Williams Powell

British and European Patent and Trade Mark Attorneys

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On 28 November 2016 the UK government confirmed that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA), which is part of the process required to establish the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way - with a single patent and through a single patent Court.

The court will make it easier for businesses to protect their ideas and inventions from being illegally copied within Europe.

UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market - and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The UK government will be working with the Preparatory Committee to bring the Unified Patent Court (UPC) into operation as soon as possible.  UK Law changes needed to give effect to the UPCA were passed by Parliament in March 2016. Ratification is handled by the UK Executive on behalf of the Crown.

The UPC is not an EU institution but an international patent court.  It is not, therefore, controlled by the EU institutions, save for its choice to have the European Court of Justice as the ultimate arbiter in disputes.  There is no reason why this choice could not be maintained even after the UK leaves the EU.

In this regard, the UPC has similarities with the European Patent Convention, which is also an institution set up under international law and is not an EU institution.  There are numerous member states of the EPC that are not EU member countries.

We welcome the UK government’s move to become one of the first European countries to press ahead with implementing the UPC, which is likely to become a very valuable tool for businesses across the world.

Should you like any preliminary advice on the UPC please do not hesitate to contact us.

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.

 

The UK Patent Box has enjoyed a good level of success.  According to the UK Government, by mid 2015 over 639 companies had used it and received a benefit totaling £335,000,000.  

Tagged in: Patent Box patents UK

A validation agreement has been reached between the European Patent Office and the Republic of Moldova.  The entry into force of the validation agreement with Moldova means that, as of 1 November 2015, a European Patent can offer protection in up to 42 countries including the 38 EPO member states, Bosnia-Herzegovina, Montenegro, Morocco and Moldova.

Tagged in: EPO patents

When the EU parliament approved the Unitary Patent legislation in December 2012, some (including ourselves) optimistically said we may see Unitary Patents granted as early as the middle of 2014.  While implementation still appears to be well on track, we are still some way off - because of politics.

For the Unitary Patent system to come into force, the legislation must be ratified by thirteen member states (which must include UK, France and Germany).  As at February 2015, France, Austria, Belgium, Denmark and Sweden have ratified the legislation.  It is highly unlikely that the UK will ratify the legislation in 2015 as it is to hold a general election in May. 

More formal issues also still remain undecided - how much will the renewal fees be?  The aim for the Unitary Patent is for a single annual renewal to be payable covering all states.  In order to be attractive to SME's, the EU want the single renewal fee to be relatively low.  However, this will likely reduce the income of many member states and has therefore been a point of much debate. We understand discussions on this point continue between the European Patent Office, EPO, and member state governments.

We will keep you appraised of developments as they occur and would be happy to answer any questions.  Ultimately, when the Unitary Patent system finally comes into force any pending European patent application should be able to be converted into a Unitary Patent at grant so there is no reason or benefit in delaying filing. For pending European patent applications that are approaching grant, filing a divisional application would keep them pending and therefore leave open the opportunity of conversion to a Unitary Patent when the option finally becomes available.

 

From 1 March 2015, anyone filing a European patent application will be able to request validation for Morocco. European applications and patents validated for Morocco will have the same legal effect as Moroccan patents and will be subject to Moroccan patent law.

 

On 17 December 2010, the President of the European Patent Office and Morocco's Minister for Industry signed an agreement on the validation of European patents (validation agreement).

 

The agreement enters into force on 1 March 2015. European patent applications or International patent applications filed from that date will have the option to be validated in Morocco.

 

Unlike validations of designated states that are required at the grant of a European patent to bring it into force in that designated state, "validation" here refers to the payment of a fee to the EPO.  This is due within six months of the date of publication of the European search report. In the case of European patent applications based on an international application (PCT), the fee is due on entry into the European phase.

Tagged in: EPO patents

On 26 September 2014, Norway acceded to the London Agreement, waiving the requirement for a full translation of a European patent on grant as long as the patent is granted in English.  A Norwegian translation of the claims must still be supplied for the patent to have effect in Norway.

