Imaginary claims and conflicting divisionals

After my last post about the "poisonous divisionals" hypothesis, I have been thinking about the issue a bit more, helped by some very useful comments on the post, as well as on other articles about the issue. I now have what I think is an answer that may make the problem go away.

For anyone who is not yet aware (and for those who are, simply skip to the next paragraph), the issue relates to a European patent application having a claim that is broader than anything in the priority application becoming invalid through lack of novelty once a divisional application is filed and published, because the divisional application becomes prior art under Article 54(3) EPC as a result of the claim not being entitled to priority. This strange result comes from a literal interpretation of the wording of Article 54(3), which makes no distinction between applications that may be related to the one in question and other applications (or indeed, as might be argued, the application itself).

My solution to the problem relates not to some unwritten rule that divisionals and priority documents should not be considered to be prior art (which some would argue), but to Article 88(2) EPC, which states:

"(2) Multiple priorities may be claimed in respect of a European patent application, notwithstanding the fact that they originated in different countries. Where appropriate, multiple priorities may be claimed for any one claim. Where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority".

The simplest way of thinking about a claim having more than one priority would be where the claim contains alternatives, in which case it can be easily divided into two or more separate claims. Some alternatives might have a valid claim to priority, while others might not. Let's say a claim is directed to a widget made of copper or iron, and the priority document discloses only copper. The claim is entitled to priority only for the copper widget, but the claim can be rewritten anyway to: i) a widget made of copper; and ii) a widget made of iron. The first claim would be entitled to priority, and therefore not at risk if a divisional is filed, while the second lacks a valid priority claim but is novel over the priority disclosure, so would also not be at risk.

No distinction in Article 88(2) is made regarding the form the claim takes. More complicated forms of claims can therefore also have multiple claims to priority, although separating them out may be more tricky. To take a slightly more complicated example, let's say claim 1 is directed to a widget made of metal, and the priority document only discloses widgets made of copper. The claim cannot easily be divided into two from the wording alone, but can at least theoretically be considered to be two claims: i) a widget made of copper; and ii) a widget made of a metal other than copper. These claims together have the exact same scope as the original claim. As before, the first claim is entitled to priority and is therefore not at risk if a divisional is filed, while the second claim is novel over the priority disclosure and is therefore also not at risk.

Some of the discussions about how to tackle the conflicting divisionals problem focus on what kinds of disclaimers might be used to get around the problem in this kind of way. In my view this misses the point, although the idea does get part of the way there. The concept that a broad claim can theoretically be divided into two parts, one of which is entitled to priority and the other which is inevitably novel over the priority disclosure, is itself sufficient to overcome the problem even if the exact form of wording is not easily derived from the application. This is because the collective scope of the resulting two imaginary claims would be exactly the same as the original claim, and Article 88(2) EPC indicates that there is no need to actually rewrite the claim to be two separate claims. There is therefore no need to find the right form of wording to satisfy added matter requirements because no amendment is needed.

I see a nice parallel here with mathematics, where imaginary numbers are of great use in solving real problems, for example in finding the roots of a cubic function or in modelling electrical circuits in response to time-varying signals. Just because there is no real solution to the square root of -1 does not mean that an imaginary solution (usually termed i) cannot be a useful way of looking at a particular problem where this might arise. In the same way with problematic claims, just because there may not be a way of rewriting the claim as two parts, each of which would be valid for different reasons, does not mean that considering such imaginary claims cannot be a useful way of solving the problem of conflicting divisionals.

As usual I may, of course, be wrong. Any thoughts on the issue would be welcome.

Update 25 May: A commenter has pointed me to T 1222/11, which seems to support the idea. See point 11.5.5 in particular.

Update 15 June: There is an interesting discussion on the IPKat here on the related issue in the Nestec v Dualit case.

Update 31 November 2016 / 7 February 2017: I have been proved right! See my posts on the outcome of G 1/15 here and here.

