Tuesday 20 December 2011

Sandvik v Kennametal: the dangers of armchair examples

An important part of getting a valid patent is that it needs to disclose the invention in such a way that it can be reproduced without undue effort by a nominal 'skilled person'. This requirement is enshrined in Article 83 EPC, which simply states:
The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
This requirement is normally not something that can be tested during examination. It is often therefore just taken as read that whatever is described in a patent application could in fact be carried out by a skilled person simply following one or more of the examples in the description. There should, of course, be at least one example in the description that results in a product, or follows a process, that lies within the scope of the claimed invention.

In some cases the applicant may be so confident the invention will work as planned that examples are provided setting out how to make a product according to the invention without this having in practice being done when the application is filed.  This is normally nothing to be too worried about, but the applicant should always be aware of the potential fatal flaw in the application if the example does not in fact work.

Such a fatal flaw was revealed in a recent judgment by Mr Justice Arnold in the case of Sandvik v Kennametal, available from BAILII here. Sandvik had obtained a European patent, EP0603144, relating to an alumina-coated cutting tool (similar to those shown in the picture on the right). The key feature of the claimed invention was that the alumina coating had a particular texture, i.e. a preferred crystallographic orientation relative to the cutting face.  The claims specified a 'texture coefficient' (TC) of larger than 1.3 in relation to one particular orientation, which meant that this orientation would be preferred over the others. The claims also specified how the texture coefficient should be measured, which was by using standard X-ray diffraction data patterns.

Unfortunately for Sandvik, when an experiment was carried out following one of the 'armchair examples' (as Arnold J put it: paragraph 147), the resulting texture coefficient was much less than expected. The best that could be done was a TC of 0.84, which related to the particular orientation being less preferred rather than more preferred. Sandvik tried to argue that the skilled person would be able to get to the required result specified in the claims by doing a few trial runs, as they had done when optimising the process. However, the key feature that allowed the claimed texture coefficient to be obtained, relating to the supply of gases during deposition of the coating, was not disclosed in the patent and was even admitted by Sandvik not to have been discovered until after the priority date of the patent.

Arnold J considered that this missing information was fatal to the patent.  Without the skilled person being informed of how to get the required texture, it was not possible for the claimed invention to be sufficiently disclosed because the information on what to do and why was not part of the common general knowledge. As Arnold J put it, when following the example outlined in the patent "the skilled reader would not appreciate that he was doing something that he was not supposed to do" (paragraph 137). The patent was therefore found to be invalid on the ground of insufficiency. It was also found invalid for being obvious, but this was something of a moot point (unless the insufficiency finding is overturned on appeal).

The main lesson to be learned from this case is fairly obvious, which is that examples of how to perform an invention should be sufficiently described in enough detail for someone else to be able to do it. It is dangerous to assume that the skilled person can fill in any gaps, as these could be too wide when it comes down to proving it.

Similar is not enough

As if to illustrate my point, following my last post on self-represented applicants another opinion has been recently issued by the UK IPO relating to a patent obtained by just such an applicant.  The patent in question, GB2324605 (unfortunately available online only in the pre-grant 'A' format), was granted to the applicant and inventor Mr Alan Mackinder in 2001. Mr Mackinder has since then requested and had issued two opinions under section 74A regarding infringement of his patent, the first (opinion 04/05) issued in January 2006 and the second (opinion 18/11) on 6 December 2011. Unfortunately for Mr Mackinder, both opinions have not gone the way he wanted them to.

Claim 1 of the patent as granted goes some way to explaining why Mr Mackinder has so far not succeeded.  The claim read as follows:
1. A vehicle speed limit enforcement method, utilising an integrated electronic unit using satellite positional information, for detecting, on a worldwide basis, when a vehicle exceeds a legally enforceable speed limit with levels of accuracy demanded by the law enforcement agency and on doing so will transmit a signal to the appropriate law enforcement agency indicating that the speed limit has been exceeded, the speed of the vehicle, the time the speed limit was exceeded, the date the speed limit was exceeded, the name of the driver, the location where the speed limit was exceeded, the registration number of the vehicle, the make of the vehicle and the model of the vehicle.
In his request for an opinion, Mr Mackinder alleged that an apparatus known as the "Smartbox" offered by co-operative insurance (CIS) infringed his patent. This device, based on GPS tracking technology, would, when installed in a vehicle, monitor how the vehicle was being driven and allow an insurance premium to be calculated on a 'pay-how-you-drive' basis. The device therefore had some similarities with Mr Mackinder's patented method in how it worked in practice.  The examiner, however, considered that similarity was not enough.  Claim 1 required an infringing device to do several things in response to exceeding a speed limit, most of which CIS argued quite reasonably the Smartbox did not do. Given that Mr Mackinder had, as the examiner put it, "the ultimate responsibility for the words chosen to define his monopoly", there was no doubt that the skilled addressee would understand him to have intended to limit his monopoly by including the essential feature of transmitting a signal to an appropriate law enforcement agency (which CIS clearly was not). For this, and various other reasons relating to the claim's other restrictions, the examiner did not consider the Smartbox or its method of use to constitute an infringement of the patent.

The question that inevitably comes to my mind at least is whether Mr Mackinder would have fared any better if he had been represented when prosecuting his application. It appears that the key feature of the invention was automatic enforcement of legal speed limits, so even with professional assistance it seems unlikely that he would ever have been able to enforce his patent against an insurance company. Some better claim drafting, even without the benefit of hindsight, might however have got a patent granted with a more useful scope. Unfortunately for Mr Mackinder, who has now spent in the region of £2000 in renewal fees and £400 in opinion fees on his patent, it is all now far too late. When it comes to deciding on the actual scope of a granted patent, the IPO is apparently much less willing to accommodate any weaknesses in a self-represented patentee's case than it is when the applicant is prosecuting his application. Is this a good thing? I think it most certainly is, although such applicants may not feel the same way.

Sunday 18 December 2011

Self-represented applicants

It is said (although I'm not sure who said it first) that he who represents himself in court has an idiot for a lawyer and a fool for a client.  Thoughts like this can often come to mind when reading some of the decisions that come out of the UK IPO relating to self-represented applicants.  These decisions are, of course, an entirely unrepresentative sample of how self-represented applicants get on.  I am sure many of them manage quite well and end up getting a patent out of the process, although usually with the assistance of a helpful examiner. How useful and enforceable such patents are, however, is another matter (see Opinion 06/06 for a good example of why such patents can be less than ideal).

It is well known that examiners at the UK IPO tend to be remarkably patient and accommodating with applicants without a representative.  You only have to see the difference between how an examiner addresses such an applicant and how the same examiner addresses a representative.  Examiners tend to do helpful things like explaining the law on novelty, inventive step, clarity, added matter and the like, which would be unnecessary to any qualified patent attorney.  They also, thankfully, tend to advise such applicants that they might like to consider getting themselves a qualified representative, typically pointing them in the direction of CIPA. 

Sometimes, however, the self-represented applicant just doesn't get it and refuses to engage with the examiner in any kind of constructive way.  A couple of recent cases help to illustrate this point.  The first of these relates to an application filed by VB UK IP Limited, as represented by the inventor Mr Paul Scanlan, the decision relating to which, BL O/415/11, was issued on 23 November 2011.  In his application, Mr Scanlan claimed he had invented a method and apparatus for "determining changes in distance of visual fixation of a person by use of input from the person's respiratory function data" (as stated in claim 1).  The idea behind the invention was described in the application in the following way:

"As discovered by the inventor, the respiratory system directly influences the visual system. The inventor discovered that pressure from the respiratory system presses on the rear of the eyeball, changing the eyeball's length from front to back, thereby altering the focus of the eye. Increased pressure from the respiratory system pushing on the back of the eyeball reduces the length of the eyeball for better distance vision.  A decrease in this pressure increases the length of the eyeball for better close-up vision. Thus when a person changes from viewing an object in the distance to instead viewing an object close-up, there is a corresponding change in pressure in the respiratory system" (page 2, lines 16-17 of the application as filed, published as GB2440966).

