Saturday, 25 July 2015

An Analysis of TKDL at the EPO

Following my recent post on the IPKat here about (at least partly) false claims made by the Indian government regarding the relevance of the Traditional Knowledge Digital Library (TKDL), I thought I would have a good look at a bigger sample of the recent claims that have been made. These are listed on the TKDL website here as 'major milestones'. Another list is available here on the TKDL website indicating all instances where the TKDL has been used in third party observations, but without any claims to the relevance of the observations.

The major milestones page claims that things have happened, such as applications being refused or withdrawn, "based on the TKDL evidences". Based on the cases I have seen so far, these claims have turned out not to be true. The recent announcement by the Indian government to have "foiled an attempt by consumer goods giant Colgate-Palmolive to patent a mouthwash formula containing herb extract by citing ancient texts that show it was traditionally used in ancient medicinal practices" was just one recent example, as I showed in my recent post.

I wondered whether there had been any cases where the TKDL had been actually relevant in determining the outcome of an application. The only way to find out was to look at each of the cases and see what actually happened. The table below, which is derived from the TKDL's own list, shows for each European application in the list a summary of what happened, and whether the claim is true or false (or perhaps somewhere inbetween). You don't need to take my word for it though, as links are provided in each case for verification if needed.

Where I have indicated that the TKDL claim is false, this is based on there being no objections raised by the examiner in relation to the TKDL documents or, in some cases, that the examiner has specifically stated that the references were not as relevant as those already cited, and therefore could not possibly have made any difference. Where I have indicated that the claim is true, this is where either the examiner has specifically raised objections and/or the applicant has responded to the references by amendment. Whether any subsequent deemed withdrawal has anything to do with the TKDL citations is, of course, unknown, but I have given the TKDL the benefit of any doubt where any objections have been raised during prosecution.

TKDL Claim
Evidence from EP Register
True or False?
BASF Beauty Care Solutions France SAS, France has amended the claims of the application no. EP2157966 for "MC-1R, MC-2R, and/or [mu] opioid receptors simulation" based on the TKDL evidences.
No mention of TKDL evidence in summons to oral proceedings dated 9 Jan 2015. Applicant responded to TKDL evidence with no amendments.
FALSE
Based on TKDL evidences, MORINAGA MILK INDUSTRY CO., LTD. 33-1, Shiba 5-chome Minato-ku, Tokyo 108-8384 / Japan has amended the claims of application no. EP1941899 for "Agent for promoting glucagon-like peptide 1 secretion, food or drink for promoting glucagon-like peptide 1 secretion, agent for inhibiting postprandial increase in blood sugar level and food or drink for inhibiting postprandial increase in blood sugar level" and then the application was deemed to be withdrawn.
Last examination report dated 8 Jan 2015 cites two documents, neither from TKDL. No response filed, application deemed withdrawn.
FALSE
Based on TKDL evidences, Phenolics, LLC, P.O. Box 2439, 846 San Carlos Avenue, El Granada, CA 94108-2439 / United States has amended the claims of application no. EP1572219 for "Efficient method for producing compositions enriched in total phenols" and then the application was deemed to be withdrawn.
TKDL observations mentioned in examination report dated 13 Jan 2011, but documents already cited by examiner used in novelty/inventive step objections.
FALSE
Based on the TKDL evidences, Application no. EP2328598 (Phenolics, LLC United States) for "Novel compositions containing isolated tetrameric type a proanthocyanadin and methods of use and manufacture", is deemed to be withdrawn.
Inventive step objection based on document D1 cited by examiner in last examination report dated 7 March 2014. TKDL observations also mentioned. Application subsequently deemed withdrawn due to no renewal fee payment.
TRUE (partially)
Based on the TKDL evidences, application no. EP2464363 (M/S Medasani, Munisekhar / India) for "Natural extract from whole banana fruit (Musa Spp.)", is refused.
Decision to refuse dated 20 March 2015 based on objections in examination report dated 17 March 2015, cites document D8 (WO 2004/069143) as main reference for novelty & inventive step, D10-12 & D18 used in inventive step. None of cited documents from TKDL.
FALSE
Based on the TKDL evidences, Application no. EP2689806 (Colgate-Palmolive Company/ United States of America) for "Oral compositions containing extracts of myristica fragrans and related methods", is deemed to be withdrawn.
Last examination report dated 6 October 2014 cites document not from TKDL as main reference.
FALSE
Avon Products / U.S. has amended the claims of the application no. EP1827362 for "Compositions and methods of their use for improving the condition and appearance of skin" based on the TKDL evidences.
Examination report dated 7 Aug 2014 cites TKDL observations in novelty & inventive step arguments. Applicant subsequently amends claims.
TRUE
Based on the TKDL evidences, Nestec S.A. / Switzerland have withdrawn their Application No. EP2243383 for "A method and composition for nutritionally improving glucose control and insulin action."
Summons to oral proceedings dated 1 Aug 2014 specifically mentions third party observations not being more relevant than documents already on file.
FALSE
Based on the TKDL evidences, Application no. EP2266586 (Lifeline Nutraceuticals Corporation 6400 South Fiddler's Green Circle, Suite 1970 Englewood, CO 80111 / United States) for "Compositions and method for alleviating inflammation and oxidative stress in a mammal", is deemed to be withdrawn.