"Poisonous divisionals" hypothesis confirmed

A couple of years ago I wrote a post on the question of whether a divisional application could effectively poison its own parent if the priority document became Article 54(3) prior art as a result of a claim to priority being invalid. At the time I thought it was a bit far-fetched, although I could not see any actual reason for the hypothesis to be wrong.

Prompted by a recent decision in the Patents Court (Nestec v Dualit - see paragraph 111, and the IPKat here for more details) in which claims of a European patent were found to lack novelty over its own priority document, I have now been pointed towards a recent decision by the EPO, T 1496/11. In this, the similar but potentially more dangerous "poisonous divisionals" (now a registered trade mark - see below) hypothesis appears to have been put to the test and found to work in practice.

The Board of Appeal found that claim 1 of patent EP0930979, as maintained by the opposition division, did not have a valid claim to priority because it had been generalised to encompass more options than were disclosed in the priority document. As a result, a divisional application became relevant for novelty under Article 54(3), and the claim was found to be anticipated. In this case the problem could be (and was) easily fixed by narrowing claim 1 to again have a valid claim to priority. I expect a fix similar to this would be possible in most cases, although it would probably result in a less satisfactory scope than the patentee was hoping to get. The decision does, however, confirm that the potential prior art effect of divisional applications should be carefully considered and not just dismissed as a theoretical possibility. More importantly, it shows that great care should be taken when filing an application from which priority will be claimed, particularly when the priority filing is narrow in its disclosure and needs to be generalised in a later filing. In some cases it might even be worth abandoning a priority filing and re-setting the clock to avoid such a problem.

Update 8 May 2013: See also the news article here from Hoffmann Eitle, K's Law here, and a (typically wordy) article from Avidity here.

Update 9 May 2013: In what seems to me to be a rather strange move, Avidity IP Limited have registered the terms 'poisonous divisional' and 'poisonous divisionals' as a series of trade marks at the UK IPO under class 45 for various intellectual property and other services. Whether they will seek to (or be able to) enforce the marks in relation to the terms being used in a blog post or otherwise is, however, unclear.

Update 16 May 2013: The generally excellent IPCopy blog from Keltie has picked up on the issue here, and added some interesting points about the relevance of Nestec v Dualit., as well as proposing an alternative to the 'poisonous divisionals' trade mark.

Update 12 June 2013: See the follow up post on my solution to the problem here.

UK Divisional Applications - how (not) to get caught out

The UK Patents Act 1977 has a particular, and some may say peculiar, way of dealing with so-called divisional applications (which, for the pedants among you, are not referred to as such in the Act but only by reference to section 15(9); see more on the subject here). For those unfamiliar with UK practice, this might on occasion result in an applicant being caught out while prosecuting a parent application, unaware that the deadline has already passed. Instead of having a (reasonably) clear deadline by which a divisional application must be filed, which at the EPO is the latest of the day before the parent application is granted or the end of 24 months from the earliest relevant examination report (Rule 36 EPC), the UK defines the latest date for filing a divisional application with reference to the compliance period of the parent. Specifically, in the case where an application is not allowed straight away, according to rule 19(3) a divisional application must be filed no later than 3 months before the end of the compliance period. The deadline can therefore easily be missed if the applicant is still trying to get the parent application granted towards the end of the compliance period. Given delays in the UK examination system, it is now quite common to have only 12 months from the date of the first examination report to the end of the compliance period, as a result of the extension allowed under rule 30(1)(b), 9 months of which can easily be used up with only a few rounds of correspondence.

