)) decision shows. 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 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. However if things do go wrong and parties start fighting over who owns the patent, sorting matters out can be long and protracted as Shanks illustrates. Co-ownership is another area where if all is well there are no issues but if a relationship breaks down
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.
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resolving matters where parties have taken very entrenched positions can be extremely difficult and this is where mediation may come into its own. This chapter has not looked in any detail at how transfers of patent applications (for example, assignments) are handled as this is examined in chapters 15 and 18. 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.
* This chapter was first written in 2008 by Tibor Gold (Fellow). It was revised and updated by Sue Ratcliffe (Head of Intellectual Property at Synthomer) in 2021.
Test your knowledge 1. Turn to 9.2.2. In light of the recent Dabus decision discuss with your trainer the view of the judge that: ‘I in no way regard the argument that the owner/controller of an artificially intelligent machine is the ‘actual deviser of the invention’ as an improper one. Whether the argument succeeds or not is a different question and not one for this appeal: but it would be wrong to regard this judgment as discouraging an applicant from at least advancing the contention, if so advised.’ What arguments would you put together if you were going to appeal this decision? 2. You have an inventor who is medical consultant working at a university on a teaching/research contract and also part time at an NHS Trust. The inventor has developed diagnostic equipment for analysing medical samples but this equipment could also have non-medical applications. The device was developed while the inventor was working with a start-up company whilst on sabbatical from the university role but the start-up was a spin-out company from the university. The inventor now wants to file a patent application. What questions would you put to the inventor to determine who the applicant should be? 3. Compare and contrast the duties of an employee and those of a director of a company. Consider further an employee that has been specifically assigned a project to solve a technical problem that is of great concern to the company. How would this affect any compensation due that employee in light of recent decisions in this area? Discuss your thoughts with colleagues and your trainer. 4. Discuss the reasoning for the level of compensation awarded in Kelly & Chiu and how the case law developed through the decisions up to the Supreme Court for Shanks. How would you advise a client from a small company as compared with a multinational on this topic? Answers overleaf.
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Suggested chapter 9 answers and comments As most inventions are owned by an employer (often the client) try to take a holistic view of the situation as you will often need to consider matters from the perspective of both sides to reach a conclusion or even better a resolution. This is what the IPO or courts would do anyway. An employer often does not want to lose a good employee that is contributing ideas to the business so a degree of tact and diplomacy is needed to avoid an acrimonious situation occurring. In addition, inventors often have a lot of know-how that is valuable to a business and if they take their knowhow with them this could be advantageous to the client’s competitors. Proving what is confidential material and what is general know-how can be a complicated and time-consuming exercise and once information has left a business is it difficult to retrieve it.
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10
INFRINGEMENT AND CLAIM INTERPRETATION By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*
Outline Whether a patent has been infringed involves two questions. The first is whether the object or process alleged to infringe is actually what is covered by the claim? The second is 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: (a) determining the true meaning of the words of the claims, which is often termed ‘interpreting’ or ‘construing’ a claim from the point of view of the ordinarily person skilled in the art and assessing whether the alleged infringement falls within that meaning and (b) considering whether the alleged infringement falls within the scope of protection provided by the patent as a matter of equivalence. 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 issues of novelty and inventive step because those questions are answered using the same definition of the invention provided by the claims. The question of equivalence involves a new development in UK patent law arising from the decision of the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48. Answering part (b) of the first question requires a technical appreciation for the way in which the invention described in the patent functions. The effect of Actavis is that products or processes can infringe patents where they achieve substantially the same result in substantially the same way as the invention disclosed by the patent, even though they would not fall within a normal interpretation of the claims of the patent. Infringement by equivalence is itself assessed against three Actavis questions. The debate about how the issue of equivalence should be taken into account in addressing the question of a patent’s novelty or inventive step is beyond the scope of this chapter (i.e. whether there would be infringement where an infringing equivalent was made available to the public before the priority date of the patent). So the issue of equivalence is dealt with in the context of how it arises when giving opinions on the issue of infringement. The second question is often straightforward since patents regulate most kinds of activities such as making, disposing of or offering to dispose of, importing, using or keeping a product. However, there are exceptions for activities that are not really economic activities or are activities to be encouraged, or at least not discouraged by a patent, for economic or other policy reasons.
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Learning plan 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. The EPO Guidelines contain copious advice on what the EPO prefers to see; we advise referring to that when specific issues come up rather than trying to read the whole thing at once! • Patents Act 1977 (UKPA) • European Patent Convention (EPC) (1973 and 2000) and Protocol on the Interpretation of Article 69 EPC • CIPA Guide to the Patents Acts (2021) by Doug Ealey • Icescape v Ice-World International [2018] EWCA Civ 2219 [2019] FSR 5 • Saab Seaeye v Atlas Elektronik [2017] EWCA Civ 2175 • Actavis v Eli Lilly [2017] UKSC 48 [2017] RPC 21 • Virgin Atlantic Airways v Premium Aircraft Interiors UK [2009] EWCA Civ 1062 [2010] RPC 8 • Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 [2005] RPC 9 • Improver v Remington [1990] FSR 181 • Catnic v Hill and Smith [1982] RPC 183 (HL) 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 trainer also needs to discuss issue of the ‘inventive core’ or ‘inventive concept’ of the patent and to teach trainees to assess how that may affect obviousness attacks and whether variant products or processes may produce the same results in substantially the same way as the patent. 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 and also by formulating summaries of the ‘inventive concept’ of the patent in order to discuss how that may affect obviousness attacks and whether variant products or processes might infringe by equivalence. Examination and infringement and validity work provides the fullest examples, but drafting also provides an opportunity to develop sensitivity to ambiguities in claims. Syllabus link: U K Exams: FD1 and FD4 EQEs: Paper D IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution). 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.
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Learning outcomes Determining the normal construction of a claim is a skill in relation to which you will need to develop both sensitivity, as to how the wording of the claim might mean different things, and judgement, in order to decide which meaning is the one to be preferred and the extent to which there is a risk of different interpretations succeeding. That judgement involves knowing from whose perspective the claim should be judged and to what standard. Addressing the issue of infringement by equivalence requires consideration of the technical features of the invention and how they produce the results described in the patent. As a new development in the law, there is currently considerable uncertainty as to the scope and effect of infringement by equivalence, in particular in relation to the second and third Actavis questions. Knowledge and understanding of this ongoing debate is therefore important. 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, at least on a normal construction. 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.
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10.1 Infringement
10.1.2 Contributory infringement
10.1.1 With which act does one infringe?
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’ and might arise where someone supplies a part or component for a patented process or product instead of the whole product or apparatus used to work the process. If contributory infringement 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).
We start with a brief look at the second question – the acts which can infringe a patent. 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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10.1.3 Exceptions to infringement Sections 60(5) to (7) list various exceptions to infringement. They include certain exceptions for private use, for experimental use, for farming (for instance, where the farmer has purchased seeds or other products from the owner of the patent), for aircraft and shipping and 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 given rise to 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 includes the person who does and (because of an employer’s vicarious liability) whose employees do 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 or importer of infringing items, but distributors and retailers further down the chain may well be customers of the
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patent owner as well as customers of the infringing manufacture. The patent owner might win a case against a distributors but then be damaged by that trader not buying their goods having taken offence at being sued. As further described below if UK distributors and retailers (rather than manufacturers or importers) of an infringing article are approached by the patentee or its representatives about patent infringement, any ‘person aggrieved’ (whether they be manufacturer, importer, distributor or retailer) may be entitled to bring a claim or, if sued, counterclaim against a patentee for unjustified threats under sections 70 to 70F of the Patents Act 1977. If a patentee loses an infringement claim, a distributor or retailer of a product can claim damages for, among other things, any disruption to their business caused by the patent infringement claim. Distributors and retailers can, however, also be cooperative in providing information as to who supplied them with the infringing items. Another aspect of this question is the territorial scope of the patent. If infringing items are traded between countries, then it is likely that different parties will be the infringers of different national patents in each jurisdiction (assuming that there is an equivalent patent or designation of a European Patent in force in each territory).
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, imported and so on. 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 have an uncertain outcome. As we have seen in other chapters, instead the applicant for a patent has to provide their own definition(s) of what the claimed invention is – WWW.CIPA.ORG.UK
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namely in 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 requirement for claims in the specification is set out in 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. 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 of, amongst other things, 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) and in particular to the Protocol on the Interpretation of Article 69 of the Convention. Section 130 of the Patents Act 1977 emphasises the importance of the EPC for the interpretation of section 60 listing it among other sections of the Act which must be interpreted in the same way as equivalent parts of the EPC. ‘130 (7) Whereas by a resolution made on the signature of the Community Patent Convention the governments PATENTS TRAINING MANUAL: 2022
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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 Cooperation 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. European Patent Convention 1973 (EPC 2000 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.
Both section 125(1) of the Patents Act 1988 and EPC Article 69(1) say that the claims define the extent of protection but that the claims are to be interpreted in the light of the description and drawings. Further guidance on this issue is provided in the Protocol on the Interpretation of Article 69. This guidance was agreed between the various states that are party to the EPC in 1973 and was updated in 2000. As we will see below, the Protocol and in particular Article 2 was the reason why the Supreme Court ruled that infringement by equivalence is part of UK law. Protocol on the Interpretation of Article 69 (EPC 2000 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 188
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.
There is more on the Protocol below, particularly at 10.4.
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 is to check whether the alleged infringement falls within that meaning. Conventionally and also as a result of regulation to a greater or lesser extent around the world, a claim 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 on a normal construction of the patent, an alleged infringement must fall within the meaning of the definition provided by the claim. 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 tend, in the first instance, to concentrate on each independent claim – as discussed at 10.5.8. If this is not infringed, then the dependent claims cannot be infringed either.
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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 or others, you may well want to tabulate your findings, for example see Table 1 below.
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.
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
Table 1 Item
Location in infringement
Can opener
The article does open cans and is suitable for the purpose. Head unit
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Top end in figure 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
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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 ongoing activity 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). There should be evidence of this activity in the territory before any opinion is given, for example sales or importation of an infringing product. If you only have a suspicion of infringing activity then, in fact, you are 190
only giving an opinion on whether the sample (or the supplied description of it) falls within the scope of protection provided by the patent in the UK. 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. Often people obtain this evidence by ‘trap purchases,’ seeking evidence that the infringer is prepared to sell the relevant product in the UK or another territory where the patentee has patent protection. You will also 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 second question, the process of determining whether there is infringement on a normal construction of the patent, 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 we will consider the approach taken to interpretation more closely and also the process of infringement by equivalence.
10.3 General principles of claim interpretation 10.3.1 Selecting claim interpretation points You may think that the above process was simple enough, so why do the words of 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 Language Instinct) is that the phrase ‘time flies like an arrow’ without any clue of context has at least five different meanings:
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• ‘Time proceeds as quickly as an arrow proceeds. (the intended reading) • Measure the speed of flies (the insect) in the same way that you measure the speed of an arrow. • Measure the speed of flies in the same way that an arrow measures the speed of flies. • Measure the speed of flies that resemble an arrow. • Flies of a particular kind, time-flies, are fond of an arrow.’ 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 – computer programs are usually 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), from the different meanings of the same word and from the technical context. In product claims, a claim may be drafted in a way that does not make the inter-relation and relative position of each component, clear. 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 a component at one end of the can opener on which other components like the lid cutting member is mounted, but to what extent does its identity have to be separate from that of the rest of the device and can other components be integrated into it or not? In other cases, the scope or meaning of a term may be unclear. For example, does ‘pivot’ in the claim mean the strict or technical definition of pivot as the point of rotation in a lever system or is the word used more generally to mean a shaft or other component used as a point of rotation? 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 WWW.CIPA.ORG.UK
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with pages of argument for and against each. Nevertheless, 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. 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 central case in the UK on interpreting the wording of claims is Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 [2005] RPC 9. Paragraphs [18] to [35] of the judgment on the subject of interpretation of words in the claim of a patent are very clear and readable and can be found at https:// www.bailii.org/cgi-bin/format.cgi?doc=/uk/cases/ UKHL/2004/46.html. The speech by Lord Hoffmann, who has a long association with the issue, is essential reading. The ultimate message is a simple one – on the question of purposive construction (or ‘normal interpretation’ as it is now called) ‘The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean’ (see paragraph [35]). There is also an 11-point summary of the points of the approach taken by the English courts in Saab Seaeye v Atlas Elektronik [2017] EWCA Civ 2175 at [18] to [21] (see https://www.bailii.org/ew/cases/ EWCA/Civ/2017/2175.html). PATENTS TRAINING MANUAL: 2022
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So far as equivalence is concerned Kirin-Amgen has been superseded by the judgment of the Supreme Court in: Actavis UK v Eli Lilly [2017] UKSC 48 [2017] RPC 21. This judgment is also clearly written and well worth a read – see https://www.supremecourt.uk/cases/ docs/uksc-2015-0181-judgment.pdf.
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 mean. This will often affect the exercise of interpretation: for example, the skilled person will understand technical terms in the patent and may understood familiar terms like the word ‘pivot’ in a more precise and technical way than a normal reader would in the same context. We are also supposed to carry out a ‘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 work the invention 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 arguably should be little sympathy for them. However, infringement by equivalence now provides some protection for patentees in this position. 192
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 or ‘embodiments’ 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 examples that are said to embody the invention 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 tendency on the part of the skilled person to understand the claim in a way that covers the example, because it would be common sense to a skilled person for that to be the case and because the law says that the claim is to be interpreted in the context of the description. It may not always be possible to have the claim cover the example without altering its meaning in a manner 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. This occurs fairly commonly with divisional patents that are directed towards a subset of the embodiments in the parent patent. It may also occur 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.
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10.4.2 Reference numerals You will often see reference numerals in claims, especially if they are in a European patent. According to Rule 43(7) EPC 2000, 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. In the words of Lord Justice Jacob, ‘To give an analogy, the numbers help you get the map the right way up, they do not help you to read it to find out exactly where you are’ (Virgin Atlantic Airways v Premium Aircraft Interiors UK [2009] EWCA Civ 1062 [2010] RPC 8 at [17]).
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 WWW.CIPA.ORG.UK
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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 several 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 The starting point for understanding the invention protected by the claims of a patent, is the words of those claims themselves. There is to be no general reinvestigation as to what the invention actually is. 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. Of course, you do not have the freedom to pick out what in your opinion would have been a better thing to have claimed. Instead you need to find in the description the thing that skilled person would have understood the patentee to have used the language of the claim to mean (i.e. from the viewpoint of the objective skilled person reading the specification) and then use that to clarify its meaning. 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 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 the description Sometimes you will find important claim terms being used in various parts of the patent’s description
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and sometimes other words will be used to describe those features of 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, where the description is aiming to illustrate what a claim term like ‘minimum gap setting’ means in the context of a particular embodiment of the invention, it might say ‘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.’ 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).
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, for example documents describing widely known technical standards, that would be common general knowledge to the skilled person can be employed to provide definitions.
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. Patents are public documents designed to be read by any person skilled in the fields relevant to its invention. Ideally, the patent should clearly state what invention is claimed such that the skilled person is under no uncertainty as to what products or processes might escape infringement of its claims. The alleged infringement would not be known to many skilled people reading the patent for this purpose 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 the description will generally make it quite clear which of the two meanings was meant. But for ‘determine’ it is at least arguable that it can have a general meaning in a claim 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 the transmitter is at a known level, then that would support the general meaning since both measuring it and fixing it do that. This example of ‘determine’ contrasts with the ‘set’ example because there is no general meaning of WWW.CIPA.ORG.UK
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set that covers both putting something down and turning it solid.
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, checking for this consistency 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 the other side’s interpretation, it is often worth coming 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). 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 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 PATENTS TRAINING MANUAL: 2022
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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.
Claims using just purely structurally defined features can be extremely clear. Take for example structural formulae for molecules, like Markush formulae which in a simple diagram can cover many thousands of different molecules. For such claims, the question arises whether the claims actually have, over the whole of their scope and in each of the molecules claimed, the inventive advantages or applications described in the patent. For claims to chemical structural formulae, this situation can lead to lack of sufficiency or to the need for extensive experimental evidence to show that the invention is enabled over the whole of its scope.
10.5.5 Functional and structural features
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 drafter 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 you a clear sense of workable embodiments of the invention, generally it will be relatively clear from the claims’ wording that the invention has a limited scope and cannot be flexibly or expansively interpreted. With these kinds of patents, invalidity can result, for example by reason of an accidental anticipation, a lack of novelty over prior art which is remote and not otherwise technically related to the invention.
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
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
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.
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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.
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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.) A good example of this is a sign on a bus which reads, ‘Passengers must remain seated until the bus is stationery’. Clearly that should have been ‘stationary’ and no one would feel the need to await the transformation of the bus into headed notepaper before alighting. WWW.CIPA.ORG.UK
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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 clear, from the patent, may end up being interpreted using the meaning that was standard to the skilled person 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 remedies. 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 then its dependent claims will be.) Examining the infringement of dependent claims is useful and important, however, because they may be valid while broader independent claims are not. Often, therefore, part of providing an infringement opinion involves assessing not only which independent claims are infringed, but also which dependent claims. If the review is coupled with
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a validity assessment of the patent this will help identify potential amendments to 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.
error and both would generally be discouraged by examiners during the patent application process as being unclear.
10.5.9 Effect of dependent claims on the interpretation of independent claims
10.5.10 Relationship to validity
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 would be preferred. 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 198
The effect of a dependent claim on a claim from which it depends is often called the ‘repercussive’ effect.
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 the 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 or where relevant prior art is common general knowledge to the skilled person, 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. However, clarity objections are frequently overcome with examples of usages in the literature of allegedly unclear wording that means the same thing as the wording in the patent.
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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 infringement, the patentee is going to have difficulty showing that it does and the patent may also be invalid for being conceptually uncertain and therefore insufficient.
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, that there is no infringement at least on a normal construction – the patentee gets 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. This used to lead to some unfairness where narrow wording had been adopted by accident. Now the law of infringement by equivalents may often provide good fall-back argument for a patentee in this position.
10.6 Equivalents and the history of claim interpretation via Catnic and Kirin-Amgen to EPC 2000 coming into force Even before Actavis, most of the case law on claim interpretation related to equivalent variants of a feature in the claim. This is not surprising: these cases often arise when the alleged infringement appears to be outside the claim but the patentee feel that the alleged infringement is close enough to the inventive core of their invention to warrant coverage by the patent. Now Actavis confirms that the patentee can argue that a product or process infringes if, when WWW.CIPA.ORG.UK
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properly looked at, it is the same as the invention or ‘equivalent’ to it even though outside the wording of its claims on a ‘normal interpretation’. 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. Later in the 2000 version of the Protocol, a second article was added to it requiring ‘due account’ to be taken of ‘any element which is equivalent to an element specified in the claims’. It was this new provision in the Protocol that provided a platform for the Supreme Court to rule that the doctrine of equivalents was part of UK patent law.
10.6.1 Catnic In 1982, the House of Lords decided the case of Catnic v Hill and Smith [1982] RPC 183. 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, what technical applications the described invention is intended to have. Technically this case is only binding authority on patents granted before the Patents Act 1977. Although the European patent system and an entirely new UK patent law under the 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). Also, the case was not about equivalents of a general kind, for example whether a bolt infringes when the patent claims a nail, but about the degree of precision required by a claim feature; in particular the case involved a metal box lintel, or beam, for which the claim required a support PATENTS TRAINING MANUAL: 2022
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member to extend ‘vertically’. The relevant member in the alleged infringement was not strictly vertical but was 6 degrees off vertical. The House of Lords approached the question purposively, with an eye on the technical features of the invention and whether the member needed to be strictly vertical for the invention to function; they decided the member in the alleged infringement was vertical enough to fulfil its functional purpose and so was held to infringe. Lord Diplock’s core reasoning is sometimes referred to as the ‘nutshell’ question: ‘Put in a nutshell the question to be answered is: Would the specification make it obvious to a builder familiar with ordinary building operations that the description of a lintel in the form of a weight-bearing box girder of which the back plate was referred to as “extending vertically” from one of the two horizontal plates to join the other, could not have been intended to exclude lintels in which the back plate although not positioned at precisely 90º to both horizontal plates was close enough to 90º to make no material difference to the way the lintel worked when used in building operations? No plausible reason has been advanced why any rational patentee should want to place so narrow a limitation on his invention. On the contrary, it would render his monopoly for all practical purposes worthless, since any imitator could avoid it and take all the benefit of the invention by the simple expedient of positioning the back plate a degree or two from the exact vertical.’
In Improver v Remington [1990] FSR 181, Hoffmann J confirmed that the principles established in the Catnic case applied to patents under the EPC/Patents Act 1977. He clarified the test for infringement by equivalents, or ‘variants’, setting out three questions that needed to be asked: 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 200
primary meaning was an essential requirement of the invention? If, yes the variant is outside the claim.
In the third question we came back to looking at what was actually meant by the claim on a fair interpretation of its words. The first two questions, nonetheless, helped you avoid having to do difficult interpretation in many cases: if the variant made the invention work differently, or if it worked 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, could not reasonably be taken to have meant to cover it. The question of whether this approach to claim construction and infringement was consistent with both the 1973 versions of the Protocol arose in several cases following Improver, including PLG Research v Ardon [1995] RPC 287 (CA). The Court of Appeal in that case found that the Improver questions were not inconsistent with the Protocol to Article 69 EPC.
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 EPC 2000. Although it took many years for the effect of EPC 2000 to works its way into the case law, 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, proposed the 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.
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This proposed new Article 2 looked to be inspired by US patent law on infringement, where there could be both literal infringement and infringement by equivalents to that claimed.
This was all in 2000 and EPC 2000 did not come into force until 13 December 2007 but it was an important step towards the current state of the law now established by Actavis v Eli Lilly.
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.
10.6.3 Kirin-Amgen
Further, with a new proposed Article 3, documents in the official EPO file for the patent application could limit the application of the equivalents rule. Reliance on a document in the prosecution file is commonly a defence to allegations of infringement by equivalence in the US, and is known as ‘file wrapper estoppel’: Article 3 Prior statements 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 that less accessible documents like the patentees’ correspondence with the patent’s examiner should not influence the interpretation of a patent. 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 EPC 2000 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.
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In the meantime, the House of Lords reconsidered the matter of interpreting claims in detail for the first time since Catnic, in the case of Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 [2005] RPC 9 discussed earlier above. The judgment provides many observations on claim interpretation, see for example paragraphs [18] to [35]. It also considered whether the Protocol should change the approach taken to interpretation in Catnic and Improver. The case was decided before the 2000 version of the Protocol came into effect but after it had been agreed. Lord Hoffman asserted that Catnic was consistent with the Protocol at paragraph 48 and that the Improver questions sufficiently provided for protection in relation to equivalent variants for the purposes of the 2000 protocol.
10.6.4 Actavis v Eli Lilly In Actavis v Eli Lilly [2017] UKSC 48 [2017] RPC 21, 13 years after Kirin-Amgen, the Supreme Court reconsidered the question of whether Catnic and Improver properly reflected the requirements of the 2000 Protocol, at a time when that version of the Protocol was properly in effect. On its face, the case raised rather starkly the potential unfairness of a narrow or strict approach to construction. The patent claimed the disodium salt of the active ingredient, pemetrexed, in combination with vitamin B12 or a pharmaceutical derivative thereof for use in chemotherapy and the inventive concept or core of the patent was the use of pemetrexed in combination with vitamin B12 or a pharmaceutical derivative for this purpose. The vitamin B12 was a methylmalonic acid lowering agent which made the pemetrexed antifolate less toxic to patients. Any chemist would know that other salts of pemetrexed might be used for this purpose (if it turned out that they worked by, for instance, being soluble enough). PATENTS TRAINING MANUAL: 2022
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The generic manufacturer, Actavis, tried to circumvent the claims of the patent by proposing pemetrexed products in the form of potassium, tromethamine and acid salts and seeking declarations of non-infringement. On both literal and purposive constructions of the claims, the claims of the patent could not be read to cover anything other than pemetrexed disodium, unfairly limiting the patentee’s monopoly to a narrower scope than the important inventive contribution disclosed in the patent. In fact, this situation was not as unfair as it superficially appears: amendments made during prosecution of the patent and in particular, an added matter objection by the EPO, accounted for the narrow scope of its claims and the patentee had originally tried to make broader claims (see paragraphs 76 to 80 of the judgment). In reconsidering the impact of the Protocol, the Supreme Court took the opportunity to survey the case law of other EPC states in paragraphs [44] to [52]. In Germany, France, Italy, Spain and the Netherlands, there were found to be doctrines of equivalence. In the end, the court decided that a similar doctrine of equivalents was needed in UK law to ensure fair protection for innovators and legal consistency between the different EPC states. Lord Neuberger decided that there should be two doctrines that determined the scope of a patent claim. One of these was ‘normal interpretation’ and the other was infringement by equivalence. These two modes of claim scope determination were described at paragraph 54 as follows: 1. Does the variant infringe any of the claims as a matter of normal interpretation; and, if not, 2. Does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?
Lord Neuberger formulated three questions for deciding issues of equivalence which share many similar features with the older Improver questions at paragraph 66: (i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in 202
substantially the same way as the invention, i.e. the inventive concept revealed by the patent? (ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? (iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
There are a few important differences between the Actavis questions and the older Improver questions: a. A precondition for the Improver questions applying was that the variant was within the scope of the claims, when these claims were interpreted in a purposive manner, as opposed to a literal or acontextual manner. There is no such precondition with the Actavis questions. b. There is a greater focus on the ‘inventive concept’ or ‘inventive core’ of the claimed invention which has been described as ‘the new technical insight conveyed by the invention – the clever bit – as would be perceived by the skilled person’. In identifying it, one should examine what the problem underlying the invention is and how the patent solves that problem. It can be seen that the simpler the inventive concept, the more likely it is that the concept has been exploited in substantially the same way so as to achieve substantially the same result. The more detailed the inventive concept, the less likely it is that it has. c. Arguably, depending on the breadth of the inventive concept, the first Actavis question might encompass a broader range of potential variants which achieve substantially the same result in substantially the same way as the invention, than the first Improver question. Unlike the first Actavis question, the first Improver question was limited to variants that have no material effect on the way the invention works. d. The second Actavis question, like the second Improver question, is designed to screen out innovative variants of the patented feature whose invention owes little to the disclosure in the patent.