Application was closed on 18-Mar-15.
TKDL evidence mentioned in last examination report dated 30 April 2014, but examiner cited documents used in novelty & inventive step objections.
FALSE
Nestec S.A. Avenue NestlĂ© 55 1800 Vevey / Switzerland has amended the description of the application no. EP1750651 for "Composition for improving skin, hair and coat health containing flavanones" based on the TKDL evidences.
Novelty objections raised in last examination report based on examiner cited documents and TKDL evidence. Examiner also raises novelty objection citing orange juice with pulp as prior art.
 TRUE (partially)
M/S Indena S.p.A. / Italy has amended the claims of the application no. EP2046324 for "Treatment and prevention mucositis by anthocyanidin derivatives.
Novelty & inventive step objections raised in last examination report based on 35 documents cited by examiner. TKDL evidence not used.
N/A (no claim made)
Based on the TKDL evidences, Application no. EP1558271 (Metaproteomics, LLC / United States) for "Compositions that treat or inhibit pathological conditions associated with inflammatory response", is deemed to be withdrawn.

Application was closed on 09-Jan-15.
Examiner considered claims to be new and inventive over cited documents and TKDL documents in examination report dated 3 March 2014. Minor clarity objections raised. No response filed, application deemed withdrawn.
FALSE 
Based on the TKDL evidences, Application no. EP2419508 (Somalabs, Inc., 40 Allen Road, South Burlington, VT 05403 / United States) for "Method for the induction of a reward response by modulation of dopaminergic systems in the central nervous system", is deemed to be withdrawn.

Application was closed on 12-Nov-14.
TKDL observations used in examination report dated 7 March 2014 for inventive step argument. Application then deemed withdrawn due to missing renewal fee.
TRUE
Unitika, Ltd./ Japan has amended the claims of the application no. EP2226071 for "Composition for oral administration" based on the TKDL evidences.
Novelty objection in examination report dated 20 Feb 2015 based on document cited by international examiner. TKDL evidence not mentioned.
FALSE
Based on the TKDL evidences, Unigen, Inc. / US, have amended the claims of application no. EP1881839 for "Compositions of Bakuchiol and methods of making the same" and then the application was withdrawn.

Application was closed on 12-Nov-2014.
Intention to grant issued 17 Feb 2014. No response filed, application deemed withdrawn. TKDL references stated to be not relevant in examination report dated 11 March 2010.
FALSE
Laboratoires Expanscience / France has amended the claims of the application no. EP2506724 for "Vigna unguiculata seed extract and compositions containing the same" based on the TKDL evidences.
Inventive step objections in examination report dated 12 March 2014 based on TKDL evidence. Claims amended in response.
TRUE
New Chapter, Inc. / US has amended the claims of the application no. EP2435057 for "Compositions and methods for modulating lipid composition" based on the TKDL evidences. Application was refused on 17-Jun-2015.
Amendments made in response to documents cited by examiner. Examination report dated 7 March 2014 indicates that "third-party observations has been taken into account", but novelty & inventive step objections based only on examiner cited documents. Reasons for refusal in summons to oral proceedings dated 10 March 2015 made no mention of TKDL references.
FALSE
Mimozax Co., Ltd. , 4291-1, Miyauchi Hatsukaichi-shi, Hiroshima 738-0034 / Japan has amended the description of the application no. EP2052731 for "Composition for preventing and/or treating itching containing component originating in the bark of tree belonging to the genusacacia." based on the TKDL references.
No third party observations have been filed.
FALSE
Nanyang Polytechnic/ Singapore has amended the claims of the application no. EP2416793 for "A plant extract comprising statins and preparation techniques and uses thereof" based on the TKDL evidences.
Search opinion dated 25 July 2013 invited applicant to comment on TKDL references. Applicant responded on 6 June 2014 with amendments.
TRUE
Based on the TKDL evidences, Application no. EP1901701 (Ott, David M., 777 Panoramic Way, Berkeley, CA 94704 / US) for "Personal care and medicinal products incorporating bound Organosulfur groups", is deemed to be withdrawn.

