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Testing The Waters With A UKIPO Validity Opinion - Intellectual Property - UK

As a result, there will be no change to the system used by UK-based patent attorneys to prosecute, oppose and defend patents at the EPO – in. Beware of unsolicited invitations in relation to intellectual property as WIPO, the UK Intellectual Property Office (UK IPO), the EPO and OHIM. The factual background found by the UKIPO Hearing Officer was as as the Hearing Officer had found to be the case in relation to parthenotes.

Taste of Nature instituted summary proceedings against Cresco, alleging infringement, with Cresco counterclaiming that the patent was, inter alia, not valid because it fell within the exception to patentability under Art.

On 31 JanuaryTaste of Nature's claims were dismissed by a process judge in summary proceedings, who held that the patent fell under Art. The judge stated that it was plausible that, under Art. The District Court, in proceedings on the merits, did not concur. The court held that the plant claimed in claim 1 and its 4 dependent claims did not fall under the exception in Art. The court reasoned that Art. The invention as claimed in claim 1, however, related to a plant, that is to say a product.

That the claimed plant is partly defined on the basis of the method of production did not alter that fact. Since the EPC in general, and Art. The court also held that granting patent protection for plants that are obtainable by essentially biological processes would not undermine the exception for essentially biological processes.

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It was argued by Cresco that the applicant for a patent could easily circumvent the exception by changing a process claim to a product-by-process claim. However, the court held that this argument did not take into account that the criteria for the grant of a patent for a method of breeding were different from those for a product-by-process patent claimed for a plant.

The latter was a product and could thus only be granted if the plant was new and inventive. It was not sufficient that the method by which the plant was obtained was new and inventive.

An inventor who had only developed a new and inventive variant of an essentially biological process could therefore not evade the exception by claiming his invention as a product-by-process claim.

In other words, the inventor of a new and inventive variant of an essentially biological process could only evade the exception by making a different invention which is not excluded from patentability and applying for a patent for such an invention. This did not lead to a dilution of the exception. The appellant countered that their publication date was not established. As a rule, information published online instead of on paper could not be precisely dated with any certainty.

It was hardly ever possible to show conclusively when it first appeared, and the internet archive was at best an indication that certain information had been publicly available online at a given date, and that it was worth looking for harder evidence. A webpage printed out from the archive was not sufficient evidence, even if the archive operator confirmed that the information it contained was the same as that in the archive.

On its own, therefore, it could not destroy novelty — for which the standard of evidence was in any case set very high. In this case, there was insufficient evidence that the webpage had indeed been publicly available on the date stated and with the content alleged.

Patents

The decision turned on whether or not the record of a meeting counted as pre-published and was thus prior art. The Supreme Patent and Trademark Chamber ruled that there was no public prior use if parties to information were under an obligation to keep it secret. The firms represented at the meeting were already in business with each other, and the meeting formed part of those dealings. It was in the marketing company's interest that the course of action discussed be kept secret.

The potential buyer and the salesman who had a contract with the marketing company must have been aware of that. The meeting's purpose was to devise, in the interests of all concerned, a strategy making it possible to produce an improved product without the drawbacks discussed. Under these circumstances the opponent and its marketing company could legitimately expect both the buyer and the salesman to maintain secrecy — and, in line with that expectation, the footer to the memo recording the meeting instructed the reader to take due care in that regard, pointing out for example that such protection as was available under the law was invoked in respect of the documents' form and content.

The Chamber dismissed the opponent's appeal and confirmed that the patent was maintained. The burden of proving that the patentability conditions were not fulfilled thus lay with Lexmond, whose reading of the patents, in the court's view, was general, imprecise, and glossed over their specific points.

Claim 1 of European patent 1 was directed not to a device for adjusting a beam by pivoting the reflector which was indeed known but to such a device characterised in that the light source was fixedly mounted in the housing and the tilting axis of the reflector passed close to the source.

So to justify revocation, it was not enough to show merely that reflector-pivoting beam-adjustment devices already existed. Similarly, claim 1 of European patent 1 was directed not just to a means for adjusting the reflector's position using a threaded screw that too was known but to such a means that ensured resilient contact between the screw and the toothed wheel.

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The claimant had submitted photographs of headlights manufactured before the priority dates, but they were inconclusive. Simply asserting that the older patents had the same purpose — headlight adjustment — was not enough. A patent was for technical matter, not a result. Novelty had to be "compact". In other words, to destroy it a citation had to contain all the features claimed; different documents could not be combined. The court refused a request that it stay the infringement proceedings pending the outcome of oppositions at the EPO, noting that national courts did not have to do that automatically in such circumstances.

