Williams Powell

British and European Patent and Trade Mark Attorneys

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Robert Jehan

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Over the past few years, the assessment by the European Patent Office of any amendments made to an application or patent in connection with the issue of added subject matter has been extremely strict.  The commonly applied test has been to require the amendments to be supported word for word in the original specification and ascribed directly to the subject matter being claimed, that is not to any one specific embodiment only.  This often led to an applicant or patentee being prevented from amending the application or claims beyond the very strict wording of the written description as filed, irrespective of what the application actually taught the skilled person.  While such a stance can be mitigated with very careful drafting of the specification in the first instance, it has led in our experience to many applicants being denied the opportunity to make the most of their patent applications.

The EPO has finally relented on this test, we believe following the realisation that some applicants were being denied protection for patentable subject matter which the skilled reader would have been able to gather from the disclosure in the application.  The EPO is changing the threshold for determining added subject matter from a strict forensic legal examination to seeking to understand what the skilled person would have made of the original disclosure and therefore the extent of the original teaching.  The change in the EPO’s approach began formally with the decision of the Enlarged Board of Appeal of the EPO, which is equivalent to the Supreme Court,  in its decision G2/10.  The Enlarged Board of Appeal held that an amendment should be regarded as introducing subject-matter if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art.  In other words, when assessing an amendment for added subject matter, the focus should be on what was really disclosed to the skilled person in the application as filed.  In particular, the Examiner should avoid disproportionally focusing on the structure of the claims or the literal wording of the original text, to the detriment of what the skilled person would have directly and unambiguously derived from the application as a whole.

This is a welcome change in practice but we expect will take some time to become habitual in the practice of the Examining and Opposition Divisions of the EPO.

Notwithstanding this change, we expect that the EPO will maintain a relatively strict approach to the assessment of added subject matter introduced by amendments made to an application or patent.  Careful drafting of the original application therefore remains of paramount importance.  In this regard is it critical to keep in mind that the EPO will be looking for technical pointers to the skilled person in the original disclosure, which is likely to put legalese often introduced into patent specifications into the spotlight.  That is, we expect the EPO to continue to view evidently legal phraseology with scepticism.  Examples include numerous long lists of options for certain elements of a device or method, generalised broadening passages relating to alternatives and so on.  Additionally, we do not expect the EPO to relent in its assessment of new claim combinations not originally covered in the application, making it important to ensure that multiple dependencies are included in PCT and European applications at the time of filing, that all alternatives are carefully tied to all of the embodiments to which they are intended to apply and that they are clearly distinguished from other features not essential with those alternatives.  We would be happy to advise on specific cases or in connection with specific issues.

 

Tagged in: EPO patents

There are two primary schools of thought in patent litigation proceedings in Europe: 1) the unitary trial system followed for example by the UK Courts, where the issues of validity and infringement of a patent are heard together in front of the same judge or judges, and 2) the bifurcated system followed for example by the German Courts, where validity and infringement are decided in separate proceedings that are heard in different Courts at different times.  There are, of course, competing views as to which system is ultimately better and in fact both routes are made available in the Rules of Procedure of the forthcoming Unitary Patent Court.  Given that the UK and Germany handle the majority of patent litigation in Europe, this is not surprising.

Leaving aside the question as to which system is ultimately best, problems can arise with bifurcated proceedings in that a trial on validity of a patent can often occur after the trial on infringement.  The unfortunate result is that a decision may be reached on infringement of a patent which is subsequently revoked or materially limited in scope.  Until a decision on validity is reached, the alleged infringer is put in a very difficult position, both legally and commercially.

The German infringement Courts, though, are known to stay infringement proceedings where it can be demonstrated that there is little chance the patent will survive the validity attack.  It is here that UK procedures are able to assist and we have been successful in doing so for clients of ours.  The UK Intellectual Property Office (UKIPO) offers a Patent Opinion service, which provides a non-binding opinion on the validity of a patent effective in the UK (of which the vast majority of European patents are).  The procedure is simple and quick, leading to a decision within three  months of filing the Request for Opinion at the UKIPO.  The procedure is entirely written with no hearing.  The requester must set out its case fully at the start and the patent proprietor is given the opportunity to respond, to which the requester can then reply.  As the procedure is straightforward, costs are only a small fraction of full litigation proceedings, in total generally between $10,000 to $20,000.

A word of caution, though, is that the UKIPO is generally conservative in its decision, so a good case must be made out from the start.  It must be borne in mind that the UKIPO may unilaterally revoke the patent following a negative opinion on validity, which is a significant sanction on the patentee.

We have been successful in stalling German patent infringement proceedings off the back on a UKIPO Patent Opinion deeming the patent to be invalid, causing the trial on infringement to be postponed until after the German Patent Court has determined the issue of validity.  This can be a very significant tactical advantage in litigation proceedings, and has the added bonus of creating official file wrapper records having statements from the patentee and the UKIPO as to the intended or appropriate scope of the claims.

As an Opinion can be requested by anyone, it is not mandatory for a litigant to make itself known to the UKIPO when requesting an Opinion.  We can be the official Requester.

In cases where a binding decision on validity is more appropriate, a formal revocation action before the UKIPO or our Courts can be expected to reach trial within 12 to 18 moths of commencement of proceedings.  We would be happy to provide you with more information of UK litigation.

A UKIPO Patent Opinion is not only potentially relevant in the course of litigation but can also be a very useful route for dealing with any question of validity of a patent.  An Opinion can also be requested on the question of infringement of a patent, for instance in connection with a prospective or theoretical product or process.

We would be very happy to discuss the UKIPO Opinion service and litigation in general should you have any questions.