According to the inventor, this relationship could be used to enable auto focus functions on cameras (as shown in the illustration on the left) and for landing aeroplanes, among many other applications.  One problem, however, was that the examiner did not think that the invention was patentable because it related to a scientific discovery as such under section 1(2)(a), lacked industrial applicability under section 4(1) (being contrary to well-established physical laws), and the application contained insufficient information for a person skilled in the art to perform the invention, according to section14(3).  The applicant disputed all of these, and argued at the hearing that his theory was correct.  The following paragraph of the decision paints an interesting picture of what went on before the hearing officer:

To demonstrate his theory, Mr Scanlan hummed while looking from one finger to another, the fingers positioned at two different distances from his eye, and the tone of his hum changed. This, he asserted, showed a link between the respiratory system, and the distance of visual fixation.

The hearing officer was, unsurprisingly, not persuaded and considered that this did not provide evidence that there was in fact any link.

Not to be put off, Mr Scanlan also provided evidence in support of his theory, which included a reference to a contestant on the ITV show “Britain’s Got Talent”, Antonio Popeye (pictured right).  As the hearing officer put it,

This is a gentleman who appears to be able to make his eyeballs “pop” out of his skull. This effect, according to Mr Scanlan, is achieved by Mr Popeye having excellent control over the pressure in his respiratory system and how it affects his eyes. Again, there is no evidence that this effect is not simply down to good control of the facial muscles and/or extrinsic eye muscles.

Considering all the applicant’s evidence, the hearing officer concluded that there was no “credible evidence to support the applicant’s theory over and above what are considered to be well established medical principles” (paragraph 24), and there was therefore no reasonable prospect of Mr Scanlan’s proposals being accepted even under trial conditions with experts available to give evidence (a reference to the requirements for refusing an application on section 4(1) grounds following the decision in Blacklight Power).  The application therefore lacked industrial applicability. 

The hearing officer also found the application to be insufficiently disclosed, under section 14(3), “due to a lack of information concerning the apparatus which should be used to obtain respiratory function data, the conditions under which that data should be obtained, and a lack of information concerning how any data obtained would then be used to derive a visual fixation distance” (paragraph 32).  The application was, unsurprisingly, refused.

It appears to me that Mr Scanlan’s invention would be doomed to failure even if the applicant was represented by a qualified attorney (and had enough money to take his application through to a hearing).  In another recent example, however, I am not so sure that the eventual outcome would have been the same.  This was the case of Henri Duong, BL O/422/11, this decision being issued on 25 November 2011. 

Mr Duong filed his application in January 2008, claiming priority to three previously filed UK, French and US applications. The application (published as GB2448392) related to an automatic braking system for preventing a vehicle from colliding with obstructions (an exemplary embodiment illustrated on the right).  The claimed invention was drafted in what could be described as an unconventional (not to say incomprehensible) style, claim 1 as filed reading as follows:
1. The basis of inventing and materializing Detectable anti-collision automatic braking device invented for stopping collision/traffic accident in transportation during running; comprising sensor(s)/ radar(s) or similarity is for installing in/on engine/motor-vehicles, automobiles, cars, trucks, buses, vans, trains, high speed trains, underground trains, tanks, motorcycles, airplanes, ships, helicopters, submarines and all moving transportations connecting on "standby" for front and rear detecting at specified distance on the road, on railway, on air route and/or at sea, automatic braking being operated automatically during running based on both functions of sensor(s)/radar(s)/any operative device(s) detecting against obstacle at its detecting zone and of structural automatic braking unit being installed and connected electrically switching on by sensor(s)/radar(s) that motor-vehicle and transportation being stopped running to avert collision grounds, comprising installing as parts of the invention with detecting device in/on all transportation for safe driving, disconnecting function period, automatic water switch, speedometer switch unit, structural operational links & automatic braking unit(s)/ motor(s), automatic brake locking & releasing unit, automatic brake pedal, automatic safety system, operating lamps/similarities on indicator and electrical circuit connection in function grounds as well for adapting automatic traffic stop lamp device in use, including: [sic]
The examiner identified several prior art documents relating to automatic braking systems, and objected that the claims were unclear in several ways and that the invention as claimed was not new.  There then followed what the hearing officer described as a “vast amount of correspondence between the examiner and the applicant which has not done much to progress the application towards grant”.  In this correspondence the examiner repeatedly raised fundamental objections to the application, which were repeatedly ignored by the applicant.  Along with the original clarity and novelty objections, added matter objections were raised, as a result of the applicant filing new claims having no clear basis from the application as filed.  The examiner's report from March 2009, responding to the applicant's three previous replies, is a model of calm restraint combined with helpful advice:
"In your letter of 14 November 2008 you state that adding matter to your application should be allowed.  My job is to guide you through the law so that you can obtain a valid patent. Whether you or I agree with the law doesn't matter, the important thing to note is that a patent that does not comply with the law will not be granted. Added matter is not allowed and as such I am unable to grant a patent containing any information that was not present at the date of filing. [...]
You need to submit a response to the report I sent you on the 12 May 2008. You should read though all of the patents I sent you and find a feature of your application (as filed, not adding any matter) that is not shown in any of these documents and put this feature at the end of claim 1 that you filed on 26 February 2008. Then you should write me a letter discussing each of the patents I have listed and telling me why your new claim 1 is different from these patents (this need not be longer than a few sentences for each patent listed). This will be the first step in the process of obtaining a granted patent for your application, but until this step is made I am unable to grant you a patent."
Unfortunately, Mr Duong failed to respond constructively to any of the advice offered.  To add to the clarity, novelty and added matter objections, the applicant then prompted a further one of plurality of invention through making more amendments.  After another couple of reports, the examiner then suggested that he might like to consider seeking advice from a patent attorney. Yet further amendments then prompted the examiner to add insufficiency to the growing list of objections. Going above and beyond the call of duty, the examiner even suggested a draft set of claims that he considered would overcome all existing objections. The applicant, unsurprisingly by that point, failed to take up the offer and a hearing was then held, although without the applicant appearing in person.

The hearing officer reviewed the outstanding objections and agreed with the examiner, concluding that "it is abundantly clear to me that a patent cannot be granted for it in its present form". The compliance period had by then expired, so the hearing officer considered whether it would be worth offering the applicant a further opportunity to amend the application to  overcome the objections. He concluded, however, that "the application has not moved in the right direction and nor has Mr Duong shown any inclination to heed any advice on how to advance it towards grant despite the countless opportunities that have been given to him. I do not consider it appropriate to offer him a further opportunity to do so now". As a result, the application was refused for failure to comply with the requirements of sections 14(3), 14(5)(b) and 76(2) at the end of the compliance period.

It is clear that Mr Duong could have obtained a granted patent even without the help of a representative if only he had paid attention to the assistance offered by the examiner.  I can only wonder therefore whether he even realised what he was trying to do, as all opportunity of getting a patent in the UK for his invention now appears to be lost (assuming that no appeal is being filed). I am not sure what, if any, lessons there are to be learned from this case, but it does appear to me that sometimes the IPO goes beyond what could be considered to be reasonable in providing help to applicants without asking for anything in return, although even their patience does eventually run out. The inevitable question as I see it is whether the IPO is doing the right thing in treating unrepresented applicants so differently. Since everyone has to comply with the same legal requirements, whether or not they are represented, is this entirely fair?