That would deprive patentees of protection even where oppositions were spurious. In this case, there was no serious reason to believe the oppositions might lead to the patents' revocation, so the court saw no need to stay its own proceedings. The essence of the claim as granted had been part of the prior art at the priority date and so was not novel. The claimed display unit was fully described in the manual issued to purchasers.

The manual contained instructions and guidance on how a monitor could be connected to a computer via an interface in such a way that it no longer had to be set up manually and could instead be controlled via the computer. It could be gathered from the block diagram of the interface that data was exchanged via it in both directions between the computer and the monitor. In the Court's view, the manual thus disclosed the essential features of the patent. It made no difference that it was stated on the cover page that the information in the manual was the patent proprietor's "property" and intended solely for developing software using an interface with the monitor.

Nor could any obligation to maintain secrecy be inferred from the fact that it was impermissible to reproduce the manual or use it for any other purpose without written consent. Accordingly, the technical teaching of the claim at issue had been made available to the public in the manual.

Occlutech alleged invalidity on the ground of anticipation through the patentee's own prior disclosure of the invention to doctors at the hospital where the first clinical trials of the new device were carried out.

In this context it was necessary for the court to consider whether the disclosure to the doctors who carried out the procedures placed them under an obligation of confidence since a disclosure only formed part of the state of the art if it was made available to the public; and for this purpose, it must have been made available to at least one person who was free in law and equity to use it Terrell on the Law of Patents, 17th ed.

This question was argued and decided according to English law. Thus, in A-G v Guardian Newspapers No 2 [] 1 AC Lord Goff set out the principle that "a duty of confidence arises when confidential information comes to the knowledge of a person … in circumstances where he has notice, or is held to have agreed, that the information is confidential, with the effect that it would be just in all the circumstances that he should be precluded from disclosing the information to others".

There was no suggestion that Prof M or Dr G was under an express obligation of confidence — they were not asked to sign any form of confidentiality or non-disclosure undertaking by AGA. The question was whether they were under a duty of confidence in equity. AGA had submitted that such a duty arose from the circumstances of this being a clinical trial of new medical devices.

In Roth J's judgment, there was no presumption of confidentiality simply because this was a clinical trial cf. Everything depended on the facts. Both doctors were emphatic that they were never given any indication or impression that the details of the devices were to be kept confidential.

The inventor, Dr A, had discussed the device and the procedure with them but had said nothing about confidentiality.

Prof M had spoken subsequently about the device in briefing sessions to other doctors in the hospital, and also discussed the device and the success of the clinical trials in a presentation to a wider medical audience at a paediatric congress.

Roth J stressed that the disclosure relied on by Occlutech was not that by Prof M to other doctors but that to Prof M himself. Prof M's wider disclosure was relevant to the question whether he was under an equitable duty of confidence to the extent that, if he were, his presentation at the congress would have breached it.

The judge considered that Prof M would never have wished to betray a confidence placed in him by Dr A. This demonstrated that he did not perceive himself to be subject to a duty of confidence. Since the device was, in Prof M's words, "revolutionary" it was natural that he would wish to speak about it, and the successful trials, to a wider medical audience.

It was reasonable for Prof M to assume that if the details were to be kept confidential, he would have been told something to that effect by Dr A beforehand. The judge did not consider, in all the circumstances, that just because this was the first clinical trial, Prof M ought to have known that it was fairly and reasonably to be regarded as confidential. It argued that prior art could be cited only in respect of what it actually described.

The courts could draw on the embodiment exemplified in the citation's description, but — since it was just an example — could not take into account, when assessing novelty, any other possible embodiments not described in the citation. Negma also argued that a pharmaceutical composition could be novel by virtue of its degree of purity, if that added something new to the art in a given context. It claimed such use in preparing the medicine in a particular dosage. It had, however, allowed a claim directed instead to the medicine's preparation for use in that dosage.

Contrary to what that court had held, a previously published clinical study of the administration of fish oil to heart-attack patients had given the skilled person cause to consider the use protected in the claim.

It was irrelevant for the patentability assessment that the study did not set out the biological reasons for the observed effects in detail. The Federal Patent Court had refused to consider this feature in assessing patentability, and also found that — even if it were considered — there was no inventive step.