Although the compliance period can be extended as of right by two months under rule 108(2), this is clearly not enough if the compliance date is already less than a month away. In such a case, as further extensions can only be allowed if an as of right extension has already been requested, the applicant has to rely on the discretion of the comptroller. This was the situation for Knauf Insulation's application GB1219243.1, filed out of earlier application GB0807777.8, which resulted in a recent decision from the UK IPO, BL O/098/13. The applicant, as represented by a European attorney based in France, filed the new application after the end of the period under rule 19(3)(b) (3 months before the compliance date), following several rounds of examination in which various issues including lack of unity were raised. Shortly after filing the application the applicant requested a discretionary extension of two months to the compliance period under rule 108(3), but the examiner indicated that this would not assist because the extension would not bring the date of filing of the application within 3 months of the extended compliance date, and discretion to allow the late filing under rule108(1) could only be exercised in exceptional circumstances. The parent application was then granted, while search and examination of the new application was deferred pending a decision on whether it could be treated as a divisional application.

The hearing officer indicated that there were two questions to be answered, the first being whether discretion should be exercised under rule 108(1) to extend the date by which the divisional application had to be filed, the second being whether discretion should be exercised to extend the compliance period under rule 108(3) which, under rule 30(3)(b), determined the compliance period for putting the divisional application in order. In relation to whether the comptroller's discretion may be exercised in favour of extensions under rules 108(1) and (3), the hearing officer referred to Ferguson's Application BL O/272/09, which indicated that the test to allow late filing of a divisional application should be consistent with the test for exercising discretion to allow a divisional application to be filed out of time, i.e. that the applicant needed to demonstrate that the circumstances were exceptional and that the applicant had been properly diligent.

The hearing officer accepted the arguments put forward by the applicant that there had been a genuine and serious attempt at all times throughout prosecution of the parent application to progress the application through to grant, and that any delay in resolving objections raised by the examiner was largely inevitable. The circumstances that led the divisional application to be filed so late were therefore considered by the hearing officer to be exceptional, and the applicant should not lose out when serious and consistent attempts had been made to progress the application through to grant. The hearing officer ordered the compliance period to be extended under rule 108(3), and the period for filing the divisional application to be further extended under rule 108(1), with the result that the divisional application had the same compliance date as the parent. A further discretionary extension to the compliance period would be required to put any amendments into effect, which the hearing officer indicated would be allowed.

Although the decision in this case came out in favour of the applicant, it is clearly not a process that is easy or cheap to go through and a positive outcome is by no means guaranteed. It does, however, appear that as long as an applicant pursues their parent application diligently, an apparent schoolboy error of missing the usual deadline for filing divisional applications can be forgiven. I am sure that the attorney in this case will not allow the same mistake to happen again, and will be paying more attention in future to the differences between EPO and UK IPO practice regarding divisionals. 

Marks & Clerk come undone

When filing and prosecuting patent applications, deadlines are extremely important. There is a deadline for most things, and missing one can make the difference between life and death for a patent application, as well as the difference between a satisfied client and a very large insurance claim. One of the most important, if not the most important, things a patent attorney must have therefore is a reliable system for monitoring deadlines so that none are missed unintentionally.

Not filing a request for examination is one of these important deadlines, the latest date for which is 6 months beginning immediately after the date of publication under section 16 (rule 28), in the case of a direct UK application. The deadline can be extended by two months, but only if a request is made under rule 108(2) in time. More time can be bought under rule 108(3) if a good enough reason is provided. Even more time is available by requesting reinstatement under section 20A up to one year after termination of the application, provided it can be shown that the applicant missed the deadline unintentionally. After this, one would normally think that an application can be considered to be finally dead and buried. Sometimes, however, this does not stop people from trying to resurrect an apparently dead application. A recent decision from the UK IPO (YKK Europe Limited, BL O/006/13) shows how far this can go. It also shows that even well-respected large partnerships of patent attorneys have systems and people that can go wrong from time to time.

Patent application GB0922420.5 was filed on 22 December 2009 in the name YKK Europe Limited (a well known manufacturer of zips and other fasteners) by their patent attorneys Marks and Clerk LLP in Manchester, the application being filed with patents forms 1, 7 and 9 together with the appropriate fees but without a request for examination (requiring patents form 10). No request for substantive examination was made in due time following publication of the application on 30 June 2010, which resulted in the application being treated as withdrawn and terminated with effect from the day following the final date on which the examination request was due.