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However, the second Actavis question imposes a lower burden on the patentee because it assumes that the person skilled in the art knows that the variant works in the same way as the invention. It asks them to consider whether, knowing that it works, it would have been obvious that the variant achieved substantially the same result in substantially the same way as the invention at the priority date of the patent. e. The third Actavis question is essentially the same as the third Improver question, requiring the court to consider if there is any reason why the patentee intended there to be strict compliance with the literal meaning of the claim wording although the third Actavis question clarifies that it is the ‘literal’ or ‘normal’ meaning of the claims that is the focus of this question rather than a theoretical ‘primary’ meaning.
10.6.5 Icescape v Ice-World International A number of points remained to be clarified after Actavis v Eli Lilly. The Court of Appeal decided a number of these in Icescape v Ice-World International [2018] EWCA Civ 2219 [2019] FSR 5. The Court considered a patent for a portable ice rink that could be quickly disassembled and then installed in another location. The patent claimed a system of piping for the circulation of coolant under the ice rink. The structural arrangement of the various features of the alleged infringing product, were slightly different to that claimed in the patent. The Court of Appeal ruled that the structure of the pipe assembly was not the inventive core of the patent; the inventive concept of the patent was the use of foldable joint members that allowed the piping to be stored and transported conveniently after being disassembled. The defendant’s ice rink assembly therefore infringed the patent by equivalence. Notably, at paragraphs [59] to [64], the Court of Appeal confirmed that the approach taken to the question of infringement by equivalence was not the old approach taken to the Improver questions and did not involve a single conflated process of interpreting the language of the claims. Instead the focus should WWW.CIPA.ORG.UK
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be determining what ‘the problem underlying the invention’, ‘the inventive core’, or the ’inventive concept’ of the patent. The Court of Appeal also explained at paragraphs [60] and [96] what Lord Neuberger meant by ‘normal interpretation.’ This was the idea of purposive interpretation (described by Lord Hoffmann in greater detail in paragraphs [18] to [35] of KirinAmgen).
10.6.6 Use of the prosecution file One possible compensation for defendants to patent infringement claims from Actavis is that the court explained that the prosecution file and in particular communications between the relevant patent office and the patent applicant, in some (strictly limited) circumstances, can be relevant to questions of claim construction and infringement. Arguments based on statements of the patentee during prosecution are common in the US, when interpreting a claim. These statements are to be found in the USPTO’s file for the application, which is called the ‘file wrapper’ giving rise to the US name for this doctrine of ‘file wrapper estoppel’. 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. File wrapper estoppel in the US is an important limitation to a wide doctrine of equivalence, preventing the patentee alleging infringement in relation to products or processes they expressly disclaimed in order to obtain the patent in the first place. It appears that the prosecution file still has a more limited role to play in UK law. Lord Neuberger ruled in Actavis that any arguments based on statements made during the prosecution of a patent should be viewed with a ‘sceptical but not absolutist attitude’. The rationale for this is that a patent is a public document whose prohibition of what can be made or sold, etc applies to everyone. It should be possible to interpret a patent from its words alone and without reference to the prosecution file. At paragraph [88], Lord Neuberger identified two situations where PATENTS TRAINING MANUAL: 2022
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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 potentially 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, particularly those involving ‘equivalents’.
it might be appropriate to make reference to the prosecution file: (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored… [this] would be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes.
So far arguments based on the prosecution file have been rejected in both Actavis (where the patent’s claims had been limited to avoid added matter) and Icescape but accepted by Lord Justice Arnold in Akebia Therapeutics Inc. v Fibrogen Inc. [2020] EWHC 866 (Pat). The patentee’s case on equivalence in that case extended the claims of the patent to matter that the patentee had disclaimed during the prosecution of the patent to avoid a novelty objection.
10.6.7 Conclusions on Equivalence So where does this leave us? There is still considerable uncertainty as to how the three Actavis questions are to be applied. However, a few things are now established about the doctrine of equivalence. The first Actavis question, on whether the variant functions in substantially the same way as the
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invention, is to be approached with a technical understanding of the claimed invention in mind. Many courts now ask patentees alleging infringement by equivalence to formulate a case on what the inventive concept or core of their patent is. The formulation of such a concept is a good first step towards answering the first Actavis question, allowing you to put to one side distracting integers or features of the written claim that have little relevance to this issue. Applying this to the earlier can-opener example, we might say that the inventive concept of that patent is the use of a lid cutter rotated on a pivot to open a tin. Formulated in that manner, it is apparent that a patent granted for this invention could embrace motor driven variants or variants where something other than a grip held by a person is used to stabilise the can-opener during operation. The second Actavis question, on whether it is obvious that the variant and patent work in the same way, is directed towards protecting variants of the patent which are radical and inventive departure from the way in which the patented invention operates. This question will tend to be answered with a view to the state of the art and the common general knowledge of the skilled person at the priority date of the patent. The third Actavis question, on whether the patentee intended strict compliance with the terms of the claim, is a more difficult question to answer on the
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current law. It is clear that this question does not restrict infringement by equivalence to cases where the variant would infringe on a normal construction patent anyway. Lord Justice Arnold considered this question in Akebia Therapeutics Inc. v Fibrogen Inc. [2020] EWHC 866 (Pat) at paragraphs [447] to [462]. This was a case in which the claim was limited to a single molecule but the patentee contended that a molecule with a similar structure to the claimed molecule infringed the claim by equivalence. In ruling that the patentee intended strict compliance with the claim, Lord Justice Arnold picked out several factors that could be relevant to the question, including whether other claims in the patent were broader and covered more products or processes, whether it was apparent that a technical choice underlay the narrow drafting of a claim and whether the patent’s description disclosed many different products or processes but the claims only covered a narrow range of those products or processes.
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 there remain inconsistencies between the different approaches of the various contracting states. 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.
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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 gained 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 Intellectual Property Enterprise Court (IPEC). The UK IPO can also be used as a forum for seeking the revocation of UK patents, but this is less popular. However, its service of providing informal non-binding opinions dealing with questions of infringement is popular for small companies without the resources for patent litigation.
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, distribution or any other use of the invention. An injunction is discretionary but is almost always awarded. There are other remedies available such as destruction of infringing articles. The patentee can also seek an account of profits instead of damages, 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. PATENTS TRAINING MANUAL: 2022
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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 so, you should be aware of the existence in the Patents Act 1977 of the action for groundless threats of infringement under section 70 to 70F. Under those sections, if a person (such as your client through a letter written by you) communicates to another person a ‘threat of infringement proceedings’, a ‘person aggrieved’ by the threats may bring proceedings against the person making them. The sections give rise to a right to a declaration that the threats are unjustified, an injunction against the continuance of the threats, a right to damages and, in the context of the resulting proceedings, orders for costs against the threatening party. There are exceptions to these provisions. For example, although legal representatives used to face liability for unjustified threats, in general they no longer bear the risk for threats issued on the instructions of a client, so long as that client is properly identified at the time of the threat. In addition, giving notice that a patent exists or making enquiries to determine if a patent has been infringed or by whom may
not constitute an actionable threat if the letter doing so is carefully formulated. However, carefully crafted letters which implicitly threaten proceedings whilst purporting not to do so have often been found by the courts to constitute actionable threats. The idea behind the threats provisions is to encourage the patentee only to threaten the manufacturer of a product or user of a process or any importers of infringing products rather that distributors or retailers further down the chain. Without this protection, a patentee could ruin a competitor by threatening its customers to stop dealing with it using the threat of patent litigation. 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.
* This chapter was first written by James Legg (CPA, EPA at Abel + Imray) in 2008. It was revised and updated in 2021 by James St Ville, Henry Edwards and Edmund Eustace (barristers at 8 New Square).
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, issues of claim construction 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, is well worth reading. 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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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 in order to decide infringement, but for what other issue is claim interpretation a first step? 6. What role does the alleged infringement have in claim interpretation? 7. What information external to the patent can be taken into account when interpreting it on a normal construction? 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 Actavis questions? 11. When will the contents of the prosecution file be relevant to questions of construction, equivalence and infringement?
Answers overleaf.
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Suggested chapter 10 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. 10.6.4 and 10.6.5 11. 10.6.6
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11
STRUCTURE OF A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*
Outline This chapter examines the structure of a patent or patent application (drafting of patent applications is discussed in chapter 12). The contents of the main sections of a patent application are discussed along with strategies for reading patent or patent applications when considering a patent document (i) as a piece of prior art and (ii) for infringement.
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 Guidance for the trainer: The trainer should provide examples of differently structured patent applications and discuss how they like to structure a patent application. The trainer should also discuss how they read a patent document (i) as a piece of prior art and (ii) when considering freedom-to-operate (infringement). Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills); Technical (Skill Sets: Analysis and Advice; Validity; Drafting; Prosecution). Time allocated: One half day.
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Learning outcomes By the end of this chapter you will be able to: • Set out a typical structure for a patent application. • Identify the function(s) of each part of a patent application. • Identify the parts of a patent or patent application most likely to be relevant when considering a patent document as a piece of prior art and/or when considering freedom-to-operate (infringement).
11.1 Structure of a patent application A patent application is a legal document that needs to fulfil various requirements in order to be granted as a patent. As well as having claims that are novel and inventive, a patent application must meet the necessary standard in terms of sufficiency, support and clarity while providing basis for possible amendments in accordance with added matter provisions. While all parts of the patent specification can contribute to meeting these criteria some sections may have a greater role to play in respect of certain criteria than others. For example, the detailed description is often of primary importance for sufficiency while the statements of invention may provide basis for future amendments. The claims define the scope of the claimed monopoly but will be interpreted in light of the detailed description and the statements of invention. This chapter will discuss the different sections of a patent application in the order in which they appear in patent applications as typically drafted by UK or European attorneys. Given that the legal requirements vary between jurisdictions and over time it is not surprising that patent applications originating in different countries or from different eras will have different structures and headings, but often the content ends up being quite similar. For
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example, the structure of a patent application drafted by a US attorney may differ from what is set out here but a carefully drafted US-style specification can meet the requirements of both the UK and European patent authorities and vice versa.
11.1.1 The front page If you are looking at a published patent or patent application then the front page will include information about priority dates, publication dates, ownership and so forth. Some of this information can change and therefore needs to be cross checked against the current state of the register (for example the patent may have been assigned to a new entity). 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. For example, the front page of a published international patent application 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 useful first filter for looking through large batches of patent applications.
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A patent application is typically published 18 months after the earliest priority date. This document may be referred to as an A-specification because in many territories the publication number will end with a field including an A (for example A2). A patent will also be published when it is granted. This document may be referred to as a B-specification because the publication number has a field including a B at the end (for example B2). As discussed further below, it is important to make sure you are reviewing the appropriate publication of a patent or patent application, depending on your purpose in reading the document.
11.1.2 The title In the UK, unusually, before a patent application is published certain bibliographic details are available including the applicant’s name, the filing date and the title. As a result, people have tended to restrict the amount of information in the title. One approach 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.
11.1.3 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.
11.1.4 The background / discussion of the prior art 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 the invention which forms the subject of the application. Thus, this section plays a role in setting up the inventive step for the claimed invention. WWW.CIPA.ORG.UK
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During prosecution in the UK or before the EPO this section may be amended to acknowledge prior art references cited during prosecution of the application, typically by repeating a portion of the abstract of the prior art reference in question. As a result, the background section of a granted UK or EP patent may discuss prior art not referenced in the application as filed (and published at 18 months).
11.1.5 Statements of invention
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Having identified problems with the prior art in the preceding section, the statements of invention identify the claimed invention and how it solves those problems. The statements of invention may also provide basis for amendments to the claims.
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Typically, this section will start by reproducing the words of claim 1 although both the EPO and the IPO now accept a short-form statement of invention which simply refers to the independent claims by their claim numbers. Statements like this which mirror the language of the broadest claims are sometimes called consistory clauses. The text of or reference to claim 1 may then be followed by an explanation of how claim 1 solves the problem or overcomes the drawbacks of the prior art.
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In one possible structure, the statement of invention may then continue with a repetition of, and expansion on, the features added by the claims that are dependent on claim 1 and the advantages associated with those features. This structure is then repeated for the other independent claims and any further claims depending thereon. The statements of invention will often use language such as ‘may’ and ‘optionally’ to introduce features which are not present in the independent claims. Typically, the phrase ‘an aspect of the invention’ is used to introduce the text of an independent claim, with a first aspect corresponding to claim 1, a second aspect corresponding to a second independent claim and so on. The statements of invention are not limited to mirroring the features of the claims and may include other features, definitions or clarifications not found in the claims. In this way, the statement of invention may provide a reservoir from which features can be drawn for use in amending the claims to overcome objections that might arise during the life of the patent. PATENTS TRAINING MANUAL: 2022
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This is one approach, but not the only one. Some practitioners may limit the statements of invention to a reproduction of the independent claims and discuss other features and advantages elsewhere in the specification, for example at the beginning of the detailed description. Both (and other) approaches have their merits. You may want to talk to your trainer about their preferred approach in this area or, if you are in private practice, whether your firm has a ‘house’ style.
description of one or more embodiments that provide enough information to allow the skilled reader to put the invention into effect. This is done with reference to the drawings (if present). It is also the detailed description that is compared with the claims for the purposes of support and so the description needs to teach across the scope of the claims. The detailed description will also be used in construing the claim if a court is ever called upon to do so.
11.1.6 The introduction to the drawings
In contrast to the statements of invention which typically start broad and narrow down. E.g., ‘The car may have a wheel. The wheel may have at least one spoke. The wheel may have more than 20 spokes.’ The detailed description is initially very specific and broadens out to discuss variations or alternatives. E.g., ‘Figure 1 shows a car with a wheel having 30 spokes. In other embodiments the wheel may have 20, 40 or 50 spokes. The number of spokes is not of particular importance.’ Sometimes an entire embodiment is described in one go and then a section at the end discusses variations of that embodiment. Another approach (as in the example above) is to describe alternatives as each feature of an example embodiment is introduced. The detailed description will often also discuss advantages of various features, perhaps ones that were not already covered in the statement of invention.
In most technology areas (in the chemical or biochemical areas they may not be necessary) a patent specification will include one or more drawings. The specification will therefore include a short introduction to the drawings followed by a caption describing each of the drawings.
11.1.7 The drawings Where they are included the drawings will typically be located at the beginning (US applications) or end (UK or EP applications) of the patent document. The drawings may show different views of the claimed product or apparatus and/or include flow charts showing the steps of a method. They can be highly detailed technical drawings or very schematic in nature and everything in between. The drawings will be labelled with reference numerals and these reference numerals may then be used to refer to different integers of the product or steps of the method in the detailed description. The drawings may (incorrectly) include information not found elsewhere in the specification but in some jurisdictions there may be limits on what information can be clearly and unambiguously disclosed by a drawing. For example, the EPO may consider that aspects of the shape, size or arrangement of a product shown in a drawing are not clearly and unambiguously disclosed if the drawing in question is highly schematic in nature.
11.1.8 The detailed description The detailed description (sometimes also referred to as the specific description) plays an important role in ensuring the application is sufficient by providing a 212
11.1.9 The claims The claims consist of a series of numbered clauses. The first such clause (claim 1) is an independent claim. Independent claims seek to define the invention in the broadest possible terms. The independent claim is normally followed by one or more dependent claims setting out optional additional features and indicating their dependency using terms such as ‘An apparatus as claimed in claim 1 further including…’. A claim set may include more than one independent claim. For the purposes of validity, each independent claim alone is considered against the prior art. If, for example, a single prior art instance includes all of the features of an independent claim, then it is not novel. If a patent includes an independent claim that is not novel, then it is invalid. If there are dependent
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claims or other independent claims which include additional features not found in the prior art then these do not render the patent valid unless they are expressly incorporated by amendment into the claim in question, that is, by rewriting the independent claim to include those additional features. Of course, each independent claim must also be inventive if the patent is to be valid. For the purposes of infringement, if a product or process includes all of the features of an independent claim (claim 1 or any other independent claim) then it infringes the claim. It is not necessary for a product or process to fall within the scope of all the independent claims. If a product or process also includes features found in the dependent claims then this is not relevant, although this will help identify possible amendments should the independent claim be found to be invalid. In the not too distant past, UK practice permitted a form of claim known as an ‘omnibus claim’ which often took the form ‘An apparatus and method substantially as described herein with reference to the drawings’. Such claims are not permitted in many other territories and do not meet the requirements of the EPC or the PCT. Omnibus claims have now been effectively abolished in the UK. Where they remain in pending applications they must be deleted before the application is granted (although their presence in a granted patent is not a ground for revocation).
11.1.10 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 usually just provides a brief outline of the invention as summarily as possible. In many cases an independent claim is simply reproduced in a series of short sentences as the abstract. Patent searching often involves carrying out a keyword search on the abstracts of patents in a patent database. Accordingly the wording of the abstract may impact on the likelihood of a third party finding the application in a patent database.
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11.2 Reading patent documents The two main reasons for reading a patent document (a patent or patent application) are (i) because it has been cited as prior art or (ii) to work out what it covers, for example, for the purposes of litigation, an opinion or a due diligence exercise.
11.2.1 Reading patent documents as prior art If a patent document has been cited against an application as prior art a first step is to use the bibliographic information to check that it does, in fact, form part of the prior art (and if so, to what extent – is it full prior art or novelty only?). You then need to bear in mind that you are not reading the patent document as a patent or patent application but merely as a publication which happens to have a fairly unusual introduction and a strange set of clauses at the end. 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. 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 also need to consider whether there is an earlier A-specification because information may have been excised from the B-specification during prosecution. When reading a patent document as prior art, the scope of the claims is not the focus, rather the question is what the document as a whole discloses. The principal teaching will often be in the detailed 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 document can also be important, however. As mentioned above, the detailed PATENTS TRAINING MANUAL: 2022
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description may include other implementations or variants of 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 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 (incorrectly) put information into the abstract that cannot be found anywhere else in the document. Or, because of the lack of context it may be possible to (mis)interpret the abstract as disclosing something that is not disclosed in the rest of 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 person and so they 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 or which is presented in a slightly different way to the rest of the document.
11.2.2 Reading patent documents for infringement 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, you need to 214
Chapter review This chapter has considered the structure of a patent application. It also discusses how the reasons for reading a document may impact on how you read it. (Drafting of patent applications is discussed in chapter 12.)
make sure that you are looking at the claims of the patent and not the application as published. Thirdly, 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. Fourthly, 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. Where the patent contains more than one independent claim it is important to check the infringement position with respect to each of those claims. 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. In general, the claims should be construed so as to cover the embodiments in the detailed description. A careful consideration of the detailed description should therefore be undertaken to determine whether a particular term may be broader than its usual meaning in view of the way in which it is used in relation to features of the embodiment.
11.2.3 How to read a patent document 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. A better understanding of the document is usually
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achieved by reading ‘actively’. This means doing something to engage with the content of the document – for example highlighting or annotating the document or writing notes. Experiment to find out what works well for you. Also consider how to efficiently and effectively capture the understanding you have gained from reading the document so as to reduce the need for future rereading (and the cost thereof for the client). Carrying out keyword searching on full-text versions of patent documents can be a useful technique to double-check that your reading of the document has not overlooked anything. However, such searching is not a substitute for reading and understanding the document fully, not least because the author may have used a different term for the subject matter of interest so that a keyword search misses it, or a given passage may have a very different meaning when read in the context of the patent application as a whole. 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 whomever 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. 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.
* This chapter was first written in 2008 by Gwilym Roberts (Kilburn & Strode). It was revised and updated by Emily Dodgson (Abel + Imray) in 2021.
Further study When reviewing patent documents in the course of your work take a few minutes to consider their structure and how it may impact on the readability of the document, the ease of drafting of the document and the ability of the document to fulfil the legal necessary requirements.
Test your knowledge 1. List the main parts of a typical (mechanical) patent application and their purpose. 2. Link the legal requirements that a patent application must meet with the parts of the patent application from question 1 that satisfy them. 3. When you are reading a patent as prior art, what is the relevance of the claims? 4. When you are reading a patent as a potential infringement risk, what is the relevance of the detailed description? Answers overleaf.
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Suggested chapter 11 answers and comments 1. See 11.1 3. See 11.1 4. See 11.2.1 5. See 11.2.3
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CHAPTER 11: STRUCTURE OF A PATENT APPLICATION
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DRAFTING A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*
Outline Drafting a patent application is one of the most difficult skills for a patent attorney to learn but one of the most important skills to possess. This chapter looks at the process of writing a patent application and discusses some different approaches for drafting independent claims as well as practical aspects such as dealing with the inventor. The chapter is divided into three main sections: getting the information from the inventor, drafting the application and getting the inventor to review it.
Learning plan Prerequisites: Chapters 6, 7, 8 and 11. Guidance for the trainer: The trainer should provide the trainee with plenty of drafting practice and feedback. The trainer should discuss how they go about preparing a patent specification, whether they have particular preferences regarding the structure of the application and any aspects of drafting specific to the technology field in which they work. Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Drafting; Validity; Prosecution) Time allocated: Two days.
Learning outcomes By the end of this chapter, you will be able to approach drafting a patent application in a structured manner and to make a first attempt at a complete draft including a set of claims. It is to be expected that a substantial amount of practice will be required before you are able to draft a complete specification in a competent manner.
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12.1 Obtaining the information There are many ways in which you will acquire information from the inventors or your contact within the client company, such as an initial writeup, an email with a brief summary or a phone call. In most cases, it will be necessary to follow this up with the inventor, ideally in a telephone call, video conference or face-to-face meeting. Whichever form the interaction with the inventor takes it is important to be prepared and to ask the right questions in order to maximise the transfer of information. For the sake of efficiency, the aim should be to obtain all the information necessary to prepare the draft in one go, although in practice some follow-up questions will often occur during drafting. Starting the conversation
Below are topics forming a checklist of the kind of questions which you may consider asking. However, it is often beneficial to start a discussion with an inventor with some broad and open-ended questions. For example, ‘tell me about your invention’, ‘can you talk me through what you have come up with’, etc. These questions give the inventor a chance to get across what they consider important and you will often find they cover a lot of the things you need to know for the draft. You may also find out something that you would have overlooked with more focused ‘closed’ questions of the type listed below. You can always use more focused questioning later in the conversation to cover anything that might have been omitted by the inventor (this can also be easier once they have had their chance to have a say). 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). Ownership/inventorship
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,
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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 or prior to a collaboration? For less experienced clients you will need 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 their business. For more sophisticated clients you may want to understand how the proposed application is viewed (e.g. is it a speculative application, a routine application, a really important application?) and how it fits into their patent strategy (e.g. to get as many rights as possible, to target a particular client?, to protect their IP ahead of a collaboration?). For larger clients some of these may be questions for their IP department rather than the inventor. 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 (i.e. how can we make it difficult for competitors to design around the patent?). Obtaining all the details needed for the detailed description
In addition to the distinguishing features, what, if any, other information is needed to make the improvement work – which of these features are
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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 cannot add matter after filing, as explored in 8.6.) If there are one or more embodiments, which one is the one considered to be the preferred, best one? Which embodiment will actually be used? Is the client able to provide suitable drawings for use in the patent specification? Is there anything that should not be disclosed in the detailed description (for example that is confidential knowhow or which may form the basis of a later patent application)? 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 Last but not least
Remember to avoid jargon – yours and theirs – check the client/inventor understands what you need to prepare the draft. It is also useful to agree the likely scope of protection during the course of the conversation and, in particular, to make sure the client/inventor understands if the scope of protection is likely to be significantly narrower than they perhaps initially envisaged or if there are any particular issues that will need to be overcome.
12.2 Starting the draft Once you have collected the necessary information it can be helpful to set aside a chunk of time so as to be able to work on the draft in a concentrated fashion. The task of drafting a patent application can be approached in various ways. Some attorneys prefer to start by drafting a detailed description, as this may help to understand the invention and its background and then do the claims and statements of invention. Others prefer starting with the claims so as to establish a consistent terminology, before moving onto the background (so as to clarify the inventive step) and then, once the core aspects of the invention are clear, moving on to the detailed description. However you go about it, especially while you are less experienced, you can expect drafting WWW.CIPA.ORG.UK
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to be a somewhat iterative process. Of course, other approaches are available 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. The following sections will discuss the drafting of the claims first, before moving on to the other elements of the specification.