Application was closed on 14-Aug-14.
Examination report dated 9 October 2013 raised novelty objections relating to examiner cited documents. Third party observations mentioned, but no specific objections raised. No response filed, application deemed withdrawn.
FALSE
Based on the TKDL evidences, Application no. EP2293689 (Mars, Incorporated / US) for "Food product", is deemed to be withdrawn.

Application was closed on 04-Aug-14.
Examination report dated 22 November 2013 considered third party observations to be relevant for inventive step. No response filed, application deemed withdrawn.
TRUE
Based on the TKDL evidences, Application no. EP2269598 (Metaproteomics, LLC/ United States) for "Curcuminoid compositions exhibiting synergistic inhibition of the expression and/or activity of cyclooxygenase-2", is deemed to be withdrawn.

Application was closed on 18-Jul-14.
Search opinion dated 23 May 2011 cited TKDL references mentioned in third party observations, raising novelty objections based on these. Subsequent deemed withdrawal due to non-payment of renewal fee.
TRUE
Based on the TKDL evidences, Application no. EP1993522 (Kao Corporation 14-10, Nihonbashi-Kayabacho, 1-chome Chuo-ku Tokyo 103-8210 / Japan) for "Resveratrol and/or grape leaf extract as i.a. endurance improver, anti-aging agent, muscle strength improver", is deemed to be withdrawn.

Application was closed on 23-May-14.
Examination report dated 29 March 2011 mentioned third party observations, but considered documents already cited by examiner to be more relevant. 
FALSE
Universiti Putra Malaysia, UPM Serdang, 43400 Selangor Darul Ehsan / Malaysia has amended the claims of the application no. EP2349302 for "Cardioprotective effects of nutraceuticals isolated from nigella sativa seeds" based on the TKDL evidences.
Search opinion dated 10 July 2012 indicated that TKDL references were not considered to be as relevant as examiner cited documents. 
FALSE

Out of a total of 23 cases where a claim has been made that something happened "based on the TKDL evidences", 15 turn out to be completely false. There are no cases where an application has been refused based on TKDL evidence, but several where an application has lapsed for one reason or another after TKDL evidence has been submitted. It looks to me like the TKDL is a potentially useful source of prior art in limited circumstances, but is nowhere near as significant as it is made out to be. Perhaps the Indian government could be a little more honest and make claims where they are actually justified.

Friday, 10 July 2015

Don't let your patent go up in smoke

Renewal fees are payable to the UK IPO on GB and EP(UK) patents each year, by the end of the month in which the anniversary of the filing date falls (rule 37). If this is missed, an extra six months is allowed for paying the fee, with surcharge (section 25(4)). If, after this period passes, the renewal fee is still not paid the patent lapses. It is possible to have such a lapsed patent restored, but only if it can be shown that the proprietor unintentionally failed to pay the fee (section 28). This is usually a fairly low hurdle to get over, and it is quite common for proprietors to be able to get their lapsed patents restored provided they can show that there was an underlying intention to keep it. An important point to note, however, is that although anyone can pay a renewal fee it is the proprietor who must be shown to have the intention to pay.

EP1409166, relating to processing of waste material, and originally applied for in the name of Strumat Limited, was granted to Globally Greener Solutions Limited in 2010, after recordal of a transfer was made during prosecution. The patent then lapsed in the UK due to failure to pay the renewal fee that was due by the end of July 2012. Unfortunately, as it turns out, the transfer to GGSL was apparently made by one of the directors of Strumat without the permission of the others. Following dissolution of GGSL, which seems to be connected to a large fire at their premises involving 5000 tonnes of stockpiled waste material, and which resulted in two of GGSL's directors being jailed for failure to comply with environmental regulations, ownership of GGSL's assets passed to the Crown, under section 1012 of the Companies Act 2006. As an aside, very large fires at recycling plants seem to have been quite a common occurrence recently, a few examples being in Linconshire, Salford, Wrexham, Rainham, Swindon, Melton and Smethwick (the large plume of smoke from which was visible from my office).

