Patent Office Opinions - s73 Revocations

Since 1 October 2014 it became possible for a request for a Patent Office Opinion under Section 74A to result in revocation, as a result of Section 73 being amended to include subsections 1A-1C, which state:

(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) [novelty or inventive step] is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.

(1B) The power under subsection (1A) may not be exercised before

(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or

(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).

(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.

Regular readers will know that I have been keeping an eye on the outcomes of Opinions for the past few years, and have written a few posts on the subject. It has now been nearly six years since the amendment came into force, and it seems a good time to provide an update on where things are now. 

Out of around 90 Opinions that have issued to date, 43 have found the patent in question to be invalid for lack of novelty and/or inventive step. Of these, a final decision has been made in 36 cases, whether this is to take no action, maintain the patent as amended or to revoke. The IPO has indicated that revocation will only be done in 'clear cut' cases. In practice this means that if an Opinion finds a patent invalid and the proprietor does nothing about it, there is a strong chance that the decision will be to revoke. In cases where the proprietor contests the Opinion's finding, however, the chances of getting the patent revoked, based on the information to date, reduces to zero. In some cases the proprietor will want to amend their patent, while in others they might contest the finding by filing arguments or requesting a review under section 74b. In all cases so far this has resulted in the IPO deciding not to proceed with revocation. 

The chart below summarises the 36 cases where a decision has been made. In half of them, no action was taken, i.e. the Comptroller decided that the patent was not sufficiently clearly invalid to justify being revoked. Of the other half, 12 have resulted in the patent being amended, either via post-grant amendments under section 27 or central limitation via Article 105a EPC. In only 6 cases has the patent been revoked. The details of each of these cases are provided in the table below, with links to the Opinion, patent register and the decision. In each case the proprietor did nothing in response to the initiation of revocation proceedings under section 73(1A). 

It is perhaps not surprising that the IPO decide in the great majority of cases not to proceed with revocation following a negative Opinion, given that the procedure under section 74a is strictly time-limited and decided only on the papers after a single round of correspondence with the patent proprietor. The opportunity to provide evidence that would normally be possible during court proceedings is not available under section 77a so the benefit of any doubt, whether reasonable or not, is clearly given to the proprietor. Anyone who might think that the Opinion service could be a quick and cheap way to get rid of a troublesome patent is therefore very likely to be disappointed if the patent proprietor decides to put up any level of resistance. However, given that there are no estoppel issues that would prevent similar, or expanded, arguments being put later in revocations proceedings, the Opinions service could be seen as a useful way of trying out a case to see what might work without committing to any particular aspect, the only downside being that the proprietor will then be forewarned and ready next time. This seems to have been used in only one case so far though, based on the information available from the IPO Ipsum register. 

What is surprising, to me at least, is how little the Opinions service has been used. Is this due to a general reluctance to put arguments on the public record, or is it something else? Are enough people even aware of the possibility of requesting an Opinion when an issue of validity or infringement comes up? Could it be a factor that those who are experienced in litigation proceedings are unwilling to advise their clients to use it? It is still a puzzle to me. 

 

Opinion	Proprietor	Patent No.	Opinion Result	Status (23/7/20)
04/15	Fujifilm Corporation	EP1837182	Lack of novelty	Revoked
14/15	Albertus Abraham Petrus de Groot	GB2508152	Lack of novelty	Revoked
02/16	Shane Kelly	EP2160936	Lack of novelty	Revoked
22/16	De La Rue International	EP2493707	Lack of inventive step	Revoked
18/17	IMMOSPA AG	EP2700769	Lack of novelty	Revoked
21/18	Spectrum Technologies Plc	EP1641572	Lack of novelty	Revoked

Patenting Simulations - Is Making it More Real the Key?