12.3 Drafting the claims The claims define the scope of the monopoly which the applicant seeks, and it is the claims that are examined for novelty and inventive step. As we have seen in the chapter 11, there are two types of claims: independent claims giving 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 to some of the issues which should be considered when drafting the claims. Drafting claims is about balancing two opposing drivers. On the one hand, the claim must be novel and define at least one feature which can support an inventive step argument – this points to a narrow claim. On the other hand, the client will generally want to obtain a broad scope of protection so as to increase the likelihood that a competitor’s products are covered, to make it difficult to design around the claims and to provide less room for argument in infringement proceedings – this points to a broader claim. As a default position, when first drafting the claims it may be prudent to err on the side of breadth. It will be more difficult to broaden a narrow claim during prosecution than to narrow a claim which turns out to be overly broad (provided good fallback positions are provided in the rest of the specification). 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. PATENTS TRAINING MANUAL: 2022
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12.3.1 Issues to consider when drafting claims This section briefly discusses some of the key issues that should be borne in mind when drafting the claims of an application. These include ‘the extent of protection’ and ‘the scope of the monopoly’ (both which are discussed in chapter 10), and the clarity of the claims. 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. 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 Catnic1 case where a window lintel (the beam that goes in a wall above a window to stop it collapsing) had, according to the claim, a ‘vertical member’. The alleged infringement had a slightly notvertical member but after several years of litigation was held to infringe. In recent years, Activis v Lilly2 has introduced a doctrine of equivalents that means a claim can be infringed by an act that does not fall within the literal wording of the claim on its proper interpretation. These doctrines are discussed elsewhere in this manual (chapters 4 and 10) but when it comes to drafting, other than describing the
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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 and clearly 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. The scope of the monopoly
We can have far more influence when we look at the ‘scope of the monopoly’. 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 for 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 that encompasses the invention, i.e. the spark plug, as a basis for a claim as both the engine and the vehicle will necessarily infringe this. You can then have extra claims for ‘an engine including the spark plug’, ‘a vehicle including the engine’ and so forth. Where the invention is embodied in a product you should also consider whether there is a manufacturing process or means of using the product that could be claimed. Stepping back and thinking about the scope of the monopoly can often mean that you add quite a few claims that you might not have thought of otherwise. If you have started by claiming a process you should consider adding product claims. Where the invention is a process, various actions in connection with a ‘product obtained directly by means of that process’ may also fall within the scope of the monopoly and so consideration should be given to which ‘process’ results directly in the product that is of commercial value. The importance of the scope of the monopoly (and the value of dependent claims!) is illustrated by Pioneer v Warner3 which was a dispute relating to
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a patent for the manufacture of master disks. The master disks were used in the mass production of CDs and did not have the capability to play music. The patent covered the process of making the master disks but not the process of producing the CDs from the master disks. Pioneer initiated an infringement lawsuit against Warner who imported CDs into the UK that were made from master disks in facilities outside of the UK. The Court of Appeal held that the finished CDs were materially different from the master disks. Thus, importing the CDs by Warner was not an infringement of Pioneer’s patent. The importance of a broad independent claim was discussed above and, given that the invention related to the master disc, it would appear that including the feature of ‘and then making a CD using the master disc’ was an unnecessary limitation in the independent claim. However, a dependent claim to that feature may have allowed Pioneer to prevent, or obtain royalties in relation to, the manufacture/ import of CD’s made using the inventive master disc. Sometimes the novel and inventive features of a component can only be described clearly with reference to other elements of the system (for example in the case of the spark plug, with reference to elements of the engine perhaps). In that case you may need to claim the component together with other interacting features but with the risk that a third party just selling the component does not ‘directly’ infringe. Contributory infringement may be useful here – if you do claim a larger system 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. Clarity
Clarity is an aspect of drafting that most trainee patent attorneys find difficult. The difficulty lies in knowing how to get the novel features into an independent claim that is clear while not being unduly limiting. For example, what else is needed in the claim in addition to the novel features and how should the novel features be described in the claim? This is generally governed by the clarity requirements.
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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 should as far as possible relate to the features that give rise to a result rather than the result itself (sometimes referred to as ‘the result to be achieved’). This makes sense if you consider patentability. If a claim is directed merely to a result then often this is just a desirable result, and even if that desirable result has not been achieved before the act of identifying it is likely to be obvious. What is not obvious is how that desirable result is achieved, and the claims need to reflect that by indicating the technical features that give rise to the advantage. As a result, if the invention is said to be a flying machine, you need to ask the inventor how flight is achieved. If the inventor then explains that the machine uses a 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) desire – everyone would like to fly. The second aspect of the clarity requirement is that the boundaries of the claim should make sense to third parties. It should not have relative terms such as ‘vertical’ or ‘large’ (although corresponding pairs of such terms can sometimes be useful, e.g. smaller and larger, etc) 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 they are 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. You should also aim to claim apparatus ‘on the shelf’ rather than in use. Typically, an apparatus will not be switched on when it is made or sold so PATENTS TRAINING MANUAL: 2022
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you should draft your claim such that something lying stone dead on the floor infringes. Going back to the helicopter invention, 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: refer to it as ‘a flying machine having a rotatable rotor’ instead. A useful rule of thumb is to try and avoid using words ending in ‘ing’ in a product claim (words ending ‘able’ may be a good alternative). 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.
12.3.2 First independent claim This section describes two example approaches for arriving at an independent claim but there are more than two ways to do this and you should experiment to see what works best for you and the technical field in which you work. The skill of claim drafting can only be obtained by repeated practice involving both input from your trainer and by reflecting carefully on the claims you have drafted. Learning to criticise your own claim is one of the hardest claim drafting skills to develop but in many ways one of the most important. Even when you are qualified it remains good practice to have a second person review your claims before filing where possible. Approach 1 – Building Up
Start by identifying the inventive concept. Try not to dive straight into claim language but instead think about how you would describe the invention in ‘normal’ language. A starting point is to think about why the client wants to patent this invention. What is the advantage that will be of value to your client and/or their customers? Once you have some idea of the advantage then think about which feature or combination of features provide that advantage. For example, your thought process might go: It’s a better steam iron. Why is it better? Because it glides more easily over the clothing to be ironed. Why does it glide more easily? Because it has a coating of a ceramic material ‘A2’ on the baseplate. Is A2 the only material that would work? A1 or A3 or A4 would work. So a ceramic material of Type A then? But 222
can we go broader – what about a coating of ceramic material in general? No - steam irons with a coating of ceramic material B1 are known. So the inventive concept could be: A stream iron with a coating of ceramic material of Type A on the baseplate? But to achieve the benefit of improved gliding the coating will need to be in contact with the clothes that are being ironed… Alright, so the inventive concept is: A stream iron with a coating of ceramic material of Type A on the ironing side of the baseplate. Choose the introductory clause of the claim. What are you going to call the thing you are claiming? A steam iron? An apparatus for ironing clothes? A steam iron comprising… Put in the novel feature. A steam iron comprising… a coating of ceramic material of type A on the ironing side of the baseplate. Put in the supporting features, i.e. those features that you need in order to describe the novel feature or support inventive step. In the present example, there probably are not many to add if we think that what we mean by the ‘ironing side’ is clear. If not, you could include some supporting features to define this more clearly – for example, something like a main body, the baseplate being mounted on the main body and having an ironing side on the opposite side of the baseplate to the main body. Erring on the side of broader rather than narrower, you might decide to leave that out of the claim but have it in the dependent claims or statements of invention if you need to clarify this term later. Once you have all the features you need in the claim, refine the structure and language. For example, is ‘ironing side’ the best term – perhaps ‘ironing face’ might be clearer. It may also be clearer if we introduce the baseplate and ironing face before the coating. A steam iron comprising a baseplate having an ironing face and a coating of ceramic material of type A on the ironing face.
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Then, do a cross check for the claim: • Is it novel over all prior art? • Does the inventive step argument work? • Does it work as a claim? For example, if any part recited in the claim appears to float in midair 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. • Are there any unnecessary features? For example, is there anything mentioned only once and, if so, does it need to be there (if it is the novel feature then yes, but otherwise maybe not)? • Check the specific terms. Is anything too narrow or ambiguous? Could I read this in a different way? What does each term mean? • Am I claiming a result to be achieved? • Are there any relative terms in the claim? • Does it cover what is made and what is sold? For a product claim, does it infringe ‘on the shelf’? For a process claim, what is the product that is ‘obtained directly’ by the process? • Who infringes this claim? A claim that is infringed by a manufacturer or importer of a product is likely to be preferable in terms of enforcement to one that is infringed by an end user. • If you have changed anything, repeat. If possible, put it down and walk away. If time allows it is good practice to give yourself the opportunity to look at a claim again with fresh eyes, for example the next day, before you send it to a client. Finally, learn when to stop. The claims are an important part of the specification and should be given careful consideration, but at some point you have to decide that they done – this is yet another important skill to learn. Approach 2 – Top Down
Another way to approach tackling an independent claim 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 WWW.CIPA.ORG.UK
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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. Once you have reduced the number of features in your claim 1 in this way you would then carry out a cross check as discussed above. For the steam iron example discussed above this approach might start with a first attempt: A steam iron with a baseplate coated on the ironing side with an intermediate layer of material C and then a layer of ceramic material A2. Then delete non-essential features. For example, is the layer of material C essential, or just preferable? If it is not essential, then it can be deleted (and reserved for a dependent claim): A steam iron with a baseplate coated on the ironing side with an intermediate layer of material C and then a layer of ceramic material A2. Then consider broadening specific terms. For example, whether the invention is limited to material A2, or if something broader is appropriate: A steam iron with a baseplate coated on the ironing side with an intermediate layer of material C and then a layer of ceramic material of Type A. Then refine the structure and language as discussed above before moving on to the cross-check.
12.3.3 Other independent claims 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 PATENTS TRAINING MANUAL: 2022
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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…’). Including both a method claim and an apparatus claim may also give you the opportunity to use slightly different terminology (while preserving unity of invention), thereby potentially increasing the scope of protection. For computer-implemented inventions you would consider adding independent claims to a computer program on its own and other particular claim constructs specific to that field. Similarly, special claim constructs apply in the fields of chemistry, pharmacy and biotechnology. You should consult your trainer about the particular types of claim constructs that apply in the field in which you work. Further independent claims may also be useful for licensing. If an inventive spark plug can be used in both a car and an aircraft engine, you could claim 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 European Patent Office (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 to say a single method claim, a single apparatus claim. This does not mean you have to satisfy this rule on filing and there may be very good reasons to have lots of independent claims. However, you will need to explain the likely consequences of such an approach to your client. Any claim including all features of a previous claim is considered by the EPO to be a dependent claim, so 224
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. If the US is of interest to your client, then the prohibition on multiply dependent claims there should be considered when formulating your claim set.
12.3.4 Dependent claims 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 amendment is also possible based on the disclosure in the statements of invention and/or 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 (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 fully connected claims for use in a priority application, 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
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without giving rise to a contradiction. Ensuring that you have a fully 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 example as claimed in any preceding claim, in which…’ A good set of dependent claims can facilitate prosecution and strengthen the resulting patent. In the UK and Europe, amendments during prosecution can be based on any part of the specification as filed (the abstract does not form part of the specification as filed). However, the features of a dependent claim are clearly disclosed in combination with the claims on which they depend and therefore an amendment that incorporates a dependent claim into claim 1 will be difficult for the patent office or any third party to challenge on the grounds of added matter. In some jurisdictions it is very difficult or impossible to amend to anything other than a dependent claim in post-grant proceedings. In opposition proceedings at the EPO it is very difficult or impossible to challenge the admissibility of an amendment that simply incorporates the text of a dependent claim into an independent claim. 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. WWW.CIPA.ORG.UK
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For all of these reasons, it is vital to pay as much attention to the dependent claims 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.
12.3.5 Iteration The steps described above will likely involve some iteration – it is not unusual that in formulating the dependent claims you realise some change to the independent claims is required. Likewise, drafting a method claim may bring to light issues that impact on the apparatus claim.
12.4 Drafting the rest of the specification We have already discussed, in chapter 11, what the elements of the specification are and their respective functions
12.4.1 Field of the invention The field of the invention 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’ and then repeat the introductory clause of the independent claim(s). It is also worth considering what the field might imply for the definition of the skilled person and/or for selection of suitable expert witnesses in litigation.
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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. One approach is to identify the piece of prior art from which the inventor has actually started developing the invention. Another approach is to identify the piece of prior art which you consider to be the closest. Whichever approach is taken, this section typically says something about what the prior art discloses and then discusses the drawbacks of the prior art which, happily, will then turn out to be solved by the invention. It is 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. Care should also be taken to avoid inadvertently admitting more as prior art than is actually the case. For that reason, some attorneys will adopt an approach of quoting literally from the prior art when discussing what the prior art discloses.
12.4.3 Statement of invention 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 act as a reservoir for future amendment. Typically, this section will start by reproducing the words of claim 1. Although both the EPO and the IPO now accept a short form statement of invention which simply refers to the independent claims by their claim numbers. (For example, ‘In one aspect of the invention there is provided a stream iron having the features of claim 1’.) Another approach is to copy the text of claim 1 but to make all the features thereof optional. This may give you basis for deleting a feature from claim 1 in due course under the EPO approach to added mater (of course this is a situation you should seek to avoid by carefully drafting your claim in the first place but some insurance in this regard may nonetheless come in useful). The text of or reference to claim 1 can then be followed by an explanation of how claim 1 solves the problem or overcomes the drawbacks of the prior art. To provide basis for future possible amendments and inventive step arguments the statement of invention 226
will usually then continue with a repetition of, and expansion on, the features added by the claims that are dependent on claim 1. Again this may be structured in two parts: an introduction of a feature or features and then a discussion of the advantages arising from said feature(s). One school of thought is that if a feature or features do not give rise to an advantage then there is no point including them in the statement of invention. Nevertheless, it can often be useful to include definitions, clarifications or more detail in this section that while not giving rise directly to an advantage could be used to distinguish from an accidental anticipation, an over-broad construction adopted by an examiner or an objection that a particular term or phrase lacks clarity. This structure can then be repeated for the other independent claims and any further claims depending thereon. Typically, the phrase ‘an aspect of the invention’ is used to introduce the text of an independent claim, with a first aspect corresponding to claim 1, a second aspect corresponding to a second independent claim and so on. It is also common to include wording to the effect that features described with reference to one aspect (e.g. the method) may also be used in connection with another aspect (e.g. the apparatus) and vice versa. At the EPO, the approach to added matter is relatively strict and it may be difficult to isolate a feature from the statements of invention that is only disclosed in combination with other features. Accordingly, each feature that you may want to add to a claim should be disclosed in isolation. One way to achieve this is to try to introduce only one new feature per sentence and to make each feature optional using language such as ‘it may be that’, ‘the x may have a y’, ‘for example’, ‘optionally’. Historically, phrases such as ‘preferably’ or ‘advantageously’ were used in this fashion also, but in recent years more neutral language has come to be preferred. If the US is likely to be of interest then care should be taken when using the ‘means plus function’ limitation. In brief, in the US, phrases such as ‘a means for fastening’ may be construed as covering only those example ‘means’ disclosed in the application. So, if your claim said ‘a means
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for fastening’ and your statements of invention and detailed description only said ‘the means for fastening may be a screw’, your claim could effectively end up limited to screws. For this reason, lists of alternatives (sometimes referred to as laundry lists) may be included – ‘the means for fastening may be a screw, a nut, an adhesive layer, a rivet....’.
12.4.4 Brief description of the drawings 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’). The brief description of the drawings should also 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 they are looking for.
12.4.5 Drawings Often, particularly in mechanical cases, high-quality and clear drawings can be obtained from the client for example from CAD (computer-aided design) models. However, it is important to ensure that if such drawings are used they do not give away valuable know-how and that the publication of the drawings 18 months from the filing date will not interfere with any plans for seeking design protection later on. Further, such drawings often contain an overabundance of information much of which may be of little relevance to the invention and which may obscure key features and unnecessarily limit an embodiment. Thus, it may sometimes be preferable to use more schematic drawings, which can be tailored to facilitate a clear and concise description of the invention while protecting know-how and omitting aesthetic features. However you obtain the drawings, it is good practice to ensure that the drawings show sufficient detail such that each feature described in the description can be discerned in the drawings (this is not always possible in practice WWW.CIPA.ORG.UK
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but you should try and get as close as possible). While the text of the detailed description should describe the drawings sufficiently that they are not required in order to understand the invention, a picture can 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. A further important consideration, with respect to the US, is to ensure that each integer claimed is depicted in the drawings (this is not an absolute legal requirement but can help to avoid objections later on). 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. The drawings will also include reference numerals that can be used to refer to a particular integer in the detailed description. In principal, each feature of the drawings which is described in the detailed description should have a reference numeral and, again, there are a variety of approaches to this. One option is to list all the reference numerals you intend to use with the meaning for each of them before doing the specific description. Another option is to assign reference numerals as you go along when writing the detailed description. 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. Some attorneys will use the same reference numerals to indicate the same things in different embodiments – for example numbering the baseplate of the iron ‘10’ in both the first and second embodiments. Other attorneys prefer to increment reference numerals between embodiments – for example numbering the baseplate of the iron ‘10’ in the first embodiment PATENTS TRAINING MANUAL: 2022
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and ‘110’ in the second embodiment. 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. Again, there is no one right way to do this and the best way forward may vary depending on the particular circumstances of a case. There are a number of formal issues which must be considered in relation to the drawings, for example the dimensions of the margins, font size and page numbering which will not be addressed any further here.
12.4.6 Detailed description After all these introductory sections have been completed, the actual description of one or more embodiments of the invention follows. As suggested by its name, this description is detailed (or specific!). It stands in place of an actual model of the invention. While you will want to mention possible variants you do not want to end up repeating the statements of invention in the detailed description. Likewise, it is unlikely to be effective to describe the whole invention in claim-type language, instead describe the specific arrangement shown in the drawings and perhaps use this to link the claim language to specific examples (‘Fig. 1 shows a layer 12 of material “A2” of the baseplate 6. Thus in Fig. 1 the ceramic material of type A is A2, but in other embodiments it may be A1, A3 or A4’). The description is often easier to write (and read!) if you structure the description and order the figures so as to introduce the reader to the embodiments in a logical fashion. For mechanical inventions, a useful technique is to describe the structure of the apparatus first and only once that has been described to talk about the function. This allows you to describe the spatial and physical arrangement (as shown in the drawings), before moving on to the functional arrangement. This may result in something like the following, with the first paragraph describing the structure and the second the function:
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Fig. 1 shows a steam iron 1 having a main body 2 and a handle 4 connected at one end to the main body 2. A steam tank 5 is mounted within the main body 2. A baseplate 6 is mounted on the opposite side of the main body 2 to the handle 4. Steam channels 8 extend from water tank 5 to apertures 10 in baseplate 6. A heating element 12 extends into the steam tank 5… In use, water in steam tank 5 is heated by heating element 12 to produce steam which passes through steam channels 8 to apertures 10. When the baseplate 6 is passed over a piece of fabric (not shown) the steam released from apertures 10 facilitates the removal of creases from the fabric… If well written, the structural description should enable the arrangement of the apparatus to be reproduced without reference to the drawings. A useful check is therefore to try and draw the apparatus following only the description given. This should help you to spot if something is floating in mid-air, in which case you may need to describe its relative position in more detail. 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. The description should tell the skilled person how to perform the invention. Therefore, as you prepare the description, make sure that you understand from the text you have just written how the invention can be put into practice. If you believe that there is some information missing you may need to discuss this 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. For certain technologies the description may need to do more than just describe how the invention works: it may also need to demonstrate that the invention
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Chapter review This chapter has looked into the practical aspects of drafting a patent application including some example approaches to drafting a specification. It must be emphasised, however, that everybody is likely to develop their own approach based on experience and the technical field in which they work.
has industrial application and/or provides the claimed advantage, for example by describing experimental results. 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’ manner 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. In practice this means describing advantages using phrases such as ‘may reduce the size of the widget’ rather than ‘minimises the size of the widget’, or by referring to ‘technical effects’ afforded by a feature. Another phrase you may see used is ‘without wishing to be bound by theory, it is believed that’. This is used to describe how something works without opening the patent to an attack if it later turns out that it doesn’t quite work in that way.
12.4.7 Abstract The abstract is 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 narrower than the independent claims. It can help to use language equivalent or close to that used in the independent claims. The abstract should not contain any information that is not present elsewhere in the application. WWW.CIPA.ORG.UK
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12.5 Review of the application by the inventor Once a first draft of the application is prepared, it will need to be reviewed by the inventors (and possibly others in the client organisation). As well as giving the inventor the draft, you will also need to provide an appropriate explanation of what they need to do. If a reviewer has little or no experience of the patent system, it is important to explain clearly the function of each part of the specification and 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 should be explained to the inventor and you would ask the inventor to check that the independent claims (i) differ in at least some respect from the prior art of which the inventor is aware (i.e. are novel) and (ii) are not easy to work around (e.g. do not contain inessential features). You might also ask them to confirm that the most commercially valuable fallback positions are covered by the dependent claims. In addition to these general points, it is likely that there will be many issues which need to be highlighted and discussed relating to the specific draft at hand. For example, quite often 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 PATENTS TRAINING MANUAL: 2022
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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. You will also want to consider what is likely to be the most effective and efficient way to receive the inventor’s feedback. For an experienced inventor who you know will read the draft carefully, an annotated Word document may be sufficient. For a new inventor it can often be useful to have a telephone call or meeting to run through the specification so you can answer any questions and check that the key points have been understood. It is also good practice when sending off the first draft to 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. This may involve confirming that your understanding of ownership and inventorship is correct. The chapters on patent prosecution (chapter 17) and filing strategies and systems (chapters 13 to 16) will help you to determine what is needed.
Notes and references Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183, HL 2 Eli Lilly and Company v Actavis UK Limited and others [2017] UKSC 48 3. Pioneer Electronics Capital Inc. (Pioneer) v Warner Music Manufacturing Europe 1
GmbH (Warner), [1997] RPC 757
Lastly you will want to make clear to the inventor if there is a filing deadline that must be met and to set a deadline for the inventor to reply. You may also want to remind the inventor of the importance of not publicly disclosing the invention until the application has been filed.
* This chapter was first written in 2008 by Alexander Korenberg (Kilburn & Strode). It was revised and updated by Emily Dodgson (Abel + Imray) in 2021.
Further study Mastering the art of drafting requires practice over and over again, so the best further study is to actually draft patent applications under your trainer’s supervision. Past papers for the UK drafting exam also make for good practice. At the time of drafting, past papers for 1992 onwards were available on the PEB website and so a fair number of these can be used for drafting practice while still leaving plenty of papers for use in the run up to the exam (you may prefer to use the older papers for drafting practice). Again, discussing your attempts and the examiner’s comments with your trainer can be very useful. For further reading the following are available: • 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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Test your knowledge 1. Sections 12.1 and 12.3.2 and 12.3.3 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 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/legalprofessionals/eqe-compendium. html). Read through the paper (do not 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.
Answers overleaf.
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Suggested chapter 12 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. 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 to a steam iron reciting and including the shoe as claimed would be appropriate. An important question to consider would be whether the invention can be defined in relation to the shoe only or whether other features found 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 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.
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13
FILING STRATEGIES: AN INTRODUCTION By Gwilym Roberts (CPA, EPA), Kilburn & Strode
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.
Guidance for the trainer: Discuss with your trainee some examples of filing scenarios that you have encountered, and how you 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. Finally discuss cases where there are inventors from more than one country. Syllabus link: U K Exams: FC1, FC2, FC3, FD1, FD2 EQEs: Paper D
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IPReg Competency Framework link: Technical (Skill Sets: Analysis and Advice, Drafting, Validity,) Time allocated: One day.
Learning outcomes By the end of this chapter you will be able to advise the client/business: • • • •
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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. How to protect a string of related inventions which develop over time.
13.1 Legal background
13.1.1 Novelty
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 (see chapters 6 and 7). 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 were developed over the last century 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.
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, we also discuss 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
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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 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 WWW.CIPA.ORG.UK
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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 (or someone instructing you)! 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 PATENTS TRAINING MANUAL: 2022
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patent, but until 1978 there was little other option. Many changes took place that year and 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 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. 236
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 are 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 they 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 phase.
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), a Gulf State (GCC) Patent Office 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
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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 they want 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 the end loading cost can be high and this needs to be understood by the client or business.
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!
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.
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 may be 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.
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 oneyear 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.
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 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 WWW.CIPA.ORG.UK
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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 PATENTS TRAINING MANUAL: 2022
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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 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.
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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 will 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 interest, 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
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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.
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 WWW.CIPA.ORG.UK
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that encompassed at the date of grant. In other words, if an infringer knows that they are 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 divisional applications to other unclaimed subject matter in the application. 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. Another important timing issue is how quickly grant of a patent is desired. Where rapid competitor uptake is expected, various filing strategies can be adopted to accelerate grant; this will depend on the mechanisms available for speedy processing in the patent offices of interest. But as discussed elsewhere in this chapter, there are advantages in keeping an application pending and the options open on claim amendment, or divisional (or similar) filings. A simple trick is to go for quick grant but ensure that a divisional remains pending thereafter; this can be very effective if the cost is acceptable. The Patent Prosecution Highway (PPH) is discussed elsewhere in this book (see chapter 14), but you should discuss with your trainer their experience of using it to accelerate or simplify prosecution in one or more PATENTS TRAINING MANUAL: 2022
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territories. In short, it permits recognition before one office of results from another office; in practice in some territories it can be more useful for acceleration purposes whereas in others genuine weight will be attached to a positive finding elsewhere. Other acceleration mechanisms are available dependent on the office you are dealing with such as the PACE programme at the EPO and the ‘Green Channel’ at the IPO – again your trainer may have some experience of these different approaches. 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. 240
One point of discussion with the client is whether the patent system is the right route at all. There is no compunction to file an application and of course it does not provide a right to sell a product, just to block third parties. For inventions that are difficult to reverse engineer then secrecy could be a very powerful alternative route. The benefit is that there will never be a patent publication providing enabling information. On the other hand, if the secret is cracked (either by reverse engineering or simple information leakage, for example through loss of key employees) then it is, in practice irretrievable; it can also be more difficult to define and transact in trade secrets than, for example, to sell or license a patent. Your trainer will have a view on the topic! Some businesses don’t want exclusivity but do want freedom to operate for certain innovations and as a result publish those innovations to prevent third parties arriving at, and patenting them later. The approach has its limitations, and it would be a good exercise for you to consider the pros and cons of this approach.
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 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
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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. 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. As investigated in more detail in chapters 14 and 15 the crossover of priority and ownership/ inventorship issues can be extremely vexed; suffice it to say here that if there have been any changes over the priority year, you need to tread very carefully.