To return to the issue in question, since the Crown was the proprietor at the time the patent could have been renewed, on the face of it the intention that would count regarding whether the patent could be renewed would be theirs. Unfortunately, the Crown makes no effort to maintain patents that are acquired as a result of them being bona vacantia, so the intention test would never be met. This was clearly a problem for Strumat, who claimed that the application had been transferred fraudulently and should therefore never have been recorded as being in the name of GGSL. They applied under section 37 to have the question of entitlement resolved by the comptroller, but the comptroller declined to deal with the issue (see the decision here), as it was one that related only to non-patent law issues. Strumat then went to Court, and were granted a Vesting Order which ordered:
the Patent Number EP02747559 granted as EP1409166 be and is hereby vested in Strumat Limited for all the estate and interest therein which immediately prior to its dissolution were vested in Globally Greener Solutions Limited”.
Strumat argued in their application for restoration that this meant they had always been the proprietor and it was therefore their intention to maintain the patent that counted. The hearing officer disagreed because it was quite clear that the order took effect as of its date, and was not retrospective. As a result, only the intention of the Crown could be relevant, and they had no intention to maintain the patent. The application for restoration therefore had to be refused (see decision BL O/248/15).

The case is quite an unusual one, but does suggest at least one lesson to be learned, which is to keep an eye on your own patents if they are important to you. If the issue had been spotted earlier, which it could easily have been (the transfer took place in 2007, long before the patent was granted), the patent might have survived. Getting others to look after them might save you some time and effort, but it's always worth doing a quick check now and then to make sure your patent is not about to spontaneously combust.

Wednesday, 17 June 2015

Opinions & Revocation - Continued

Earlier this year I wrote about the first couple of Patent Office opinions under section 74A that issued under the new provisions of section 73(1A)&(1B), where the comptroller now has the option of initiating revocation if an opinion finds a patent to lack novelty or inventive step.

The question I had at the time was how the comptroller would decide where initiating revocation proceedings would be justified. The two opinions issued so far seemed to me to be fairly "clear cut" (in the words of the Office's own guidance on the matter), since both found claim 1 of the patent to lack novelty over a prior publication. I therefore expected that we should see the first action to initiate revocation shortly after the 3 months period for requesting a review expired on the first one, which was in April (no review was requested).

After a couple of months to think about it, the Patent Office has now written to the proprietor in a letter dated 12 June that states in part:
"Whilst opinion [23/14] did conclude that your patent was invalid the comptroller does not consider it appropriate to initiate revocation proceedings against your patent.  
You should note that the decision not to initiate action under section 73(1A) does not alter or set aside the conclusion in the opinion. You may still wish to amend your patent."
The opinion, which was written by a senior examiner, was quite clear in finding that claim 1 lacked novelty over a prior published Chinese utility model publication. This makes me wonder what it would take for the comptroller to decide when a case met the "clear cut" criterion. How clear cut does it have to be? There is no real further guidance in the Manual of Patent Practice, which simply states that the group Deputy Director (DD) "should consider whether action under section 73(1A) is necessary. Action under this section should only be initiated if the DD considers that the patent is clearly invalid due to lack of novelty or inventive step. The opinion should be considered but the DD is in no way bound by it". Based on this, it appears that the comptroller could decide not to take action for any reason at all, however subjective it might be. This does not sound to me like a good way to implement the new provisions.

Perhaps we will know more when a decision is made regarding the second opinion that resulted in a finding of invalidity, which should issue soon. The situation at the moment does appear to be in need of some clarification.

Friday, 17 April 2015

Obfuscation

Those of you who are already up to date on the issues surrounding partial priority and poisonous divisionals (the latest state of play on which is summarised here) can safely ignore this post. Others who have a more masochistic disposition may wish to read on.

The issue of poisonous divisionals was first raised by Malcolm Lawrence in 2011 a few years ago while he was at HLBBshaw (since rebranded as Avidity). The original paper on the subject was published in issue 2/11 of epi information (which is available here). It has since prompted a lot of discussion, mostly among patent professionals in Europe. I have written about it a few times over the past few years, and have proposed a general solution that is in line with two decisions from the EPO Boards of Appeal. Since the latest development of a referral to the Enlarged Board, there has been nothing further to note on the subject, as we can now wait for the questions to be raised and then answered by the Board before we see what can or should be done about the issue. Or so I thought.