Wednesday 9 November 2011

Scientific Heresy

While there is nothing much that is going on in European and UK patent law to interest me sufficiently to write a blog post about, here is something else that has been interesting me for a while. Those of you who follow me on Twitter will probably already know what this is about. Others can read on and find out for themselves.

One of the things that impressed me most while I was training to be a patent attorney I found from Paul Cole's book "Fundamentals of Patent Drafting" (which can be ordered from CIPA here). On page 2 of the introduction is a footnote referencing an article titled "Cargo Cult Science" by the physicist Richard Feynman. Paul Cole identified this as being required reading, so I duly went away and bought the book, although it turns out the article in question is also freely available on the internet (here). The book is certainly worth buying anyway, because it is full of all sorts of strange and funny stories from Feynman's life, including how he picked the safes holding the secrets of the atomic bomb while working on the Manhattan project.

The cargo cult science article, which was derived from an address Feynman gave to students at Caltech in 1974, aims to get across what is probably the most important idea that any scientist must understand if they are to do science properly, which is to learn not to fool yourself. Feynman is also quoted as saying that science is "the belief in the ignorance of experts" (see here), which is another important and strongly related idea, since experts in particular can be very prone to fooling themselves, particularly when they get together for a common purpose. In brief, although I would recommend you go and read it yourself, what Feynman was trying to say is that to do science properly you should take nobody's word for it, not even your own. If you see a result and think it was caused by one thing, you must then make every effort to rule all other possibilities out before settling on the idea that you know the cause and effect relationship. Only once everything else has been ruled out can you confidently say that you know what the cause was and why the effect was what it was, and even then you must leave open the possibility that there could be something you have missed. Otherwise you run the very real risk of falling to what is known as confirmation bias, which is to only seek out things that confirm your preconceptions, rather than what you should do which is to actively seek out anything that might go against your current best guess. Only by doing the latter, and then being unable to come up with anything that could otherwise explain your results, can you stand any chance of narrowing down what it is you are after, which is of course the truth. And if you don't think there is such a thing as objective truth, then science (or indeed the real world) is not for you. Try religion instead.

The philosopher Karl Popper considered that the way in which science must work was that any scientific theory must be falsifiable for it to be a theory at all (see here for more), otherwise it was just useless. The theory of gravity is a valid theory not just because all everyday observations support it but more importantly because it could be disproved by, for example, something falling (or not falling) contrary to what the theory predicted. The theory of evolution, which has great explanation power for how life forms change over time, could also be disproved, for example by the existence of rabbits in the precambrian. Other ideas, however, cannot be properly classified as scientific theories if there is no way they could be disproved, or are so vague as to be able to cover every eventuality, especially if they do so retrospectively (astrology, for example). Such theories are useless, largely because they have no predictive power and explain nothing. Another philosopher Bertrand Russell came up with the idea of a celestial teapot as an example of a theory that could not be disproved because no matter where you looked it could always be said that you hadn't yet found it. The burden of proof for any such non-falsifiable theories must therefore fall on those who make such claims, and not on those who consider them to be false.

In what I think of as effectively an update on Feynman's cargo cult speech, Matt Ridley (author of the excellent book The Rational Optimist) recently presented a lecture on 'scientific heresies' at the RSA in Edinburgh. This lecture has been reproduced here and here (with pictures), and has been noted on Richard Dawkins' website here (although Dawkins does not necessarily agree with Ridley's conclusions). It is also available, with images, in the form of a pdf here. I cannot underestimate, or overemphasise, how important it is for anyone who thinks they know how science works to read this. If there is only one thing you read about the subject in question (and after reading it I doubt that this will remain the case), then this should be it. Once you have read it in full, please feel free to come back and tell me why, and how, he is wrong.

Tuesday 1 November 2011

Protecting Kids The World Over, while chipping away at the Section 1(2) exclusions

Not so long ago, I wrote about a recent decision from the Patents County Court, Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), in which HHJ Birss considered that the exclusion under section 1(2) relating to methods for performing mental acts should be viewed narrowly rather than broadly, as the UK-IPO had been doing. This was all very helpful for applicants faced with such problems at the IPO with their applications, but I was then concerned about what would happen as a result. Would the IPO simply switch to using the exclusion of programs for computers as a backstop? It turns out that my pessimism was not necessarily fully justified, as another decision has now arrived that follows Halliburton and deals with exactly this issue.

The applicant, strangely named Protecting Kids The World Over Limited (or PKTWO for short), appealed against a decision of a UK-IPO hearing officer (BL O/439/10) refusing their application (GB 0723964.3, published as WO 2006/094335 A1) relating to a system for monitoring electronic communications.  The hearing officer had found the claimed invention to be excluded from patentability because it related to a computer program and to a method for performing a mental act as such.

The application claimed a system for monitoring electronic communications, in which packets of data were analysed for expressions matching with a stored hash table of expressions (right: a small sample of an XML arrangement of some of the less offensive expressions, as taken from the published application). An alert score was assigned according to matching expressions, and a raised aggregate alert level triggered a notification to an administrator.  A response from the administrator could result in one of a number of actions, including terminating the communication and shutting down the user equipment.

The hearing officer had considered, following the four-step test from Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371, that the invention did not make a technical contribution because there was no increase in the speed or reliability of the computer that was independent of the program running or the data being processed, and that the invention did not operate at the architecture level of the computer but at the application level. 

Prior to the appeal hearing, the UK-IPO indicated that the mental act exclusion was no longer being relied on, in light of the recent decision in Re Halliburton.  The objection relating to the application being excluded for being a computer program was, however, maintained. 

Floyd J, following the judgment of HHJ Birss in Halliburton, considered whether generation and transmission of an alert notification was a relevant technical process for being assessed as part of the contribution of the invention.  The IPO argued that it was not, while the appellant argued that it was, particularly when considering the claimed invention as a whole. Referring to Gemstar-TV Guide International Inc. v Virgin Media Ltd [2009] EWHC 3068 (Ch), in two out of the three patents considered in that case the contribution related to information being simply displayed on a screen, which was judged to be not technical.  In the present case, however, in which an alarm alerted a user at a remote terminal to the fact that inappropriate content was being processed within the computer, the contribution was considered by Floyd J to be qualitatively different (paragraph 34).  The contribution did not simply produce a different display, nor did it rely on the output of the computer and its effect on the user.  The effect of the invention, when considered as a whole, was judged to be an improved monitoring of the content of electronic communications, which was said to be technically superior to the known prior art.  The contribution had the necessary characteristics of a technical contribution outside the computer itself, and was therefore not excluded for being a computer program as such.  The appeal was allowed, and the application remitted to the IPO.

The decision appears to be another blow to the IPO's way of considering excluded matter, which they have been insisting follows the reasoning of the string of Court of Appeal cases of Aerotel, Symbian et al. It is certainly going to provide some useful ammunition for applicants and their attorneys in trying to get over objections from examiners where the same old familiar material is wheeled out. As Floyd J states, however, in following Symbian "Each case had to be decided by reference to its own particular facts and features, bearing in mind the guidance given in the decisions mentioned" (paragraph 12). There is consequently still plenty of wriggle room for IPO examiners to continue arguing their case. I would not be surprised if the IPO left their practice notice on computer programs largely unchanged as a result.