It is a long time since I last got into the issue of software patents (a.k.a. computer-implemented inventions, CIIs) at the EPO. The last major event on this front was when the decision of the Enlarged Board in G 3/08 issued in May 2010, which I wrote about for the IPKat here. The decision did not, however, change the law in any respect because the referral, made by the EPO President, was decided by the EB to be inadmissible (which I, along with others, predicted would happen). There was, at the time, apparently no contradictions in the case law from the Boards of Appeal on the subject of CIIs, with the leading case being Comvik (T 641/00). Since then, the law has been remarkably stable, with no significant divergence or change of direction. The established law in the UK has also been pretty stable. In 2013 I summarised the main features and differences between the UK and EPO approaches here. Nothing much has changed since then.

The decision in T 489/14, however, issued in February 2019, attempted to put the cat among the pigeons in the field of CIIs by questioning whether the development of the case law in T 1227/05 (Infineon) was correct, or at least to what extent. As a quick reminder, the cases leading up to T 1227/05 involved methods of designing things such as integrated circuits and drill bits, with big players IBM and Halliburton respectively leading the way. There was initially resistance to patenting methods of designing things but, as the case law developed, both the EPO and the UK courts decided that in some cases it was possible to patent a method of designing without having to tie it to actually making the thing. This was expected to be of help to companies involved heavily in designing complex products but where the article being designed would be manufactured by others. The decision in T 1227/05 then went further and established that it was in principle possible to patent a method of simulating an article (in this case an electronic circuit), provided the invention was limited to that specific purpose. It was not necessary to include fabricating the article itself because specific computer-implemented simulations were themselves to be regarded as patentable and not dismissed as non-inventions for being mere computer programs. 

The application leading to T 489/14 also related to a simulation method, but in this case related to simulating movement of people in a building, rather than electrons in a circuit. Figure 2 shown here shows people moving along a corridor and taking steps according to factors such as whether there was something in the way (e.g. another person or an obstacle). The application was refused because it was considered to be obvious over a general purpose computer, following the usual practice in T 641/00, although the application did cite prior art relating to previous techniques for modelling pedestrian flow in buildings. The applicant appealed, and argued that the aspects of the simulation that were based on human behaviour were modelled by equations similar to those describing the laws of physics and the application should be patentable for similar reasons as in T 1227/05. The Board saw that the applicant had a good argument but was still reluctant to allow the appeal because the simulation only assisted an engineer in the cognitive process of designing something, whether this was a circuit or a building. Instead of following T 1227/05, the Board decided that they would rather ask the Enlarged Board whether simulation methods were actually patentable. The questions put before the EB were:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The oral proceedings in G 1/19 were held yesterday (15 July 2020), attended in person by the Enlarged Board, the applicant's representative and representatives of the EPO President. I, along with an unknown number of others, attended virtually via a video stream. The proceedings were not particularly enlightening regarding the thinking of the EB, but we did at least get an idea that they thought question 1 was at least admissible, while there might be some doubt about whether question 2 was. The appellant, of course, argued that the bounds of what was patentable should be maintained as in T 1227/05 and should cover modelling pedestrians in buildings as well as electrons in circuits. The EPO President seemed to agree, and argued that methods of simulation were becoming increasingly important and in some cases provided alternative ways to taking measurements in the real world. The boundaries of what was considered patentable should therefore be allowed to develop over time. The only significant push back from the EB seemed to be to emphasise that they were the ones who were to decide whether any question was admissible. Just because they were asked a question did not mean that they were obliged to answer it (as of course we already know from G 3/08). 