Mr Lawrence, however, thinks there is a lot more to say on the subject, and to prove it has written another article in this month's epi information (available here). This runs to just over 12 pages, and is (as usual) not an easy read. I would not bother to comment, as it doesn't seems to be actually saying anything new, but it does make lots of references to an article I co-wrote in the December 2013 issue of the CIPA journal (a preprint copy of which is available here; the relevant points made are also detailed in these two posts: here and here), which put forward opposing viewpoints on the partial priority issue in light of G 2/98. In essence, the issue boils down to whether you take a narrow or a broad view of the requirement stated in reason 6.7 of G 2/98, which states that multiple priorities are allowed "provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters". The narrow view is that there needs to be basis for each of the alternative subject-matters, in a similar way as this would be required if the claim were to be split up into separate claims, and that a limited number would probably not apply to continuous ranges. This view inevitably gets bogged down in all kinds of complications about disclaimers and what is actually disclosed in the as-filed application. The broad view (being my own view), which takes support from the FICPI memorandum cited in G 2/98, is that it doesn't make sense to get involved with basis for amendments and disclaimers because no amendment is necessary, which I pointed out in my earlier post about imaginary claims here. As I stated in my article:
"The only criteria required would be: i) that the claim scope entirely encompasses the priority disclosure; and ii) that there is no issue regarding public disclosures between the priority date and the date of filing of the application. Provided such criteria are met, and of course all other requirements of the EPC are met for the claim scope (in particular Article 83 EPC, as the broader scope would need to be justified by the application as a whole), the validity of a partial priority would defuse any possibility of the priority application, if published, becoming Article 54(3) prior art. This is because the published priority application would not be prior art for the portion of the claim scope having a valid claim to priority, while the rest of the scope of the claim would inevitably be novel. It must be emphasised, however, that this is only applicable when there are no intervening public disclosures within the scope of the later broader claim but outside of the scope of the earlier disclosure, since the only solution to this would be to amend the scope of the later claim."
To me, this seems pretty straightforward. Provided these criteria are met, the issue about poisonous priority simply goes away, and should never have been an issue in the first place. Mr Lawrence, however, seems to think otherwise, and apparently disagrees with me, stating in footnote 33 to his article (he is very keen on footnotes; there are 62 in all) that the above solution is not correct, but fails to explain how. He also considers that too much weight is attached to the FICPI memorandum in my article (see point 1.1.5), but again fails to explain why this is wrong, other than offering an assertion. He goes on to provide some examples, one of which is illustrated using a hypothetical chemical case (see the figure and table on the right, taken from page 29 of the article). Why it has to be chemicals is a bit beyond me, as the point would seem to be the same with any numerical values. It then all gets a bit complicated, with lots of talk about different domains, targets and missiles, which all seem to be deliberately designed to confuse the reader. While there might be a valid point in there somewhere, I'm afraid I am currently at a loss to see how he has shown that my general solution is wrong. The concluding remarks in the article, referring to "challenging algebraic thinking" suggest that the author thinks the issue is indeed a lot more complicated that I might have thought. I cannot see how this is the case, but perhaps I'm just not clever enough. Can anyone illuminate further?


Thursday, 19 March 2015

Time-Lapse IVF & Article 53 revisited

I wrote a while back about a journal article and subsequent opposition to European patent EP2430454, which claims a method of assessing competence of a human embryo through measurements of time intervals between the first few cell divisions (an illustration of cytokinesis is shown on the right, taken from this web page). The opposition, filed jointly by the European Society of Human Reproduction and Embryology and the authors of the journal article (one of whom happens to be a European Patent Attorney), argued that the patent claimed a diagnostic method that was excluded under Article 53(c) EPC. The problem with this, as I explained at the time, was that the Enlarged Board of Appeal determined in G 1/04 that for a claim to fall within the Article 53(c) exclusion (which at the time was Article 52(4)), it required all of the following features to be present:
(i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise,
(ii) the preceding steps which are constitutive for making that diagnosis, and
(iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.
Step (i) of the requirements is clearly missing from the claimed invention, so it seemed fairly clear to me at the time that the opposition would inevitably fail, for the obvious reason that an opposition division would not make a decision that was clearly contrary to a decision of the Enlarged Board.

Following a response from the patent proprietor and a further response from the opponent, the opposition division has now decided to hold oral proceedings at 09:00 on 30 November 2015 at the EPO in Munich (which will be open to the public). The proceedings are expected to last two days.

The opponent's main argument is explained in my earlier post here, and is set out in their opposition here, as well as in the journal article here (to which I responded in a letter in the same journal here, to which the authors responded here, all of which are mentioned in the opposition proceedings as document D12). The opponent has, however, since then expanded on their reasoning as to why they consider the exclusion should apply. Their letter explaining this is available here on the EP register. Some of the argumentation is unusual, to say the least. In response to the argument that G 1/04 required there to be a diagnosis for curative purposes, the opponent has stated:
We accept that these requirements might possibly be inferred from opinion G-1/04. However, to the extent that that may be the case, we respectfully submit that the Enlarged Board erred in suggesting these requirements and we ask the opposition division to hold that these are not in fact requirements for a claimed method to be to an excluded method of diagnosis.
They then go on to explain why G 1/04 was wrong in deciding that a diagnosis would need to be made for curative purposes. In support of this, they have obtained signed statements from 29 physicians across Europe, who have all stated that there can be a medical diagnosis in a human subject without that condition being a disease condition, and even if no curative treatment is known.