The same had to apply to instructions relating to parameters of the claimed use other than the dosage. It was the EPO's decision-making practice not to restrict patentability solely to such uses or different dosage regimens; instead, it sufficed that the use in question differed from those known in the art — i. The same was true under German patent law.

The very wording of the relevant legislative provisions precluded a restriction of patentability to particular aspects of the use such as, for instance, dosage, and such a restriction could not be reconciled with the spirit and purpose of those provisions.

The specific use of a substance in a therapeutic treatment depended not only on the condition to be treated and the dosage but also on other parameters influencing the substance's effect such as the method of administration, the substance's consistency or the patient category and, therefore, potentially crucial to achieving the intended result of its use. Therefore, therapy-related instructions could only serve as a basis for patentability if they were objectively designed to give effect to, enhance, accelerate or otherwise improve the substance's effect, but not if they concerned therapeutic measures suitable for treating the condition in question only in addition to and independently of that effect.

The feature at issue in this case immobilising the hand was designed to improve the effect of the administered substance. It was therefore related to how the substance was to be used and so to an aspect to be considered in assessing patentability. The court also held that it was not enough for affirming patentability that an instruction to use a particular substance in a specific way was new, i.

Especially where, instead of bringing about a specific effect of the substance in question, a feature was used to prevent generally undesirable effects or to localise, or limit the duration of, the substance's effects, it was often a matter of chance whether there was any written document of its use also and specifically for that particular substance. However, there was no need for such document where it was clear that the skilled person would have contemplated using the feature at the priority date and there were no special circumstances rendering such use in the specific situation at issue impossible or impracticable.

Teva, which had placed a generic medicament based on raloxifene on the market, sought the patents' revocation. The Court dismissed the ground for appeal based on inadmissible extension of the claims Art. On the subject of priority, the Court held that the inventions merely had to be identical in order to claim the priority of an earlier patent application under Art.

That condition was met here. Teva asserted that claim 1, which was novel over the prior art only in terms of its specific patient population, was merely for a second therapeutic use because raloxifene was already known for therapeutic uses infertility, breast cancer, benign hypertrophy of the prostate. The Court, however, held that, while raloxifene was undisputedly already known for the other uses cited, the law applicable at the patent's filing date had in fact allowed European patents to be granted on the basis of claims directed, like those in question here, to the use of a substance for the manufacture of a drug for a new therapeutic application.

Teva's request for revocation of the other claims was also directed at the dependent claims. The Court held that claims 9 to 12 concerned specific dosage regimes for the administration of raloxifene and were not patentable, since dosage levels were determined by the physician prescribing the relevant drug, while the range of dosage levels was extremely large 0. It therefore revoked claims 9 to 12 for lack of inventive step. In its view, this was the most common administration form for the skilled person, so the claim had to be revoked for lack of inventive step.

In particular, the SMS standards did not support all the data fields specified in the e-mail standard. A skilled person concerned with improving a particular aspect of a data structure specified in an international standard would generally have cause to attempt to solve the problem by using mechanisms already part of that standard in this case: There might well have been an unlimited number of other possible solutions in theory, but the chance that a solution requiring a fundamental change to the established SMS standard could actually be implemented was negligible at best.

That was especially so in this case, since the additional benefit over the established standard achievable through the patented method, albeit not insignificant, was fairly limited. Consequently, a skilled person interested in practicability would have had cause to investigate primarily approaches entailing no change to the existing standard, or at least as minor an adaptation as possible. It was therefore obvious to seek solutions within the structures specified by the existing SMS standard.

Where a standard allows for only a limited number of possible solutions, each with its own specific advantages and disadvantages, the skilled person would normally have cause to consider all of them. The Court found that the subject-matter was not patentable because it did not involve any inventive step.

According to the Court's case law, to what extent the skilled person had to be prompted by the prior art to develop a known solution in a particular way, and how specific any such prompt had to be, was a question to be answered on a case-by-case basis after looking at all the relevant facts. Not only explicit pointers had to be considered. Specific features of the technical field in question might also be relevant. That was the case here. The simultaneous handling of two objects instead of one was part of the common general knowledge or "standard repertoire" in the relevant engineering field on which the skilled person could, and he would have a reason to, regularly draw in developing existing installations, particularly where it was a question of ensuring that working procedures were as effective, efficient and quick as possible.

