Friday 30 November 2012

Intransigent inventors & USPTO formal requirements

It is well known among UK patent attorneys that the US patent system operates under different rules, some of which seem designed to make life just that bit more difficult for applicants and their attorneys. No matter how carefully a patent application is prepared and filed, making sure all of the requirements are met according to UK and international requirements, the US still insists on adding its own further requirements to the typically very long-winded task of getting a patent. One of these is the need for the inventor to complete a declaration to the effect that they have seen and approve of the application being filed at the USPTO. The other, which is almost always required when the resulting patent is to be owned a company rather than the individual inventor, is an assignment from the inventor, regardless of the actual status of the applicant under the local law of where the invention was actually made (which in the UK results in most inventions belonging as a matter of course to the inventor's employer, according to section 39).

While it is possible, and in some cases advisable, to have something signed beforehand by the inventor to the effect that they have assigned any rights they might have, this is not typically enough to comply with all the requirements at the USPTO, and further inventor signatures are normally required. It is not usually therefore worth the extra bother of insisting every time on getting something signed by the inventors early on in the process. When the inventors are being compliant this is not a problem, since signatures can always be obtained later on. However, all sorts of things can happen from the time when, for example, a UK priority application is filed, to the time two and a half years later when it comes to filing a US national phase application. An inventor who was quite happy to sign anything put in front of him at the start of this process may no longer be willing or able to sign anything later on. My first exposure to this strange world was as an inventor when, years after I came up with an invention for which a patent was applied for in the UK, I was tracked down by the patent attorney who had prepared and filed the application. The patent attorney sent to me at my home address a couple of forms to sign, and mentioned in a very carefully worded cover letter that they were just formalities and it would be very nice and helpful if I could just sign them because if I didn't it would just cause him a lot of difficulty and expense. I considered this for a few minutes and then (even though I had left my previous employ on less than the best of terms) signed the forms and sent them back, thinking that it was surely not worth putting my previous employer to unnecessary trouble if there was nothing further I was going to get out of it anyway. This is, however, not the way things always go, and a recent decision from the UK IPO illustrates just how much difficulty can be involved in resolving the issue if an inventor refuses to sign some forms.

The decision, Zincometal S.p.A. (BL O/469/12) was issued on 27 November 2012 in relation to a US national phase application filed in February 2010, which in itself shows how long-winded the process can be.  The story begins with a UK application filed in 2007 in the name of Sigmala Limited. A PCT application (published later as WO 2009/022090) was then filed a year later. Unfortunately, during the time the application was progressing through the international phase, Sigmala went into administration. The company's assets, including its patent applications, were bought by another company, Zincometal S.p.A., which naturally wanted the patent application to then proceed in their name. This was not a problem for the international application, which was changed on the basis of the fact that the applicant had changed, and was subsequently also not a problem for the European Patent Office, who accepted the change of name and granted the application to Zincometal in January 2012. For the USPTO, however, it was a different matter altogether. Because the two named inventors, who had been directors of Sigmala at the time the invention was made, either refused to sign the required documents or could not be contacted, it was not possible to fulfil the formal requirements for the US application. In parallel with a petition to the USPTO (which is another story altogether), a reference was made to the UK IPO on behalf of Zincometal under section 12(1)(a) requesting an order that would allow their patent attorney to sign the forms on the inventors' behalf. In the normal course of events (according to the procedures under Rule 77), the inventors were notified of the reference by the IPO but no response was forthcoming from either of them. As a result the hearing officer accepted the facts of the case to be those in the supporting documents provided by Zincometal's attorney.

The hearing officer referred to two previous cases where references were made to the comptroller under section 12(1), being Cannings' US application [1992] RPC 459 and British Telecommunications BL O/402/01, which established that it was within the comptroller's power to order an inventor to execute any assignment necessary to effect the determination of entitlement to a foreign application and, if the inventor still refused to sign, to authorise an affected party to sign on the inventor's behalf. The evidence supplied, which was uncontested, provided support for the ownership of the invention having been transferred to Sigmala by virtue of the inventors' positions within the company, and that these rights had been transferred to Zincometal when Sigmala entered administration. Although the inventors had been asked to sign the documentation necessary to put the entitlement into effect in the US, they had either refused or failed to do so. The hearing officer therefore considered that the facts dictated an order in the terms requested was appropriate, and authorised Zincometal's attorneys to execute on behalf of the named inventors a combined declaration and power of attorney form and an assignment of rights in the US application.