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 entry 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. WWW.CIPA.ORG.UK
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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. 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 PATENTS TRAINING MANUAL: 2022
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Work-based examples It worth considering possible scenarios to identify various filing strategies.
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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 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 subject matter, 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 issues very rapid extended search reports for initial filings which can give an early idea of patentability.
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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 thirdparty 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 worldwide. 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
Work-based examples (continued) Scenario 6: Early grant is required.
For example, your client may move in a Fast Moving Consumer Goods (FMCG) field and fear that as soon as their product comes out 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 maintainable 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. However, 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. The inventors need to understand the limitations of this approach. If your employee moves to a competitor and spills the beans, while you may be able to act against the ex-employee, there is little you can do to prevent the competition from using the information.
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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.
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.
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.
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. The priority year is a particularly fraught, and short period. If the applicant intends to continue development work over the year with the intent of adding information at the priority-claiming point, then if that is the only concern the later the first application is filed, the better.
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 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 244
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.
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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.
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, WWW.CIPA.ORG.UK
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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 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 (but patentable) 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 or platform patent, 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 PATENTS TRAINING MANUAL: 2022
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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 DysonTM. The original broad patent expired several 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 claims. 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 (see chapters 14 and 15). 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. 246
Further study Talk to your trainer and colleagues about different approaches they have adopted and the requirements that drove them.
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.
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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 in the patent application process? 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?
Answers overleaf.
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Suggested chapter 13 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
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14
FILING STRATEGIES (UK) By Daniel Wolstenholme (EPA, CPA), Marks & Clerk*
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 . Since 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 (9th Edition + 2nd cumulative supplement) and Patents Rules 2007. Legal documents: Patents forms. Guidance for the trainer: Ask your trainee to prepare a timeline setting out all of the stages and deadlines of a direct UK patent application. Discuss with your trainee how alternative routes to protection in the UK interact with the UK process.
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Discuss with your trainee 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. Have you been been to a hearing at the IPO? If so, tell your trainee the reasons. 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 trainee 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 IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution). Time allocated: One day.
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.
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14.1 General timeline for a UK patent application An application for a UK patent should be filed at the UK Intellectual Property Office (IPO). This will most commonly be done online through the IPO website, although can also be done by fax or by post. 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. Since most applications are filed digitally online, a filing receipt is issued straight away detailing the filing date and application number. Shortly thereafter, the Comptroller will notify the applicant of any acts that need to be completed in the future of the application. After a period of around a month, the applicant’s name, the title of the invention, application number and filing date will be published in the Patents and Designs Journal, which is searchable on the IPO website. No further information is given at this time. Within 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 12-month time period as well. Within around two weeks of requesting the search, a preliminary examination report will be issued by the IPO. Preliminary examination is carried out to check the formal aspects of the application to ensure all the required paperwork is present 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 to six months after paying the search fee, a search report will be issued.
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By 16 months from the original filing date, 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, although the actual time may vary significantly, the applicant will receive a substantive examination report if there are any issues that need to be resolved before the application is in order. The Applicant is then required to respond to the objections raised in the report by submitting amendments to the application and/or arguments in support. Examination reports and responses thereto may be repeated until the IPO examiner is satisfied that the application is in order for grant, at which point an Intention to Grant notice is issued, 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 S. 14(1) Section 14(1) sets out that the application must be made in the prescribed form and manner i.e. the form and manner 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 patent, a S. 14(2) 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. S. 15(1)
R. 12 R. 25
However, not all of these aspects must be present in order to obtain a filing date. The minimum requirements in order for a patent application to be accorded a filing date are set out in section 15(1). 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) The request for a grant of a patent must be made on Patents Form 1, as set out in Rule 12(1). S. 15(1) If filing the request for grant online, Patent Forms 1 is filled out by proceeding through the sections of the form on the IPO website. Provided this form is filled in correctly and some sort of description is enclosed, the requirements of section 15(1) are met and a filing date will be accorded. The application fee may be paid at the same time as filing Patents 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 (Patents Form 9A). 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. S. 5(1)(c)(ii) Alternatively, rather than filing a description, a reference to an earlier application as a replacement R. 17 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.
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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. 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) Sections 15(5)(6)(7) relate to missing parts in a patent application, together with Rule 18. R. 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. Their 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 search report will be issued. If requested at the 12-month stage, this is usually received after about 16 R. 23 months from the filing date. The search is covered by section 17 of the Patents Act (UKPA) and R. 24 Patents Rules 23, 24, 25 and 27. Section 17(1) dictates that an application will only be searched if R. 25 preliminary examination has been carried out, the application has not been withdrawn, the search R. 27 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.
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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 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 and the examiner identifies a large volume of prior art, they will tend to issue a truncated search report which only lists some of the identified prior art. 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, although this isn’t an exact science. 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
S. 17(5)(b) A partial search may be performed or none at all, where the examiner does not believe that a search will serve a useful purpose. This is set out in section 17(5)(b). Some subject matter may S. 17(6) not be searched if it is considered to relate to unpatentable subject- matter, 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 254
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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. If the claims relate to multiple inventions, a lack of unity is found where the examiner 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 reissuance 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.
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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.
S. 117
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 amendments, a front sheet and the search report. Upon publication, the file is available for public inspection – usually accessed through the Ipsum portal on the Intellectual Property Office website. The file will contain any correspondence between the applicant and the IPO, 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, provided they have been made in sufficient time before the specification is published. Name changes requested after publication will be shown on the public register but do not trigger the ‘A’ specification to be re-published with the new details. 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. This would affect deadlines trigger by publication, such as the deadline for requesting examination. 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
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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 Patents Form 7. This must be filed within 16 months of the filing date of the application, such that the details can be including on the published ‘A’ specification. 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 good practice, 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.
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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.
14.1.7 Substantive examination S. 18 Within six months of the publication of the search report a request for examination must be filed R. 28 at the IPO together with a fee. This should be done by way of the Patents Form 10. Substantive R. 29 examination is governed by section 18 of the Patents Act and Rules 28, 29 and 30 of the Patents Rules. R. 30 Issuance of the first substantive examination report normally happens within 12 months of request for examination, although it can be multiple years before the first report is issued in some cases. 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 Patents Form 10, together with the request for accelerated examination. Accelerated examination is discretionary, and 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 Global Patent Prosecution Highway (GPPH ). This pilot scheme has gradually expanded and has now been in place for a number of years. Current participating patent offices can be found on the Global PPH Portal website maintained by the Japanese Patent Office. Fast-track examination can be obtained by providing a copy of an earlier search and examination report from a participating foreign patent office 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 elsewhere, or amended claims can be filed to conform to those allowed abroad. This also works in the opposite direction, the reason being to reduce workloads in each office.
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The examiner will review the results of the search, along with any supplementary search carried out, to determine 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. Once the examination report is issued, the examiner sets a time period to respond to the objections. The time period would typically be four months unless the first examination report is issued after 3½ years after the priority date, in which case the time period is often reduced to two months. The period for response is extendible by two months as of right and an additional two months with the discretion of the Comptroller. Shorter periods for response 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 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 can be made retrospectively provided it is R. 109 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 S. 117(b)(3) 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 should be made in writing by e-mail to pateot@ipo.gov.uk and should identify the application and specify the period for which the extension request relates. The request can also be made in any response letter itself, since it may be requested retrospectively. 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) If the examiner considers that the objections have been overcome, they will issue a communication under Section 18(4). S. 76 R. 30
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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) with the amendments clearly identified, along with a clean copy of the amended pages. If the amendments and/or observations of the applicant do not overcome the objections, a further examination report will be issued. The period for response 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. S. 18(4) However, if the objections are overcome, the examiner will issue a report under section 18(4) R. 30 stating that the application will proceed to grant. This report acts as an Intention to Grant notice and alerts the Applicant to an approaching deadline for filing further voluntary amendments or divisional applications. 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.
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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 (commonly referred to as a ‘top-up application’). 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. This maximises the length of protection available to the patent holder. 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. Alternatively, it is common for the UK priority application and a subsequently EP application to proceed in parallel, giving applicants two attempts at obtaining protection in the UK.
14.2.2 Divisional applications S. 15(9) 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 R. 19 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. R. 30 Divisional application is made by using Patents 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 at least three months prior to 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.
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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 differed, since they may have contributed to only part of the original inventions within the parent application. 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 from the filing or priority date). R. 30 A request for search, by way of the Patents 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. S. 85(5) 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 (thus creating a second generation divisional), provided that the application being used as a parent is still pending, and that the period for doing so under Rule 19 has not expired. If needed, the compliance period of the parent application can be extended under Rule 108 to provide sufficient time to file a divisional.
14.2.3 Ex-PCT applications S. 89(a) Filing a UK national phase application from an international application is usually done at 31 R. 66 to 72 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. 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. WWW.CIPA.ORG.UK
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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. R. 108(2)(3) 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 early, 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 until 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 The law relating to third-party observations is set out in section 21 and Rule 33. R. 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. Third-party 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 should ignore these. There is no requirement for the third party to be named, and thus, the observations may be filed anonymously. 262
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S. 18(3) 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 they consider them to be relevant, will include them, in their own words, in the next examination report under section 18(3). If the examiner does not consider the observations to be relevant, they 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. S. 21 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 they do 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 them. 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 they believe that it would be expeditious to proceedings. Pre-grant hearings may be held by video-conference or 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 Amendment is governed by section 19 and Rule 31. R. 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 voluntarily 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. WWW.CIPA.ORG.UK
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S. 18(3) 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 S. 18(4) any other time is at the discretion of the Comptroller. Amendment to the request for grant form (Patents Form 1) can only be made on the form 11 stating the reason for it.
14.3.4 Corrections S. 117 Corrections to an application or the documents relating thereto are governed by section 117 and R. 105 Rule 105. R. 31 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 mind, then this is not a correction but amendment.’
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.
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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). Any request to amend a name must be made on a Patents Form 20. 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 Statement of Inventorship (Patents Form 7 ), a written explanation must be provided. 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 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 whole file relating to an application can be viewed through the Ipsum portal on 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 copies of all the remaining documents. 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 Patents 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. For older applications pre-dating the online system, this may be the only way to obtain some records.
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 WWW.CIPA.ORG.UK
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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. 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. The meaning of ‘unintentional’ is usually that the applicant always intended to continue with the patent application, and did not merely allow it to lapse on purpose, and then change their 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)
e effect of reinstatement on third parties is also considered by the Patents Act (UKPA). Th 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.
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.
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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) Once a patent is granted, anyone may request a non-binding opinion of validity and infringement R. 92 to 97 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 for whom they are 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 their request for an opinion in writing, it will not publish. S. 74(a) Once the opinion has been issued, the patent holder may request a review (also non- binding) of R. 98 to 100 the opinion. This may be the case if the opinion is that the patent is invalid and they would like a second view. 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 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.
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14.4.5 (b) Biological samples
S. 125(b)(1) W hen 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.
* This chapter was first written in 2008 by Alison Care (EPA, CPA at Haley Guiliano LLP). It was revised and updated in 2021 by Daniel Wolstenholme (EPA, CPA at Marks & Clerk).
Further study • IPO website • PCT Applicant’s Guide – part II, UK chapter and appendix • Manual of Patent Practice
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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? 4. What is the difference between an amendment and a correction? 5. 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? 6. 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?
Answers overleaf.
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Suggested chapter 14 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. Corrections are intended to rectify errors in the application, and are ex tunc i.e. having effect as if the corrected text was filed from the outset. Amendments are for making changes to the application, usually in response to examiner objections. Amendments are not retroactive. The criteria for corrections are stricter than for amendments. 5. 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. 6. 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.
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15
FILING STRATEGIES (EP) By Jonathan Hewett (CPA, EPA), Venner Shipley LLP*
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 chronological stages that an application passes through – filing, searching and publication, examination and grant. There are several types of EP applications: • direct-filed EP application, where the application originates as an EP application – it is either the first application filed in a particular family, or an application which claims priority from another family member; • 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: • an understanding of what constitutes and invention and a patent, and the purposes of having a patent; • an awareness of the existence of 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 its contracting states, and the existence of the international patent system. Legal documents: 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 (ninth edition). Guidance for the trainer: Identification of cases that contain examples of the scenarios set out below. Syllabus link: U K Exams: FD1 EQEs: Papers C and D
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IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution) 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 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 allow you to advise your client as to the most appropriate route to take, based on an individual set of circumstances. In order to gain an understanding of the timescales you will need to review the legal provisions of the EPC2000 which that are listed adjacent to 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 a date of filing which matches the date on which you filed the specification, 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) 272
3. Priority details (where appropriate) and under certain circumstances a certified copy of priority document(s) 4. 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 any part of the specification needs to be translated. 6. Reference to an earlier filed application (instead of 5. above) 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 in order 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
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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.
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 to the commentary.
15.2 Direct-filed EP application
Art.78(1), Art.80, R.40(2)&(3), Art.14(1)&(2) If the application documents submitted upon filing included a reference to an earlier application, and the earlier application is neither an EP application nor an international application filed with the EPO as receiving office, 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 (English, French or German), a translation has to be filed into one of the official languages.
15.2.1 Requirements for date of filing Art. = Article of the EPC2000 R. – Implementing Regulations to the EPC2000 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 the contacting state (e.g. the UKIPO). The documents making up the application can be filed directly, by post, fax, or electronically, or in fact via any permitted medium that means the application is filed ‘in writing’. In the majority of cases, applications are filed electronically via dedicated filing software, which ensures instant acknowledgement of receipt of the filing documents, and also entitles the applicant to certain fee discounts. 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 an invention 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 WWW.CIPA.ORG.UK
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Ultimately, a description, one or more claims, the drawings referred to in the description, and an abstract, must be associated with the filed application, whether submitted with the original filing, or derived from an earlier-filed application. Art.78, R.41(1)&(2) 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. EPO Form 1001 explicitly requests the grant of an EP patent, and should accompany the application documents; 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, if appointed. These can all be entered into relevant boxes included in form 1001 mentioned above. A representative does not need to be appointed in order for an application to be filed successfully, but if the applicant is neither a resident of nor has a place of business in an EPC contracting state, a representative must be appointed for actions to be performed after filing. Art.78(1), R.41(2), R.52(1)&(2) If the EP application is claiming priority from PATENTS TRAINING MANUAL: 2022
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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. The form must be signed; electronic signatures are acceptable. 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. The filing fee includes a fixed component, and a surcharge per page of the application above the 35th. Fees can be paid in many different ways, including a transfer to a bank or giro account of the EPO, debiting a deposit account held with the EPO, and by cheque. The method of fee payment should be specified on the Form 1001. If the payment method is specified on Form 1001 as a debit from a deposit account, for example, payment will be taken from the deposit account in response to receipt of the Form 1001. Your accounts department will ensure that the deposit account contains sufficient funds at all times. Alternatively, in the Form 1001, you can explicitly authorise the EPO to automatically deduct from a deposit account all fees which become due at any time on a particular application documents, without the need for specific authorisation for each payment. 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 15 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 274
the application. Claims fees are significant for each of the 16th to the 50th claim, and are payable at an even higher level in respect of any claim above the 50th. Therefore, it is strongly advisable to ensure that an application does not contain an unnecessarily large number of claims on filing. It may be necessary to revise claims prior to the filing of the application, in order to reduce their number, for example by combining dependent claims as alternatives. 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 its 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, Decision of the President of the EPO dated 18 October 2018, OJ EPO October 2018 A78, OJ EPO March 2019 A27 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 by them, upon request, to the EPO by the office. At the time of writing, these offices are China, Japan, Korea, and the US. 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 newly-filed and priority-claiming EP application. The EPO has recently joined the WIPO Digital Access Service (DAS), by which it is possible to submit a ‘DAS code’ issued by another patent office in response to an application filing at that office. The code enables the EPO to import an electronic copy of the priority document into the EP application file. The EPO will also issue a DAS code for the EP application so that it can be use at other patent offices in the same manner. An up-to-date list of participating offices can be found at: www.wipo.int/ das/en/participating_offices.html.
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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) 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 as far as the applicant is concerned, can be treated equally. 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. 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.
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Typically, formal drawings are prepared by patent drawing drafters 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? Failure to file EP application within priority period: Art.87(1), Art.122(1), R.136(1) 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; you will need to show that you missed the date despite ‘all due care’ which can be a high hurdle. The request will need to be accompanied by the omitted act, which in this case is the filing of the EP application. Failure to supply copy of previously filed application: R.40(1)(c), R.55, Art.122(1), R.136(1) 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 PATENTS TRAINING MANUAL: 2022
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copy is not furnished within that time limit the only remedy available is re-establishment of rights. Failure to file translation within two months: R.40(3), Art.122(1), R.136(1) 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. Missing parts: Art.80, 90(1)&(2), R.40, R.56, R.57, R.58, R.45(2) 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. 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. Failure to include all priority declaration information upon filing: Art.88, R.52 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. Late payment of fees: Art.121(1), R.112(1), R.135(1) 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 an additional 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 an applicant is late in providing instructions. The procedure is as follows: the EPO will issue a communication alerting you to the fact that a time limit has been missed. The 276
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. Late-filed examination request: Art.121(1), R.112(1), R.135(1) 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.
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15.3.2 Requirements for regional phase entry Art.153(1), R.159(1)(a) The first thing to note is that foreign originating applications might need to be translated into an official language of the EPO (English, French or German). International applications can be searched and examined in Arabic, Chinese, Japanese, Korean, Portuguese, Russian or Spanish, instead of in English, French or German. You should note that the translation is due upon entering the regional phase (this is different to the translation requirements associated with a directfiled 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 choose to submit amendments to the application upon regional phase entry, you will need to furnish the EPO with a copy of the amendments
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together with form 1200. Typically, the claims of the international application can be amended for conformity with European practice if the application is foreign-originating: if you take a look at the claims of a US-originating international patent application, for example, 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. Instead of, or in addition to submitting amendments on regional phase entry, it is possible to voluntarily amend the application in response to an invitation to do so, issued by the EPO. Typically, the invitation will be issued within a few weeks of 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 (again, >15) fees calculated as falling due for the application will be based on the number of claims on file in 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. If the applicant desires, it is possible to accelerate proceedings by waiving the right to receipt of an invitation to make voluntary amendments. The waiver is made by ticking an appropriate box on form 1200. In such cases, the application will then proceed straight to search and examination after regional phase entry. The claims fees will be payable on entry to the regional phase, whether on the basis of claims of the international phase, or amended claims submitted with the regional phase entry. R.159(1)(c)&(e), Decision of Administrative Council of 12 December 2019, OJ EPO January 2020 A3 You need to pay the filing fee and, in some cases, the supplementary search fee. As with a direct-EP filing, page fees are included within the filing fee. The page fees are determined by PATENTS TRAINING MANUAL: 2022
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the number of pages of the international application as published, irrespective of the publication language, unless amendments are made on regional phase entry. Where amendments are made, the page fees are determined on the basis of sections of the specification (description, claims, or drawings) taken in their entirety. The sections are based on the number of pages of the international publication, if they do not contain any amendments. Sections including amendments are based on the total number of pages in an English, French or German version of the section (i.e. a translation as amended, or the international publication as amended, where international publication occurs in English, French or German). The abstract is counted as one page. Page fees can therefore be substantial, since a foreignoriginating international application may not have been drafted and published in a format which takes into account of the EPO’s fee structure. Payment of a supplementary search fee is only due if the International Searching Authority (ISA) was other than the EPO. However, some reductions are available depending on the ISA – at the time of writing, a reduced supplementary search fee is payable if the international search report, or a supplementary international search report, has been established by the Austrian, Spanish, Swedish, Finnish or Turkish offices, or the Nordic or Visegrad Patent Institutes. R.159(1)(d)&(f), Art.153(6), R.39(1), R.70(1), R.159(2), Decision of the Administrative Council of 13 December 2017, OJ EPO January 2018 A4 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 reduced if international examination was performed by the EPO. 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. 278
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 directfiled 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),
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with an invitation to provide the missing information and/or documents within a certain period.
As for a direct-filed EP application, a divisional EP application should be filed using form 1001.
The penalties for failing to meet other requirements such as the payment of excess claims fees, nonpayment of renewal fees, are dealt with in exactly the same way as they are for direct-filed EP applications.
Art.76(1)&(2), R.36(3)&(4), R.70(1) 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.
15.4 Divisional EP application 15.4.1 Requirements for filing 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), R.36(1)&(2) The first thing to note is that a divisional EP application can only be filed at a filing 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. 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. WWW.CIPA.ORG.UK
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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 the 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 priority-claiming 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 PATENTS TRAINING MANUAL: 2022
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respect of the parent EP application on the file of divisional EP application.
the EP application than those detailed in the search report.
A failure to meet these requirements is dealt with in exactly the same way as it is for direct-filed EP applications.
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.
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. 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 can request to 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. 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. 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 280
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 or 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. R.64(1)&(2) 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
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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 Incomplete search Art.92, R.62a, R.63 The search examiner can decide that the subject matter of the claims does not comply with the provisions of the EPC, and can request the applicant to submit a statement indicating the subject matter to be searched. Reasons for non-compliance can be based on subject-matter excluded from patentability or industrial application, or an excessive number of independent claims. If the statement is not submitted, or is not sufficient to clarify what should be searched, the search report is replaced by a declaration that either no search is possible, or only a partial search is possible. In this event, the only option available is to request WWW.CIPA.ORG.UK
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examination of the application to open a dialogue with the examiner.
15.5.4 Supplementary search report Art.153(7) You will have noted from the above (§15.3), that a search fee may be due upon EP regional phase entry. If the international application was searched by the EPO, then no 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. lt 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). PATENTS TRAINING MANUAL: 2022
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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), Art.67(1)&(3), Decision of the President dated 12 July 2007, OJ EPO 2007 Special Edition No. 3 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 intended date of publication. Assuming the application proceeds 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 the provisional protection is hoped to be exercised once the application has been granted and validated. The national law of each contracting state stipulates which of these two options is required.
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.
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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), Rfees 10b You can file the request for examination of the application earlier than the date by 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 six 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 retrieved and responded to the communication.
withdraw the application), you should note that the refund of some or all of the examination fees could be affected. Thus for applications that 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)&(2), R.126(2), R.130(1), R.132(2), R.134(1) 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 – usually two months will be granted – 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.
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15.6.2 Response to the examination report R.42(1)(b), R.43(1)-(7), Guidelines for Examination C-III, 2.2 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 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 issues a decision that refuses 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
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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 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) 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. Examiners are within their rights to refuse the application provided that in previous examination reports, an opportunity has been provided to address all points on which the refusal decision is based.
15.6.3 Requesting a hearing Art.116 There is a provision within the EPC that you should 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 intends 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 (including by video conference) before an Examining Division. The Examining Division comprises three technically qualified examiners, one of whom is the examiner
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you will have been corresponding with thus far. The inventor can attend 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 an attorney.
15.6.4 Time taken to report Notice from the EPO dated 30 November 2015, OJ EPO November 2015 A93 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. The EPO has, in recent years, sought to reduce the time taken for communications to issue, and particularly search reports, but in cases where a patentee needs to assert their rights against a third party within a short time frame, it is possible to request accelerated search/examination (known as ‘PACE’). This is most conveniently done using form 1005 available from the EPO website, and there is no official fee associated with this request. Additionally, it is not necessary to submit a reason for the acceleration. In relation to examination, an acceleration request requires the EPO to issue the next examination report within three months of the receipt of the request, 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.
15.6.5 Third-party observations Art.115(1)&(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; WWW.CIPA.ORG.UK
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the submissions do not need to be accompanied by the payment of a fee. 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. The disadvantages to the third party of being unable to being able to have dialogue with the examiner, and of potentially alerting the applicant to the existence of a party with an interest in the refusal of the application should be balanced against the advantage of the application being refused. Although observations are anonymous, it is sometimes the case that an applicant is nonetheless able to determine a likely source of the observations due to their knowledge of their competitors’ activities and behaviour. Generally, third-party observations are more effective if they contain strong and simple grounds with which an examiner can agree quickly. If the observations are speculative, or a based on complex grounds, such as combinations of several documents, the likelihood of their favourable consideration by the examiner is reduced. 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 practical terms, however, the earlier the observations are filed, the more beneficial they are likely to be to the third party. The more work the examiner has already done on search and examination at the point the observations are received, the less likely the examiner is to be influenced by new submissions from a third party. Once the observations have been received, the EPO sends them onto the applicant. If the examiner considers the observations to be pertinent, they will be introduced into the proceedings and comments from the applicant will be requested when the next communication is issued. If you consider the observations to be relevant, you could make use of PATENTS TRAINING MANUAL: 2022
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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 refusal of the application is upheld by the Board of Appeal, there is nothing further that can be done in relation to that application. It is, therefore, good practice to file a divisional application at the time of submitting the notice of appeal. If the application is refused during appeal proceedings, the divisional application can still be prosecuted taking into account the objections raised against the parent case, or focusing on different subject matter. 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.
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15.6.7 Grant of patent Art.97(1), R.71(3)-(5), 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(6), 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 lime 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.
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Chapter review You now have knowledge of the different types of European patents and the different routes than 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 specification, so you can see the routes taken by different clients when obtaining a European patent.
At this point, the examiner can either agree to the amendments and issue a new notice confirming the revised text approved for grant, or 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). Art.65(1), National Law relating to the EPC: Table IV, Art. 67(3), National Law relating to the EPC: Table IIA&IIB The date of grant is very important because it sets the time limits for validating the granted patent in those WWW.CIPA.ORG.UK
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EPC contracting and extension states designated in your application in which your client wishes patent protection. 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 of 17 October 2000 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 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
Further study • The Annotated European Patent Convention, Derk Visser • References to the European Patent Convention, Jelle Hoekstra
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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
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.
