Wednesday 23 December 2015

Intransigent Inventors and Switching Sides

I wrote a while back about a case involving inventors refusing to sign forms for a US application. In that case, the application had been assigned to another company after the original applicant went bust. The inventors, who were directors of the original applicant company, unsurprisingly became uncooperative once the new applicant took over, and refused to sign declaration and assignment documents for a subsequent US application. The case was resolved by a UK IPO hearing officer deciding in favour of the new applicant because the original intention was to have the application to proceed in the name of the company and not the inventors. It undoubtedly helped the new applicant's case, however, that neither inventor filed anything in their defence, which resulted in the claimant's case being considered to be supported (according to Rule 77(9)).

As I mentioned at the time, cases relating to entitlement under section 12 (relating to foreign and international patents and applications) do not come up very often. I was therefore interested to see that another one was decided last month. This was the case of University of Warwick v Dr Geoffrey Diamond, published as BL O/518/15. The case concerned US application 12/306,505, which happens to have been recently allowed by the USPTO, although the UK proceedings were initiated over two years ago while the application was undergoing examination.

The issue related, as before, to an inventor refusing to sign declaration and assignment documents for the US application. The application identified three inventors, two of whom were cooperative. Dr Diamond, however, refused to sign. Unlike in the earlier case, he contested the claim, and argued that the University had no right to his contribution to the invention. Instead, he argued that his contribution belonged to a company, G-Tronix, which had been spun out from the University and at one point had all of the inventors listed as directors but by the time the proceedings were issued had only Dr Diamond as director (and has now been dissolved).

By the time the hearing took place in June this year, it appears that Dr Diamond had caused the University a great deal of difficulty (and, presumably, expense), having caused the hearing officer at the IPO to issue two preliminary decisions (BL O/208/14 and BL O/225/15), one of which Dr Diamond appealed to the High Court (and had struck out). The argument was largely about whether Dr Diamond was, at the time the invention was made, employed by the University in a capacity where section 39 would indicate that the invention belonged to the University. Dr Diamond argued that he was not, although his arguments were somewhat confused and contradictory. He initially argued that he was employed by G-Tronix but, when cross-examined, said that this was a "slip of the pen". He was also quite vague about how early prototypes of the invention were developed, even though he claimed that they were developed in his workshop at home, and did not appear to have any knowledge of how some of the figures in the patent application were prepared, even though they formed a key aspect of the invention. The hearing officer found Dr Diamond to be unconvincing and not a credible or reliable witness, although did not go so far as to find him dishonest.

You might think that this would fatally damage Dr Diamond's case, but you would be wrong. Since the proceedings were initiated by the University, it was down to them to establish that they were entitled to the invention, and not for Dr Diamond to prove that he was instead. Unfortunately for the University, they failed to do this to the hearing officer's satisfaction. Even though the hearing officer was fairly sure that the invention was made before the inventors became directors of G-Tronix, and Dr Diamond was working with the other inventors at the time, the evidence of whether the invention was made in the course of Dr Diamond's normal duties was not particularly strong on either side and the claimant had failed to show that the invention belonged to them. This left the US application having to proceed in joint names, and presumably with neither side being particularly happy about the outcome.

The moral of the tale in my previous story about section 12 proceedings was that it was sometimes necessary to use a sledgehammer to crack a nut. This time though, to extend the metaphor a bit further, I would say that if you need to use a sledgehammer you should make pretty sure that you have a good one as sometime the nut can be more difficult to crack than you first thought.