The opponent seems to acknowledge that their chances of success are slim, as they then go on to state that "Whichever way you decide, an appeal will almost certainly be filed, and at the appeal stage we fully expect that a referral to the Enlarged Board will be sought. Addressing the Art. 53 EPC point now thus offers to expedite the final disposition of the opposition". How they think a referral to the Enlarged Board would be justified, given the decision in G 1/04, is beyond me but they are of course welcome to have a go. I would guess that any question would have to be along the lines of whether a "diagnosis for curative purposes" requires there to be a condition for which it is possible to determine a treatment.

For what it's worth, my prediction is that on 30 November the opposition division will decide to reject the A53(c) ground. If the opponent appeals the decision, the Board of Appeal will then, after about 2 or 3 years, decide to dismiss the appeal on the grounds that G 1/04 was quite clear on this point, and will not refer any question to the Enlarged Board. The patent might, however, be revoked on the more conventional grounds anyway, so this issue will probably not be up for discussion if the patent does not survive the novelty and inventive step attacks.

UPDATE 20 March 2015: Now that the summons itself has appeared on the register (here), it appears I was jumping the gun a bit in originally saying that the OD would only be considering the A53(c) objection at the summons. They will in fact be considering all grounds of opposition raised. The post above has consequently been edited a bit compared to the original version published yesterday. Interestingly, the OD will also be considering the additional ground of A53(a) of their own volition,  because neither opponent has raised it. The OD states that the claimed invention "may be regarded as involving the use of a human embryo for industrial or commercial purposes" (point 3 of the annex to the summons), and raise this for discussion without coming to an opinion one way or the other. It is surprising this was not picked up by the second opponent, although I can see why the first one would not want to raise it even if they had considered it. The preliminary view of the OD appears to be that the A53(c) exception does not apply, given the narrow scope indicated by G 1/04, but that A53(a) might.

Thursday, 12 March 2015

Opinions & Revocation

Since 1 October 2014, when section 16 of the Intellectual Property Act 2014 came into force, amending section 73 of the Patents Act 1977, it has been possible for the comptroller to revoke a patent following an opinion finding the patent to lack novelty or inventive step. This has substantially extended the comptroller's power to take action on his own initiative, which previously was only possible to prevent double patenting. Under the law as it stood prior to October 2014, the only other way to get a patent revoked would be to apply for revocation, either to the patent office or the court. Applying for revocation, however, is a tricky business and can lead to all kinds of complications, not least of which are high costs to pay for lawyers, together with potential exposure to at least some of the other side's costs if the case does not go your way. It is therefore not something to be taken lightly, even if your case seems to be watertight and the patent clearly invalid.

Under new section 73(1A)-(1C), if an opinion is issued that finds a patent to be not novel or to lack inventive step, the comptroller may revoke the patent. He must, however, wait until the patent holder has had an opportunity to request a review of the opinion, which can be done within 3 months of the opinion issuing, and cannot proceed until any review, and any subsequent appeal, has been disposed of. If, of course, the review finds the opinion to be wrong, it will be set aside and no action will be taken.

Once the comptroller decides to take action to revoke the patent, he has to give the patent holder an opportunity to make any observations and to amend the patent. Importantly, this procedure happens only between the Patent Office and the patent holder. The person who made the request for an opinion is no longer a party to the proceedings. They can, however, oppose any amendments requested under section 75, which are always advertised before they are made (although typically with a very limited 2 or 4 week period to file any opposition).*

The upshot of all this is that a person who has what they think is a solid case for knocking out a patent in the UK now has potentially an entirely risk-free way of getting rid of the patent by simply requesting an opinion on validity and waiting to see what happens. If the examiner agrees with the requester, the patent could then be knocked out, or at least amended, without any further action needed by the requester of the opinion and with no potential for a costs decision being made against them (even if the patent is only limited and not revoked in full). For those who do not want to get into an expensive procedure just to get rid of an inconvenient, but clearly invalid, patent, the new law seems to be a very good option indeed.

At the moment, we do not yet know how the new procedure will work in practice. The IPO have indicated that they will only act "in clear-cut cases where the patented invention clearly lacks novelty or an inventive step". What does "clear-cut" mean though? What is the difference between a patent lacking novelty and clearly lacking novelty? We may find out over the next few months, as two opinions have now issued that have found patents to lack novelty and inventive step.