An interesting example put forward by the EPO President was a method of simulating natural phenomena by ray tracing, in order to generate a more realistic image. Computer rendering by ray tracing could be considered patentable because it allowed for a more realistic representation of reality, even though the output was not actually real. This made me think that this is, in essence, the problem relating to the issue of whether computer simulations are patentable or not. What exactly is it about a particular computer simulation that would make it patentable? Is it to do with the type of thing that the simulation models, i.e. whether the thing is an electronic circuit or movement of people in a building? Both, of course, are real physical things and it is possible to get patents for buildings as well as for circuits. That can't be it then. Instead, looking back at why the application in T 1227/05 was considered allowable, the reason for allowing it was, in my view, to do more with the way in which the circuit was simulated that allowed a more realistic representation of noise. A link between the simulation features and the corresponding article in the real world could be established, resulting in a plausible reason for establishing an inventive step. In the case of modelling pedestrian flow in a building, however, even though the argument was made that the way the flow was modelled made the simulation more accurate, this seemed to be a mere assertion without any real backing. More, I think, could have been made about why the particular way the flow was modelled made it more accurate, backed up with evidence as to how this was the case. This was not possible on the basis of the original application, which contains lots of detail about how the model is set up but nothing about how the resulting simulation matched reality. With a circuit this could easily be done. This could also have been done with real people in a real building (or at least a corridor with obstacles, as in the above drawing) but it wasn't. Could it have made the patent application more likely to be granted? I think perhaps it could, but then we wouldn't have had the opportunity to have the Enlarged Board consider the issue. 

While the EB is deliberating, we will for now just have to guess what they think about the issue. Having heard the arguments, however, I think that the key to getting a computer simulation patentable is to show in the application how the way in which the simulation is set up produces a result that is closer to reality. Whether this is the way in which 1/f noise is simulated using random number to model a circuit, how light rays are traced to produce more realistic images or the way in which people are modelled by way of various parameters, it should be possible to show how certain specific features of the claimed invention provide a more realistic representation of reality. That way, I think, is where the path lies in getting simulation methods patented. Whether I am right or not we will just have to wait and see.

PS. A prize for anyone who can spot what word I have deliberately avoided using (with the exception of the quote from T489/14) in this post. Is it any less clear as a result?

UNION-IP Roundtable: Smart IP, Munich 22 Feb 2019

The subject of artificial intelligence (AI) has been of interest for a long time, basically ever since computer technology was envisaged to eventually replicate what could previously only be done with the human mind. Along the way, various tasks that would previously require a human mind have been replicated by computer. Examples that are now considered mundane, or at least well known, but not so long ago would be beyond the capacity of computer technology, include optical character recognition, voice control, machine translation and computer vision for self-driving cars. These technologies are continually changing our working and home lives, and will continue to do so for the foreseeable future.

There is a question as to whether any of this can really be considered AI at all, as there is no suggestion that a conscious computer such as HAL9000 is going to arrive any time soon. For the time being though, the term AI has been applied to many different areas of computer-implemented technology, and of course there is a question of how, or even whether, this technology can be patented and, if it can, what can be done about it.

To help answer this, and some other related questions, a "Round Table" event, which I will be attending, is to be held at the German Patent Office in Munich on 22 February 2019, organised by UNION-IP, titled "Smart IP - Applying intelligence to patenting, licensing and enforcing IP on new technology". This will include presentations from:

• Georg Picht, University of Zurich, providing an introduction;
• Hans Mertens, President of Software Commission of UNION-IP, on Protecting new technologies;
• Georg Weber, Director in the ICT sector of DG1, European Patent Office, on Granting patents for new technologies;
• Rene Allart, Senior IP Counsel (Digital Imaging), Philips, and Peter Hedman, Senior Patent Attorney, Ericsson (Device, Service and Media)on Creating and owning patents for new technologies;
• Matthias Zigann, Presiding Judge, District Court Munich, on Procedural challenges and new dispute solutions;
• Amedeo Santosuosso, President of IP Chamber, Milan Court of Appeal, on IP, AI and legal decision making;
• Johann Pitz, VP IP Litigation Commission of UNION-IP, on Licensing in a digital world;
• Christian Loyau, Legal Director, European Telecommunications Standards Institute, on Licensing for a digital communication world: structures and framework; and
• Dominik Bauer, Senior Manager, Audi AG, on License options and injunctions.

The Round table is divided into three sessions. In the first, an overview of inventions made in different Industry 4.0 fields will be provided (such as smart objects, AI, IoT), with specific aspects of patent applications in new technologies in grant proceedings at the EPO discussed. From the industry perspective, we will hear about patenting strategy considerations, and approaches to obtaining and licensing valuable patents.