As a postscript, while looking through the prosecution files for the family of applications relating to the one in question, I noticed something odd. The US application forms part of a family that includes international application PCT/GB07/050368, which was published as WO 2008/001141. This entered the European regional phase in January 2009 as European application number 07733789.7. In the decision the hearing officer mentioned a few times the patent attorney who was responsible for the PCT application, who Dr Diamond had met and apparently liaised closely with for preparation of the application. This same patent attorney was also responsible for making a request for the application to enter the European regional phase, as evidenced by his electronic signature on the request form. The next year, however, in July 2010 the EP register shows a change of representation, with another representative from the same association of patent attorneys becoming responsible. This is all fairly standard, as representatives change fairly often and responsibilities for applications can change. What happened afterwards, however, was not normal. Only three months later, in October 2010, third party observations were filed, attacking the validity of the application. These were prepared and filed by the same attorney who was originally responsible for the application, but was apparently now representing someone else, having left his previous employ and set up by himself. This other party was identified only as "a well established manufacturer [who] is monitoring with interest the prosecution of this European patent application". Further observations were filed in March 2011 by the same attorney. None of this prevented the application from going on to be granted, which it did in 2012, although the examiner did use the prior art cited by the third party in raising an objection of lack of inventive step in a summons to oral proceedings.

Switching sides is something that would obviously raise alarm bells for any patent attorney. If you were involved with preparing, filing and prosecuting a patent application, it would be a clear conflict of interest to then work for another party in trying to knock down the same application. This is made quite clear in the IPReg Code of Conduct, Rule 7 of which states:
"A regulated person must not act where his interests conflict with those of a client or of a former client, or where he knows or has reasonable grounds for suspecting that the interests of any partner or regulated person or staff of his firm, conflict with those of a client or of a former client.
Provided in all the circumstances it is reasonable to do so, a regulated person may act for two or more clients, or for a client as against a former client, in relation to the same or a related matter in a situation of conflict, or possible conflict but only if all of the parties have given their informed consent in writing."
What I wonder is whether the University gave permission for the attorney to switch sides and start attacking the patent application that he originally prepared and filed. I would be very surprised if they did, since I cannot see how it could possibly be in their interests to do so, but this seems to me to be the only way that this would avoid a clear breach of the IPReg code.

Friday 18 December 2015

Section 73(1A) Revocation - A Good Hair Day for Jemella

My last post on the subject of revocation following a Patent Office Opinion mentioned three cases where proceedings had been initiated. The first related to a patent from JCB, which I wrote about previously here, but this has not been the first one to get a decision. Instead, the third one, relating to a patent from Jemella, GB2487996, has been the first patent to get a decision on revocation under Section 73(1A). The decision, which issued today (18 December) says in full (with links added):
1. An Official letter dated 18 September 2015 explained that the invention of claims of the above patent was not new or did not involve an inventive step and that revocation of the UK Patent under Section 73(1A) might therefore be necessary.
2. The proprietor contested this view in their letter dated 29 September 2015. I have considered their observations and I make no order for revocation of the UK patent.
As I reported briefly in the update to my previous post here, the patentee had argued that the examiner got it wrong by interpreting the claims incorrectly, and made no amendments to the patent. They could, of course, have done this instead by requesting a review of the opinion and should have got the opinion set aside. We would, however, then have had a decision of why the opinion was wrong. The decision here goes into no detail at all about why the opinion was wrong to decide that the patent was invalid, which it presumably must have been if the patent is not being revoked. I wonder therefore whether the IPO is taking this thing entirely seriously.

Wednesday 2 December 2015

Time-Lapse IVF - A53 decision

I last wrote about an opposition case I have been watching for a while, and reported last on a summons to oral proceedings that was issued in March (see here for my comments, and here for an earlier post about the issue). In brief, the opposed patent is about a method of assessing the viability of embryos by the timing of cell divisions, which is monitored by time lapse video microscopy. In simple terms, if the timings are within certain limits the embryo is more likely to be viable. One opponent had argued that this method was excluded for being a diagnostic method under Article 53(c) EPC. My view, as expressed at the outset, was that this argument was very probably wrong because it did not fit the test as laid out in G 1/04. This issue, along with others raised by another opponent, was to be discussed and decided upon by the opposition division at a hearing at the EPO in Munich scheduled for two days from 30 November 2015.