Monday 24 October 2011

Halliburton: construing mental acts

If an invention is claimed as a series of method steps, does it make any difference in what form the claim is presented as far as patentability is concerned? If so, is the question about form over substance or is it more complicated than that? The answer, according to the judgment of HHJ Birss QC in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat), appears to be the latter.

The case relates to an appeal from the IPO, the facts of which were outlined in my post from earlier this year here. In brief, three of Halliburton's UK patent applications relating to methods for designing drill bits using computer modelling were refused at the IPO, all on the grounds of the assessed contribution being a mental act (section 1(2)). A fourth application was refused for the same reasons in a separate later decision. All four applications were combined in the appeal. In the appeal, as with the IPO decision, one representative application was chosen because the others, defining very similar inventions, would stand or fall on the same grounds.

To summarise a fairly long and complicated decision, the judgment in the end came down to whether a method claim, which did not result in anything physical and, although not specified in the claims, would inevitably need to be implemented on a computer, should be considered to be excluded for being a mental act. According to the Court of Appeal in Fujitsu, it might. According to Jabob LJ's (arguably obiter) comments in Aerotel/Macrossan, however, it might not. The hearing officer at the IPO had considered that the broader view of Fujitsu should be taken, and effectively ignored Jacob LJ's doubts in Aerotel about the width of the mental act exclusion.

HHJ Birss, placed in the difficult position of being bound by both precedents from the Court of Appeal as well as having represented the IPO in Aerotel, managed to steer a careful path through the precedents towards the goal of correcting what was a clear discrepancy between UK-IPO and EPO practice (see here for more details; this particular rift between the IPO and the EPO has been in place for the past few years). He firstly dealt with the question of whether it would be inevitable that the claimed method would be performed on a computer, even though this was not explicitly claimed.  At paragraphs 21-23,
"In my judgment the skilled reader would understand perfectly well that the simulations referred to in claim 1 are computer simulations from reading the specification as a whole. I also note that the simulations being "computer simulations" is expressly referred to from p21 line 30 - p24 line 23 in the specification. Moreover the reader would understand that "outputting" to a "resource" is something computers do, not people. Accordingly I find that claim 1 (and its brethren) are limited to carrying out the simulations on a computer. They are computer implemented methods."
That disposed of the argument relating to whether the scope of a claim could realistically cover an actual mental act, i.e. a calculation carried out by a person, if the processes involved were ones that humans simply would or could not do.

The judge also tackled the question of whether the contribution to the art was technical in nature (steps 3 and 4 of the Aerotel test). After considering Symbian, he considered that the question to be considered was "what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such" (paragraph 32). A task that fell within excluded matter, such as a business method (a securities trading system, for example, as in Merrill Lynch) would be not patentable because the result itself is a "prohibited item" (paragraph 33). However, when the task represented "something specific and external to the computer" (paragraph 38), the circumstance is likely to indicate that the invention is patentable.

In conclusion HHJ Birss decided that the balance of the case law was in favour of a narrow scope for the mental act exclusion, referring with apparent approval the EPO decision of Infineon (T 1227/05) that established the latest IPO/EPO rift, arguing that the reasoning was the same as that in Kapur. This was enough to overturn the hearing officer's decision to refuse the applications, finding it to be ill-founded.

The judge did, however, then go on to establish whether the claimed inventions would in fact pass the Aerotel test.  The contribution did not fall within excluded matter for being a mental act, but would it be excluded instead for being a computer program? HHJ Birss thought not, and disposed of the matter quite briefly:
" Is it more than a computer program as such? The answer is plainly yes. It is a method of designing a drill bit. Such methods are not excluded from patentability by Art 52/s1(2) and the contribution does not fall solely within the excluded territory. Drill bit design is not a business method, nor a scheme for playing a game nor (as I have held) is this claim a scheme for performing a mental act." (paragraph 71)
This very short passage is, in my opinion, the key feature of the judgment. Although the bulk of the judgment relates to whether the mental act exclusion would apply, this would all be completely irrelevant if an examiner could then change tack and state that the method was in any case excluded for being a computer program as such. I would therefore have liked to have seen more on this aspect.  As it is, at least for Halliburton, it seems that their applications will be rescued from being refused and will most likely all now be granted once they have been past the examiner again.  I wonder, however, whether this will also apply to other applications that have been facing similar difficulties.  I have my suspicions that the IPO will indeed change tack and, given the lack of clear indications from this case, decide to refuse such applications on the computer program exclusion instead.  This suspicion is, I believe, confirmed by the way the IPO have now indicated that they will change practice in light of this decision.  In a new practice notice, the IPO state:
"Following the decision of HHJ Birss QC in Halliburton's Applications [2011] EWHC 2508 (Pat) examiners will now take a narrow view of the mental act exclusion. In future, claims which specify that the invention is implemented using a computer will not be considered to be excluded from patentability as a mental act."
There is no indication in the notice that IPO practice in relation to the computer program exclusion will be changing. Indeed, the new notice states that it replaces the guidance given to patent examiners only in paragraph 8 of a previous notice relating to patentability of computer programs.  As a result, I strongly suspect that, except for applications specifically relating to drill bit designs, life will continue to be difficult at the IPO for computer implemented inventions that do not output a physical result. But then, maybe I am just overly cynical. We shall see.

Saturday 1 October 2011

Changes to the UK Patents Rules

As from today (1 October 2011), the Patents Rules 2007 are amended by The Patents (Amendments) Rules 2011 to correct a drafting mistake. Time periods in the Rules that were defined as "beginning with" a particular date are now to be defined as "beginning immediately after" that date. These changes have been made apparently in light of Rigcool v Optima Solutions, which concerned the correct way to calculate the two year period for initiating entitlement proceedings under Section 37(5) (although this period is not being being altered by these changes).  The resulting anomaly in how the Rules were interpreted was noted in my post on the subject here.

The changes, which are numerous, have already been made in the (unofficial) version of the Rules available on the ukpatents wiki. One small point to note is that these changes are not a straightforward find-and-replace job, as there are some places where the old wording is maintained, such as in Rule 18(1) where both the start and end of the relevant period (ironically relating to missing parts) are defined.

Tuesday 30 August 2011

The IPO Welsh Language Scheme: Yn llwyddiant?

Since 17 December 2007 it has been possible to file and prosecute a UK patent application in Welsh as well as English.  This was a result of the changes to the Patents Rules that came into force on that day, the main change allowing this being newly worded Rule 14, which reads:
(1) The contents of all documents (including annotations to drawings) contained in an application for a patent must be in English or Welsh.
This is in contrast to the old Rule 20 of the 1995 Rules, which stated:
(1) All documents (including drawings) making up an application for a patent or replacing such documents shall be in the English language.
Other changes were also made in Rules 113, 25, 12, 17, 65 and 9 of the 2007 Rules.

The IPKat wondered at the time what the point of this change was, given that it didn't seem to be mandated by anything in particular, and the possibility of there being a demand for applications being prosecuted in Welsh seemed to be quite small (see here for more information). He even went as far as to make a request under the Freedom of Information Act to find out how many applications had in fact been filed in the first year the scheme was up and running.  The results in January 2009 were not promising: not one application had been filed in Welsh.

It has now been nearly four years since the scheme came in, so I thought I would get an updated answer on how many applications have been filed.  An updated FOI request was made via the email address given on this page of the IPO's website. Within a matter of a few days I received the following very helpful reply:
Thank you for your request dated 24 August 2011 asking about Welsh language patent applications.