* This chapter was first written in 2008 by Heather McCann (CPA, EPA at EIP). It was revised and updated by Jonathan Hewett (Venner Shipley LLP) in 2021.
The EPO maintains a European Patent Register, which contains certain data pertaining to application and granted files, and can be inspected by third parties at https://register.epo.org/regviewer. Art.127, Art.128, R.143(1) Files are only available for inspection by a third party after publication of the application. Earlier inspection is possible if a third party has procured consent from the applicant or the applicant has written to the third party notifying him of the existence of its 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. 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. R.144, Decision of the President of the EPO dated 12 July 2007, OJ EPO 2007 Special Edition No. 3 J.3 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 the right to be mentioned has been waived. 288
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Test your knowledge 1. List the requirements for obtaining a date of filing of a direct-filed European patent application. 2. Who is obliged to have professional representation before the EPO? Is representation required for the filing of an EP application? 3. What is the last day on which a divisional EP application can be filed? 4. 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. 5. List the language options and requirements for a Spanish patent applicant who wishes to file a direct European patent application in Spanish. 6. For a direct-filed EP application, what triggers the deadline for paying the examination fee? 7. List the requirements for entering an international patent application into the European regional phase. What is the deadline for complying with these requirements?
Answers overleaf.
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Suggested chapter 15 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. A party who has neither residence nor principal place of business in a contracting state must be represented by a professional representative; the party must act through a professional representative in all proceedings, other than in filing the application. 3. The day prior to publication of the mention of grant of the parent application in the European Patent Bulletin. 4. 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. 5. File the application in Spanish; you will have to file a translation into an official language of the EPO (English, French or German) within two months of the application filing date. 6. The date of publication of the search report. 7. Before the expiry of 31 months from the priority date of the international application: supply, where applicable a translation into an official language of the EPO; specify the documents on which the European grant procedure is to be based; pay the filing and designation fees; where applicable, pay the search, examination and third year renewal fees.
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16
FILING STRATEGIES (PCT)
y Dr Catherine Bonner (CPA, EPA) and Martin Shaw (MSci) Murgitroyd, B and Debra Smith (EPA, CPA) Mayfin*
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.
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• 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 (https://www.wipo.int/pct/en/texts/index.html). 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. Take care to use the most up-to-date version of the official material that is in force and current as at 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 WIPO website – see https://www.wipo. int/pct/en/forms/index.html. 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 International Search Report (ISR) (Form PCT/ISA/210) and International Preliminary Examination Report (IPRP) (Form PCT/IB/373). Further explanation of these forms and communications will be given in the various sections of this chapter. It should be noted however, that most applications are now made electronically using online filing. Trainer’s input: Discuss with your trainee any general comments you have on the PCT system. Advise them of the standard procedures, practices or ways of working in your office that relate to PCT files and their case management, etc. Describe your usual practice when you look at, and work with, PCT files. Standard procedures may include, for example, filing the application online. Review some existing files together with your trainee to help your trainee to follow the progress of an application. It may be helpful for them to see files at different stages of the PCT procedure; you can point out various procedural steps and some of the forms and documents involved at each stage. You can show your trainee how the files are maintained, be they conventional paper files or electronic files. It would be helpful if you can provide a variety of different scenarios, for example, an individual inventor may proceed with their, perhaps single, PCT application or a large company having a portfolio of international applications. Syllabus link: U K Exams: FC1, FC3 and FD1 EQEs: Paper D Part I and II (Legal IPReg Competency Framework link: General/Legal (Skill Sets: Practical Application of the Law and Legal Practice; Communication Skills, Management of Workload; Business Awareness, Professional Conduct); Technical (Skill Sets: Analysis and Advice, Drafting, Validity) Time allocated: One to two days.
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Learning outcomes By the end of this chapter, you will be able to explain the PCT system and how it might be used by those seeking patent protection in a number of different countries. You should be able to describe 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 (153 states/countries are PCT contracting members as of July 2021). The PCT is a patent filing system administered by the World Intellectual Property Office (WIPO) and operating for applicants having residence in, or nationality of, a country (state) which is party to the Treaty (a ‘contracting state’). 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 and filing of an application in compliance with a fairly rigid set of formalities. The application automatically designates protection in all contracting 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, is acknowledged in all PCT states as having the effect of a regular national filing. WWW.CIPA.ORG.UK
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The administrative burden of the system is handled and managed centrally by WIPO at the International Bureau (IB). The international filing and the subsequent centralized procedures are known as the International Phase. There follows a national or regional phase at a designated national or regional patent office of the applicant’s choosing. 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 – some choose to extend this to 31 months. 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) and the United Republic of Tanzania (TZ) at the time of writing. An international (PCT) application cannot become a single ‘International Patent’. Instead, after the international phase, there are the national or regional patent applications in the countries as selected by the applicant. 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
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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, an 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 in English (or Welsh), at the Intellectual Property Office (IPO) acting as the UK 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. 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 – the following terminology is used here: • Art. – The relevant Article of the Patent Cooperation 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.
16.2.2 Key components of an International application – Articles 3(2) and 3(3) According to the PCT, an international application must contain, as specified in the Treaty a request, a description, one or more claims, one or more drawings (where required), and an abstract. Art. 3(2), Art. 8, Art. 11(1) R. 4.3 & R. 4.5 Art. 4, R. 3, 3.1, 3.4 & 4.9 R. 4.5 (d)
Many of the formalities, such as submitting a priority claim, providing a title of the invention and identifying the applicant, are dealt with by completing the Request (Form PCT/RO/101 – commonly referred to as the ‘R101’). The Request can be a printed copy of the paper form, or an electronic version. In practice, most applications are now filed electronically. This can be either using the EPO’s online filing software or web-filing system, or WIPO’s ePCT web portal. The Request automatically designates all states, but provisions exist for withdrawing designations. If the documentation is filed by fax an original copy of the application is required by the IPO, one copy of the application is required for filing at the EPO or at the IB of WIPO.
R. 4.15 The Request should be signed by or on behalf of the applicant(s) or those listed as ‘applicant and inventor’.
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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) & 3(3), • a description of the invention and claim(s) defining the subject matter of the invention; • an abstract – a summary of the invention; R. 5 & 6 • drawings – if required to understand the invention; and Art. 3(2) • a sequence listing, references to deposited micro-organisms, etc (for inventions involving Art. 14(2) biological material). R. 13bis, R. 13ter R. 10 & 11 The PCT requirements for the description and other elements of the application listed above are in line with requirements at national patent offices. The PCT regulations have rigid requirements relating to the layout and physical presentation of the application.
16.2.3 Other parts of the application R. 12.3 & 12.4
ranslation of the application – if required, into a language suitable for publication (one of T 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
ower of attorney – authorising of an agent appointed to act for the applicant; a common P 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. In some firms it is practice to have power of attorney documents prepared and signed at the beginning of the application process in case they are needed later.
Terminology A word on terminology. The PCT system is alive with
Other terms to be familiar with:
acronyms and initialisms. These are some of the common ones:
• ‘International Phase’ is the first part of the process where a single application is filed with a
WIPO
World Intellectual Property Organisation
RO
Receiving Office
IB
International Bureau
ISA
International Searching Authority
ISR
International Search Report
SIS
Supplementary International Search
WO
Written Opinion
WO-ISA Written Opinion of the International Searching Authority IPE
International Preliminary Examination
IPEA International Preliminary Examining Authority IPRP International Preliminary Report on
search and optional examination. • ‘National/Regional Phase’ is the process of moving into a ‘bundle’ of national and/or regional patent applications after the International Phase. • ‘Chapter I’ is where an application proceeds in the International Phase without undergoing the optional examination. • ‘Chapter II’ is where the application undergoes examination in the International Phase. • A ‘Designated Office’ is an office acting for a contracting state designated under Chapter 1. • An ‘Elected Office’ is an office acting for the designated state under Chapter II.
Patentability
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Priority – a priority document may form part of, or accompany, the application. A claim to Art. 8, R. 4.10 & 17.1 priority can be made from an earlier national, regional or International 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- Declarations – these are an optional part provided within the international application procedure. Declarations act to anticipate certain national phase requirements and formalities. 215 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 principle, 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 the 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) & R.15.1-15.2, Schedule of fees, item 1 R. 16.1(f)
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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. The international search fee is also paid on filing (or up to one month from the international filing date). In practice the fees are usually paid from a deposit account held at the RO where the application is made. 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. A reduction of the international filing fee is available for applicants using electronic filing. 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. A late payment may incur a late payment charge of 50% of the missing amount. The application will be considered to be withdrawn as a consequence of non-payment of fees.
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16.2.5 Summary – Minimum requirements to obtain an international filing date (Article 11) The minimum requirements required to secure a filing date are set out in Article 11 of the PCT. This requires: R. 18 & 19
The right to file – an applicant must be entitled by residence or nationality to file a PCT application with the Receiving Office (RO).
The application be filed in a ‘prescribed language’. A prescribed language is a language acceptable at the relevant RO. The RO must accept at least one language which is both: (i) a language accepted by the International Searching Authority, or, if applicable, by at least one of the International Searching Authorities, competent for the international searching of international applications filed with that receiving Office, and (ii) a language of publication. So, for filing at the IPO, this would be English or Welsh at the IPO and English, French or German at the EPO. Art. 3(4)(i) & R.12
An indication that it is intended to seek an international application. This is usually done by using the Request form R101.
e designation of at least one Contracting State. Again, this is usually done by using the R101 which Th automatically requests all possible designations, A description (with drawings if required to understand the invention), and at least one claim. Information sufficient to identify the applicant. Art. 4 & 11(1) It is interesting to note that it is not strictly necessary to include any of the following in the (iii), R. 4 & 6 initial application Request in order to obtain an international filing date: fees, translations, applicant’s signature, abstract, and title. However, they will be due later and so best practice is to include all parts available and required at the time of filing.
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 should be cross checked with your own case file. There is the option to receive email notification only. Check with your firm’s standard procedures on this.
16.3.1 Key post-filing procedures 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 R. 19.1 & 19.2
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), etc are carried out to establish the competence of the RO to accept the filing of the application.
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Art 11, R 20 (20.3, 20.4, 20.5 & 20.6) R. 19.4
Following a formal check of the filing requirements, and an issuance of an invitation to correct any deficiencies, the application is accorded (or refused) an international filing date. 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.
The RO than makes a thorough check of the application. e RO checks that the application satisfies the formal PCT presentation and physical Art 14(1), R. 11 Th 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), 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 R. 26.2 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 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.
The WIPO Digital Access Service (DAS) is an electronic system allowing priority documents and similar documents to be securely exchanged between participating intellectual property (IP) offices. The system enables applicants and offices to meet the requirements of the Paris Convention for certification in an electronic environment. First filing applications at national offices are given a DAS access code and this can then be stated on filing of the PCT allowing the priority documents to be accessed directly by the IB. 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. R. 16.1 (f) & 23.1 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.
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16.3.2 Other post-filing procedures Priority claims
R. 26 bis 1 & 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. R. 26 bis 2 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 (j) 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. As an 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, Brazil and Korea do not. However, national patent offices acting as designated offices (DOs) at the national 30/31-month stage can also raise 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 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 A translation into a language suitable for publication may also be required. The deadline for that translation is 14 months from the priority date, unless a translation had earlier been required for the purposes of international search, in which case, it is necessary to supply a translation into the language of the ISA, within one month from the date of receipt of the international application by the RO. These provisions are unlikely to be encountered for most UK-originating applications but circumstances may occasionally arise where you need to be aware of these requirements. Declarations
R. 26 ter 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. WWW.CIPA.ORG.UK
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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. 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. Art. 15, R. 33.3 R. 13 & 40
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). 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).
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). The ISA also checks the R. 37 & 38 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.
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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. This can include non-patent literature although the majority of cited art does tend to be previously published patent applications. 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.
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that no search report has been established, for example where the case related to excluded subject matter. 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 or nine months from the priority date, 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.
16.4.2 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 they believe are relevant following their 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.
16.4.3 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 or not 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. This 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 WWW.CIPA.ORG.UK
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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.
16.4.4 ISR – Other actions to consider 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. These are usually referred to as Article 19 amendments. 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 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.
R. 40.2(c) 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.
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16.4.5 SIS – Supplementary International Search R. 45bis
Applicants have the option of requesting one or more supplementary searches 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. It would be useful to discuss this with your trainer: do many of your client’s do this? If so, what are their reasons for doing so?
R. 45bis 9(b) The main SA cannot be selected as the supplementary search authority (SSA). R. 45bis 1(b) A supplementary search request must be submitted to the IB. The time limit for requesting a SIS R. 45bis 1(a) is 22 months from priority date of the application. R. 45bis 1(b) The request must state the SSA requested to draw up the search, along with a translation into a language of the SSA. (ii), (iii), & (c) R. 45bis 3 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. R. 45bis 3
The current PCT fee tables should be consulted for the fees applicable.
R. 45bis 1(d) 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. R. 45bis 5&7 R. 45bis 8
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 started as soon as the SIS receives the paperwork and by 22 months from the priority date at the latest, 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, the EPO, Singapore, Turkey, Ukraine, Nordic Patent Institute and Visegrad Patent Institute offer applicants an SIS.
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. 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.
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16.5.2 Written opinion – 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) has been made. This will be discussed in more detail below in 16.7. 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 processing. See Chapter 15 for more detail on the European regional phase. In the European regional phase for situations where the EPO acted as the ISA a full response to the WO will be required, when invited to do so, where the ISR and the WO are not positive in the assessment of the invention. 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, many do not. In particular, where applicants are pursuing a PCT application as a way to delay costs involved in a foreign-filing programme, they do not request IPE as this increases cost 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 International Preliminary Examination (IPE) (under what is called 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, but this can just mean deferring a problem. In cases for which no demand 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 (this is referred to as Chapter I – 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)(a) & (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 and communicating the publications as appropriate. R. 90bis 1(c) Technical preparations for publication are usually completed 15 calendar days before the date Applicant’s of publication. The IB will still take into account documentation relating to an application, e.g. Guide – amendment of claims, change of inventor name, etc, if it is received before completion of the Chapter technical preparations. Similarly, any request for withdrawal of the application must be made 9.014 before completion of the technical preparations in order to prevent publication.
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16.6.2 International publication – method of publication Published PCT applications can be found using the WIPO Patentscope® database (https://patentscope.wipo. int/search/en/search.jsf). 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 Patentscope®. 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.
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. The WO may later be published as the International Preliminary Examination Report (IPER). – see 16.7 below. 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. R. 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 Where IPE is carried out this is often referred to as Chapter II. IPE is carried out by the appropriate International Preliminary Examining Authority (IPEA) for the application. Following the IPEA’s review of the case an 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. Whether or not IPE is requested is very much a matter for the applicant, in discussion with their patent attorney, as to the pros and cons, for example if your client wants to seek protection in Luxembourg or Uganda but wants
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to delay national phase entry – see 16.7 below. The additional cost is one which an applicant may take into consideration. However, there are certain instances where an applicant might consider international examination a worthwhile investment, and a few such scenarios are discussed at the end of this chapter (see 16.7.6). If an applicant is considering the costs and benefits of examination, it is worth mentioning that a report on patentability (the IPRP referred to above in 16.5.2) will issue in the international phase. If a demand and the fees for examination are not filed, then the IB will issue an IPRP, 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 thus 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 (using Chapter I) is 20 or 21 months from the priority date. This shortened Chapter I deadline currently applies for Luxembourg and Tanzania 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 IPE (i.e. to use Chapter II) before 19 months from the priority date of the application. The office requirements and formal procedure for IPE under Chapter II, and, as mentioned above, known as filing ‘a Demand’, are set out below. It is worth noting that the two countries listed above are not popular countries in which to seek patent protection and in any case, protection is usually obtained in those countries via a regional route (particularly via the EPO for Luxembourg). Thus, the practice of requesting IPE specifically for proceeding directly in Luxembourg or Tanzania is not common. This anomaly arises for historical reasons.
16.7.3 Filing a request for IPE R. 53, R 90.1, 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 90.3 PCT/IPEA/401: the Demand. & R. 53.8 Art. 31(2)(a) 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 R 54.2 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.
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16.7.4 IPE – Due dates and timings R. 54 bis 1(a) A Demand must be filed within three months of the date of transmittal (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 Art. 19, Art. 34(2)(b), R.69.1 R. 53.9
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. ny Article 19 amendments (claims only) and any subsequent IPE amendments (claims, A 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), 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 R. 68 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 their report International Preliminary Examination Report (IPRP).
R. 69.2
The deadline for completion of the IPRP is the later of 28 months from the earliest priority date (or the filing date, where no priority is claimed), six months from the start of IPE, or six months from the date of receipt of the translation by the IPEA.
Art. 35(2) &(3) The IPRP established by the appropriate IPEA constitutes a report on the patentability of the R. 70 invention as claimed. Any amendments made by the applicant are set out in Annexes to the IPRP.
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R. 71 Art 36(3)(a), R. 72.1
The IPRP is made publicly available to the IB and the applicant. 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? IPE 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 a 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. The end result for an applicant can be an indication of the likely outcome of their patent application. Again this is worthwhile discussing with your trainer, but 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, 4.3.3) 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 308
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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 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, in which case dialogue with the Examiner is not available. 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. Filing a request for IPE is usually rare for private individuals and for many small to medium-sized companies, due to the cost involved. Factors that will influence you to recommend filing a demand for IPE will depend on the details of the applicant’s, i.e., 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. 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, often 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 R. 70.2
Any amendments submitted must be accompanied by a letter setting out the basis for the amendments in the application as originally filed; basis is required just as much here as at any other stage of the life of the application. Without this any IPRP may be established as if the amendments had not been made.
Art. 19
After issuance of the search report, it is permissible to amend the claims only, submitting an accompanying statement which explains the change. Article 19 amendments give the applicant
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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. In the UK this is 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 choose 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. Art. 34
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 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 Article 22 applies to applications for which IPE has not taken place i.e. under Chapter 1. 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 the earliest priority date, or the filing date. However, certain countries have extended this to 31 or even 32 months. The UK and EPO both stipulate 31 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 310
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, China, 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
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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. Bear in mind that for super-quick cases direct national/regional filings instead of or together with a PCT filing may be advisable – discuss this issue with your trainer.
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 exPCT national (or regional) application are governed by the national laws of each particular country or region. Therefore, at this stage each national (or regional) application should be handled directly by a patent attorney qualified in that country or region. 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; • Applicant name/address • Inventors‘names/addresses/nationality • Details of derivation of right (e.g., by employment or other contract agreement) • PCT application number and filing date • Priority document details (if any) – data such as country, priority application number and date of filing (earliest priority date) • Translations WWW.CIPA.ORG.UK
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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 paralegal 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 18 months from the priority (filing) date, and very likely to be available at the time the applicant is entering the national phase. Some countries require some documentation to be notarised and/or legalised, which can take some time. PATENTS TRAINING MANUAL: 2022
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Work-based examples It worth considering possible scenarios to identify various filing strategies.
Scenario 1: An applicant has filed an initial GB application with no priority claim. Now, six 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 suggest that they file a PCT application at the end of the 12-month priority period. The international application will include protection in the US and Spain (directly or via EPO) 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 or four 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 (or EP) 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, which 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.
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. Discuss the strength of stopping infringement ‘at source’ versus the realities of enforcement (see below). Highlight that protection in China and Brazil with national filings at the 30-month stage will however be expensive, as translations will be required. Consider an Ex-PCT EP application if other European countries become important. Suggest the applicant also considers at that stage protection in neighbouring or closely related markets, relying on the applicant’s market knowledge, typically. 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.
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It is important, therefore, to seek instructions from clients well in advance of the national phase entry and to put in place the steps for the extra work that is required.
16.9.4 Article 39 PCT – Application procedure Proceeding into the national phase after filing a demand under Chapter II to elected offices (Art 39 PCT) is a less common route to take. As outlined above (16.7.1 and 16.7.6) many applicants take no active involvement during the international stage of the PCT application and do not take part in international examination. This
Work-based examples (continued) 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.
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 from you a copy of the 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 and available, using IPE to submit comments 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 after entering the European regional phase (see chapter 15 – R. 161/R. 162 EPC) so the client will need to address the WO then as well. Bear in mind that when reporting the WO in the first place, less experienced clients can be very discouraged by X-citations – we just take them for granted as the start of the battle!
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.
Offer to provide your opinion on the distinction(s) between the client’s invention and the prior art to be presented to the potential investors as another possible approach.
Some cons: 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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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).
16.9.6 Article 39 PCT – Documents supporting the application
16.9.5 Article 39 PCT – Use and benefit
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.
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.
It is important to make note of whether the office for national phase entry is a designated or elected office as that may impact on the process. For example, the EPO on the Form 1200 require a different part of the form to be filled in depending upon whether the EPO is a designated or an elected office.
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.
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.
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Further study • WIPO website, PCT part of the site and PCT resources section accessible at https://www.wipo.int/pct/en/index.html. In particular, sections; About the PCT, Legal documents, PCT offices and the ePCT procedure for electronic filing of applications. • 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.
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 & It is reiterated that your goal and aim should always be ‘right first time’. However, if you believe 82ter 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. 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. WWW.CIPA.ORG.UK
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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 runs from the filing date, not the priority date, hence the term for 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, hence expiring up to one year earlier. 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 already being used to pursue an alleged infringement, for example.
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If an applicant has a particular interest in countries 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. Of course, if your client is interested in just a few countries, then proceeding directly in those countries rather than using the PCT may be a preferred approach. 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.
16.12 Considerations for small-entity clients If your client base includes small-entity clients and/ or individual inventors, the financial commitment involved in progressing a PCT application (often thought of as a ‘worldwide’ patent) is extremely high and the process often appears extremely ‘scary’. Quite often you will need to explain that even after spending all this money to obtain a PCT application reserving the right to obtain patents in a large number of countries, this will not result in a single worldwide patent and in fact the PCT process is just the beginning of a process which will incur increasing costs, unless they are careful. In fact, although the process seems to take a long time, if they have not got any financial backing before starting the PCT process, then this would be a good time to start building interest in their concept including obtaining financial backing. There are many good government-funded finance initiatives, if finding Private backers is difficult. In particular, they should check out: • INNOVATE UK, who provide regular funding opportunities for many different purposes. See – https://www.gov.uk/government/organisations/ innovate-uk • https://granttree.co.uk/innovation-grants/ * This chapter was first written in 2008 by Dr Catherine Bonner (CPA, EPA at Murgitroyd). It was revised and updated by Catherine with help from Martin Shaw (MSci, Murgitroyd) and Debra Smith (EPA, CPA at Mayfin IP) in 2021.
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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 was filed on 30 July 2020 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 28 February 2021 with a claim to priority of 28 February 2020. 6. List the 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. 7. Your UK – based client filed a GB first application at the UK IPO on 18 December 2019. The client has now received interest from several investors and wishes to file a PCT application. What is the latest date on which the PCT application should be filed? What are the client’s options for RO? What are the client’s options for ISA? 8. Your client is a large firm having research laboratories in the UK and USA. A team of inventors (3 from the UK and one from the USA) want to file an application at the EPO. You work in the patent department based at the UK research laboratory. What steps are required for you to file the application at the EPO? 9. Your client filed a PCT application on 24 March 2021. On 5 July 2021, the ISA transmitted the International Search Report and Written Opinion to the client. The adverse comments in the Written Opinion can be easily overcome by making a simple amendment to the claims and your client would like to file amended claims before International publication. What is the latest date for filing Article 19 amendments? Where is the best place to file these amendments (RO, ISA or IB)? 10. Can you check the details of what the IB intends to publish before publication occurs? When is the best time to do this and what is the easiest way to correct any errors (e.g. spelling of names & addresses and/or priority details)? Answers overleaf.
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Suggested chapter 16 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 at least one contracting state. 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, but not the protest fee. 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 2022. 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 their representative and must reach the IB before the technical preparations for publication are complete (i.e. by 15 January 2022). If a request
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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 gives further details of the publication schedule. 5. As above, publication is due 28 August 2021, therefore a request for withdrawal of the application must reach the IB by 13 August 2021. 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 28 August 2021. Publication would instead be due 18 months from the filing date i.e. 28 August 2022. 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 13 August 2021). A decision to abandon a priority claim should not be taken lightly. The applicant will have to consider the effect on disclosure dates, possible self-disclosure if a priority application has already published and any intervening prior art. 6. Twenty months for Luxembourg, Tanzania. Thirty months for China, Japan, Israel (for example) 7. The PCT application should preferably be filed on or before 18 December 2020. The choice of RO is UKIPO, EPO or most preferable the IB (using ePCT). The advantage of using ePCT and filing at the IB is that you can be sure that your application reaches the IB with no delay caused by transfer from either of the other offices mentioned. As the patent application originated in GB, the only ISA available is the EPO (reference PCT Applicant’s Guide Annex D). 8. In order to file a patent application outside the USA naming a US inventor, the first thing required is a Foreign Filing Licence. Thereafter, an EP application naming all four inventors may be filed either directly at the EPO or via the UKIPO, although the former is the simple option, using on-line filing. 9. The Article 19 time limit is two months from the date of transmittal of the international search report to the IB and the applicant by the ISA or 16 months from the priority date, whichever time limit expires later. This would be 24 July 2022. However, Article 19 amendments received by the IB after the time limit are still accepted if they have been received before the technical preparations for international publication have been completed. Such amendments should be
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filed directly with the IB. (Preferably using ePCT). Publication will be around 24 September 2022, so it may be possible to file Article 19 amendments up until the first week in September 2022. 10. When you file a PCT application using ePCT, once the newly filed PCT application is visible to you in ePCT, then a best practice to be followed, is proofreading the preview of the PCT publication to ensure that all the details are correct. If there are any problems or things to fix, then right now is the right time to do a 92bis change to correct it. It is good practice to check one last time to see whether there are any problems with the priority claims or whether an intended priority claim has somehow been forgotten. Once you have fixed any mistakes, it may be a good idea to send the preview page to the client with an invitation for the client to check too. Perhaps somehow one of the inventor names got misspelled early in the process and no one noticed it until now. In any event this is your chance to get any of a wide range of problems fixed before the 18-month publication happens.