The first of these, Opinion 23/14, was requested on 24 October 2014, and issued on 21 January 2015. The request was made regarding validity of GB2493904, granted to Actegy Limited and relating to an "apparatus for electrical stimulation of a foot" (or more likely a pair of feet, as seems to be clear from the illustration of the product shown on the right, and available here). The examiner found the  patent to be not novel over published Chinese utility model CN200973920Y relating to a "foot-care and body-beautifying machine with electromagnetic waves". According to Rule 98(1), the patent holder has until 21 April 2015 to request a review of the opinion. If no review is requested, or if any review does not result in the opinion being set aside, the comptroller may decide to revoke the patent.

The second is Opinion 25/14, which was requested on 13 November 2014 and issued on 11 February 2015. The request was made regarding validity of GB2497956, granted to J. C. Bamford Excavators Limited (more widely known as JCB, famous for making machines like the one shown on the left) and relating to a hydraulic system with kinetic energy recovery and storage device. The examiner found that the independent claims of the patent were not novel over US3485037 and were obvious over other documents cited by the requester. The patent holder has until 11 May 2015 to request a review.

In each case, the examiner's finding seems to be pretty clear in finding a lack of novelty of at least the independent claims of the patent. If the opinions are not set aside following a review, I would have difficulty seeing how either case could be anything other than "clear-cut" cases where revocation under section 73(1A) would be inevitable. We will, however, have to wait and see to find out whether the comptroller agrees.

*This turns out not to be correct. Any amendments made as a result of objections under section 73 are not advertised and are not subject to opposition. Only proposed amendments under sections 75 and 27 are advertised.

Saturday, 21 February 2015

Missing bits

Electronic filing is now the standard way to do most things at the European Patent Office, apart from the obvious exceptions where an appearance in person is required. The EPO's online filing software platform, although not perfect, is generally pretty good. Provided you can get around the extremely picky technical requirements for what documents it will accept, it is fairly straightforward for a reasonably IT-competent person to prepare and file an application, examination report response, opposition, appeal or whatever else takes your fancy. Secretarial support is often useful, and can save time in dealing with the mechanics of creating and uploading documents and entering details, but it is of course critically important to remember that it is the patent attorney who remains ultimately responsible for what is uploaded and sent using the software.

A key feature of the EPO's online filing software is the use of a smart card (like the one on the right). These are issued, free of charge, to attorneys and their support staff. Only attorneys are able to sign documents using the software, but support staff can use smart cards to send documents that have already been signed. The EPO have this to say about why they use smart cards and how secure they are:
Smart cards are credit card-sized plastic cards that contain a microprocessor and a small amount of memory.

The EPO decided very early on in the planning process for its online services that the certificates which would allow users to conduct secure transactions with us would be stored on smart cards. Unlike passwords, smart cards allow us to provide the more secure two-factor authentication, comprising something that is held (the card) and something that is known (the PIN.) Two-factor authentication means that PINs can be simpler and therefore easier to remember than with a password, since, without the card, the PIN is useless, and vice versa. Also, the simpler PINs are not susceptible to brute-force attacks because the smart card locks out after several unsuccessful attempts to enter the PIN.

In addition to being small and portable, smart cards afford a much higher level of secure storage for certificates than, say, if they are stored on a hard drive. They offer tamper-proof storage of the user's private keys and digital certificates, are highly resistant to unauthorised deletion or copying of the certificates and keys, and any attempt to tamper with them requires significant effort which would invariably result in physical damage to the cards themselves. Also, it is easier to spot the loss or theft of a card than of a certificate stored on a computer.
It helps here to know a little bit about how public-key cryptography works. When you want to send an electronic document securely to another person, but the transmission path is insecure (for example over the internet), the document needs to be encrypted somehow. If you and the recipient have a code that only you and they know, you can use this code to encrypt the document and the recipient can use the same code to decrypt the document at the other end. Someone obtaining the encrypted document along the way would only be able to get at the document if they either know or can work out the key. This is known as symmetric cryptography. The downside of this is that the key for encryption and decryption needs to be kept secret, as well as being shared by the sender and recipient. This is obviously difficult to achieve, particularly when the parties are far away from each other. A better way is to make the encryption and decryption asymmetric, where a different key is required to encrypt and decrypt. The sender can then encrypt the document using a public key, and the recipient can decrypt it with their private key. The encryption key can safely be made public, since knowledge of one cannot easily result in knowledge of the other (unless perhaps you know an easy way of factoring large numbers into primes; fame and fortune awaits if you can do it). The advantage of this is that anyone can find out a public key, and can encrypt and send documents to the recipient without needing to share anything with them beforehand.

