Surrender

Surrendering a patent, which is possible under section 29 of the UK Patents Act 1977, is an unusual option to take, although it does happen fairly regularly. In the year to date, according to the UK IPO online patents journal, 20 applications have been made to surrender patents. Over the past eight years (the period the journal has been available in electronic form), section 29 has been used 178 times.

The motivations for a patent proprietor to want to surrender their patent are never clear from the outside, and do not need to be stated in an application. There would, however need to be a good reason for a patentee to apply to surrender their patent rather than taking the easier option of simply allowing the patent to lapse by not paying a renewal fee. That reason would in most cases, I suspect, have something to do with either a licence or settlement relating to the patent. If, for example, a patent is being licensed and royalty payments are being made while the patent remains in force, having the patent revoked by a third party could put at risk all of the payments made to date, since revocation has the effect of deeming the patent never to have existed. This would inevitably cause problems for the patentee. A solution would be to surrender the patent, because this would not have a retrospective effect and could merely cause a licence to be terminated rather than put in question everything that has been paid to date.

Any application to surrender a patent must indicate, according to rule 42, whether there is any action pending before the court for infringement or revocation of the patent, and including any particulars. If there is a revocation action pending, this would be a good reason for the IPO not to allow the patent to be surrendered because the patentee should not be able to avoid having their patent revoked by instead surrendering it. Two decisions from the UK IPO this year illustrate the point nicely, with one deciding against allowing the patentee to surrender their patent, at least for the time being, while the other decided in favour of allowing the patent to be surrendered.

In OR Specific Inc.'s patent (BL O/170/14, 16 April 2014), the proprietor gave notice of an offer to surrender their EP(UK) patent EP1237494B,  accompanying this with a statement indicating that an action for revocation was pending before the High Court. The offer was advertised and no notice of opposition was given within the four week period under rule 76(2)(b). The hearing officer considered that the comptroller had no power to decline to deal with an offer to surrender. In a previous decision, however, consideration of an offer to surrender had been stayed and the proprietor ordered to inform the court of the offer (Dyson’s Patent [2003] RPC 24). The hearing officer also referred to Connaught Laboratories [1999] FSR 284, in which Laddie J noted that an order for revocation had a different effect to an offer of surrender and indicated that it was open to the Court to order revocation or to allow the offer to surrender to be processed through the comptroller. In the hearing officer’s view it was appropriate to stay further consideration of the matter to await the outcome of the revocation proceedings. The proprietor was ordered to notify the Court of the offer to surrender and to notify the comptroller of the outcome of the court proceedings, after which the matter would be considered further.

In the later case of Genentech Inc.'s patent (BL O/360/14 11 August 2014), the proprietor also made an offer to surrender their EP(UK) patent (EP1187632B1), including particulars of a revocation action pending before the UK courts relating to the patent, along with two others that were not being surrendered. The patent had been the subject of opposition proceedings at the EPO and an appeal was underway regarding revocation of the patent by the opposition division (see the register here for details). The offer was advertised under rule 75 and no opposition was filed during the four week period under rule 76(2)(b). The office requested further information regarding any response that may have been received from the claimant for revocation regarding the offer. The applicant responded by referring to a judgment from the Patents Court following a pre-trial review of the revocation action, in which the judge referred to there being no reason to continue with the revocation action in relation to the patent that was being surrendered. Following the judgment, the claimant did not pursue the claim for revocation of the patent. The hearing officer considered that the issue to be decided was whether an offer to surrender the patent could be accepted or if the proceedings should be stayed pending resolution of the revocation proceedings. Unlike in the earlier case, surrender of the patent had already been discussed and acknowledged as part of the revocation proceedings and all parties were aware of the offer to surrender. On the basis of the information provided, the hearing officer considered that the patent could be surrendered since: i) the claimant and court were aware of the offer; ii) the offer remained unopposed; iii) the court expressed the view that it should continue; iv) accepting the offer would not adversely affect the revocation action, which now related to two other patents; and v) the claimant and court had proceeded on the assumption that the offer would be accepted and the revocation claim would not be pursued. The order to surrender was accepted.

From these two decisions it appears that offers to surrender a patent are only accepted at the IPO if it is clear that there are either no pending proceedings regarding the patent or, if there are, that the other parties are all happy to allow the patent to be surrendered. This all seems to make a lot of sense, and fits with the general idea that it should not be possible for the patentee to get away with surrendering if the patent should instead be revoked.

Sugru

The UK IPO have recently been promoting via Twitter a video commissioned by them about a company known as Sugru. The company (which is actually called FormFormForm Limited, but I will use the short form) has developed a kind of settable Blu-Tack that can be used for all kinds of fixing and mending jobs. I have bought some myself and can confirm that it does work as advertised and is pretty handy. Most of the little packets of Sugru I have are, however, I suspect destined to live in that drawer everyone has somewhere in the house for things that don't have another place to live.