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17
PROSECUTION THROUGH TO GRANT y Gwilym Roberts (CPA, EPA) and Marco Morbidini (CPA, EPA) B at Kilburn & Strode*
Outline Once the patent application has been filed, in most jurisdictions (all those which carry out examination of patent applications) it is necessary to persuade the patent office that it meets certain criteria, including those of novelty and inventive step, 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 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 dayto-day 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. The EPO Guidelines contain copious advice on what the EPO prefers to see; we advise referring to that when specific issues come up rather than trying to read the whole thing at once! Guidance for the trainer: At the outset it may be worth sitting down with your trainee and talking through how you like to structure your responses to examination reports, dealing with both UK and European instances. Syllabus link: U K Exams: FD3 EQEs: Paper B IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution)
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Time allocated: One to two days.
Learning outcomes By the end of this chapter you should be able to identify the different parts of an examination report, know what information you should provide about it to your client so as to obtain proper instructions and know the key components of a persuasive response. You will know the difference between IPO and EPO examination reports and be able to recite the main parts of a novelty and inventive step argument before each authority.
17.1 Legal background
17.1.2 Novelty
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 objections that the patent attorney is likely to meet and have to overcome in the patent examination procedure.
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 or priority) of the claimed 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.
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, mathematical methods, software and so forth. In the everyday practice of a patent attorney, the main issues to consider are those of novelty and inventive step and these are reviewed below in some detail.
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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 the prosecution of a patent application the majority of the prior art encountered is in the form of published patent applications or patents (let’s call these ‘patent documents’). This is because published patent documents usually include a wealth of technical detail that is normally not included in other types of publications, such as text books or instruction manuals. Also, patent documents are very easily searchable by virtue of the international classification system and the patent offices have access to very good databases and expert examiners who also do the searching. As a result, there can be a tendency to start treating published patent documents as a special form of prior art but, with
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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. an unimaginative but skilled technician or scientist (depending on the subject matter of the patents), but 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, 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 exception where patent documents 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 publications 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 subject- matter may not be the earliest priority date of the patent application in suit as the subject matter may have been added later (that is, at the time of filing another application whose priority is claimed or at the time of filing the application in suit). It is unusual in prosecution to have to consider whether the publication date of the prior art needs to be substantiated; normally the cited prior art (for example, a patent document) is a clear-cut publication, rather than say, an allegation of an 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 enough detail in it enabling the skilled person to work out its content WWW.CIPA.ORG.UK
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rather than being, for example, a black box, because, again, non-enabling prior art documents 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 also extremely simple, at least in principle. 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 (likewise, if a document describes different items, then novelty is generally addressed on an item by item basis). If some of those documents (or separate items within the same document) 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: 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 (and the same reasoning applies to when there are many described items within the same document), 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 PATENTS TRAINING MANUAL: 2022
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Table 1 – A simple example for a case with independent claim 1, dependent claims 2 to 4 and prior art instances D1 to D5 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
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 set out in the table above. 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.
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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 and 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
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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 their 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 sometimes been swayed on inventiveness by evidential issues such as commercial success/long felt need, and sometimes by 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 disclosure set forth in a single document or an obvious combination of two disclosures set forth, for example, in two different 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 WWW.CIPA.ORG.UK
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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 is 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/or 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. This approach is described at length in the Guidelines for Examination Part G Chapter VII 5 but in practical terms, the steps are fairly straightforward: Identify the closest prior art, for example the most sensible starting point for the problem addressed by the invention and/or document with the most features in common. • Identify the novel features over the closest prior art. • Identify the technical effect resulting from those features • Explain the ‘objective technical problem’ with the prior art solved by the technical effect. • Explain why it would not have been obvious to import those features from other prior art documents to solve the problem. A detailed discussion of how to use the problemsolution approach is presented later in this chapter. It PATENTS TRAINING MANUAL: 2022
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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 added 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. Don’t be confused by the priority year here; the priority year merely allows you to file another patent application that incorporates subject matter which benefits from the earlier priority date (and may incorporate additional subject matter, which will only be entitled to the filing date of the new application). This basic rule 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 326
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. Generally, it is far less problematic not to have to remove features from the claims during prosecution, and it is good practice to bear this in mind at the drafting stage. 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 added to a claim during prosecution is then found during opposition proceedings to be added matter because it was not disclosed in the application, and no useable alternative definitions of that feature are available from the application as filed. This ‘inescapable trap’ can be an irremediable situation – the feature is not permissible but removal of it comprises an impermissible claim broadening and the patent can be irrevocably invalid in those circumstances. The
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EPO Guidelines for Examination delve even deeper into these topics at Part H Chapter IV 2. 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, if such an objection is raised, it is then usually very difficult to handle if amendment of the description is required, as this almost inevitably would add matter. However, there may be cases where the invention is framed so broadly in the claims that some aspects of it cannot 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. WWW.CIPA.ORG.UK
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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 pregrant, 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 Clarity objections can take various forms. At its most extreme, the claim simply doesn’t make sense and needs rewriting – this can occur for example because of translation issues and can be overcome, as long as there are not added matter problems in any such clarifications (in practice, however, this may turn out to be very tricky). Two other main sources of clarity objections 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 (at least without unduly limiting the scope of the claims). 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, clarity objections 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 PATENTS TRAINING MANUAL: 2022
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goes, assuming that the socket is not intended to be part of the claim. 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 ‘the crank shaft rotating at X to Y RPM’. It is not possible for a third party to assess a nonoperating 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, for example using slightly different wording, 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 referring to the cited prior art, acknowledging trade marks, formatting of the application (for example adjusting the description so that it is in line with the amended claims) 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.
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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 provides 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 second phase 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 EPO effectively combines the two phases by issuing written opinions with its search reports to give extended European search reports (EESRs). These written opinions are effectively the first examination report. 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 two-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 amenable to multiple iterations, that is an examination report, response, further examination
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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 (the so-called ‘compliance period’). Exceptionally, a hearing may be appointed at the patent office in cases where agreement cannot be reached on a patentable form. At the EPO the periods for responses vary dependent on the nature of the communication and are discussed at the examining division may issue further examination reports, if they are not satisfied by the response to the EESR. However, they are at liberty to terminate the proceedings and move to oral proceedings, or ‘hearings’ (assuming that they were requested), if they feel that no further purpose is served by continuing the proceedings in writing, typically after two or three iterations. It would be useful to ask your trainer for their experience of when they tend to see hearings appointed. 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 (although the shift to videoconferencing has massively simplified the procedure) 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 WWW.CIPA.ORG.UK
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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. 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 does not happen. 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. Furthermore, as it is very difficult to introduce fresh Auxiliary Requests at the appeal stage, it is in fact best practice to ensure that all requests are submitted prior to any decision at the examination stage.
17.3 The role and duties of the patent attorney in prosecution matters The patent attorney’s duty is essentially to their 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 PATENTS TRAINING MANUAL: 2022
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response, therefore, it vital to remember what our role is: that of someone who 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 they raised and to satisfy themself that, for example, the patentability criteria are met and that they 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 they have any leeway or discretion, they may exercise it to make themselves feel a little bit better.
17.4 Reporting to the client and securing the best possible instructions 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 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 330
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 indications are provided or 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 patent offices around the world relating to your client’s applications pending before those offices. As communications from those patent offices will usually be forwarded to you by local agents, in the relevant jurisdictions whom you are instructing (your firm may refer to these agents as your ‘overseas 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 the best possible way, that is in a way that maximises the chances of this object coming about. This sounds
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simple enough, but the information that you will need pass on to your client will vary from case to case and will generally depend on the patent application at hand, the objections raised by the examiner and - importantly - the type of client, and the way they process the information and advice that they receive from you. The following factors should, therefore, be borne in mind.
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 them, 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, for example a client that has already worked extensively with patent attorneys and has already obtained many patents. 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 inhouse 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 WWW.CIPA.ORG.UK
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step argument that respond to the specific UK and EPO requirements. 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-inventivestep objection. Special consideration should be given to cases in which the client does not have English as their first language. In such cases, an attorney whose reporting letters are expressed in clear, simple, language increases their 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.
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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.
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 an 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 30 period’ or ‘compliance 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 (or to instruct you to study the communication and propose a way forward). 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:
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• 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 (especially, if you are requested to study the communication and any relevant prior art, and propose amendments and/or arguments for responding). 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 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.
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17.4.6 Examination reports
17.5 Preparing a response
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.
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.
17.4.7 IPO and PCT 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 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, clients less-familiar with seeking patent protection may require and welcome more in the way of explanation. The helpful attorney will also offer in their 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. In the case of an international search report and written opinion of the International Searching Authority (this will usually be the EPO for UK-originating cases) there may be benefit in providing, with the client’s consent, a more detailed review as this can help with deciding whether it is worth continuing with the application at the costly national/regional phase in view of the prior art raised.
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
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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 section is principally directed 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 themselves in the examiner’s shoes.
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 why you think they are wrong without being rude. 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
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 334
The next section of the response should briefly identify any amendments made in the response and should direct the examiner to basis for those
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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. If necessary (for example when the claims are amended to include wording which might slightly differ from that in the description), you should in this section also provide at least some basic arguments as to why the amendments are – in fact – properly based in the application as filed.
mentioned, 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. 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.
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 for example by tracked changes.
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.
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 they prefer, 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. As
EPO examiners often object that a lack of clarity arises because one or more independent claim 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 EPO Guidelines for Examination F-IV-4.10 for more on this.) One way
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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 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 (although the latter approach may simply shift the objection to one of lack of conciseness). 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. This may still be considered good practice even though the examiner nowadays provides one further opportunity for filing a divisional before they forward the present application for grant – in the form of an intention-to-grant letter. 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 (and even for different items disclosed within the same document, so long as there is no disclosure in that document that somehow that feature can be incorporated in all the different items). In other words, it does not matter 336
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 they believe 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 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 relied on in the examination report, 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 streamline the prosecution by avoiding the issuance of a further official communication.
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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. However, even documents categorized in category A can sometimes include disclosures relevant to patentability which may have been missed by the examiner’s review. It is therefore good practice at least to perform a cursory review of any documents cited in category A to satisfy oneself that indeed they are of no more relevance than background 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 WWW.CIPA.ORG.UK
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likely to grant the patent? 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 they come 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 essential features of the invention, can cast doubt on the extent of protection conferred by the claims. The patent offices express concern that 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 by ensuring that the statements of invention are a word-for-word repetition of the features of the claims. However a much simpler approach – but please check your trainer’s preferences – is replacing the statements of invention with a phrase such as ‘According to one aspect of the invention, there is provided [a widget] as defined in claim 1 of the claims’ or similar wording. 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, or you can, even more simply, say ‘the invention is set out in the claims’. If the claims has been amended such that one or more PATENTS TRAINING MANUAL: 2022
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embodiments are now no longer covered by the definition of the invention, then the description will also need to be amended that those embodiments are no longer referred to with ‘special’ words such as – in fact – ‘embodiment’, ‘example’ or ‘occurrence’ of the invention. 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. However, say, the applicant may wish to file the voluntary amendments to bring the claims in line with the claims that have been granted in another jurisdiction and which the applicant believes will also achieve the same objective before the IPO or EPO with the least resistance. 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 their 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 ‘problemand-solution’ approach in assessing whether or not a claimed invention is obvious and so involves an inventive step. Although there is theoretically no requirement for the attorney to follow this approach in presenting their arguments on inventive step, EPO examiners do think in these terms and it is definitely best practice. A reasonable argument that follows this approach therefore stands a very good chance of convincing the examiner. The approach has five 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. In practice the examiner will probably have selected a closest prior art document and it is usually unconvincing to argue against that selection – discuss with your trainer their preferred approach. Step 2 – identify the distinguishing features
e second step is to identify the features of novelty Th 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, for example, as the ‘distinguishing features’, as explained above. Step 3 – identify the technical effect
Now we need to identify the technical effect over the closest prior art provided by the distinguishing
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features. We can illustrate this by example – imagine your invention is a chair and 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 and the technical effect is that this provides something against which a user can lean. In practice the EPO requires the effect to be at least implicitly derivable, so you should identify where the effect is disclosed – or implied – in the application as part of your argumentation. Step 4 – formulate the objective technical problem
The fourth step is to identify a technical problem that is solved as a result of the technical effect achieved by the distinguishing features. This is referred to as the ‘objective technical problem’ because it arises (so it is said) objectively from the problem-andsolution approach. This distinguishes the problem from the ‘subjective’ problem with the prior art that is sometimes discussed at the start of a patent application (at a time the closest prior art may have not been known to applicant). 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. We look at this using the chair example above. 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 WWW.CIPA.ORG.UK
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solution and indeed the EPO does not permit such a formulation. 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 5 – would it have been obvious?
The last 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 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 and of the so-called ‘general knowledge’ of the skilled person. It should be noted that the question here is not could the skilled PATENTS TRAINING MANUAL: 2022
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person have adapted the closest prior art, but would they have done so? Whilst a good degree of attorney skill is also necessary in the fifth 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. • 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 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, they would not arrive at the claimed invention. This argument can be summarised as ‘the other document does not disclose the solution’. 340
• 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. • As a variant on the last point, it may be possible to argue that the closest prior art contains teachings that would dissuade the skilled person from adopting features of the other prior art. 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 a technical effect and (iv) an objective technical problem solved by those features; and (v) 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 two steps can be done in a few words (and, often, by referring back to the novelty analysis which is already part of your response); but the third to fifth steps usually require 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
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inventive step argument might be constructed. Other approaches will be equally valid and may be more appropriate in certain cases. [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: as mentioned above, 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: the technical effect
‘The technical effect of the distinguishing features is… (Here you will list advantages associated with the feature and if possible refer to the relevant passages in the application setting them out.)
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 some way 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 their 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 94(3) 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 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.
[Paragraph 4: the objective technical problem]
‘Hence the objective technical problem solved by the claimed invention providing these distinguishing features is that of…[insert problem here]’. [Paragraph 5: would it have been obvious?]
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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 PATENTS TRAINING MANUAL: 2022
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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.
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.
Auxiliary requests
Technical advantage
You may also file fall back amendments and arguments in the form of Auxiliary Requests as discussed in chapter 15.6.2.
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.
17.5.5 Responding to the IPO – specific considerations Inventive step
The IPO does not follow the EPO’s problem-andsolution approach. Indeed, a UK examiner is likely to be somewhat surprised by the sort of detailed, fivestep, 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, and Pozzoli SPA v BDMO SA [2007] FSR 37. 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
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, and in practice a strong technical argument is far more likely to meet with success before either jurisdiction). 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,
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.
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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.
and if the claimed invention includes that feature or arrangement, then this is suggestive of nonobviousness, 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 the skilled person 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
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argument that occurs to you may, however, be advanced. This can be helpful before the EPO too, and the structured approach described in relation to step 5 of the problem solution approach above can be easily modified for use before the IPO. 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. This is usually good practice, even though these days the examiner should provide you with 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 an 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 example, the PATENTS TRAINING MANUAL: 2022
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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
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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 trainer, who may have a particular view on the benefits are responding in the international phase, and you should look at the detailed discussion at chapter 16.7.6.
* This chapter was first written by Richard Howson and Gwilym Roberts (CPAs, EPAs – Kilburn & Strode) in 2008. It was revised and updated in 2021 by Gwilym and Marco Morbidini (CPA, EPA – Kilburn & Strode).
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Test your knowledge 1. Your GB patent application was filed 1 June 2014. Another GB patent application was filed 1 April 2014 and published 1 October 2015. 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?
Answers overleaf.
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Suggested chapter 17 answers and comments 1. See 17.1.2 2. See 17.1.2 3. See 17.1.2
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18
COMMERCIALISATION OF INTELLECTUAL PROPERTY By John Hull (Queen Mary, University of London and King’s College London)1
Outline This chapter outlines the basic principles in relation to the commercialisation of intellectual property. In particular, the chapter focusses on the legal instruments underpinning a commercialisation arrangement – assignments, licences, collaboration agreements, etc.
Learning plan Syllabus link: FC2 and FD1. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice). Time allocated: One or two days
Learning outcomes By the end of this chapter, you should be able to describe different approaches to the commercialisation of intellectual property. You will be able to outline key aspects of an IP licence agreement.
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18.1 Introduction There is no standard definition of ‘commercialisation’ of intellectual property (‘IP’ or ‘IPR’), but as the term suggests, it envisages the process of putting intellectual property to profitable commercial effect – in short, making money out of it. WIPO in its Guide to IP Commercialisation2 adopts the same basic theme: ‘Commercialization of IP is making money out of one’s ideas. As such, an idea has no value until one makes it into a tangible object and its utility has been proven such that others would pay to use, see, read, recognize or listen (to) that product. We define the commercialization of IP as a continuum of activities and actions that provide for the protection, management, evaluation, development and value-creation of ideas, inventions and innovations to implement them in practice. Prototypes and implemented processes lead to the development of products and services by entrepreneurs, startups, existing companies as well as governments resulting in economic and societal benefits.’
That IP has to be converted into an asset capable of earning money is in turn a reflection of three features of IP: • First, IPRs are negative rights – rights to stop rather than rights to do. The existence and ownership of an IPR is no guarantee that the owner will earn an income from it. A pharmaceutical company can use its patent to stop a competitor infringing the patent thus preserving its right to manufacture and sell the product covered by the patent. But that is an example of use of the IPR as a defensive mechanism – stopping an infringing act. • Second, IP is a property right and like other property rights, can be put to good effect as a means of generating an income. Section 30(1) of the Patents Act 1977 classifies a patent or a patent application as personal property which can be assigned or mortgaged – section 30(2). A patent or patent application is subject to the usual rules on the disposition of personal property – section
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30(3). What the latter means is, for example, that an individual who owns a patent and dies has their property subject to the same rules on disposition of property as other property in the deceased’s estate. And like other property, IP can be licensed to others to use in the same way as the owner of a house (in this case real property) can let the house to a tenant and derive an income from it. • Third, many innovations, however they are protected, need to be brought from a basic or raw state to one which allows the product or process concerned to be exploited commercially. This is often the case with innovations devised by universities and the commercialisation process3 envisages bringing bench science to an economically realisable state.
18.2 Sale of IP – assignment If commercialisation of IP is realising its value, then one of the easiest ways to do this is simply to sell it. A company might, for example, own a patent portfolio part of which is no longer relevant to the Company’s product range, so that portion can be sold. Another relatively common example is the sale of an insolvent company’s assets by an insolvency practitioner (a receiver or liquidator) for the benefit of its creditors. This part of this chapter will consider three different situations in which IP is sold as part of the commercialisation process.
18.2.1 Simple assignment of a patent or patent application This will cover the kind of examples given above. An assignment of a patent or patent application must be in writing and signed by or on behalf of the assignor – section 30 (6) Patents Act 1977. So, for a limited company assigning a patent or application, a duly authorised person must sign the relevant document. Section 33 of the Act requires the assignment to be registered to protect the interests of the assignee. If foreign patents or applications are included in the process, any local rules relating to the form of assignment or recording of an assignment must be complied with.
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A sale is effected by an assignment (see above) of the property rights in the patent or patent application in question. The assignment can be made by simple contract (most assignments will be made this way) or by deed. An assignment can be a simple document recording the following essential information: • The names of the assignor and assignee. • Identification of the patent or application concerned which will be the relevant application or registered number. If a sale of a patent includes any accompanying know-how this will need to be carefully and precisely identified (this issue is further considered below). • The consideration for the contract, which will usually be the purchase price. Wright Hassall v Horton4 suggests that no consideration is necessary to assign a patent, but the vast majority of assignments will show some consideration, even if that is only nominal consideration of one pound. • Any warranties agreed between the parties. A warranty is a contractual promise that a state of affairs exists or will exist at some future date. A standard warranty in a simple patent assignment will be that the assignor owns the patent or application (and any accompanying know-how), has paid any renewal fee and is not aware of any infringement of or challenge to the validity of the patent or opposition to the application. • The right to sue for any infringement of a granted patent prior to the assignment; • A governing law and forum provision to deal with any disputes arising from the assignment. It is common to see an assignment using the term ‘with full title guarantee’. This is a reference to terms implied on a transfer of property by the Law of Property (Miscellaneous Provisions) Act 1994. The implied terms are that the assignor has the right to assign; that it will do anything reasonably necessary to vest title in the assignee (i.e., an implied further assurance provision)5 and that the assigned patent or application is free of charges or third-party rights. Where the phrase ‘with limited title guarantee’ is used, this implies the first two of these terms. The third term is that the assignor has not encumbered the patent or application and is not aware that any third party has done so. WWW.CIPA.ORG.UK
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The benefit of using a deed to transfer the IP is that it avoids any issue over the adequacy of any consideration which can be an issue when some foreign rights are concerned. A sale by deed may also be required when certain organisations including charities (e.g. a university or research institute) sells its property. An assignee’s advisors need to be aware to carry out due diligence in these circumstances. Assigning know-how related to a patent is not so straightforward. There is no uniform definition of ‘know-how’ but the definition used in the EU Technology Transfer Block Exemption Regulation6 conveniently identifies its features: ‘know-how’ means a package of practical information, resulting from experience and testing, which is: i. secret, that is to say, not generally known or easily accessible, ii. substantial, that is to say, significant and useful for the production of the contract products, and iii. identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that it fulfils the criteria of secrecy and substantiality;
The difficulty is that ‘know-how’, however valuable, is not a property right.7 The protection of know-how in the UK is determined on the basis of a relationship of confidence rather than on property rights. So, it is possible to assign know-how? There is no satisfactory answer to this, but an assignment of a patent (or application) ‘… and any associated know-how…’ would be unlikely to be found ineffective and is the kind of transaction practitioners engage in regularly without difficulty. The key point to note is that definition of the know-how in question is the most important part of getting the assignment right.
18.2.2 Sale as part of a wider corporate transaction (often referred to as an M & A deal)8 Many businesses are bought to obtain their intellectual property rights. The purchase can either be a purchase of the shares of the company owning the rights or of the assets themselves. PATENTS TRAINING MANUAL: 2022
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The distinction is an important one. In a share sale, it is the shares which change hands. Ownership of the IP at the heart of the transaction does not change. The IP remains in the hands of the company. All that has changed is ownership of the company. In an asset sale, the IP is extracted from the company and it is the ownership of the IP itself which changes hands, which also means amending records of ownership of the patent/application in patent offices potentially in many countries which can be a time taking and expensive task. Both cases involve an often complex process of due diligence on information disclosed by the seller which is outlined below. IP to be sold as part of a corporate transaction will usually be identified in an information memorandum at the outset of the process or in discussions between the seller and buyer. In the case of registered rights this is generally straightforward and will consist, for example, of a list of granted patents and patent applications in various countries. In the case of unregistered rights such as copyright and designs, and particularly of know-how this is often less easy to do. The buyer’s lawyers will usually produce a Sale and Purchase Agreement (‘SPA’) which will set out the basis on which the acquisition is to take place. Critically, the SPA will also introduce a series of warranties designed to do two things, first to protect the buyer’s interests and second, to flush out more information about the rights being purchased. A fairly standard warranty a buyer will require is that the seller owns or is entitled to use (under licence) all of the IP needed to operate the business. A more extreme warranty that a buyer is unlikely to receive, is that the seller warrants that the IP in question is valid and enforceable. It is important here to remember what a warranty is. It is a contractual promise that a state of affairs exists or will exist at some stage in the future. A buyer needs warranties relating to the IP to provide an enforcement right if the warranty proves to be incorrect. By contrast, the seller wants to minimise its potential liability and can best do this by obliging the buyer to carry as much responsibility as possible 350
for investigating the IP (and any problems it may have) and thus to take responsibility for any decision to proceed with the purchase. In response to a request for information and in response to the SPA warranties, the seller will disclose information to the buyer and/or require the buyer to undertake searches and investigations as part of the due diligence inquiry. In the case of patents therefore, the seller will require the buyer to carry out a search of the IPO, the EPO and of any other country registries to check the existence of the patents, applications, their status and the existence of any third-party rights which may affect the patents, such as licences or security interests where the patents have been used as collateral against lending. The information disclosed will ultimately be set out in or referred to in a Disclosure Letter. In essence, the seller’s aim is to disclose as much information as possible to mitigate the effect of the warranty. This is the most important aspect of the process and is, in some ways, counter-intuitive. The seller makes a promise with one hand and immediately devalues that promise by disclosing information against it. So, for example, if a buyer wanted the seller to warrant that there were no thirdparty claims to the ownership of a patent, but the vendor disclosed details of a legal claim from a third party to the patent, the buyer has notice of the claim and cannot sue the vendor for breach of the warranty. The disclosure puts the buyer on notice of something contrary to the warranty, thus obliging the buyer to negotiate a solution to the problem or reduce the price it is prepared to pay or, ultimately, decide not to proceed if the problem is insuperable. The issue is made clear by considering the wording in a standard SPA which makes this clear: ‘The Seller shall not be liable for any Warranty Claim to the extent that the fact or matter giving rise to the Claim is fully and fairly disclosed in the Disclosure Letter with sufficient details to identify the nature and scope of the matter, fact or circumstance disclosed.’
When the warranties and other aspects of the SPA have been agreed, the transaction will complete. If it
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is a share sale there is no need to record any change of ownership of any patents or applications. In the case of an asset sale, it will be necessary to notify any relevant patent office of a change in the ownership of any patents and applications.