The EPO's online filing software uses asymmetric cryptography, but in a different way. Instead of using a public key to encrypt an electronic document, the sender (i.e. the patent attorney) uses a private key, which is accessible via their smart card in combination with a secret PIN, to sign (i.e. encrypt) the documents to be sent to the EPO [this is not quite how it works, as explained in one of the helpful comments below, but the general principle is the same]. Since these documents can only be decrypted by the other (public) key, this provides an assurance that the documents were signed by the person authorised to do so. This is known as non-repudiation, and is of course an essential feature in ensuring that whoever signs is taking responsibility for what is being sent. Another feature inherent in this system is that the signed documents can only be sent in their entirety, and cannot be amended in any way once they have been signed. This allows another feature of the EPO's online filing software to work, which is that an electronic receipt is issued once a signed set of documents is successfully received by the EPO. This receipt always includes a "Message Digest", which is a string of hexadecimal codes that is uniquely derived from the content of what was transmitted, presumably the result of a hash function performed on the signed documents.

All this should be fairly simple for a patent attorney to understand, particularly if they deal with anything computer-related in their day to day work. Once the basic principles are understood, it should be clear that electronic filing, as well as providing a convenient way to transmit documents to the EPO, provides much greater assurance to the sender that what was sent has actually been received. Compared to the old way of doing things, where a set of paper documents would be signed off by the attorney and then be passed through several pairs of hands before arriving at the EPO, electronic filing provides much more assurance to the nervous attorney who might be worried about getting things done correctly.

All this is by way of introduction to a recent EPO Boards of appeal decision T 1101/14, which I noticed on the PatLit blog here. The case relates to EP application 08743225.8, which was refused by the examining division in December 2013. The applicant then appealed the decision, their attorney filing a notice of appeal the following month. The attorney then filed a statement of grounds of appeal, together with several sets of claims as main and auxiliary requests. Shortly afterwards, the EPO issued a formalities report, indicating that the grounds of appeal had not actually been filed. What had been sent was only a one page cover letter, and the statement of grounds with the supporting arguments had not been included. The attorney then requested re-establishment of rights, arguing that the missing grounds had been the result of "an isolated error of a suitable experienced and normally reliable secretary". The attorney had not noticed that the grounds were missing, but argued that "the two errors were uncharacteristic and isolated mistakes in an otherwise secure system". The board indicated that they had no doubts regarding the professional qualifications of the secretary, nor of the quality of supervision by the representative, but considered that "signing the wrong documents is incompatible with all due care unless special circumstances are invoked which could justify the representative's mistake in a particular case, thus following the cited reasons of T 1095/06" (point 6.5 of the reasons). In this case, there were no such special circumstances, and the request for re-establishment was refused.

Among the arguments submitted by the attorney was one that struck me as being quite odd. This was summarised in point 2.3 of the reasons, relating to why the attorney had not noticed the error when the filing receipt indicated only two pages in the letter of appeal and did not indicate the presence of a 12 page document. The board stated:
The representative has however argued that she does not - and is not required to - check the electronic acknowledgement of receipt, as this is a secretarial task. She explained that, according to the procedure for elec­tronic filing used in her office, the primary pur­pose of the acknowledgement of receipt is to confirm that the documents received at the EPO tally with the trans­mitted ones so that, in the case of a transmission problem, some or all of the documents can be sent again.
Given the explanation I have provided above of how the online filing software works, this seems to me to indicate such a basic lack of understanding that the error resulting in the missing grounds of appeal was almost bound to happen at some point. Contrary to the view expressed by the attorney, it would never be the case with online filing that only some of the documents would be sent. Instead, it can be either all or nothing. If a filing receipt is issued, this is a definite indication that what was signed was received by the EPO. Electronic filing does not work in the same way as operating a fax machine, where sometimes pages can be skipped so it is always essential to check that the correct number of pages has been transmitted.

So what lessons should be learned from this? The main one, to my mind, is that when using online filing it is of utmost importance that the attorney checks the documents that are going to be sent on screen, and not in the form of a printout. Many attorneys still prefer to check printed documents, but this cannot provide assurance, regardless of how reliable your secretary is, that what is being checked is the same as what has been uploaded. Another lesson, however, which shouldn't really need to be learned by any attorney, is that the patent attorney is the one that has to take ultimate responsibility for what is signed and sent to the EPO. Blaming secretaries is not usually going to work.