This is not information that we would record centrally within the Intellectual Property Office, but having checked with all the work sections of the IPO that process patent applications at an early stage, I can report that none have any record of handling one filed in Welsh.

If we did get one it would certainly be noticed and remembered as requiring translating or processing by a Welsh speaker.
So, can someone remind me again what the point of it all was?

Thursday 25 August 2011

Changes to the Patents Rules 2007

As has been already mentioned by me to the IPKat here, it has been brought to my attention (thanks to this anonymous comment) that the UK-IPO has arranged to have some changes made to the Patents Rules 2007, as a result of what what can only be fairly described as a bit of a cock-up in legal drafting.  The 2007 Rules were prepared in the form of a complete re-write of the old 1995 Rules, which were considered by the IPO to be too complicated and over-amended.  This caused the IPKat some consternation at the time, as it involved learning a whole new set of rule numbers and new terms to replace the ones that he had only recently memorised and been examined on.  However, they gradually started to become accepted and are now part of the regular IP furniture.

One thing that wasn't objected to at the time, which now seems a bit surprising, is that there were many instances of the term "beginning with" to define time periods, where different wording had been used in the 1995 Rules. We have recently been reminded, in the recent decision in Rigcool v Optima Solutions (commented on by me here), that when this wording is applied to a period in years or months, the last day of the period must be considered to be the day before the anniversary date. The UK-IPO have, however, been operating all this time on the assumption that all such dates in the Rules expired on the anniversary day instead, and have been advising applicants and their representatives accordingly.  The IPO have therefore been implementing their own Rules incorrectly for nearly four years.

As a result of this, the IPO this week issued a new Practice Notice, in which a new Statutory Instrument is mentioned. The Patents (Amendments) Rules 2011, SI 2011 No. 2052 will have the effect, when it comes into force on 1 October 2011, of changing all instances of the phrase "beginning with" to "beginning immediately after".  This applies to the following parts of the 2007 Rules:
Rule 5(2) (International Exhibitions)
Rule 8(5) (Filing of priority documents to support a declaration under section 5(2))
Rule 10(3) (Mention of the inventor)
Rule 12(3) (Applications for the grant of patents under sections 14 and 15)
Rule 12(9) (Applications for the grant of patents under sections 14 and 15)
Rule 18(2) (Missing Parts)
Rule 18(7)(a) (Missing Parts)
Rule 18(7)(b) (Missing Parts)
Rule 19(3)(a) (New applications filed as mentioned in section 15(9))
Rule 20(3)(a) (New applications under sections 8(3), 12(6) and 37(4))
Rule 20(3)(b) (New applications under sections 8(3), 12(6) and 37(4))
Rule 21(1)(a)(i) (Extensions for new applications)
Rule 21(1)(b)(i) (Extensions for new applications)
Rule 22(3) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(a)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(5)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(a) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(i) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 22(7)(b)(ii) (Periods prescribed for the purposes of sections 15(10) and 17(1))
Rule 24(2) (Correcting a declaration made for the purposes of section 5(2))
Rule 26(1) (Publication of application)
Rule 28(2) (Request for substantive examination under section 18)
Rule 28(5)(a) (Request for substantive examination under section 18)
Rule 28(7) (Request for substantive examination under section 18)
Rule 30(2)(a) (Period for putting application in order)
Rule 30(2)(b) (Period for putting application in order)
Rule 30(3)(a)(ii) (Period for putting application in order)
Rule 30(4) (Period for putting application in order)
Rule 31(4)(a) (Amendment of application before grant)
Rule 32(2)(a) (Reinstatement of applications under section 20A)
Rule 32(2)(b) (Reinstatement of applications under section 20A)
Rule 32(8) (Reinstatement of applications under section 20A)
Rule 37(3)(a) (Renewal of patents: first renewal)
Rule 37(4)(a)(i) (Renewal of patents: first renewal)
Rule 40(7) (Restoration of lapsed patents under section 28)
Rule 43(4) (Application for, and cancellation of, an entry that licences are available as of right)
Rule 51(2)(b) (Restrictions on inspection of documents)
Rule 52(4) (Request for information where section 118(4) applies)
Rule 53(3)(a) (Confidential documents)
Rule 57(6) (Corrected translations)
Rule 58(3) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 58(4) (Procedure for making a conversion request under section 81(2)(b)(i))
Rule 59(1) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 59(3) (Procedure for making a conversion request under section 81(2)(b)(ii))
Rule 60 (Request for substantive examination following a direction under section 81)
Rule 66(1) (Beginning of national phase)
Rule 66(2) (Beginning of national phase)
Rule 66(3) (Beginning of national phase)
Rule 67(2) (International exhibitions)
Rule 68(2)(b) (Altered prescribed periods)
Rule 68(3)(b) (Altered prescribed periods)
Rule 68(4)(a) (Altered prescribed periods)
Rule 68(4)(b) (Altered prescribed periods)
Rule 71(4) (Directions under section 89(3) and (5))
Rule 76(2)(a) (Starting proceedings)
Rule 76(2)(b) (Starting proceedings)
Rule 77(8) (Notification of the parties)
Rule 90(1) (Licences following entitlement proceedings)
Rule 90(2) (Licences following entitlement proceedings)
Rule 91(2)(b)(ii) (Period prescribed for applications by employee for compensation)
Rule 96(7) (Submission of observations and observations in reply)
Rule 98(1) (Review of opinion)
Rule 99(4)(a) (Procedure on review)
Rule 99(4)(b) (Procedure on review)
Rule 104(2) (Failure to furnish an address for service)
Rule 108(2)(c) (Extension of time limits)
Rule 113(6) (Translations)
Rule 116(2)(b) (Supplementary protection certificates)
Schedule 1, paragraph 3(3)(a)(i) (The first and second requirements)
Schedule 1, paragraph 3(3)(a)(ii) (The first and second requirements)
Schedule 1, paragraph 3(3)(c) (The first and second requirements)
Schedule 1, paragraph 6(5)(b) (Restriction of availability of biological material to experts)
Schedule 1, paragraph 7(4) (Request for a sample to be made available to expert)
Schedule 5, paragraph 7(6) (Patent applications filed before 7th January 1991)
The effect of all this will be (assuming of course the IPO have got it right this time) that all the relevant periods will now expire on the same day of the month on which the periods start.  Until 1 October, the IPO will, where relevant, be using the get-out clause of Rule 107(3) to extend any period to what they thought it would have been had the Rules been drafted correctly in the first place.  Periods as set out in the Act, however, will not be altered, and must presumably be interpreted accordingly.

As I mentioned in my earlier post, something seemed to be wrong.  It now seems that this has been recognised and something has been done to fix it, even if it is all a bit of a fudge.

Friday 12 August 2011

Virgin v Premium - yet another chapter

The dispute between Virgin Atlantic Airways and Premium Aircraft Interiors has been rattling along for a while now, and has been keeping various patent attorneys, solicitors, barristers and bloggers quite busy.  Other chapters of the story involve decisions from the High Court and the Court of Appeal (a good starting point if you are interested in finding out more is this IPKat post), as well as proceedings before the EPO.  Even the Supreme Court will apparently be having a go at the matter, having granted Premium leave to appeal earlier this year.

The story relates to European patent EP1495908 concerning an aircraft seating system (right).  The patent was granted in 2007 to Virgin and designated the UK, along with various other European countries. The patent was opposed by Cathay Pacific, Airbus and Premium. The patent survived the opposition and subsequent appeal proceedings, although in an amended form. A decision to maintain the patent as amended was issued yesterday following the decision by the appeal board in T 1259/09, and a B2 publication is due to appear soon.