By a lucky coincidence I happened to be at the EPO on the 30 November (handling this case, which I won by the way). My work was done fairly quickly, so I popped along the corridor and slipped into the oral proceedings that were underway (which were, as is normal for opposition hearings, open to the public so anyone could have done the same). I unfortunately missed the arguments about Article 53, as these were dealt with first, but arrived in time to hear the opposition division issue their decision. Unsurprisingly, they decided that Article 53(c) did not prejudice the granting of the patent. The opponent who had raised the issue then indicated they would be appealing and left the proceedings, as they had nothing further to add.

I do not know yet what the outcome of the hearing was on the other issues, but this will appear on the register in due course. Whatever happens, it looks like the A53(c) issue will go to appeal, where the opponent will try to get a referral made to the Enlarged Board if they don't get their way (which, in my opinion, they won't). As I have indicated before, I think this is not going to happen. It will, however, be interesting to see what a Technical Board of Appeal make of it. There are, to my knowledge, no conflicting decisions from the Boards of Appeal on this point. There is, however, the possibility that the Board will consider the issue to relate to a "point of law of fundamental importance" (Article 112 EPC), but it seems unlikely to me that they will think the issue of whether a method of assessing viability of embryos is an excluded diagnostic method is of such importance that a referral would be needed. We will just have to wait and see.

UPDATE 3 March 2016: The interlocutory decision of the opposition division has now issued, and is available on the EP Register here. The OD has decided to maintain the patent in amended form, and confirm that the patented invention is not excluded under Article 53(c) EPC. The OD go into quite a lot of detail on the A53(c) issue, probably in the expectation that this will have to be gone over again on appeal. It looks like this will be one to revisit in a couple of years once the Board of Appeal have taken a look.

UPDATE 22 June 2016: As expected, opponent 2 (Sterckx et al., represented by Julian Cockbain) has filed an appeal against the decision. Their grounds of appeal have just appeared on the EP register, and can be found here. The sole point of appeal is the Article 53(c) issue, and the opponent now wants some questions to be referred to the Enlarged Board because they think that G 1/04 got it wrong. The questions are:
(A) Where a claim is directed to a method of diagnosis of condition X comprising gathering information from a human or animal and determining, on the basis of the information gathered, that the human or animal has (or has not) condition X, must a curative treatment for condition X be available for the method claimed to be a method of diagnosis excluded from patentability under Art. 53(c) EPC? 
(B) Where a claim is directed to a method of diagnosis of condition X comprising gathering information from a human or animal and determining, on the basis of the information gathered, that the human or animal has (or has not) condition X, must condition X be a disease for the method claimed to be a method of diagnosis excluded from patentability under Art. 53(c) EPC?
(C) Where a claim is directed to a method of diagnosis of condition X comprising gathering information from a human or animal and determining, on the basis of the information gathered, that the human or animal has (or has not) condition X, must the determination that the human or animal has (or has not) condition X be in itself fully sufficient to determine the appropriate course of action (or inaction) to be adopted by the physician for the method claimed to be a method of diagnosis excluded from patentability under Art. 53(c) EPC? (In other words, if other information may inform the physician's course of action is the claimed method still excluded from patentability?)
Although the argument sounds faintly plausible, I still think it is a bit of a stretch that there should be a referral because G 1/04 got it wrong. The Technical Board of Appeal in this case would need to conclude that the questions need to be asked to ensure uniform application of the law or if a point of law of fundamental importance arises (Article 112(1) EPC). Neither of these seem to fit. The law can be applied uniformly based on G 1/04, and there are no conflicting T decisions, so that doesn't seem to work, leaving the only option being whether the point is one of fundamental importance. Is it so important that a decision is made on whether a diagnostic method needs to be done "for curative purposes stricto sensu"? I don't know, but I'm fairly sure that the Technical Board of Appeal in this case will think not, not least because the reasoning for applying the same kind of test for diagnosis as for each of the other exclusions of surgery and therapy was that they all related to doing things for curative purposes. Whether or not a cure is actually possible is beside the point.