In the second session, presentations will address the issue of ownership of IP rights when the author is a learning machine, along with new parameters for infringement and validity assessment, and cross-border issues. Experienced judges will discuss procedural challenges, new dispute resolutions and decision making processes involving new technologies from the administrative and judicial perspective.

In the third session, licensing options and their legal framework in the field of new technologies will be discussed, and in particular the specific challenges ETSI is facing with the improvement of SEP declarations and their impact on FRAND negotiations. From an industry perspective we will hear about the applicability of equity principles in context with injunctions and respective license strategies.

Although there is a packed programme, there will be time during and after the sessions for questions and answers, and plenty of time for further discussion and networking in the lunch break afterwards.

The full programme, including registration details, can be found here, as well as via the UNION-IP website.

I hope to see you there!

More about HAL9000 here, more about why computers may, or may not, become conscious here and here.

A Patent for a Hairdressing Salon in a Shipping Container - Really?

A while ago I wrote about a patent that was granted by the EPO in August 2016 which, it seemed to me, should not have been granted because it was clearly invalid. The patent, EP2700769B1, claimed the following:

1. A hairdressing salon (1) comprising at least one styling station (3), which is embodied in a room (5), wherein the room (5) is arranged in a mobile structure (7), which can be displaced by means of a lifting tool, characterized in that the mobile structure (7) has at least one window (13).

A South African barbershop,
in a repurposed shipping container.

Anyone remotely familiar with patents would immediately recognise that the claim, which effectively defines a hairdressing salon in a shipping container, would have fairly obvious validity issues. Even if nobody had thought to repurpose a shipping container in this way before (which on the face of it sounds implausible), there would be a question to be asked about what particular technical problem the invention solved that was not obvious. The claim therefore seemed, even before doing any kind of search, either not novel or lacking inventive step. How it got through the EPO's examination system, with the examiner not really finding anything of relevance and then allowing the application on the basis of the characterising clause being to add a window, is a mystery (at least to me), and is unfortunately something we will probably never find out.

As I wrote in my previous post about the patent, I did a quick search for prior art (taking no longer then 5 minutes) and found something that seemed to me good enough to knock out at least claim 1 for lack of novelty. The prior art I found is available here, from which I have copied the most relevant photograph. The webpage refers to a book that was published in 2011, which has all the photographs in. There was therefore no doubt that the photograph, described on the webpage as a "Boyz & Girlz Salon (in a shipping container)", was available before the August 2012 priority date of the patent.

Being a bit annoyed that something so obviously invalid could get through the EPO's supposedly high quality examination system, and also a bit of a fan of the UK IPO's opinions service, I thought I would have a go at seeing what a UK examiner thought of the patent. After waiting for the opposition period to expire (I wasn't going to file an opposition, given the high fee and the long wait for a result), I prepared and filed a quick request for an opinion on validity at the UK IPO, using selections from the book as my prior art.

A couple of days ago, just short of the usual 3 month timescale after filing the request, the opinion issued. In brief, the examiner agreed with me on every point and found all of the claims to be invalid, either for lack of novelty (as in claim 1) or lack of inventive step. The only claims that were found to be novel were those that added a staircase to access the walk-on roof (claims 7 & 8), which were unsurprisingly found to be lacking in inventiveness. As a result, the patent was found to be entirely invalid.

It is a little disappointing that the patent proprietor decided not to file any observations in reply to the request, but since they had failed to pay the latest renewal fee it seemed they might have already lost interest in it, or had perhaps discovered after getting it granted that it didn't stand much chance of surviving any attacks. The request did provoke observations from another quarter though, from someone calling themselves "The Patent Labrador". Unfortunately, these observations could not be taken into account by the examiner as they raised new issues that were not mentioned in the request, although they were mentioned in the opinion as having been filed, by "an anonymous observer". Perhaps the Labrador needs to have a look at Rule 96 before having another go.