18.2.3 Assignment of IP commissioned from third parties This is a different aspect of IP assignment from the two previous situations but can be an important step in clarifying ownership rights which can in turn be essential as part of the commercialisation process, for example if there are rights to be sold to others – see above. Except where IP is created by an employee in the course of their employment9 (and readers are referred here to chapter 9 on creation and ownership of inventions and patents) property in whatever is created remains with the creator/inventor, unless and until there is an assignment to someone else. So, a business commissioning say, a consultant to devise some technology which produces a patentable invention will not, as a matter of English law, own any legal right to the invention so created until the consultant assigns legal title to the commissioner.10 Even assuming the business pays the consultant for their time, at most the business will have an equitable title to the IP created. The business can ask the court for a declaration that legal tile be assigned to it, on the basis that the clear intention was that the business should own the legal title.11 But cases like this are fact specific and it is not a guaranteed outcome that the court will make an order for assignment.12
18.3 Licensing Licensing13 is the main form of commercialisation for many IP owners. For example, the software industry relies almost entirely on non-exclusive licensing to generate income for IP owners. Although many IP licences have common characteristics, they do differ quite substantially from one another. This section concentrates on patent and associated know-how licences. WWW.CIPA.ORG.UK
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18.3.1 What is a licence? A licence is permission to do something which would otherwise infringe the licensor’s IP rights.14 A licence passes no proprietary right to the licencee. The licensee’s entitlement is entirely contractual and depends on the terms of the licence. A licence is a recognition of the fact that an IP right is a negative right – a right to stop rather than a right to do – which converts that negative right into a positive income generating right. The vast majority of licences are entered into on a commercial basis as the means of creating an income for the IP owner. Not all licences are necessarily aimed at producing an income. A licence may, for example, be entered into to settle an infringement claim where the alleged infringer puts validity of the patent in issue. Rather than take the risk that the defendant may succeed, the patent proprietor may simply grants the defendant a licence to do what the defendant was doing without permission – infringing the proprietor’s patent.
18.3.2 Licensing formalities Section 30(4) Patents Act 1977 provides that a licence may be granted under any patent. A licence does not have to be in writing,15 though the vast majority will be. Section 30(4) (a) also provides that sub-licences may be granted, and that any licence or sub-licence may be assigned provided the licence itself permits. Curiously, section 30(4)(b) goes on to provide that a licence or sub-licence ‘… shall vest by operation of law in the same way as any other personal property…’. It is not clear what this means. An exclusive licence under a patent may confer on the exclusive licensee the right to bring proceedings for infringement of the patent occurring before the licence.16 The grant of a licence is a registrable transaction17 and failure to register the licence may affect the rights of an earlier person with an interest if its interest was not registered.
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A jointly-owned patent proprietor cannot grant a licence without the consent of its co-proprietor.18 Section 67 Patents Act 1977 provides an exclusive licensee with the right to take infringement action for any infringement of the licensed patent occurring after the date of the licence.
18.3.3 Types of licence There are three types of licence: • An exclusive licence in which the licensor grants the exclusive right only to the licensee, thereby excluding itself from the right to use the patent concerned. An exclusive licence is therefore close to an assignment which is why the exclusive licensee has the right to take infringement action against third parties.19 • A sole licence in which the licensor grants a single licence but reserves to itself the ability to carry out the activities – manufacturing, selling and so on – licensed to the licensee. The licensee faces competition in the marketplace not from other licensees but only from the licensor itself. • A non-exclusive licence, in which the licensor can grant multiple licences to any number of licensees. Licences can also reflect the territorial breadth and scope of the IP in question. A patent proprietor with patent coverage in various territories may logically choose to appoint a different licensee in each territory to take advantage of the licensee’s skills and knowledge of the territory in question. Similarly, a licensor can license different activities to different licensees. A patent proprietor with a process patent which had applications in, say, the manufacture of foodstuffs for human consumption and separately for animal consumption, could license each application to different licensees even on an exclusive basis. Licensing involves the acceptance by both parties of restrictions on their activities and accordingly licensing activities are subject to competition law. This subject is considered in outline at the end of this chapter.
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18.3.4 The main elements of a licence agreement The component parts of a licence agreement will differ according to the IP content in question, but certain features will apply to most licences and these are summarised below: Parties to the licence
These must be legal entities, either (but rarely) an individual or incorporated bodies or other organisations having recognised legal character (such as a charitable body). Care should be taken to ensure that the licensor in a group of companies is the IP owner or otherwise has the right, via a sub-licence, to grant the licence in question. Recitals (sometimes headed ‘Background’)
These tend to be ‘scene setting’ paragraphs such as: ‘The Licensor owns certain IPRs and the Licensee wishes to obtain the right to use those IPRs on the terms set out below.’
Recitals have a limited legal function in that they are not operative (legally binding) provisions. They can, in limited circumstances, assist the court in interpreting an otherwise unclear operative clause. Operative provisions
The term ‘Operative Provisions’ means: those provisions of the agreement having contractual effect – in contrast to the Recitals (see above) – and which will appear under the words ‘It is Agreed as follows…’ Definitions
Getting the definitions right makes the agreement easier both to draft and to understand which is why most licence agreements contain a selection of defined terms, the most important of which will be: • ‘Licensed Rights’ – A reference to the IP which the licensee is permitted to use, most usually by reference to a schedule listing the patents and know-how in question; • ‘Licensed Products’ – the products made and intended to be sold using the Licensed Rights;
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• ‘Field’ – the scope of the licence by reference to a defined activity or field of use, for example, the manufacture and sale of products for use in foodstuff production; • ‘Territory’ – the country, countries or area (for example the countries of the EU) reserved to the Licensee; • ‘Know-how’ – the technical information (usually of a confidential type) accompanying the Patents licensed for use; • ‘Net Sales Value’ – the amounts received by the Licensee from sale of Licensed Products. This will usually be defined as the gross amount less trade discounts, applicable taxes, transport costs and refunds.
operate a licensed process or manufacture licensed products. • A ‘Milestone’ payment. This is usually paid when an event or goal is achieved, such as the first stage commercialisation of some bench science from a university licensor. • Royalties. These are the most common form of payment under a licence and are usually based on a percentage of the Net Sales Value (see above) realised on Licensed Products. Royalty rates vary considerably and reflect a number of variables, including: what the market rate for products or services of the kind in question; whether the license is exclusive, sole or non-exclusive; alternative products and so on.
Grant of rights
Other payment provisions
This is the most important provision in the licence since it defines the scope of the Licensee’s rights in terms of territory, field of use and its term. The language of the grant clause can usefully be tied to the terms used to describe infringing acts in section 60 of the Patents Act. A grant clause may thus be drafted as follows:
The licence needs to take account of other financial issues. The following are the main ones:
‘The Licensor hereby grants to the Licensee an exclusive licence to use the Licensed IP during the Term, to develop, make, have made, market, distribute and otherwise commercially dispose of the Licensed Products within the Field and in the Territory.’ Payments
The payment for a licence can sometimes be a simple one-time (‘fully paid up’) licence fee, but normally will be linked to one or more of the following: • A one-off fee sometimes associated with a patent and know-how licence where the fee is payment for access to the know-how element in the licence where the licensee needs access to that technical information to work the patent (often a process). A one off access fee of this sort may or may not be credited against royalties (see below) still to be earned. • A Technical Assistance fee. Again, this tends to be associated with a patent and know-how licence and, as the name suggests, is payment for the training of the licensee’s staff who will WWW.CIPA.ORG.UK
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• The currency of payment and any adjustments required to take account of currency fluctuations; • Sale of Licensed Products by the licensee to associated buyers (generally meaning companies affiliated with or in the same group as the licensee). To avoid sales at discounted prices, an ‘armslength’ sales process is required in these cases to protect the licensor against loss of royalty income. • Inflation-proofing. In a long term licence the parties may negotiate an adjustment mechanism to take account of inflation, based usually on any increase in the Retail Prices Index • Minimum payments. Often associated with the grant of an exclusive licence, the licensor may require a minimum level of royalty payments to allow the licensor to make a decent return on their research or other investment in the IP. A licensee faced with a minimum payments requirement must be sure that its use of the licensed technology will provide enough income to justify the minimum payments demanded. That in turn will reflect the licensee’s due diligence on the market, alternative products, competitiors and the uniqueness of the technology concerned. Accounting terms
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an accounting provision is included. This obliges the licensee to keep proper sales records and to submit those for the licensee’s scrutiny. Exploitation of licensed rights
These tend to fall into three categories: • Approvals and consents. Some products – pharmaceuticals or products requiring safety certification – need approvals from the relevant regulator before they can be put on the market. This will usually be the licensee’s responsibility so a provision to this effect is common in a licence agreement. • Product standards and advertising. A licensor will often require products and their associated advertising, to be made to a defined specification which is referred to, or even appended as a schedule to the licence. Specimen products and examples of advertising will usually be required to be submitted for the licensor’s approval as a licence term. • Sales efforts. To encourage a licensee to maximise its sales efforts and thereby to maximise the licensor’s royalty income, it is common to see a ‘best’ or ‘reasonable’ efforts provision. It is best to avoid this kind of terminology which is vague and has been interpreted to impose unusually high standards on licensees. If a provision of this sort is wanted, it is preferable to use a defined term such as ‘Commercially Diligent Efforts’ which can in turn be defined to require, for example, a minimum marketing spend. That at least sets a test for whether the licensee has made those efforts and thus sets a boundary for termination or the conversion of the licence from, say, an exclusive one to a sole licence. Warranties and indemnities in licensing agreements
Licensor warranties: A licensor should be in a position to warrant that it owns the patents being licensed. Ownership of any accompanying know-how is slightly more difficult. Know-how (confidential information) is not regarded in English law as a property right (see the discussion above on this). Leaving aside that theoretical hurdle, a licensor should nonetheless be able to warrant that it has the rights to licence the know-how. 354
A licensor will rarely be prepared to warrant that the licensed patent or know-how is valid since there is no effective way it can know that to be the case. Similarly, know-how is something that may be reversed engineered or independently created, in which case the licensor will have no claim against such a third party. Finally, a licensor will usually be able to give a conditional warranty that there have been no infringements of the patents and know-how by a third party. A warranty that ‘..so far as the Licensor is aware…’ (provided it is true) should be capable of being given. Licensee warranties: Since it is the licensee which is using, manufacturing and selling the products, it will be primarily liable for any product defects causing injury or loss to third parties. But injured third party purchasers or users may also be able to pursue a product liability claim against the licensor and so the licensor will wish to shield itself against such a claim. The licensee should therefore be able to provide a warranty (and supporting indemnity) to protect a licensor against a product liability claim. It is usual to limit liability in either direction by the insertion of a liability cap, which will almost certainly limit any claim for economic loss (e.g. loss of profits). Liability for death, personal injury or fraud, or any other liability that cannot be limited cannot be excluded by English law.20 Other limitations may be subject to a reasonableness test if challenged. Termination
This is a relatively standard provision and follows an established pattern. Both sides may terminate for the insolvency of the other or if the other (primarily the licensee) has changed control (eg if the licensee’s business has been bought) since the licensor will not want its technology – specifically any confidential know-how – to fall into the hands of a new owner of the licensee if that new owner is a competitor of the licensor. Other than that, termination for material breach is a standard provision. ‘Material’ here means something other than a minor breach and will include, for example, failing to pay royalties on the due date or
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allowing confidential know-how to become public. A breach clause will usually have a remedy period to allow the party in breach to remedy it, failing which termination will take effect at the end of that period.
Entire agreement: This is an important provision which sets out that all contractual obligations between the parties are contained in the agreement itself and not in any extraneous sources such as precontractual documents or any oral agreements.
Boilerplate21
This is the umbrella term given to a raft of reasonably standard provisions at the end of the agreement. Some of these provisions have more significance than others. There is a tendency to think that all boilerplate is the same and can simply be transferred between precedents. This is not the case. Some provisions, for example that a variation of the agreement must be in writing or on non-assignment of the agreement are standard. Others, for example a force majeure provision allowing the parties to escape from their obligations have come under close scrutiny with the Covid-19 pandemic and some have been found to provide ineffective cover. The boilerplate provisions which have most significance are the following: Confidentiality: In the course of a licence relationship, it is likely that both parties will disclose to one another some confidential information. A licensee may tell its licensor how it intends to expand into a new market, or the licensor might disclose some improvements to the technology which are in the pipeline. A reciprocal confidentiality clause is intended to provide protection for those types of disclosure against their misuse or unauthorised disclosure by the receiving party. Force Majeure: A force majeure clause is intended to allow contracting parties to avoid their obligations if they are prevented from performing them due to some overriding circumstances, such as floods, strikes, earthquakes and so on. The significance of force majeure provisions has been brought into sharp focus with the Covid-19 pandemic and the effect that that has had on contractual relationships. Assignment: If the contract does not prohibit a party from doing so, a contract may be assigned to a third party. In most cases a licence will provide that assignment to a third party can only be done with the consent of the other. WWW.CIPA.ORG.UK
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Law and jurisdiction: Contracting parties are allowed to choose which law they want to govern their contract. Similarly, they are allowed to select the jurisdiction and forum where any disputes will be heard. A licence between an UK licensor and UK licensee will normally have English law and the English courts as having exclusive jurisdiction.22 Where the licence has an international dimension then the choice of law and forum is open to negotiation. It would, for example, be possible for a UK based licensor and German licensee to have English law as the governing law and the German courts to exercise jurisdiction, with the latter applying English law with the assistance of an expert witness to do so. Where the parties fail to make provision in this area, complex issues of conflict of laws may arise as to which law and jurisdiction most closely affect the licence and it is to avoid this possibility that the parties will turn their minds to this important contractual provision. Most law and jurisdiction provisions will now include some reference to alternative forms of dispute resolution (ADR). In many cases the licence will obligate the parties to refer their dispute to mediation, a private method of settling disputes by agreement. In some cases, arbitration is chosen as the means of dispute resolution particularly where the parties consider privacy a key element in resolving their disputes.
18.4 Other forms of patent and know-how commercialisation Although sale and licensing are the main forms of patent and know-how commercialisation, patent proprietors may need to consider other forms of commercial activity. These are considered here rather more briefly than previous aspects of commercialisation.
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Joint venture agreements
There is no precise legal definition of a joint venture. In essence it is a strategic alliance of two or more parties to engage in a specific project or undertaking by the contribution of resources, by operating the venture and by sharing risks, profits and losses. The alliance can be a simple contractual one, the formation of a partnership (or a limited partnership) or, more often, the formation of a separate corporate vehicle (a limited company) in which the participating entities have a stake, usually a shareholding. A joint venture might be formed, for example, when a patent-rich (but cash-poor) company joins with a patent-poor (but cash-rich) company to exploit the technology on a joint basis because the cash-poor party was unable to do so itself. Or, a joint venture might be formed between manufacturing companies to expand into a particular territory because that form of undertaking was required or encouraged by local law or state subsidy. The main intellectual property related issues that need to be considered and settled when creating a joint venture enterprise will usually be the following:
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know-how to the joint venture but this will rarely happen. The licence will include not just existing patents but those yet to be granted. The scope of the licence, its territorial coverage and the circumstances in which it can be terminated require careful consideration. New or ‘Foreground IP’ If, as assumed, the new joint venture vehicle is a new company, and that company creates and develops new IP, it will, in the normal circumstances (and subject of course to its territorial location and rules of local law) be the owner of that new IP. This is normally distinguished from Background IP by defining it as ‘Foreground IP’. How this Foreground IP will be used by the joint venture company, and how it will be made available to the shareholding participants, for example by non-exclusive licence, has to be dealt with. Breakdown or termination of the joint venture One of the most important aspects of a joint venture agreement is how to deal with a decision to terminate the agreement, especially if the participating shareholders disagree on its future direction. The range of options and how disputes can be resolved is beyond the range of this chapter, but one patentrelated issue can be considered.
Due diligence on patents made available to the joint venture Where either or both parties are making their patents (and any related know-how) available to the joint venture, some due diligence is essential. The status, territorial coverage, validity and hence value of the patents needs to be determined. This is particularly the case where one party is committing cash and the other patents and know-how. Valuation of the IP, however complex, is usually an essential factor in such joint ventures.
Foreground IP will, it is assumed, be owned by the Joint Venture company. If the company’s business has come to an end because it has become insolvent, the company’s assets will be dealt with under the insolvency laws of the country in which it is based. Normally an insolvency practitioner (in the UK a receiver or liquidator) will take control of the assets, including any IP which is often the most valuable asset remaining) and sell that for the benefit of the company’s creditors.
Availability of existing patents and know-how Existing patents owned by participants in the venture are often called ‘Background IP’. The basis on which Background IP is made available to the new joint venture enterprise is a matter for negotiation, but is usually licensed on a non-exclusive basis. The alternative is for the owner to assign its patents and
If the joint venture comes to an end by consent of the parties, there will have to be agreement on how any Foreground IP is to be divided up or, more likely, assigned to one of the participating shareholders as sole owner and then licensed to the other. In some cases the parties will revert to joint ownership of the patents and know-how in full knowledge of the problem’s associated with joint ownership of IPRs.
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Toll manufacturing
A patent owner wishing to sell products protected by a patent or produced using protected process may not have the facilities to carry out manufacturing itself and instead chooses to outsource manufacturing to a third party. This is common in some parts of the chemical and pharmaceutical industry where special manufacturing facilities or premises are needed. Sometimes the patent owner may supply raw material to the manufacturer and also have finished products packed and badged with the owner’s trade marks. This type of manufacturing production is sometimes called ‘Toll Manufacturing’23 but could equally, and perhaps more accurately, be called outsourced manufacturing. The patent (and know-how) owner will need to license the manufacturer to manufacture the product and so the licence will be a very limited one confined to the activity of manufacturing. The major issue for the patent owner is one of maintaining the confidentiality of any licensed know-how, since the same manufacturer may well be using its facility to manufacture similar products for competitors. Process workers given access to the licensed know-how will inevitably learn aspects of it and accordingly protecting the know-how against leakage is a major issue for the patent owner. So these licensed manufacturing arrangements will also incorporate detailed provisions on confidentiality and the security of any confidential know-how disclosed to the manufacturer. Research and development collaborations
This section focuses mainly on collaborations between industrial or commercial parties (sometimes called ‘sponsors’) and universities or research institutes, for these organisations to carry out research funded by the sponsors, one of the main outcomes of which will be IPRs. It is of course possible for industrial or commercial companies to commission research from private organisations, in which case any IP produced will almost certainly be assigned to the commissioning party and few issues will arise. In the case of IPRs produced in a sponsored research deal, the IPRs will be assigned or, more likely,
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licensed to the commercial sponsor. The benefit to the sponsor is availability of the IP and for the university it is an increasingly important aspect of their activities and a significant contribution to their income, since successive UK governments have encouraged universities to engage in commercial research to supplement the research grant money they receive from the Funding Councils24 and from EU grant monies.25 This is an area of considerable complexity characterised by a succession of government initiatives designed to encourage more commercially based research.26 Most UK universities now have a technology transfer function aimed at monetising their knowledge and skills base. In addition there are other initiatives, such as ‘Technology Catapults’27 aimed at encouraging the commercialisation of research. This section will consider only a narrow range of issues which relate to these collaboration agreements and their resulting IP. It is useful to have a definition of ‘Research and Development’. The following one is take from the current EU Block Exemption Regulation on Research and Development Agreements:28 ‘…the acquisition of know-how relating to products and the carrying out of theoretical analysis, systematic study or experimentation, including experimental production, technical testing or products or processes, the establishment of necessary facilities and the obtaining of IPRs for the results’ (emphasis added).
The Regulation also defines ‘Exploitation of the Results’ as follows: ‘…the production or distribution of the contract products or the application of the contract technologies or the assignment or licensing of IPRs or the communication of the know-how required for such manufacture or application.’ (emphasis added).
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A suite of template collaboration and related agreements (including some patent and know-how licences) have been created to assist universities and commercial collaborators.29 These are called ‘Lambert Agreements’ after a report30 which recommended their introduction to provide some uniformity in approach to deals of this sort. The structure of a collaboration agreement is relatively straightforward. It’s key elements are: ▶ A defined project scope. ▶ Who will carry out the research, linked sometimes to a specific individual as principal investigator. ▶ How progress with the research will be reported. ▶ How existing (‘Background’) and newly created (‘Foreground’) IP will be dealt with. ▶ Payment by the sponsor which might be by an upfront fee for consumables, payment against defined progress (‘Milestone’ payments), salaries or student fees for research staff. ▶ Publication rights and confidentiality. ▶ Work standards and any warranties to support these. ▶ Termination provisions and dispute resolution procedures. Of these basic provisions, a number stand out as highlighting the tensions between commercial sponsors and researching institutions. • Project scope: Defining the project scope seems deceptively straightforward. But its importance lies in setting a boundary for the creation of new (‘Foreground’) IP and hence access to any existing (‘Background’) IP. It also sets a boundary for termination of the agreement if the project’s aims cannot be achieved. • Access to Background and Foreground IP. One of the reasons sponsors seek out universitybased research is to take advantage of existing experience which may be reflected in an existing IP portfolio which will be contributed to the project in hand. Access to Background IP for commercial purposes may be needed by a sponsor if any resulting Foreground has commercial potential and Background is needed 358
to complement it. Access will almost always be on non-exclusive terms, but the sponsor will need to carry out due diligence (preferably pre-agreement) on the status and validity of the Background. Access to Foreground now tends to be by licence rather than by assignment, or sometimes by way of an option to acquire a commercial licence. Patent costs and filing strategy decisions may be left to the sponsor even if ownership remains with the university. Licensing Foreground on this basis reduces the university’s risk and cost outlay and provides options for future remuneration as and when the Foreground is commercialised. One option is to provide exclusivity to Foreground to the sponsor with the opportunity to convert to non-exclusivity if successful commercialisation of the Foreground is not achieved in a specified timescale. The university’s interest here is in ensuring an income based on a percentage royalty income from the Foreground and any associated Background. • Confidentiality and publication. If any project Foreground IP has commercial potential a sponsor’s main interest might simply be to maintain its confidentiality. But that exposes a tension in this area which is sometimes unresolved. A university’s interests are bound up not with confidentiality but with disclosure and publication of research results, not least because the institution’s charitable status is based in part on the publication to and education of the public. An individual academic’s personal interest is equally linked to research publication as a requirement of his or her employment and to scale the academic career ladder. This tension is usually dealt with by a moratorium on publication to provide the sponsor the opportunity to remove any confidential information relating to the sponsor an/or to provide an opportunity to secure protection by filing a patent application. Ultimately however, if a sponsor’s commercial interests are linked to the confidentiality of any IP resulting from research, it would be better to avoid this kind of collaborative research.
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18.5 Patents as security (collateral) If the distinguishing feature of the commercialisation of a patent is the creation of value, then its potential as a device to provide security (collateral) for a loan cannot be ignored. The Patents Act 1977 defines a patent or patent application to be personal property31 and like other personal or real property, a patent or application may be used as security against lending. Section 30(2) of the 1977 Act provides as follows: ‘(2) Subject to section 30(6) below, any patent or any such application, or any right in it, may be assigned or mortgaged.’
Section 30(6) provides that a mortgage must be in writing. The only other applicable security right will be a charge, which is recognised by section 33(3) of the 1977 Act which provides: ‘This section applies to the following transactions, instruments and events… (b) the mortgage of a patent or application or the granting of security over it.’
This is confirmed by the definition of ‘mortgage’ in section 130(1): ‘“mortgage” when used as a noun, includes a charge for securing money or money’s worth and, when used as a verb shall be construed accordingly.’
A decision to grant a mortgage over a patent or patent application will be rare, given that a mortgage involves the assignment of ownership in the patent or application from the owner (borrower) to the lender (the mortgagee). Such a transaction will inevitably involve the grant back to the borrower of an exclusive licence so that the borrower can exercise its rights in the patent, albeit as a contractual licensee rather than as owner. The documentation recording the loan arrangement is a registerable transaction by section 33 of the 1977 Act.32 WWW.CIPA.ORG.UK
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For the lender, the advantage of the assignment by way of mortgage is that this is the most secure form of security. If the borrower defaults the lender has possession of the patent or application and can sell it (assuming there is an available market) to realise its security. The lender must inevitably do some due diligence on the potential value of the patent (in fact, almost certainly a portfolio of patents) as security. What is the age of the patent and its geographical coverage? What is its potential sale value and is there a ready market for such a right? And how secure is it from an invalidity attack? There is one major disadvantage of the mortgage for the lender which is the possibility of becoming involved in any legal action relating to the patent. Assuming the borrower was granted an exclusive licence, it would become entitled to take action to enforce the patent.33 The lender as proprietor would need to be added as a party to the proceedings34 and most lenders simply do not want any involvement in legal action even if their position against any expenses is protected.35 The standard method of taking security over a patent is by a charge, which is an equitable instrument because ownership remains with the borrower rather than being transferred to the lender. A charge can be a fixed charge over a defined class of assets – in this case, a patent or portfolio of patents, or a floating charge. The floating charge ‘hovers’ over a changing class of assets and only ‘crystallises’ when the borrower defaults and the lender seeks to realise his security, usually by appointing a receiver to sell the crystallised assets in question. The obvious benefit of a fixed charge is that the class of assets remains fixed and the borrower is restricted by the charge document to maintaining the asset (e.g. by paying renewal fees) and hence its value. By contrast, the floating charge allows the assets to change over time.