On 1 March 2012, over 14 months after the end of the 6 month period for requesting examination, the office received a letter from M&C asking when they might expect to receive a substantive examination report. They were informed by the office that the case had been terminated and that it was now too late to request reinstatement under section 20A. M&C then filed patents form 10 together with an explanation that it was intended to be filed in due time but the form had never been mailed, even though M&C's internal records had been updated to indicate that the form had been filed. M&C's main argument to have the deadline extended was that the standard form 10 reminder letter sent by the office and usually received before the end of the 6 month period, had not been received. If it had been it would have alerted them to the omission. This, M&C argued, led to the failure to file the form in time being attributable to an irregularity with the IPO or a communication service. As such, an extension of time under rule 28(2) was requested under rule 107 (correction of irregularities) or rule 111 (delays in communication services). The office indicated that there was no scope under either rule to extend the time limit because a check of the office's records indicated that the letter had been issued and there was no indication an irregularity had occurred. Furthermore, while the reminder letter might have highlighted the failure of the attorneys to file the form 10 it could not be said that the failure to receive the reminder was the main cause of the form not being filed in time.

M&C, represented by counsel Richard Davis, argued that they were entitled to rely on the failsafe of the reminder letter in the event of a breakdown in their own systems, referring to Carrington's Patent, BL O/22/98 and the EPO decision J 23/87, arguing that but for the loss of the reminder letter the form was not filed in time. Witness statements from the M&C's records system manager and the office managing partner explained how their systems worked, of which the form 10 reminder letter formed an integral part, and indicated the specific training given to its patent attorneys in relation to its records systems that would have prompted the attorney to check the correct status of the case in the event a reminder letter was received.

The hearing officer considered that the issue was whether the applicant's failure to file form 10 on time was wholly or mainly attributable to a failure in the postal service which led to the non-receipt of the reminder letter. Only if this was the case would it be necessary to consider whether rule 111 allowed the comptroller to reverse the terminated status of the application. Regarding whether the failure was attributable to a failure of a communication service, evidence showed that M&C's records system had been updated to indicate that it had been filed, which meant that the alerts built into the system were not triggered. Furthermore, official records indicated that two pieces of correspondence were sent by the IPO and there was no evidence to suggest that these were not received. Despite the apparent stringency of M&C's records system, at least two signposts had been overlooked, the last of which should have been the reminder letter. Although the evidence indicated that, on the balance of probabilities, the reminder letter had not been received this was not the sole indicator supplied by the IPO that something was awry, and the hearing officer did not accept that the failure to file form 10 in time was wholly or mainly attributable to the non-delivery of the reminder letter.

In relation to the "but for" test, although the final error appeared to be a failure in the communication service this was not the main reason for the failure as there was at least one earlier failure to file the form. The fundamental failure to file the form in time resulted from the unexplained failure by M&C to send the form when the application was filed and the erroneous entry on their internal records system that the form had been filed. This error was compounded by the fact that two pieces of correspondence were overlooked, whilst a third was not received. None of these would have come into play had it not been for the original error. In conclusion the hearing officer considered that the failure was not wholly or mainly attributable to the failure of communication service, and that the period for filing the request for examination could not be extended under rule 111. The question of whether the rule could allow a terminated status to be reversed did not therefore arise.

It appears that the lesson to be learned from this case, at least for patent attorneys, is not to blindly assume that your own records are correct. Even if nothing appears to be awry, it is always best to check the patent office records to make sure, and it is certainly not good practice to ignore reminders from the patent office about deadlines that might be missed unless you can be sure there is no problem. The fact that M&C were unable, or unwilling, to explain the discrepancy between their own records and those of the patent office, which would have been publicly available online as from the publication date, indicates that there may have been an over-reliance on their own records system. Records are, of course, only as good as the data that is entered into them, and errors can occur. What is important is having a system where errors can be spotted and corrected. This of course requires people who can think about what the piece of paper in front of them actually means, rather than dismissing it as being somebody else's problem. 