One argument raised by the opponents during the EPO proceedings was that the European patent should not have been granted with a GB designation, because the request for grant included the following statement (click for a larger version):

The examining division had nevertheless allowed the application to proceed to grant with the GB designation intact.  Both the opposition division and the appeal board concluded that there was nothing they could do, since the ability to correct any such errors was only in the remit of the examining division, and since Premium was not a party to the proceedings before the examining division and not entitled to appeal.  The GB designation therefore stood. There was nothing further the opponents could do, so the only options left for them was to fight the patent in each country, which at least Premium continues to do.

Premium have now had another go at trying to get the GB designation removed, this time through the unusual step of applying for a correction under Rule 50 of the UK Patents Rules 2007.  A decision relating to this request, which resulted in a hearing at the IPO, has now been issued: BL O/281/11.  Premium argued that, since the UK was expressly excluded as a designated state by the applicant, no European patent (UK) ever existed and therefore the UK register should be corrected to reflect this.  According to Premium, nothing that Virgin or the EPO did subsequently could change the fact that there had never been a GB designation, and any suggestion that there was an EP(UK) was an error that should be corrected insofar as it appeared on the UK register.  They put forward the case of Arrow v Merck [2007] EWHC 1900 (Pat) in support of their argument, as this related to a correction being made to remove a GB designation following grant by the EPO. However, as the hearing officer noted, in that case the EPO had realised there had been a mistake and issued a corrigendum afterwards.

The hearing office pointed out that the difference in this case was that the EPO had not considered there was anything it could or would do, even if it considered that there had been a mistake.  For the comptroller to come to a conclusion that any error had been made that could then be corrected, it would be necessary to look afresh at the facts considered previously by the EPO examining division and effectively come to a view on the validity of what had been done.  This would, the hearing officer considered, amount to a review of a determination by the EPO which, particularly in the context of an ex parte request for correction of the register, was not open to him. In contrast to the provisions governing revocation on patentability grounds, the comptroller had been given no power to review decisions made by the EPO, and the hearing officer could not see how he could have any sort of power to do so under the UK Act and Rules. Because there was no basis on which a correction could be made, the request was refused.

Thursday 11 August 2011

Getting an Examination Fee Refund - Nullius in Verba*

According to Article 94(1) EPC, a request for examination has to be accompanied by an examination fee for the request to be deemed filed.  The fee, according to RFees A2.6, is currently set at 1480 Euros, or 1645 Euros for the case of an international application where no supplementary search is drawn up by the EPO.  In either case this is, to many people, a not inconsiderable amount of money.

Since examination at the EPO is considered to be separate from search (even though they are nowadays increasingly merging together), RFees Article 11 allows for the situation where a refund of the examination can be made if the application is withdrawn, refused or deemed withdrawn before examination begins.  A full refund can be made if this happens before the Examining Division (ED) assumes responsibility, while a 75% refund is made if the ED have assumed responsibility but substantive examination has not begun.

According to Rule 10(2) EPC, the ED becomes responsible from the time when a request for examination has been filed.  There are therefore not many cases where a full refund would be made, although there may be many more where a partial refund could be made, for example once a search has been done and there is clearly little chance of getting anything worthwhile granted. If the refund is more important to the applicant than the application itself (in which case there is very little point continuing anyway, but that is a different story), a letter could be sent to the EPO withdrawing the application but only on condition that a refund of the examination fee is possible.  This does, however, beg the question of whether the applicant should take the ED's word for it if they state that examination has begun but the examiner has not quite finished preparing the examination report, and therefore no refund will be made.  

For most applicants, the easiest and cheapest approach when trying to get a refund would simply to be to take what comes, as any fight is bound to be more expensive than the potential refund.  For some, however, it may be a matter of principle.  This appears to be the case for Medtronic Vascular, Inc., who found the ED's statement that examination had begun unconvincing when asking for, and being refused, a refund.  After requesting and receiving a decision on the matter, in which the refund was still refused, the ED's decision was appealed.  A decision of the legal board of appeal in case J 25/10 has now issued, in which the board comprehensively castigates the ED for not behaving properly. The decision is due to appear in the Official Journal of the EPO. 

The board noted that there was "no indication whatsoever in the file showing, by reference to objective criteria, that the Examining Division had performed a concrete act of any kind which could be regarded as a start of substantive examination in the regional phase after the request for examination had been filed" (reasons point 6).  The main points in the board's decision are in the following paragraphs: 
10. The only point on which the refusal for the partial refund was then based was "that the primary examiner confirmed that he started already with substantive examination"(point 3 of the Reasons). This is no more than an unsubstantiated assertion. Article 11(b) RFees establishes clear conditions which must be fulfilled in order for a partial refund of the examination fee to be made. Whether these conditions have been fulfilled in any particular case is a question of fact. If the request is to be refused on the basis that these conditions have not been met, the Examining Division must give reasons why the conditions are not met, having established what the facts are. It is not sufficient simply to assert that a condition of a provision is not met without reference to underlying facts which objectively demonstrate that this is so. To do so would amount to an arbitrary decision which is not verifiable and goes against all legal certainty. In G 3/08 (OJ EPO 2011, 10) the Enlarged Board of Appeal said that "the predictability and verifiability of all state action are indispensable elements of a democratic legal order", these being amongst the principles which the EPO must support (point 7.2.1 of the Reasons). The Board further said: "Another essential element of a democratic legal order is the principle that a public authority is bound by law and justice. This is supplemented by the principle of uniform application of the law. Both principles are designed to ensure predictability of jurisdiction and hence legal certainty by preventing arbitrariness" (point 7.2.3. of the Reasons). A mere assertion that a condition laid down in a legal provision is not met, without sufficient substantiation by reference to the underlying facts, violates these principles.

11. As the appellant points out, without factual information relevant to the criteria of when substantive examination began, the date of this event cannot be objectively determined. In the present case this resulted in the determination appearing to be at the discretion of the Examining Division. The appellant points out that the Examining Division had been asked for the exact date of the start of substantive examination and the criteria applied to its assessment. However, no such information was provided. Without such information, the appellant could not determine the correctness of the decision. The Board would add that without such information it also cannot determine whether the decision that substantive examination had begun was correct or not. The decision was therefore neither predictable nor verifiable, contrary to the principles set out in G 3/08 loc. cit., above.

12. It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based.

13. In conclusion, it cannot be accepted as established in this case that substantive examination had already begun when the application was withdrawn.
As a result, the applicant had the decision to refuse the refund set aside, and had their appeal fee and 75% of their examination fee refunded.

I admire the tenacity of the applicant in this case, in what appears to be an appeal based on the principle of fair play, in that if the ED is to make any kind of decision that affects an applicant it must be reasoned and objectively supported.  This is a theme that has been playing out in other recent decisions relating to reasons for refusing applications and other requests (other examples being T 1442/09 and T 933/10), where appeal boards have also found in favour of applicants where they have found divisions of the EPO not substantiating their reasons properly. This can only be a good thing.  If applicants and their representatives are expected to follow the increasingly rigidly defined rules of the EPC, then surely the EPO divisions should themselves do the same.

*Roughly translated as "Take nobody's word for it", being the motto of the Royal Society (although they don't really follow it any more). 