In the video, the founder of the company Jane Delahanty and her business partner Roger Ashby discuss how and why they went about getting IP protection for their invention. They mention that they had "invested heavily" in intellectual property protection and that a top quality patent attorney was vital. They also mention that their trade mark was a very important part of their IP strategy. Roger points out that a weak patent would be not worth the money involved in getting it. This got me interested in finding out what exactly Sugru had managed to get patented via their top quality patent attorneys, who shall in this post remain nameless despite the rather shameless plugging they get in the video (paid for, of course, by the IPO). I will leave it to the reader to find out who they are.

Looking at the European patent register, there are three applications in the name of FormFormForm Limited: EP06743997 for a "Mouldable Material"; EP06744002 for a "Hand-Mouldable Material"; and EP07824749 for a "Room Temperature Curable Silicone Elastomer Composition". The first two claim priority from two GB applications filed in 2005 and the last one to a GB application filed in 2006. Espacenet shows that there are two distinct patent families here and here, which also cover applications in the US, China and Japan. So far, there are only two granted patents: EP2089465B1 and CN101616979B, granted in 2012 and 2013 respectively, both in the latter family of applications. The other two European applications have been deemed withdrawn, one due to non-payment of a renewal fee and the other due to no response being filed to a notification of allowance. The latter withdrawal seemed strange, so I took a quick look at the allowed claims, which define a two-part silicone elastomer composition. Presumably this is not what Sugru were interested in any more, as the product is a one-part elastomer, so the application was probably dropped for this reason. The first family of applications therefore looks pretty much dead.

The later European application has an interesting history. It was originally filed, as a PCT application, with the following rather brief (and very broad) claim 1:

1. A one part room temperature curable silicone elastomer composition where the uncured composition has a Williams plasticity from 80 mm to 900 mm.

The measure of plasticity seems to be an industry standard, particularly for measuring the plasticity of silicone materials. The test is quite simple, basically involving a measure of how much a pellet of material will plastically deform under a dead weight over a set period of time (using a simple machine like the one on the right, available here). A lower number indicates a greater degree of plasticity. The lower threshold of 80 mm in the claim indicates that the composition would be somewhat resilient rather than being completely plastic, as it does not flow completely away under a load. The upper bound simply indicates that there is some plasticity, as a zero plasticity material would bounce back to its original shape (giving a value of 1000 mm). So far, so good, although such a broad claim would immediately raise suspicions that it might not be novel, given there is a lot of prior art on silicone elastomers, which anyone familiar with the field would be aware of. One might therefore expect to see a lot of generalised fall back positions in the dependent claims and elsewhere. Surprisingly, however, there were only 9 dependent claims in the original application, four of which merely provided further narrowed ranges for the plasticity values.

Unsurprisingly, the EPO examiner found that the invention was not new, citing various prior art documents including this one from Dow Corning (a big player in silicones). In the written opinion of the international searching authority, the examiner found that claim 1 was not new over seven different documents. The applicant, via their attorneys, disagreed and argued that none of the documents in fact showed compositions having plasticity values in the claimed range. The examiner was not convinced by this and issued a summons to oral proceedings (a bit premature perhaps, but probably justified in this case). An interesting feature was that the examiner put the onus on the applicant to show "by appropriate comparison tests that the uncured composition characteristic differences do exist with respect to the Williams plasticity" (annex to the summons, 4 March 2011). The applicant's attorney argued against this, but made extensive amendments to the claims anyway and did not provide any comparison data. After arguing the case at the oral proceedings, with Ms Delahanty accompanying, the examining division finally agreed on the following claim:

1. A one part room temperature curable silicone elastomer composition where the uncured composition has a Williams Plasticity from 80 mm to 900 mm, and where the composition is a non-adhesive composition, the composition comprising:

20-60% by weight of a hydroxy-terminated poly(dimethylsiloxane) of viscosity greater than 350,000 mPa s (25°C) ;

3-66% by weight of a reinforcing filler;

10-60% by weight of a non-reinforcing filler;

2-6% by weight of a crosslinker;

and a suitable quantity of a curing catalyst.

I leave the reader to decide whether this is a claim that is worth spending a lot of money on, which Sugru must have done judging by the size of the EP prosecution history alone. I could certainly find a few fairly straightforward ways of looking at getting around the claim if I wanted to avoid infringing it.

The lessons to be learned from the Sugru case study, in my opinion, are not really those the IPO video would apparently like us to believe, i.e. that it is very important to get patent protection for your invention and worth spending lots of money on it. For Sugru, I think their most valuable IP is their brand, and not their patents. This might not have been obvious from the start, but has become clear over the years as their business has developed. After developing a formulation that works well, they have spend a lot of effort in marketing the product and have so far been very successful in doing it. Jane Delahanty's stated aim of Sugru being one of those things, like Blu-Tack, that everyone has in case they need something fixing, may be a plausible one and would certainly make them a lot of money if it came even partly true. Getting there does not, however, depend on having the patent that they managed to get.