Wednesday 8 February 2017

UNION-IP Round Table: Literal Infringement and Doctrine of Equivalents

A long time ago, while I was training to be a patent attorney I was briefly involved with an application that faced a difficult problem, which was how to ensure that the claims of the application covered a possible infringer. The application (or rather its parent application, as the one I was dealing with was a divisional) was originally drafted as a US patent application, and described a type of device known as a PFO occluder (specifically this one). A patent had already been granted, EP0808138B1, covering the basic form of the device, claim 1 of which read:
A collapsible medical device (60) comprising a metal fabric formed of braided strands, the device (60) having a collapsed configuration for delivery through a channel in a patient's [body], and has a generally dumbbell-shaped expanded configuration with two expanded diameter portions (64) separated by a reduced diameter portion (62) formed between opposed ends of the device, characterized in that clamps (15) are adapted to clamp the strands at the opposed ends of the device.
The Amplatzer PFO Occluder
The claim covered a type of device known as the Amplatzer PFO occluder, marketed by St. Jude Medical. A key feature of the device is that clamps are provided at each end, which serve to keep the strands of wire together.

The Occlutech alleged infringement.
The alleged infringing device, made by Occlutech GmbH, was in most ways similar to the Amplatzer device but a key difference was that this device (also shown here) did not have a clamp at its distal end. This is because the device was made using a different technique that, rather than making the device from a continuous tubular braid, formed it as a closed-end sock shape, with the wires at the distal end crossing over and turning back on themselves. No physical clamp was therefore necessary at the distal end.

The question, which was put before courts in the UK, Sweden, the Netherlands and Germany (see also here for a summary of the cases), was whether the claim above could be construed to cover the Occlutech device. On a straightforward literal interpretation it clearly couldn't, because the Occlutech device didn't have a clamp at both ends, but only at one end. Could it, however, be infringed based on a doctrine of equivalents? This is the subject of an upcoming "Round Table" session organised by UNION-IP, to be held in Munich on 24 February (regular readers will recall that I attended and presented on partial priority at the event last year, which I reported on here). Details of this year's session are provided below.

For more information and how to book, please see the UNION-IP website.

UNION-IP Round Table Program, February 24, 2017 
Literal infringement and the doctrine of equivalence from a European perspective - How should one draft patents that are infringed? 

The landmark decision "Occlusion device", rendered by the BGH, started intense discussion amongst practitioners as to how to draft patents that can be successfully enforced. UNION-IP picks up this discussion, and connects together the jurisprudence which has been developed since the Occlusion device decision regarding the questions of literal infringement and doctrine of equivalence when drafting patents with a European perspective.

What lessons need to be learned? What are the pitfalls to be avoided? In brief, how does one draft a patent that can be infringed? We will hear views from experienced judges, litigators and patent attorneys on these points.

08:15 - 08:45 Registration
08:45 - 09:00 Welcome words
Luigi Franzolin, President UNION-IP, Mr. Rothe GPTO 
09:00 - 09:45 Do's and Don'ts under Dutch Case Law Experiences from the judge's bench
Edger F. Brinkman, Senior Judge IP Court of The Hague, NL 
09:45 - 10:30 Do's and Don'ts under German Case Law Experiences from the judge's bench
Judge Dr. Hermann Deichfuß, Federal Court of Justice, DE 
10:30 - 10:50 Coffee Break
10:50 – 11:35 Pitfalls and lucky punch Practical insight from the perspective of the telecommunication industry
Thomas Burchardi, Senior Patent Attorney, Ericsson GmbH 
11:35 – 12:20 Pitfalls and lucky punch  - Practical insight from the perspective of the pharmaceutical industry
Marco Riensche, Principal Patent Attorney, Novartis AG and Marco Fachini, Senior Patent Attorney, Sandoz Inc. 
12:20 - 13:05 Pitfalls and lucky punch The attorney's view
Sabine Agé, Veron & Associés, Lawyer, FR 
13:05 - 13:30 Q&A and closing remarks
Jochen Kilchert, Meissner Bolte, President Patents Commission UNION-IP, DE 
13:30 - 15:00 Get Together

Thursday 2 February 2017

G 1/15 - The Wait is Over

Back in 2011 I wrote about a potential problem that had been identified to do with priority and EP divisional applications. This problem was confirmed a couple of years later, after which I had a think and came up with a solution. This turned out to be similar to a solution that was considered by the EPO Boards of Appeal in T 1222/11. This was not, however, the end of the story.