They in turn asserted that the patent's claims were invalid for lack of novelty and inventive step. The Court of Appeal had expressly acknowledged inventiveness. The appeal was against that decision. On the alleged lack of inventive step, the Court of Cassation held that though lateral grooving or tongue-and-groove techniques were known as a means of assembling laths and holding them together, the skilled person — a cooper — would have had to overcome a prejudice and shown inventiveness to devise a method to manufacture cask bottoms with an assembly of parallel laths in sealed contact, using neither joints, studs, nor adhesive.

On this point the Court of Cassation upheld the judgment of the Court of Appeal. She had reacted by amending the patent in Inventive step The court upheld the first-instance decision to revoke the patent for lack of inventive step. The cited bag design from had already disclosed a non-detachable shoulder strap which could be slipped through leather rings on the handles.

Even though the patent application at issue had been filed many years later, the patented device had already existed, so the skilled person wanting to achieve the desired effect — a strap not sticking out in an unsightly manner when not in use — could readily do so merely by consulting the design. Even if that design had gone out of fashion by the time the patent application was filed, no inventive step was needed to implement it; it simply had to be adapted by a stylist or designer of fine leather goods, who would inevitably remember or have access to pictures of old handbag designs.

But this was not enough to show that it had not been obvious. It was clearly a logical development of the Medes model, which, although it had not been made for over half a century, had never been technically discredited. The amendments, made after the first formal warnings in and before the infringement action had been brought inwere admissible.

It was permissible to limit a French patent voluntarily with a view to ensuring its validity before bringing an action for infringement proceedings or, indeed, at any other time, e. The three successive amendments made in could not be considered dilatory or abusive, because patent proprietors were entitled to try to protect their patent as necessary in the light of prior art cited by alleged infringers before bringing any action against them.

EPO - I. PATENTABILITY

It had been held novel, inventive, and infringed. Contour was given leave to appeal on the grounds that the amendment was such that the patent was no longer infringed.

According to Beloit Technologies Inc. In the Court of Appeal judgment in Virgin v Premium, it was stated that only if no other possible construction was possible would the skilled man be forced to conclude that the patentee had claimed that which he knew was old. However, as it was not the practice of the boards of appeal to give reasons for their interpretation of claims he was not able to analyse their reasoning to see if he was persuaded by it.

Contour argued that the only distinction between the prior art document and the patent was the triangular shape of the headrest, which was arbitrary.

The conventional obviousness attack was based on the construction adopted by the Court of Appeal of the rearward space. It was a case where it was legitimate to ask why such a simple step, if obvious, was not taken by anyone else before the priority date.

Novartis disputed infringement and counterclaimed for revocation. The judge had held the patent invalid on the grounds of obviousness and because the claims were not entitled to the priority claimed. His decision was upheld by the Court of Appeal on both these points on priority see under chapter IV. Novartis had maintained that the judge mischaracterised the nature of the skilled team to whom the patent was addressed, However, Kitchin LJ considered that the judge had identified the skilled team correctly; according to Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [] EWCA Civthe court would have regard to the reality of the position at the time and the combined skills of real research teams in the art.

Where the invention involved the use of more than one skill, if it was obvious to a person skilled in the art of any one of those skills, then the invention was obvious. In the case of obviousness in view of the state of the art, a key question was "what problem was the patentee trying to solve? That led one to consider the art in which the problem lay. The notional team in that art was the relevant team making up the skilled person. The EPO will still conduct its own search and examination, and will independently consider whether the application meets the requirements of patentability under the EPC.

It is important to appreciate that a PPH request does not therefore guarantee allowance. The EPO examiner may raise objections and so make adverse comments on claims allowed elsewhere. The EPO adopts a particularly strict approach to assessing whether amendments have basis in the application as filed and may object that particular amendments unallowably add matter, even though allowed elsewhere.

The EPO examiner will also consider whether the claims meet the requirements of novelty, inventive step, support, clarity and enablement in accordance with EPC practice. Using PPH at the EPO seems to reduce the number of examination reports required to bring the application to allowance in at least some technical areas. This acceleration procedure is known as PACE.

PACE can be requested at any time for any application and does not involve the same formal requirements as a request for PPH. Requesting PACE does not entail the payment of any official fee and no reason needs to be given for the acceleration request. When seeking to accelerate prosecution of an application, a request for PACE has the same effect as a request for PPH, but a PACE request is less onerous, and it is more flexible in terms of claims that may be presented for examination.

In contrast, a PPH request will be placed on the public file.