The Agreement on the application of Article 65 EPC, also known as the London Agreement, is an optional agreement that aims to reduce the costs relating to the translation of European patents.  It was concluded at the Intergovernmental Conference held in the London on 17 October 2000 (see OJ EPO 2001, 549) and since then 21 contracting states of the European Patent Convention (EPC) have ratified or acceded. The EPC contracting states which have ratified or acceded to the Agreement undertake to waive, entirely or largely, the requirement for translations of European patents. 

For European patents granted with effect for Norway on or after 1 January 2015, no Norwegian translation of the European patent specification need be supplied if the patent is granted in English or if an English translation of the patent is supplied. A Norwegian translation of the claims must still be filed. Where a European patent is granted in a langauge other than English, an English or Norweigian translation of the entire patent must be filed for the patent to have effect in Norway.  We provide English language translations of patents which are both competitively priced and checked for technical langauge accuracy - please contact us for more details.

All European patents with a filing date on or after 1 April 2009 will automatically designate Norway and would therefore benefit from this arrangement if granted on or after 1 January 2015.

The new rules do not apply to European patents amended in opposition, appeal or limitation proceedings which were granted before 1 January 2015 and amended on or after that date.

Tagged in: EPO patents

Uses of human embryos for industrial or commercial purposes are excluded from patentability in Europe and the UK.  In Decision G2/06 of the Enlarged Board of Appeal of the European Patent Office, it was held that human stem cell cultures that can only be obtained by destroying human embryos are not patentable.  But what is a human embryo?

In October 2011, in the Brüstle case (Case C-34/10), the Court of Justice of the European Union (CJEU) considered whether an unfertilised human oocyte parthenogenetically activated to divide falls under the term “human embryo”.  The CJEU controversially held that a “human embryo” is any unit capable of commencing the process of development of a human being, even if that unit could never have completed development into a human. 

It was further held that an invention is excluded from patentability if prior destruction of a human embryo is required at any stage, even if that destruction occurred long before implementation of the invention or if the description of the technical teaching claimed does not refer to the use of human embryos. 

Although not legally bound to do so, the European Patent Office follows this decision, and the Guidelines for Examination have been updated accordingly:
http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_5_3.htm

The UK Intellectual Property Office has considered whether it able to depart from the Brüstle decision of the CJEU.  Whilst it concluded that it was permitted to do so, it decided that extreme caution must be exercised in departing from any aspect of the CJEU’s decision.  It should therefore be anticipated that the UK IPO will follow the EPO in applying the Brüstle decision when examining UK patent applications.

Tagged in: biotech EPO EU patents

Claims to antibodies without disclosure of a practical use may be sufficient in the UK

In the case of Eli Lilly v Human Genome Sciences, the UK Supreme Court found on 2 November 2011 that the claims were industrially applicable and the case was to be returned to the Court of Appeal for the determination of sufficiency. The Court of Appeal has now decided upon the issue of sufficiency and somewhat surprisingly, the Court of Appeal found claims 13, 18 and 19 all to be sufficiently disclosed.

Claim 13 related to any antibody that binds specifically to Neutrokine-α.  No practical use for these antibodies was disclosed, nor was any single example of such an antibody structurally described.  The Court of Appeal decided that the claim is sufficient as the skilled person can make and identify such an antibody without undue effort, despite the fact that there are “millions” of possible antibodies, not all of which would be “useful”.  That the patent does not enable one to identify a particular disease for which such an antibody might be useful in treating was considered irrelevant to the issue of sufficiency of this claim, because the claim was not limited to “useful” antibodies.

Claims 18 and 19 relating respectively to a pharmaceutical and a diagnostic composition comprising the polypeptide/antibody of the earlier claims were also held to be sufficient, again despite the fact that no specific practical use had been disclosed.  The reasoning given, again, was that the skilled person had the ability to make such compositions.