Along with proving a point that was previously only made by me in a fairly obscure and esoteric blog, this little exercise has shown how easy, and potentially quite powerful, it can be to get something on the public record relating to an invalid patent that would make anyone wanting to enforce it think very hard before doing so.

Regular readers of this blog will, of course, already know that this is not necessarily the end of the story. The next step the UK IPO can take is to initiate revocation proceedings under section 73(1A), provided they agree with the examiner that the case is sufficiently clear cut. If, as I suspect, the proprietor does not contest the opinion, my guess is that this patent will, in due course, be got rid of in the UK and will, in effect, never have been granted, which is of course what should have happened in the first place.

UNION-IP Roundtable Event on Indirect Infringement - February 23, 2018

A couple of years ago I was invited to attend a UNION-IP meeting to speak on what was then the hot topic of partial and poisonous priority. I reported on the event (which was very well attended) in a post at the time here. UNION-IP, who have since made me Vice President of their Patents Commission, hold these events at around the same time every year, choosing a different topic to discuss each time. This time around the topic is indirect infringement. The general idea, as always, is to gather views on how things are approached in different European jurisdictions so the audience can get a clearer picture.

As the UNION-IP website states, it is a challenge to provide patent protection for parts, components, and consumables, such as used in coffee machines, printers, cars, and as ingredients for pharmaceuticals. Indirect infringement might be the solution for the patentee. However, this is complex, and is interpreted differently across Europe. This half day Round Table will examine questions relevant to drafting or litigating a patent, and will discuss the situation in the UK, Germany and Italy and elsewhere, as well as touching on how things might change if/when the UPC comes into force.

The speakers lined up for the event, which is to be held at the German Patent Office in Munich on Friday 23 February 2018, include Dr Klaus Bacher, Judge at the Bundesgerichtshof (German Federal Court), Silvia Vitrò, President of the IP Specialized Court of Turin, Mr Justice Sir Henry Carr of the English High CourtSir Robin Jacob, Florence Jacquand of Véron & Associés, and Gabriele Mohsler of Ericsson.

The event should prove to be very interesting and informative, and will hopefully give attendees a good picture of how this topic, which is far from being unified across Europe, is dealt with in different jurisdictions. I hope to be present myself (although I won't be speaking this time), and look forward to seeing plenty of people there.

Mylan v Yeda: the fallout from Lilly v Actavis

As will now be well known to all patent practitioners, at least in the UK, the Supreme Court's judgment in Lilly v Actavis has changed the law quite radically on claim construction. Rather than just applying a general test of what the skilled person would understand the patentee to have meant, as outlined by Lord Hoffmann in Kirin-Amgen, it is now the law in the UK that due account should be taken of equivalents, in line with Article 2 of the Protocol on the Interpretation of Article 69 EPC. This has brought the law in the UK into line with that in other European countries, in particular Germany, where equivalents have been a feature since at least the 1980s.

What was not addressed in Lilly v Actavis was how this change in claim construction would affect how novelty would be assessed. Could it be the case that a claim could be considered to encompass equivalents that were in the prior art? How would the Gillette defence work in this case? Would novelty be assessed in relation to the prior art and its equivalents, or would the equivalents be a matter only for inventive step and not novelty? Some of these questions were considered in the judgment of Mr Justice Arnold in Mylan v Yeda, which issued yesterday (26 October 2017).

The case, relating to EP2949335B1, was about a medical treatment claim, where the claimed invention defined a regimen for treating multiple sclerosis involving three injections of a 40mg dose of glatiramer acetate weekly, with at least one day between each injection. The primary piece of prior art (termed Pinchasi), disclosed treatment of the same condition using the same compound at the same dose, but administered instead every other day. This would, of course, result in the patient getting injections that alternated between three and four each week.