Decisions of this type, where the UK comptroller effectively decides on ownership of a foreign application, are comparatively rare, this being apparently only the third one published while the Patents Act 1977 has been in force. This is to me a bit of a surprise, as an order under section 12 should be able to effectively shortcut the process of getting a petition allowed at the USPTO, which can also be long-winded and complicated. An advantage of getting an order under section 12 is that if an reference is uncontested by the inventors and at least a prima facie case is presented that an order would be justified, it is very likely to work. Inventors that simply refuse to cooperate for no reason other than bloody-mindedness can therefore be more easily cut out of the picture once they realise there is no point in contesting. The moral of the case seems to be that sometimes it is unfortunately necessary to use a sledgehammer to crack a nut.

Sunday 23 September 2012

What is an embryo?

I have taken some interest over the past few years in where the boundary of patentable inventions lies. This has mostly involved consideration of the word "technical" and what it means, which tends to get tiring after a while. It therefore makes a nice change to see something come along about a boundary of patentability that has nothing to do with computers or business methods (except perhaps in a very tangential way). This was a decision from the UK IPO in International Stem Cell Corporation (BL O/316/12), which was published last month. Rather than section 1(2), which has been the subject of a vast number of decisions over the past few years at the IPO, this one related to the less well chartered backwaters of Schedule A2, paragraph 3 of which states:
The following are not patentable inventions:
(a) the human body, at the various stages of its formation and development, and the simple discovery of one of its elements, including the sequence or partial sequence of a gene;
(b) processes for cloning human beings;
(c) processes for modifying the germ line genetic identity of human beings;
(d) uses of human embryos for industrial or commercial purposes;
(e) processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes;
(f) any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological or other technical process or the product of such a process.
Two applications were filed in 2006, which were then published as GB2431411A and GB2440333A. The applications were both objected to by the UK IPO examiner under paragraph 3(d), other objections relating to novelty, inventive step, clarity and support having been overcome. The compliance period in each case had been extended in order to await the decision of the CJEU in case C-34/10, OliverBrüstle v Greenpeace, the outcome of which had a direct bearing on the remaining issue to be resolved (see the IPKat here for more on the Brüstle case).

Each application concerned methods of producing human stem cells, in which parthenogenesis (illustrated on the figure to the right; more information is available here) was used to activate a human oocyte, i.e. stimulating the oocyte to divide without having been fertilised by a human sperm cell, resulting in what was termed a “parthenote” to distinguish it from an embryo resulting from fertilisation. The first application related to the production of human stem cells from such parthenotes, while the second related to synthetic corneas derived from parthenotes. The issue to be decided was whether the claimed methods, stem cell lines or resulting tissue constituted use of human embryos for industrial or commercial purposes and were therefore unpatentable under paragraph 3(d). Neither the Act nor Directive 98/44/EC, which Schedule A2 implemented, provided a definition of what constituted an “embryo”. The examiner argued that the parthenotes of the invention fell within the definition of “human embryo” in light of the decision in Brüstle and also the definition provided by Section 1 of the UK Human Fertilisation andEmbryology Act 2008. In Brüstle the CJEU had held that "any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a 'human embyro' within the meaning of Article 6(2)(c) of the Directive" (paragraph 38 of the judgment). The hearing officer considered that on the face of it this statement gave clear and unambiguous direction that the applications should be refused.