Wednesday 10 August 2011

Free beer and covert viewing

When an invention is defined in a claim in terms of a result to be achieved, it is often termed a 'free beer' claim, in the sense that the invention would be a good thing but the claim does not define how it is actually achieved.  When the patent specification as a whole does describe at least one way of achieving the result, the problem is one of a lack of clarity, rather than sufficiency, and can be resolved by amending the claims so that they define something the applicant has contributed to the art rather than a mere wish list of features.  At the European patent office, any free beer is typically objected to (even during Oktoberfest), and examiners will tend to require more technical features to be imported.  At the UK patent office, however, at least small amounts of free beer are more typically allowable, usually as part of a functional statement at the end of a claim, although in some cases more extensive functional language can be allowed.  Too much, however, and a UK examiner will object on grounds of lack of clarity. This was the case for application GB0904563.4 (previously published as WO 2008/035107), which has led to to the recent decision BL O/243/11, the applicant being The Secretary of State for Defence. Claim 1 of the application as-published read as follows:
1. A lens arrangement, suitable for looking through pinholes comprising a converging eyepiece type lens apparatus used without a conventional objective lens and arranged such that the lens arrangement projects a "virtual" aperture to a point in object space beyond a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, such that the virtual aperture limits the pencil of rays passing into the lens arrangement, wherein the lens arrangement contains no integral physical lens stop.
There are a number of obvious problems with this claim, one of which is clarity.  Following rounds of correspondence with the examiner, the claim was amended to read:
1. A lens arrangement, adapted for looking through a remote pinhole comprising a plurality of lens elements designed and configured to operate without the presence of an integral physical lens stop, such that in use the lens arrangement defines a “virtual aperture” in a pre-determined plane in object space remote from a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, wherein the virtual aperture acts as a remote entrance pupil in object space beyond the first end of the lens arrangement and defines a pencil of rays that passes through the lens arrangement.
The examiner considered that, even after amendment, there was too much free beer in the claims. He maintained objections that the claimed invention was unclear and was not supported by the description because the claims defined the invention in terms of the result to be achieved (i.e. a stopless lens) rather than the technical features of the lens arrangement that achieved the result, and the embodiments described did not support such a broad claim. The applicant did not manage to overcome the objections, and the matter went before a hearing officer at the IPO.

Before the hearing officer the applicant argued that, following the decision in No-Fume v Frank Pitchford & Co. Ltd. 52 RPC 231, there were many ways the invention could be implemented and the claims should not need to be limited to only one set of specific parameters. According to the applicant, conventional thinking was that a physical lens stop would be required. The lens arrangement of the invention made this redundant through the creation of a virtual aperture in the object space of the arrangement. The hearing officer accepted that the meaning of the term "virtual aperture" was sufficiently clear, but then went on to point out that the application outlined the features of the invention as being equivalent to using a conventional converging telescope eyepiece in reverse (as for example in the above figure).

As a result, the apparatus claims did not define the invention sufficiently to avoid reading directly on to an already known telescope eyepiece. The fact that the claims indicated that the lens arrangement was adapted for looking through a remote pinhole only specified how the lens arrangement could be used in practice, but did not distinguish the arrangement over a conventional telescope eyepiece. Specifying that the arrangement was designed and configured to provide the desired effect would, following Kirin-Amgen, only be allowable if the product itself was novel and inventive. The claimed invention did not therefore meet the requirements of section 14(5)(a) and (b) in that it did not define the invention and was not clear.

Although the claims in the form discussed were not allowable, the hearing officer allowed the applicant another opportunity to submit further amendments by extending the compliance period. As of today, it looks (thanks to the IPO's Ipsum file inspection service) like the application is still not quite finished.

As far as I can see, the lesson to be learned is to be careful with relying on functional definitions unless you have plenty of backup definitions that are more grounded in technical features of the invention.  It is probably not enough to have a myriad differently defined specific embodiments unless you have some overarching technical definitions to tie at least some of them together because the only option you might end up with could be a single narrow one. It is easy with hindsight to see this being a problem; the clever trick is to spot it in advance.

Thursday 4 August 2011

Rule 126 EPC & deemed delivery

As part of my day job in the real world I have been looking into how Rule 126 EPC is interpreted, and in particular what is meant by Rule 126(2), which states:
"Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be."
It would be impolite of me to go into the particular details of why this is of interest, at least while the issue is still alive (an appeal is currently pending). I shall just say that someone has been attempting to put a somewhat unconventional interpretation on Rule 126(2) in an apparent attempt to get themselves out of a hole. Fortunately this someone does not work where I do.

The conventional interpretation of the "ten day rule", as it is usually known, is that the deadline for responding to a communication from the EPO where Rule 126(2) applies (i.e. a due date that is specified as running from notification of the communication) is calculated by first adding 10 days to the date on the communication, then adding the appropriate number of months (bearing in mind Rule 131), then taking into account whether the resulting day is one on which the EPO is not open for business (see Rule 134, together with the EPO's holidays for 2011 here) and finally determining the actual final day on which the act required can be done, whether this is responding to an examination report, decision to refuse or whatever.

So far, so easy. If the rule is followed to the letter, there should be no doubt about what the final due date will be.  Some people do, however, still get it wrong (see here for a good example of why it is very important to do the calculations in the right order), the results of which can be catastrophic, or at least expensive and/or embarrassing.

One interesting way of getting it wrong is, as I have discovered, interpreting Rule 126(2) to mean that the notification is only effected when the actual person to whom the communication is addressed sees it. This would normally be the patent attorney representative for the application. Could it possibly be the case that the date from which a due date is calculated is when the representative first sees the communication, for example when he gets back from holiday? This is what was argued in T 743/05, which resulted from a grounds of appeal being filed late, at least according to the conventional way of interpreting Rule 126(2) (corresponding to Rule 78(2) EPC1973). The representative argued that, since the decision to revoke the patent was first seen by him on 24 May 2005, this was the date on which the four month period for filing the grounds of appeal started, even though the decision dated 12 May 2005 had been received by the representative's office on 16 May 2005.  The representative argued that the wording in Rule 78(2) "delivered to the addressee" should be interpreted as "delivered to the person to whom the notification is addressed", which was himself.  As an auxiliary, however, the representative requested re-establishment of rights under Article 122 (or restitutio in integrum, as it was then called) since, by applying the literal meaning of Rule 78(2) the representative had taken all due care and there was no reason to believe that the provision should be interpreted otherwise.

Unsurprisingly, despite the representative's valiant attempt the board of appeal was having none of it and dismissed the appeal.  The main reason behind not taking the "literal meaning" of the rule was that this "would lead to an inextricable situation which would have as a consequence uncertainty for all the users of the European patent system. The answer to the question whether notification has effectively taken place could in that case depend entirely on the honesty, goodwill or organisational skills of the professional representative" (reasons, 1.7).  The request for re-establishment also had to be refused because the claimed interpretation, being a mistake of law on the part of the representative, could not be excused given the requirements for becoming a qualified representative (all grandfathers should take note, as it unlikely they would be given any different treatment to those who have taken and passed the EQEs).  All due care had not therefore been taken by the representative.

What I wonder now is whether, given exactly the same kind of fact situation, i.e. a letter being received by a representative's office within 10 days but the named representative not actually seeing it until later, it could ever be the case that the due date for responding could be any later than the usual 10 days + x months (+r134 extra days, as required).  I think not, and would expect a referral to the enlarged board if a board of appeal was minded to decide otherwise, but would like to see what others might think if they were placed in this situation. Any ideas?

Update 12 August 2021: I notice this is my most viewed post, so I thought I would put you all out of your suspense and reveal that the case in question was T 2210/10, at which I was representing the applicant/proprietor. I won, of course.