We wait to see whether this decision will be appealed at the Supreme Court.

Link to decision:
http://www.bailii.org/ew/cases/EWCA/Civ/2012/1185.html

Tagged in: biotech patents

The EU committee on Legal Affairs optimistically delclares "Done Deal on the EU Patent!".  We're not there yet but we do appear to be moving forward after more than 30 years negotiation.

In a press release issued 2 December 2012, the EU Parliament's rapporteurs declared that a political agreement had been reached on the proposals for an EU unitary patent and language regime.  A proposal for a unified patent court is still the subject of discussion with two (yet to be named) states disagreeing about where the court should be situated (it is believed that it is between London and Germany).

The agreements have a long way to go before coming into effect - they will have to be confirmed by both the EU Parliament and the Council and at least some aspects at national level. The press release stated that a regulation should enter into force in 2014, although we think this is likely to slip.

The proposed regime for translating EU patents would make them available in English, German and French, although applications could be submitted in any EU language. The press release said that translation costs from a language other than the three official ones would be compensated.

Details on the full agreement are not yet public.

A disclaimer is an exclusion, in negative terms, of subject matter from the scope of a claim.  Disclaimers are generally used to carve out from the claim scope something that is co-incidentally covered by prior art but which is not relevant to overall novelty/inventive step of an invention. In its decision of G2/10, the Enlarged Board of Appeal at the European Patent Office has considered whether and when it is allowable to amend a claim to disclaim subject matter which was disclosed as an embodiment of the invention in the original application.

In G1/03, the Enlarged Board laid out strict rules governing when it is allowable to use a disclaimer which was not disclosed in the application as filed.  Subsequent case law at the EPO generally adopted the approach that even if the subject matter excluded by the disclaimer was disclosed in the application as filed, the disclaimer would count as an undisclosed disclaimer if the subject matter had been originally disclosed as part of the invention.  The reasoning behind this was that to avoid the rules of G1/03, the disclaimer itself needed to be disclosed, not just the subject matter excluded by the disclaimer.  However, in G2/10, the Enlarged Board found this approach to be incorrect.  It found that the rules laid out in G1/03 only apply to situations where neither a disclaimer nor the subject matter excluded by the disclaimer was disclosed in the application as filed. 

In the present decision, the present Enlarged Board decided that the criteria of G1/03 only applies to disclaimers where both the negative limitation and the excluded subject-matter were not disclosed in the application as filed. In contrast, the Enlarged Board decided that disclaimers which exclude subject-matter disclosed as part of the invention in the original application do not necessarily add subject-matter. Whether such a disclaimer would be allowable is dependent on normal added subject-matter tests (whether it is directly and unambiguously disclosed in the application as filed).

In reaching its decision, the Enlarged Board of Appeal also rejected the argument that the disclosure of a generic claim and a specific embodiment necessarily discloses all of the other embodiments of the generic claim as the logical complement of the specific disclosed embodiments and such a disclaimer cannot therefore add subject matter.

The Enlarged Board found that the question to be asked was whether there is basis in the application as filed for the subject matter remaining in the claim, and that determining whether or not that is the case “requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject matter and its relationship with the subject matter remaining in the claim after the amendment”. 

In particular, the Enlarged Board suggested that where, in the application as filed, “an invention has been disclosed and claimed in general terms and different specific embodiments or groups thereof have also been disclosed, and one of these later excluded from the requested protection by the disclaimer, the remaining subject matter, i.e. the remaining general teaching, will normally not be modified by the disclaimer”.  However, the Enlarged Board contrasted this with the situation in which “the disclaimer would have the effect of confining the subject matter remaining the claim to a sub-group of the originally claimed subject matter, which sub-group could not be regarded as disclosed in the application as filed”.  It considered that such a disclaimer would impermissibly add subject-matter and would therefore not be allowable.

Tagged in: disclaimers EPO patents