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18.6 A note on competition law IPRs are monopoly or quasi-monopoly rights. Licences of IPRs restrict the freedom of both parties and in principle therefore are anti-competitive. Their anti-competitive nature is increased because they are territorial. Thus, licensing patents and know-how on a territorial and/or field of use basis will be apt to contravene competition law rules which limit the extent to which licence agreements can contain restrictive provisions. So, competition law, whether on a national UK basis or, during the UK’s membership of the EU under EU laws, have a direct and limiting effect on how IPRs can be commercialised through licensing. This is a complex area and so this section offers only a brief summary of the relevant legal rules.36 During its membership of the EU, UK national competition law rules contained in the Competition Act 1998 and EU rules in the Treaty on the Functioning of the EU, specifically Articles 101 and 102, ran in parallel with one another. On 31 January 2020 the UK left the EU and entered a transition period to the end of 2020 and during that transition period, UK and EU law continued to run in parallel. From 1 January 2021, that no longer applied. National rules applied in the UK and EU rules were disapplied. However, UK organisations doing business with third parties in the EU are still subject to EU competition law rules. On 1 January 2021, the Competition (Amendment etc) (EU Exit) Regulations 2019 (SI 2019/93) came into effect and will adapt EU competition law rules so that they become a set of domestic UK rules. The licensing of IPRs has benefitted for many years from a series of block exemption regulations which apply specifically to various types of ‘vertical’ or technology transfer licences. These regulations provide a ‘safe harbour’ for licences which are drafted to comply with their terms. From 1 January 2021, the EU Withdrawal Act 2018 and the Competition Regulations will retain these block exemption regulations in an adapted form, so that UK national competition law continues to apply them on a
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national UK basis until the date they are due to expire as EU regulations. The block exemption regulations most applicable to IPRs are the following: • The Vertical Agreements Block Exemption (Commission Regulation 330/2009 on the application of Article 101 (3) of the Treaty to categories of vertical agreements and concerted practices). • The R & D Block Exemption (Commission Regulation 1217/2010 on the application of Article 101(3) of the Treaty to certain categories of research and development agreements). • The Technology Transfer Block Exemption (Commission Regulation 316/2014 on the application of Article 101(3) of the Treaty to categories of technology transfer agreement. This chapter provides only a limited consideration of EU and national UK rules as they affect patent and know-how licensing. EU and UK competition law contains two basic prohibitions: • agreements, practices or decisions which have the object or effect of restricting competition in the EU/UK; and • abuse of dominant market power. Only the first of these has any relevance to patent and know-how licensing. Agreements with provisions which restrict competition can escape these competition law prohibitions if they fulfill four conditions:
Chapter review This chapter has introduced you to the principles of commercialisation and some of the issues that need to be considered.
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• they improve the production or distribution of goods or promote economic or technical progress; • consumers benefit from this; • the restrictions are proportionate; and • the agreement does not eliminate competition for a substantial part of the products in question. Satisfying these conditions is onerous not least because the parties themselves bear the burden of self-assessment of the conditions. (It should be noted that many patent and know-how licences will escape the provisions of competition law even though they may contain prohibited restrictions because they are considered ‘Agreements of Minor Importance.’37 If the parties have a combined market share of less than 10% (if they are competitors) of 15% (if they are not competitors) the EU Commission considers that their agreement will not contravene Article 101.) To make life easier for contracting parties and their lawyers, the block exemption regulations have been introduced to make sure that agreements do not fall foul of the prohibitions and so, by complying with these rules, the parties can take advantage of the ‘safe harbour’ created by the regulations. The TTBER applies to licences of ‘Technology Rights’ between two undertakings. ‘Technology Rights’ means: patents, know-how, utility models, design rights, semiconductor topographies; plant breeders’ rights, supplementary protection certificates and software copyright. It also extends to an assignment of rights where the assignor retains some exploitation rights, mainly through ongoing royalty payments.
For the TTBER to apply, three basic conditions must be met: • The parties’ market shares must not exceed the following limits: – If the agreement is between competitors, their combined market share must not exceed 20% of the relevant technology and product markets; – If the agreement is between non-competitors each party’s market share must not exceed 30%. • The licence must not contain any ‘hardcore’ restrictions. • If the licence contains ‘excluded’ restrictions, it will not benefit from the TTBER but may be acceptable if assessed successfully under Article 101/Ch. I 1998 Act. ‘Hardcore’ restrictions for competitors prohibit price fixing, output limitations or market or customer allocations. Hardcore restrictions for noncompetitors prohibit price fixing or the restriction of passive sales into non-licensed territories. ‘Excluded’ restrictions by contrast, do not benefit from the TTBER but can be assessed as lawful under general principles. These are: • an exclusive grant-back of improvements; • a no-challenge clause on the validity of a licensor’s technology rights; or • between non-competitors, a restriction on a licensor’s right to exploit its own technology rights or restricting either party’s rights to carry our research and development.
Further work After you have read this chapter, set time aside to discuss this chapter with your trainer. If you are in private practice find someone who may have been involved in the commercialisation process with a client and discuss the role of the patent attorney in the process. If you work in industry, commercialisation is something that you may get the opportunity to be involved in already. You may have a commercialisation department that deals with this. In which case, take time to find out about what they do.
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Notes and references 1
John Hull is a solicitor, a consultant to a firm of patent attorneys and a visiting lecturer at Queen Mary, University of London and also at King’s College London where he teaches a course on the Commercialisation of Intellectual Property.
2.
WIPO Guide on IP Commercialisation (2015) by G.N. Keller
3.
A useful summary is contained in J.P. McManus: From Creation to Commercialisation (Oak Tree Press 2012)
4.
[2015] EWHC 3716 (QB)
5.
The term ‘further assurance’ means the steps a contracting party is obliged to take to complete a transaction to make it fully effective. These steps may include, for example, providing assistance to register the appropriate documents with a registry.
6.
The Technology Transfer Block Exemption (Commission Regulation 316/2014 on the application of Article 101(3) of the Treaty to categories of technology transfer agreement.
7.
Neither the EU Trade Secrets Directive (EU 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) nor the UK implementing regulations – The Trade Secret (Enforcement, etc) Regulations 2018 SI 2018/597 defines a trade secret or know how to be a property right.
8.
9.
See: C. Demetriades Intellectual Property Issues in Commercial Transactions (Sweet & Maxwell 2008) at Ch 3; N. Coulson (Ed) IP Issues in Corporate Transactions (Globe Law and Business 2015) Section 39 Patents Act 1977
20. Unfair Contract Terms Act 1977 21. For guidance on the meaning and drafting of boilerplate clauses see: M.Anderson and V.Warner Drafting and Negotiating Commercial Contracts (Bloomsbury 2016) Ch 8 22. Or Scots law and the Scottish courts, Scotland having a different legal system 23. The term ‘Toll Manufacturing’ is a US term. Reference is made to toll manufacturing agreements in: Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch); Rotam Agrochemical Co v GAT Microencapsulation GMBH [2018] EWHC 2765 (Comm) and Turbo K Ltd v Turbo K International [2020] EWHC 2078 (Ch). 24. UK Research and Innovation is the umbrella organization which brings together the activities of seven separate research councils covering the range of scientific, medical, social science and artsbased research. See: www.ukri.org 25. EU grant monies have been a major source of research funding for UK universities in a series of ‘Framework Programmes’, the latest one of which is FP 9. Generally see: https://ec.europa.eu/info/ research-and-innovation_en 26. Generally see: www.gov.uk/government/ organisations/innovate-uk 27. For details see: https://catapult.org.uk 28. The R & D Block Exemption (Commission Regulation 1217/2010 on the application of Article 101(3) of the Treaty to certain categories of research and development agreements) 29. www.gov.uk/guidance/university-and-businesscollaboration-agreements-lambert-toolkit 30. www.ncub.co.uk/reports/lambert-review.html 31. Section 30(1) Patents Act 1977 32. Section 33(3) Patents Act 1977
10. Section 30 Patents Act 1977
33. Sections 30(7) and 37, Patents Act 1977
11. For an example which examines equitable ownership (in relation to copyright) see: Griggs v Evans [2003] EWHC 2914 (Ch)
34. Section 67(3) Patents Act 1977
12. See for example: Robin Ray v Classic FM [1998] FSR 622 13. See: www.gov.uk/guidance/licensingintellectual-property where a skeleton licence can be found
35. Section 67(3) Patents Act 1977. 36. M. Anderson: Technology Transfer (4th Ed Bloomsbury Professional 2020) Part C 37. Notice on agreements of minor importance which do not appreciably restrict competition under Article 101(1) of the Treat on the Functioning of the EU (De Minimis Notice) 2014/c 291/01
14. Allen & Hanbury v Generics [1986] RPC 203 HL 15. Contrast trade marks where a trade mark licence must be in writing: Section 28(2) Trade Marks Act 1994 16. Section 30(7) Patents Act 1977 17. Section 32(2) Patents Act 1977 18. Section 36 (3) Patents Act 1977 19. Under section 67 Patents Act 1977 – see above
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19
INTRODUCTION TO ADDITIONAL TOPICS By Gwilym Roberts (CPA, EPA, Kilburn & Strode)
Outline Throughout the training manual we have aimed to provide as much detail as we can about the key areas the trainee needs experience of in the early stages of their career. The world of patents is a complex one, however, and there are many other topics that we could go into. Rather that overloading the manual with everything that one could ever know, in this chapter we provide a very brief overview of some of the other topics that we have identified that are useful to know about but perhaps aren’t essential parts of early training. Here we look at topics such as oppositions at the EPO (a huge topic in itself), appeal procedures at the EPO, reinstatement of cases, third-party observations, post-grant amendment opportunities, patent office opinions and renewal/annuity fees, and the key points the trainees need to understand about each of these.
Learning plan Prerequisites: Useful references for this chapter: • Oppositions (EPO): Article 99-105 EPC, Rule 75-99 EPC • Appeals (EPO): Article 106-112a EPC, Rule 97-110 EPC • Third Party Observations: EPO Article 115, Rule 114, UKPA section 21, Rule 33 • Post Grant Amendments: EPO Article 105a-c EPC, Rule 90-96 EPC, UKPA sections 27, 75, 76, Rule 35 • Patent Office Opinions (UK): section 74A, B, Rules 92-100 • Renewals: Article 63 EPC, Article 86, Rule 51, UKPA section 25, Rules 36-41A Guidance for the trainer: One or more of these topics will probably come up at some point during training – when they do come up, please ask the trainee to read through the relevant legal provisions and the commentary there and apply them to the situation in hand. Necessarily, the training manual cannot carry all information about all areas and so there will be room for augmentation of the basic information provided here on a case-to-case basis! Syllabus link: UK exams: FC1, FC3, FD1; EQEs: Papers A, C and D. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); and Technical (Skill Sets: Analysis and Advice, Prosecution). Time allocated: One and a half days.
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Learning outcomes By the end of this chapter, you should be able to explain the basics of each of the topics covered, and understand where the key legal requirements can be found.
19.1 Oppositions
grounds and any evidence required such as prior art demonstrating lack of patentability.
Articles 99 and 100 EPC are a good starting point for understanding the basics of opposition procedure. An opposition at the European Patent Office (EPO) provides an opportunity for third parties to obtain central revocation of a patent at the EPO. The alternative would be to seek revocation in national courts on a country-by-country basis. These two routes can be sought in parallel, and different jurisdictions have different approaches as to whether they will stay national revocation proceedings if there is an opposition in place. The key points of an opposition are:
19.1.2 Opposition procedure
• Any opposition must be filed within nine months of the date of grant of the European Patent. The relevant formalities must be completed by this date and there are no extensions. • The opposition must be based on the admissible grounds which include patentability, sufficiency and added matter. • Typically, oppositions follow a written procedure culminating in a hearing. Oppositions are always appealable to the EPO Boards of Appeal. • The outcome of the opposition can be that the patent is maintained unamended, or in an amended form. Alternatively, the patent may be revoked and this will be binding for all states.
19.1.1 Contents of the oppositions The opposition must contain a detailed explanation of the grounds of opposition (as set out in Article 100 EPC), the argumentation supporting those
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Once the opponent has filed the notice of opposition, the patentee may file a counterstatement. After that the EPO directs whether further written communications are required. In almost all cases, eventually the EPO Opposition division will issue a summons to a hearing (oral proceedings). This hearing may be in person or, more commonly at the time of writing, by video conference. Hearings typically last for a day also and at the end of the it the EPO will issue an oral decision. The decision is appealable to the EPO Boards of Appeal by any party adversely affected. For example, if the patent is maintained in amended form, both parties may appeal as this is a compromise from both perspectives. The appeal procedure is dealt with separately below, but roughly speaking follows a similar form and process to the opposition procedure and the final decision is binding without further appeal within the EPO in the vast majority of cases. It is not appealable to national courts.
19.1.3 Strategic considerations The opposition procedure is a very powerful and cost-effective way of knocking out a European Patent. It only relates to validity and not infringement, and unlike UK court proceedings, does not include cross examination or witnesses in the vast majority of cases. As a result, the costs tend to be lower; the hearings are also shorter which can also bring the costs down. As a result, an opposition is a very powerful way of proceeding although if reliance is
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made on subtleties of witness declarations it is not the most powerful forum. As mentioned above, an opposition can be mounted as part of a broader litigation strategy in view of its interrelation with national proceedings, but the potential power of a pan-European revocation is a strong bargaining counter.
19.2 Appeals We focus here on appeals at the EPO. The EPO can issue decisions are various points in the life of a patent application or patent. The decision might be that the application fails on formal grounds or it might be a decision that following examination and possibly a hearing, the patent cannot be granted. Post-grant, a decision may be issued for example by an Opposition Division that the patent is to be revoked. Any decision by the EPO can be appealed and the basic form is set out in Rule 99 EPC. At the end of the appeal procedure a decision will be issued which is not, usually, appealable further. In some instances it can be taken to the Enlarged Board but this is exceptional and will normally involve a very significant point of law; it should be assumed that the appeal decision should be the final decision in any case.
19.2.1 Form of appeal Similarly to the opposition, the appeal should set out the decision to be overturned and the facts, evidence and argument that support overturning it.
19.2.2 Appeal process Again, similarly to oppositions, typically the party will submit the full case at the outset. If the appeal is part of contentious proceedings (i.e., an opposition) the other side will be asked to file a counter statement; the EPO will then direct any further communications and, typically, call the party or parties to a hearing. The hearings typically take up to a day and an oral decision will be issued at the end of the hearing followed up by a written decision which, as indicated above, is typically the final decision of the EPO in the matter. WWW.CIPA.ORG.UK
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19.2.3 Strategic considerations In ex-parte proceedings, particularly examination proceedings, the appeal route is always available if it is not possible to get the Examining Division to agree to a preferred form of a claim. The Appeal Board is independent of and different from the Examining Division as a result of which you will have a fresh set of eyes to look at the case. However, the Appeal Boards are governed by the Rules of Procedure of the Boards of Appeal and an important aspect of those is that it is very difficult to augment your case and very difficult indeed to file any further amendments so that you do need to ensure that your best case and requests are introduced during first instance (i.e., before the Examining Division). Appeals can take quite a long time but they have suspensive effect so that if you have an adverse decision, this delay at least means that your case is potentially still alive a bit longer. In inter-partes proceedings (i.e., oppositions), the appeal is a fairly inevitable step in the process as one side will always be unhappy with the outcome of the first instance hearing; it should be factored into the cost and time estimates therefore for any opposition, and the amount of time it can take, and the suspension of the decision during the appeal proceedings, should be factored in. The final outcome of an appeal can happen rapidly at a hearing and it is always useful to think about the next steps – for example if you client should be issuing any press releases or communications to the trade depending on the outcome.
19.3 Reinstatement and further processing In some instances, if there is an error which gives rise to an application being deemed abandoned/ withdrawn or otherwise dying, there are provisions at both the UK IPO and the EPO for reviving it. Both have reinstatement provisions although the application of those differs rather, the EPO being stricter. However, the EPO has an additional route known as ‘Further Processing’ which can be obtained as of right for a more limited range of omitted acts. Many of the acts in relation to which further processing can be invoked are discussed in chapter 15.
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19.3.1 Reinstatement at the UK Patent Office Reinstatement of an application is governed by section 20A of the UK Patents Act. A request for reinstatement must be made within 12 months of the lapse of the application (Rule 32) and needs to include suitable argumentation and evidence to meet the requirement that the failure to comply with the requirement of the Patents Act was ‘unintentional’. An important point to note is that there are provisions for third parties who may have relied on identifying that the application had lapsed and started preparations to commit acts in relation to the invention. In particular under section 20B(4) of the Act if they began in good faith to do an (otherwise infringing) act they can continue. Hence there are risks attached with relying on reinstatement as an applicant.
19.3.2 Further processing at the EPO Further processing is governed by Article 121 EPC. If the applicant fails to observe a time limit they can request further processing within two months of the omitted act, including payment of a fee and completion of the omitted act. As set out in Rule 135, there are a number of omitted acts that are not covered by further processing – in those cases the applicant may still be able to use reinstatement which is discussed next. There is no deemed loss of rights in relation to further processing, for example it doesn’t give third parties a right to assume the application is dead and hence start preparations in good faith to infringe. However further processing should not be treated as another way of getting an extension; there is a fee attached which someone has to pay, and the register will record it as being withdrawn until the omitted act is completed which of course can be of concern to the applicant for other reasons.
19.3.3 Reinstatement at the EPO Reinstatement or re-establishment at the EPO is governed by Article 122 EPC. It is significantly more difficult to succeed on than further processing and relates only to a limited set of instances where nonobservance of time limits has led to the application
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dying in one form or another. Re-establishing cannot be requested for re-establishment which is a very neat anti-looping solution! The request needs to be made within two months of ‘the removal of cause of noncompliance’, typically receiving a communication that a date has been missed. However, unlike further processing, because re-establishment is for ‘difficult’ cases, it is possible that part of the problem was that the communication was not received and so there is an additional one-year cut off from the date of the omitted act such that there is some legal certainty attached. The requirements for re-establishment are more onerous because the applicant has to show that all due care was exercised – note that this is also a higher standard than the ‘unintentional’ requirement in the UK. Similarly, to reinstatement in the UK, third parties have additional rights in relation to re-established cases and in particular can continue preparations for using the invention if they were carried out during the period where the application was dead.
19.3.4 Practical considerations You will need to know the various processes above in detail to pass your exams, and also if anything goes wrong. If you are lucky in your career, you will never need to use any of them and all good practices should be built around never having to rely on any of the restoration procedures outlined above.
19.4 Third-party observations 19.4.1 Third-party observations at the EPO At the EPO third-party observations are governed under Article 115 and Rule 114. Observations can be filed before grant of a patent or during an opposition and permit a party to comment, principally, on patentability aspects. They can be submitted anonymously but they do not enter the party into proceedings; instead, the Examining (or Opposition) Division needs to take them into account but does not need to explain to the third-party observer what action they have taken. The EPO permits submission of the observations via an online form.
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19.4.2 Third-party observations at the UK Patent Office The provisions are similar before the UK Patent Office under section 21 and Rule 33 except that there are only provisions for filing third-party observations pre-grant.
19.4.3 Strategic considerations If a third-party is concerned that a patent, once granted, may cause problems then it is possible sometimes to prevent grant altogether if strong third-party observations are filed. Additionally, because they are anonymous, it is possible to submit them without giving away too much commercial information although often the recipient can, from a commercial perspective, guess where they may have originated from. They are not all-powerful; it is probably not worth submitting third-party observations unless you have a fairly strong case simply because you do not get to follow it up with the Examiner unless you file more third-party observations. On the other hand, there is a real benefit in stopping a patent being granted at all because no action can be started, however frivolous, in those circumstances. It is worth noting that a party is estopped (prevented) from resubmitting arguments or evidence which first appeared in third-party observations in a revocation or opposition proceeding, so that may not be a significant consideration. As far as third-party observations in oppositions are concerned, they can be useful but bear in mind that it does of course require an opposition to be in place. Hence, if a party has a real concern about a granted patent at the EPO, it may be very risky to wait for someone else to file an opposition and then rely on filing third-party observations because the opposition may never happen and then they will have to go to revocation in the national courts.
19.5 Post-grant amendment The UK IPO has always had provision in section 27 of the UK Patents Act for amending post-grant. The EPO has introduced similar provisions principally because before that parties were using oppositions
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to amend their own applications post-grant (e.g. for litigation or licensing reasons). In both cases the basic rules of amendment apply, namely that you cannot add matter, of course (see chapters 8, 10, 12, 14 and 17). Additionally, because we are looking at amendment after grant, there is a further requirement that you may not broaden the claims by amendment. In other words, nothing that was not covered by the originally granted claims should be covered by any claims amended after grant; as a result third-parties know that if they do not infringe the patent at the date of its grant it cannot be amended to change that (although you always have to watch out for divisionals and other family cases of course). Notably it is a ground of opposition before the EPO and revocation before the UK authorities that the claims cannot be broadened after grant. It is reasonably unusual to be involved in post-grant amendment procedure and so we do not go into full detail here other than to say that if you are looking at post-grant amendment it is probably quite an important case and you will definitely want to talk to your trainer!
19.6 UK Patent Office opinions Note that these are not available from the EPO, just the UK IPO. Patent Office opinions allow anyone to obtain an opinion from the UK office in relation to patent-related matters. The opinion is exactly that, it is not determinative or binding but can often form part of a mediation or arbitration arrangement where parties save costs by agreeing to accept the findings of the opinion. The courts are certainly not bound by the findings in an opinion although there have been cases where the opinion has received positive recognition. The opinion process is low cost and can be beneficial in some instances but again it is a fairly unusual step to take and it is worth discussing with your trainer as to the circumstances in which you should seek an opinion.
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Chapter review We have touched on a range of less common topics very briefly but hopefully at least you now understand the basics and where to read up on them in the EPC/ UK Patents Act. As they arise in your work life make sure that you talk about them in detail with your trainer and read around as much as you can to fully understand the implications in each case.
in chapter 15 and they are payable after grant in basically all territories. So, for example, when a European Patent application proceeds to grant you stop paying renewal fees centrally at the EPO and you start paying renewal fees in the each of countries in which the patent is validated. There is an interesting policy point here – if you look at the fee schedules for renewal fees they increase significantly towards the end of the life of the patent and this is to encourage people to stop paying renewal fees and allow patents to lapse if they are no longer of commercial interest, opening up the related technology to the public domain. Renewal fees are also very significant in ensuring that patent offices are correctly funded – the money patent offices receive from pre-grant fees is in no way enough to cover their costs, and so patent offices principally rely on a (presumably) successful patent to reimburse the public service they provide for all patent applications. Again, in most instances you will not be dealing directly with renewal fees as your business will have processes in place to handle them and the main areas where you will need to advise is in explaining the process to clients and, unfortunately, potentially
dealing with missed renewal fees. It is important for the applicant to understand the costs of a patent application do not end at grant (and in relation to European applications there is the additional cost before grant). Also, it is useful to understand when filing a divisional application before the EPO that ‘back renewals’ are paid as though the divisional had been filed at the same date at the parent – this can be very expensive if a patent application has been pending for multiple years. The cost of renewal fees can be highly relevant in budgeting for a larger portfolio – at the beginning of creation of a patent portfolio all of the budget is going to spent on drafting patent applications, in the middle, it will be spent on drafting applications and prosecuting applications in multiple jurisdictions, potentially, and later on it will also include renewal fees. If the budget does not change over that period, then it will be seen that less and less can go into drafting and more and more will be taken up be renewal fees eventually – hence the need to have a good understanding of the relevance of a patent later in its life and a policy of checking/pruning to make sure that the budget is well spent. As a final point of interest, in the UK under section 46, if you make licences to your patent available as of right then your renewal fees are halved which may be of interest for both budget management and also attracting potential monetisation. Make sure that you are comfortable with your understanding of the term of the patent as well. It will stay alive until you stop paying renewal fees but of course it does have an end point at 20 years. As touched on elsewhere, bear in mind that this is 20 years from the filing date and not the priority date; an easy way of remembering this is the maximum life of patent application from very first filing is in fact 21 years!
Further study • Look at the Guidelines for Examination at the EPO in relation to further processing and reinstatement. • Look at the UK IPO’s Manual of Patent Practice in relation to patent office opinions.
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Test your knowledge 1. What is the period available for filing an opposition at the European Patent Office (EPO)? 2. Can you file oppositions at the UK Patent Office? 3. Is it ever possible to appeal the outcome of an appeal at the EPO? 4. Name the principal types of ways of getting a patent application back at the UK IPO and EPO. 5. Is it possible to file third-party observations after grant at the UK IPO or EPO? 6. Are there any other substantive requirements other than not adding matter applied in relation to post-grant amendment? 7. Is it possible to obtain a patent office opinion from the EPO? 8. If you have a European Patent application validated in the UK, where might renewal fees have been payable? Answers overleaf.
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Suggested chapter 19 answers and comments 1. Nine months from the date of grant 2. No. 3. Yes in exceptional circumstances to the Enlarged Board of Appeal. 4. Restoration (UK IPO), reinstatement (EPO), further processing (EPO). 5. EPO: yes, in an opposition. UK IPO: no. 6. Yes – you cannot broaden the claim. 7. No. 8. At the EPO while at was pending, then at the UK IPO.
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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 WWW.CIPA.ORG.UK
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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 Brexit – 4.3, 4.6, 4.8 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, 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 PATENTS TRAINING MANUAL: 2022
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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 DABUS patent application – Chapter 12 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, 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
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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 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
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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 time – 14.1.7, 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
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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 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
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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 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 – 15.6.7 374
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
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
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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
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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 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 PATENTS TRAINING MANUAL: 2022
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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 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 Thaler v The Comptroller-General of Patents, Designs and Trade Marks – Chapter 12 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
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
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 Rhône-Poulenc Rorer – 9.5
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, 17.5.2 376
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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.
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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 3,000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
The Patents Training Manual
The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK.
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.
2022 Edition
Features include: • Authoritative chapters written by fellow IP professionals 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
The Patents Training Manual
Price: £75 I S B N 978-0-903932-72-1
9
PTM-2021-Covers.indd 1
780903932721
Editors: Gwilym Roberts and Debbie Slater
2022 Edition
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