The problem, put simply, is that if a European application claims an invention more broadly than is disclosed in a priority application, can partial priority be allowed for what is disclosed in the priority application. If not, then the priority application, if it also publishes as a European application, becomes A54(3) prior art and knocks out the claimed invention. If partial priority is allowed, then the problem goes away (for reasons given here). The Enlarged Board in G 2/98 set out a proviso regarding when partial priority would be allowed under A88(2), which was only if it gave rise to a "limited number of clearly defined alternative subject-matters" (point 6.7). The meaning of this has been argued over for the past few years and a referral was made in August 2015 to the Enlarged Board in T 557/13, which asked the following question:
1. Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic "OR"-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?
The referral, which was numbered G 1/15, generated a lot of interest, as evidenced by the number of amicus briefs filed, as well as the number of comments received on this blog. Most of the briefs recommended a 'no' answer to question 1, which would cause the problem to go away. Following a hearing in June last year, the Enlarged Board issued an order that gave the following answer to the question:
Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subject-matter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.
As far as I could see, this made the problem go away. There would no longer be any issue over partial priority and possible collisions between a priority document and a European application. Simply answering the question, however, was not the full story. The Enlarged Board has now issued their full reasoned decision, which has just appeared on the EP register here.

The decision goes over all of the arguments put forward along the way, which regular readers will already be well aware of (see the links above to previous posts). What the key question concentrates on is what was meant in G 2/98 by "a limited number of clearly defined alternative subject-matters", and how this could be aligned with the EPC and with the famous FICPI Memorandum that apparently expressed the legislative intent behind A88(2). I have tried to make it clear on this blog that the examples in the Memorandum must be consistent with any interpretation of A88(2), and partial priority should be assessed accordingly. Others, including the respondent in G 1/15 have effectively argued that this does not need to be the case.

The reasoning in G 1/15, as you would expect, starts from basic principles of priority, and develops towards the principles of partial and multiple priorities, leading up to the Memorandum, which defined examples where multiple priorities should be allowed in a single claim. The Enlarged Board thankfully make it quite clear that the Memorandum is indeed consistent with A88 and the Paris Convention, and then lead up to the inevitable consequence that the proviso in G 2/98 "cannot be construed as implying a further limitation of the right of priority" (point 5.3). This is enough in itself to reach a 'no' answer to question 1, but the Enlarged Board go on to lay out in clear terms how partial priority should be assessed. This is laid out at the end of the reasons for the decision, at points 6.4 to 6.7, which state:
In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, the first step is to determine the subject-matter disclosed in the priority document that is relevant, i.e. relevant in respect of prior art disclosed in the priority interval. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"—claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.

This also corresponds, logically and exactly, to the scheme described in the Memorandum (see point 5.2 above): "If a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim of the application directed to A or B will in fact consist of two distinct parts A and B respectively, each complete in itself...", and further: "... it would be appropriate to claim a partial priority in situations corresponding to the "OR"-situation under "Multiple Priorities", the European patent application itself taking the place of the second priority document".

The task of determining what is the relevant disclosure of the priority document taken as a whole, and whether that subject—matter is encompassed by the claim in the subsequent application, is common practice in the EPO and among practitioners of the European patent system and as such should not pose any additional difficulty. Nor does it create uncertainty for third parties, as argued by the respondent and in some amicus curiae briefs. Although it can be a demanding intellectual exercise, the decisions reached in cases T 665/00, T 135/01, T 571/10 and T 1222/11 all show that it can be carried out without any need for additional tests or steps.

From this analysis it follows that the assessment of entitlement to partial priority right does not show that any additional requirements are needed.

Just to make it clear, here is a simple flowchart I have created that defines the process to follow when considering whether partial priority should be allowed.
It should go without saying, but I'll say it anyway, that this is what I have been arguing in favour of all along. It should also go without saying that this decision really does put the final nail in the coffin for poisonous divisionals and poisonous priority. Conventional best drafting practice is still acceptable, and we can carry on as before.