The question was then whether following the treatment disclosed in Pinchasi would inevitably infringe the patent. Mylan argued that "it remained the law that a claim lacked novelty if the prior publication disclosed subject-matter which, if performed, would necessarily infringe the claim. Even if the subject-matter would not fall within the claim on its proper interpretation, it was sufficient that the subject-matter would infringe the claim applying the doctrine of equivalents. Otherwise, a claim could be infringed by a person who did exactly what the prior publication taught, yet the claim would be novel over that prior publication" (paragraph 162). Yeda, however, argued that "it was no longer the law that a claim lacked novelty if the prior publication disclosed subject-matter which, if performed, would necessarily infringe the claim. Rather, the claim would only lack novelty if the prior publication disclosed subject-matter which fell within the claim on its proper interpretation. It was not sufficient that the subject-matter would infringe the claim applying the doctrine of equivalents" (paragraph 163). In deciding which one was correct, Arnold J referred to section I.C.4.5 of the Case Law of the EPO Boards of Appeal, which cites several cases that decided that the disclosure of prior documents did not include equivalents. Equivalents should instead be considered under obviousness. Arnold J then concluded that Yeda was correct, although didn't say whether this meant that anticipation by inherency (as in Merrell Dow v Norton) was no longer the law. I suspect that he did not mean to go this far, but intended it to only mean that equivalents were not to be considered under an assessment of novelty.

Just in case he was wrong on the novelty point, however, Arnold then went on to find that, if it were legally possible for a claim to lack novelty by virtue of the doctrine of equivalents, it would lack novelty over Pinchasi.

What was not considered on the novelty point, but seems to me to be fairly important, was whether the claim language strictly limited the regimen of three, and only three, injections every week. This does not seem to have been argued by either side, nor was it considered in the section on claim construction (paragraphs 140-143). Claim 1, at least on my reading, does not limit the number of injections per week to only three, but defines it as three injections every seven days, with each injection separated by at least one day. This would, in my opinion, also encompass an injection every other day, even though this would result in four injections every other week. Any question of whether the doctrine of equivalents would need to be used to assess novelty would then be irrelevant, as the prior art would clearly fall within the scope of claim 1.

In the end, Arnold J found that the claimed invention was obvious over the prior art anyway, given that one fewer dose every two weeks would probably not make much difference and it was obvious to try a regimen with three per week instead. The patent was therefore found invalid, but perhaps not for the right reasons. If this goes any further, which Arnold J suggested that it might (and I suspect it will, given the very large sums of money involved), perhaps there will be a reassessment of whether the decision on novelty was really properly thought through.

G 1/15 (partial priority) - a postscript

The decision in G 1/15 issued earlier this year (reported by me here), confirming that partial priority was allowable for claims that encompassed an earlier priority application. This finally and emphatically killed off the idea of poisonous priority. For the application in question that led to the Enlarged Board referral, however, this was not the end of the story.

The application, EP98203458.9, in the name of Infineum UK Ltd., was granted in 2010 and opposed by Clariant Produkte (Deutschland) GmbH. One of the grounds of opposition, which eventually became the sole remaining point on appeal, was that granted claim 1 was not novel over the patent's own priority document, as a result of it not being entitled to priority. This resulted in a referral to the Enlarged Board, which decided: "Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect". The implication of this was that claim 1 did have a partial priority right to the earlier narrower disclosure, which did not therefore become novelty destroying. The Enlarged Board then referred the matter back to the lower Board of Appeal to decide on the point in question.

The Board of Appeal have now issued their further decision in T 557/13. This confirms that the only novelty objection was in relation to whether the granted claim 1 was entitled to partial priority. In light of the decision in G 1/15 the priority document could not be novelty destroying, since the effective filing dates for that subject matter were the same. The Board of Appeal noted that inventive step objections that had been raised by the opponent were not dealt with under appeal, and therefore decided to remit the case to the Opposition Division for further prosecution.

The case, which has now been going for just over six years, will now have to go on a bit longer still before it can be finally settled (even though the patent finally expired in June 2015). I wonder how much longer the case can be drawn out, and if it will go yet again to the Boards of Appeal after the Opposition Division decide on the remaining inventive step points.