Monday 13 June 2011

Rigcool v Optima Solutions - some confusion over dates

How do you calculate a "period of two years beginning with the date of grant"? Does this period include the anniversary date of the date of grant or not? This was the essence of the recent case of Rigcool Limited v Optima Solutions Limited, which resulted in a pair of decisions issued on 5 May (BL O/149/11) and 1 June 2011 (BL O/182/11).  Following these decisions, the period may well not be what you previously thought it was.  This could have rather interesting (if not worrying) consequences for other periods specified in the UK Patents Act and Rules.

Applications were made by Rigcool (which was termed the pursuer because the hearing was held in Scotland by request of both parties) under sections 37 and 72 on 27 August 2010 in relation to a GB patent granted on 27 August 2008 to Optima (the defender). The issue to be decided was whether the applications had been filed out of time, because both sections specify a time limit of "the end of the period of two years beginning with the date of grant".

However, according to section 130(7), both sections were framed to have, as nearly as practicable, the same effects as Article 23.3 of the Community Patent Convention (CPC), which states that legal proceedings "may be instituted only within a period of not more than two years after the date of grant". The defender submitted that the two year period ended on the day before the second anniversary of grant, which would mean the applications were filed out of time. The pursuer did not disagree, but argued that the wording of the CPC should be worked from directly. The hearing officer agreed that, if the CPC were to be followed, the anniversary date would be included.

The pursuer argued that applying the CPC directly was consistent with Bristol Myers Squibb v Baker Norton Pharmaceuticals [1999] RPC 253, in which Jacob J (as he then was) stated that "save in the rare event of a specific contention that a provision of the 1977 Act has a different meaning from a corresponding provision of a Convention, it will be better [...] to work on the basis that the corresponding provisions of the Conventions are of direct effect" (paragraph 4). From this, however, the hearing officer considered that the case was in fact one of those rare events where the UK Act did have a different meaning from a corresponding provision in the CPC. The CPC did not therefore have direct effect.

Reference was also made to the judgment in Yeda Research and Development v Rhone-Poulenc Rorer International Holdings [2007] RPC 9, in which Jacob LJ stated that the court should construe section 37(5) to have the same meaning as the provision in the CPC about bringing entitlement more than 2 years after grant. In that case, however, the hearing officer noted that the argument was not about the precise start and end date of the two year period, and any difference did not appear to have been considered. The hearing officer therefore concluded that, once such a difference had been identified, the court must take a different view of the draftsman's re-writing. The wording of the Act should therefore be followed rather than the CPC in relation to the end date of the two year period. It followed that the pursuer's applications had been filed out of time, resulting in a need for the revocation action to be ruled inadmissible and no order being possible as a result of the entitlement proceedings.

The hearing officer allowed the parties to make further submissions on the question of whether, in this case, rule 107 should apply, i.e. whether the comptroller should extend the period by one day for the purpose of the proceedings. In the subsequent decision the hearing officer then considered whether the conditions for exercising discretion under rule 107 applied. According to the Court of Appeal in M's application [1985] RPC 249, the applicant had to show that the Office was guilty of an error, default or omission, that this had contributed to the failure to meet the time limit, and that the contribution played a significant part in the applicant's failure. The pursuer argued, in light of previous decisions by the Office and the Office's litigation manual and manual of patent practice, and the fact that practice in relation to trade marks had been revised in 2010 in relation to the same issue, that the Office had contributed to a general understanding that the period included the anniversary. The defender argued against the discretion being used, since there had been no error on the part of the Office and, as the manual of patent practice stated (MPP 123.10), the power should not be applied too readily but only in cases where it was warranted and only in accordance with the case law.

The hearing officer considered that the passages cited from the litigation manual and MPP did not support the pursuer's argument as much as they proposed, but neither did they support the defender's view, with the result that the manuals did not clearly point out that the second anniversary date was excluded. The hearing officer accepted that it had not been clearly Office practice to regard the second anniversary date as being outside the two year period. The Office had therefore contributed in part to the failure of the applications being filed out of time. The irregularity could therefore be rectified by extending the period by one day in the particular case. The hearing officer ordered accordingly.

It is fairly clear from this case that the IPO will need to revise their stated practice to indicate clearly that the two year period expires on the day before the anniversary date, so as to prevent this sort of thing happening again.  The issue does, however, seem to raise the fundamental question of whether the IPO have got their calculations right for other periods, because the same form of wording is used in several other places in the Act and Rules.  Here are a few examples:

If the IPO is correct in their interpretation of the 2 year period under Section 37(5), does this mean that the same interpretation should apply to all the other periods where the same wording is used?  If so, why does the IPO not follow this rule in practice (an example being the date given for requesting examination)? If not, how can the same wording be interpreted differently for different purposes? Alternatively, is the IPO wrong in their calculation of the 2 year period? Either way, something serious seems to be wrong and needs to be sorted out.

Update: Thanks to Filemot for pointing me to the trade marks tribunal practice notice that was referred to in the first of these decisions. This states in part:
"4. The term 'beginning with' requires that the publication date be included in the calculation of the opposition period (as opposed to periods starting ‘from’ where the day of the initiating event is excluded from the calculation). Explanations of the interpretation of wording in respect of time periods can be found in Trow v Ind. Coope (West Midlands) Ltd CA [1967] 2 QB 899 and Zoan v Rouamba [2000] 2 All ER 620, at paragraph 24.

5. According to the Interpretation Act 1978 a month means a calendar month. It appears from Halsbury's Laws of England that:

"When the period prescribed is a calendar month running from any arbitrary date the period expires with the day in the succeeding month immediately preceding the day corresponding to the date upon which the period starts: save that, if the period starts at the end of a calendar month which contains more days than the next succeeding month, the period expires at the end of the latter month."

6. Consequently, where an opposition is made under section 38(2), or an extension is requested to the opposition period under Rule 17(3), the opponent should ensure that it is filed, at the latest, on the day immediately preceding the day corresponding to the date two months after the date of publication. For example, a trade mark advertised in the trade mark journal on 24 September 2010 would have a latest date of 23 November 2010 by which to file an opposition on a TM7 or request an extension to the opposition period on a TM7a."
The inference from this, as applied to all other periods in the Patents Act where the words "period beginning with" are used, is that almost all are interpreted wrongly as a matter of course, in particularly by the UKIPO themselves.

Update 1/7/11: As expected, the Manual of Patent Practice for section 37 has now been updated (see here).  New section 37.20.1, in relation to the two year period under s37(5) now states:
"The reference must be made by, at the latest, the day before the second anniversary of the date of grant. This was confirmed by the Hearing Officer in Rigcool Ltd v Optima Solutions UK Ltd BL O/149/11. In this case, the reference was made two years to the day (27 August 2010) from the date of grant (27 August 2008). The Hearing Officer held that the words “the period of two years beginning with the date of the grant” meant that the period included the date of grant, and ended the day before the second anniversary of the date of grant – i.e. 26 August 2010 in this case. This is consistent with the way the Office interprets the words “beginning with” in s.25(1), relating to the term of the patent (see 25.04.1). However, the corresponding Art.23(3) of the CPC [1989] provides that entitlements proceedings may be instituted only “within a period of not more than two years after” the date on which the patent is granted. The Hearing Officer held that the plain meaning of this provision of the CPC is that the period would end on the second anniversary of the date of grant, rather than the day before. He decided that in this case where there was a clearly different meaning of the Act compared with the corresponding provision of the CPC, he was obliged to follow the wording of the Act".
There is, however, no mention of what this means for all the other places where the same wording is used.