The applicant argued that, since the parthenogenetically-activated human oocytes of the invention were not capable of commencing the process of development of a human being, the CJEU's decision was based on a flawed factual basis and should not be binding. In support of this the applicant cited several documents as evidence that a parthenote could never develop to term due to an inherent biological limitation. A set of amended claims was filed to clarify that the stem cells were only derived from parthenotes that could never overcome such limitations. The hearing officer accepted that on the evidence presented, the parthenotes of the invention were incapable of continued development and could never turn into a human being, but did not accept that the CJEU was necessarily wrong in deciding the way it did based on the observations put to it. The UK courts were entitled to disregard a finding of fact made by the CJEU, as they did in Factortame [2000] 1 AC 524 and Arsenal v Reed [2003] EWCA Civ 969. The same principle would also apply to the UK IPO but, as the lowest level of tribunal, the hearing officer considered that the greatest of caution should be exercised before departing from any aspect of the CJEU's decision. Noting the point made in Arsenal v Reed that the operative part of a judgment from the CJEU should always be interpreted in light of the preceding reasoning, the hearing officer considered that the conclusion of the CJEU relating to non-fertilised human ova stimulated by parthenogenesis should not be taken in isolation from the preceding reasoning, which was that patent law should be applied so as to respect the fundamental principles safeguarding the dignity and integrity of the person. The concept of "human embryo" must therefore be understood in a wide sense since parthenogenetically-activated human oocytes were capable of commencing the process of development of a human being. A distinction was made by the hearing officer between commencing and completing the process of development, comparing this with a train entering a tunnel and going through to the other end. Even though the parthenotes of the invention were not capable of completing the process (coming out of the tunnel), the CJEU did not make this distinction and did not take on board comments by the advocate general on this point. The decision of the CJEU on this point could not therefore be ignored. The hearing officer concluded that the invention defined in each of the applications, whether amended or not, defined methods and products that were excluded. The applications were refused.

Although, as the hearing officer noted in this case, on the face of it the CJEU judgment indicated that parthenotes should be considered to be human embryos in the same way that fertilised embryos would, the applicant's arguments do appear to raise an important question as to whether the CJEU was correct in finding this a matter of fact. There appears to be a serious question to be addressed as to whether the CJEU's judgment on this point is something that can be departed from by a national court if the facts of a particular case differ. I look forward to seeing what happens when this question is considered by the High Court, which it will be in due course (a notice of appeal was lodged at the Patents Court on 13 September).

Saturday 18 February 2012

(among other things)

Section 1(2) of the UK Patents Act specifies a number of things that are not considered to be inventions. The list is, however, not exclusive, allowing some room for manoeuvre in case an invention doesn't quite fit neatly in any of the categories.

The only case I am aware of where this came into play was in Lux Traffic Controls v Pike [1993] RPC 107 (unfortunately not freely available online), where Aldous J stated, "s. 1(2) of the Act comprises a non-exhaustive catalogue of matters or things which are not patentable. Although not specifically mentioned, I believe a method of controlling traffic as such is not patentable, whether or not it can be said to be a scheme for doing business. The field expressly excluded by the section concerns mere ideas not normally thought to be the proper subject for patents which are concerned with manufacturing" (paragraph 138).

Since 1993, however, the courts and the Patent Office / IPO have not seen the need to consider the words "among other things" in section 1(2) (equivalent to the words "in particular" in Article 52 EPC), probably because it is very rare that an otherwise patentable invention would not fall within one of the categories. A recent decision, BL O/028/12 (William Kostuj), from the IPO therefore grabbed my attention because it raises this issue, albeit only briefly.

The application, a UK national phase of an international application published as WO 2009/007918, related to a method of establishing a golfer’s grip and swing in order to change or improve the golfer’s performance, in which the golfer performed a swing using a grip with no club present (as in the images above), and the grip and swing were analyzed. Claim 1 of the application as filed read:

"A method of developing a golf swing and fitting/making golf equipment to said swing, comprising: 
forming a secure golf grip using only a body's limbs, whereby a golf swing can be performed absent any extraneous, swing-influencing elements, including but not limited to golf clubs and other golf equipment; 
developing a limb-only golf pre-swing and/or swing of any style using said golf grip, whereby said pre-swing and/or swing can be developed absent any extraneous, swing-influencing elements, including but not limited to golf clubs and other golf equipment, that can affect the movement(s) and/or position(s) of said pre-swing and/or swing; 
fitting/making at least one golf club and/or other piece of golf equipment in accordance with the characteristic(s) of the developed pre-swing and/or swing, whereby at least one part and/or specification of the at least one golf club and/or other piece of golf equipment is selected and/or adjusted to reproduce the limb- only movement(s) and/or position(s) as accurately as possible when using the at least one golf club and/or other piece of golf equipment; and 
further fitting/making said equipment by means of ball travel and/or other non- swing-influencing aspect(s) of golfing performance."
The international searching authority (the Korean intellectual property office) considered there was no problem with the application, citing three background relevance documents and stating that the claimed invention was novel, inventive and possessed industrial application (raising some questions about either the competence of the Korean examiner or the popularity of golf in Korea).  The UK examiner, however, objected that the invention was not patentable, lacked industrial application, sufficiency, novelty and inventive step, and had been amended to add matter. The applicant was unable to persuade the examiner, so a hearing was held.

The hearing officer focused on what were considered were the main issues to decide, namely whether the claims satisfied sections 1(2) and 14(3). In relation to sufficiency, the hearing officer noted that only a general paragraph provided support for one of the claims and no examples were provided of what might constitute activities other than golf, given that the claim in question was not limited to any particular activity. The claim was considered to be broad and speculative in scope and did not satisfy section 14(3). In relation to whether the claims were patentable, the hearing officer considered that the contribution provided by the claimed invention (following the four-step Aerotel/Macrossan test) was a method of producing a golf swing comprising, without the use of a golf club, forming a limb-only golf grip and performing a limb-only golf swing, using that as a reference for further improvements, the limb-only established swing being used for the fitting or making of golf equipment. This contribution was considered to be no more than a scheme for training an individual to improve their golf skills, and was therefore excluded as a method for playing a game. The contribution was also considered to be caught by the mental act exclusion, although this would not apply if any hardware was included. The contribution was further excluded as a method of doing business, since the activity lay in the business aspects of sport.

Although there were clearly plenty of grounds on which to refuse the application, the hearing officer also considered that the contribution could be caught under the phrase “among other things” in section 1(2), in the event that it was argued that the subject matter did not fall squarely within any one or combination of the specific excluded areas. The hearing officer stated:
"The structured process of establishing a limb-only swing, and using that as a basis for further improvements and/or fitting or making of sporting equipment such as golfing equipment is not, in my opinion, suitable subject matter for patent protection. In so far as it could be argued that this does not fall squarely within any one or combination of the specific excluded matters discussed earlier, I consider that the invention is very closely analogous to a scheme, rule or method of performing a mental act, playing a game or doing business and so would be caught under the phrase “among other things” in section 1(2)." (paragraph 41)

The contribution was further considered not to be technical, as it did not belong to any field of technology. The hearing officer did not feel the need to consider novelty, inventive step, clarity or added matter, although the invention was considered not to be one that could be made or used in any kind of industry and therefore lacked industrial application. The application was refused.

Wednesday 4 January 2012

A Sad Announcement

With great sadness this weblog regrets to inform its readers of the death of the real Tufty the cat. Tufty, who spent several happy years at his owners' country home after being rescued in 2006, died suddenly this morning after a suspected heart attack.

Tufty, who took a great interest in the legal papers that one of his owners kept bringing home, was the inspiration for the pseudonymous writer of many items on the IPKat weblog, from his first appearance in August 2007 (here) through to his departure from the IPKat in January 2011 to begin this weblog in order to pursue his own path among the esoterica of patent law. His proudest moment was being mentioned by Lord Hoffmann in relation to the amicus brief Tufty submitted to the EPO on G 3/08 (details of which can be found here and here). He was also proud of his more minor contribution to the UK IPO opinions service.

In real life, Tufty was a very loving cat and was often to be found obscuring papers and computer monitors at his home, looking for affection. His favourite food was fresh baby rabbits (caught by himself), and he loved a vigorous head rub from his owners.

Tufty's owners would like to express their gratitude to the charity Cats Protection for looking after Tufty and his friend Pod while they were waiting to be homed and for providing them with such a special cat. He will be greatly missed.