Sunday, 11 March 2018

UNION-IP Round Table Event Report - Part 1: Germany

The question of indirect infringement comes up fairly often in cases before courts across Europe. Although substantive patent law has been roughly aligned in most European countries since the 1970s, there are some differences in what the law states and how it is applied. Indirect infringement is also not just of interest to those involved in litigation, but a crucial aspect to bear in mind when drafting and prosecuting patents before any patent office. Bearing these in mind, the programme for the UNION-IP Round Table event that was held at the German Patent Office in Munich on 23 February 2018, aimed to cover what the differences are between some of the main European jurisdictions and how the general patent practitioner can bear these in mind when drafting and prosecuting applications.

First to speak was Dr Klaus Bacher, Judge at the German Federal Court of Justice (Bundesgerichtshof), covering indirect infringement in Germany. Noting first that indirect infringement was not harmonised across Europe, the basic requirements of supplying means essential to implementing the invention, together with knowledge that the invention would or could be put into effect, were themes that would come up again in other presentations. How they were implemented, however, would in some ways differ. In Germany, one point of interest was that indirect infringement did not require there to be any direct infringement to take place. A counter to this was that, although an injunction could be granted, no damages would be awarded unless a direct infringement could be shown. Dr Bacher then went through four key cases from recent years in Germany. These were:

The first related to a claim that covered decoding encoded video data. The alleged indirect infringement was a DVD imported into Germany, which would be decoded when played. There was no direct infringement by the importation or sale, since decoding would only be performed on paying the DVD, so the question was whether the DVD constituted an indirect infringement. No such infringement was found though, as there was no interaction between the data stored on the DVD and the decoding system.

The second related to a similar theme, involving a USB stick that was able to receive TV signals and send them to a PC. The patent not only claimed the decoding steps, which were not performed by the USB stick, but also claimed the coding and transmission steps. Again, no indirect infringement was found, because the stick did not contribute to decoding the data but merely provided a preceding step that was not itself sufficient.

The third related to permetrexed, which has been the subject of litigation across Europe, including recently before the UK Supreme Court. The issue of indirect infringement came up in relation to whether permetrexed dipotassium could be an indirect infringement if it were to be dissolved in saline, thereby becoming (so it was argued) permetrexed disodium. Indirect infringement was, however, denied because the disodium version was not the subject of manufacture (the claim being in the Swiss form). What was protected was the substance for treating the particular condition, and not what it might become afterwards.

The fourth related to a tire repair kit, which was patented in Germany but not in Italy. Sales in Italy would somehow make their way into Germany and become infringing articles, but did the manufacturer and seller in Italy become liable? The finding was that the defendant would be liable if they knew, or had reason to know, about the intention to resell in Germany.

To be continued with coverage of Italy, the UK and France, together with some ideas on how to draft patent applications to try to avoid the need for indirect infringement.

Thursday, 25 January 2018

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.

Thursday, 4 January 2018

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.