Schütz v Werit - The UK Supreme Court bottles it

It is not always pleasant to see your work criticised in public, but when it comes to patent litigation someone somewhere has to bear the responsibility for writing the patent application in the first place. Courts are usually able to work around minor issues such as clarity by construing claims according to how Lord Hoffmann put it in Kirin Amgen, i.e. what would the skilled person have understood the patentee to have used the language of the claim to mean. As part of this process, when the claimed invention includes various specific features one cannot simply ignore some of them and interpret the invention to be broader than it is.

The case of Schütz v Werit, recently decided at the UK Supreme Court, is not one of those occasions where overly narrow claims resulted in a patent not being infringed. Very oddly, the situation was quite the reverse before the Supreme Court's decision. By having claims that were, according to all conventional patent attorney training, far too narrow, the patent proprietor very nearly got away with a much better result than they would have had their patent application been drafted properly. By 'properly', I mean that claim 1 should ideally have had only those features that were essential to the definition of the invention. How could this have been the case, and how could such a decision make any kind of sense?

Going back to the start of the story in the UK, Schütz (U.K.) Limited, an exclusive licensee of European patent 0734967, sued Werit UK Limited for infringement of the patent. There were other issues involved, but the main one for the purposes of this story is that Werit were alleged to infringe the patent by making the patented product, which was a palletised Intermediate Bulk Container (IBC) comprising a plastic bottle in a metal cage on a pallet (like the one shown on the right). Werit were taking used IBCs, taking out the plastic bottle and replacing it with a new one. Schütz claimed that this infringed their patent, because it was more than repairing the product but constituted making it anew. At the High Court, Floyd J was having none of this, and decided that Werit were not infringing the patent because the inventive concept of the patent was wholly embodied in the cage, which Werit did not do anything with other than repair (see paragraph 206 of Floyd J's judgment).

At the Court of Appeal, things turned out quite differently. Jacob LJ, taking the leading role, decided that the inventive concept test was wrong, and that Werit were making the patented product because they were making anew the palletised container of the claimed invention. This decision has now been overturned by the Supreme Court, which has effectively reinstated Floyd J's decision, although with some reservations about the inventive concept test not being the only one to consider (the main reasons being provided on paragraph 78 of the judgment).

As summarised by Lord Neuberger (at paragraph 10), the inventiveness of the patent lay in the idea of flexible weld joints in the cage to increase its strength and durability and, more specifically, in the idea of introducing a dimple on either side of each weld and a central raised portion where the weld is located. This is shown in figures 2 and 7 of the patent (shown below), figure 2 showing a portion of one of the metal tubes forming the cage and figure 7 a cross section of a welded joint between two of the tubes. The tubes were joined with welds at a raised portion 17, with recesses 25, 26 provided on either side of the raised portion 17. According to paragraph 3 of the patent (roughly translated), this configuration would increase the durability of the weld joints at the intersection of the vertical and horizontal bars of the lattice sleeve of the pallet container arising from static and dynamic loads during operation, thereby improving the stacking and transport security of the container.

The patent is not a long document (consisting of 7 pages of text and 3 of drawings in the application as filed; see the EPO register for all the details), and concentrates on the particular form of joints between the horizontal and vertical bars of the cage. The description makes clear that the object of the invention is to improve these joints. Claim 1 of the patent, in line with normal German and EPO practice, includes a characterising clause (“dadurch gekennzeichnet” / “characterised in that”), the meaning of which is clear: the combination of features prior to the characterising clause are known from the prior art, making the inventive concept the bit after the characterising clause.

Claim 1 of the patent (which is unchanged from that as filed except for the inclusion of reference numerals and some minor other changes by the examiner) does not, as a competent patent attorney might expect, claim only the cage but claims the whole pallet container, i.e. a pallet, an exchangeable plastic container for holding liquid, as well as the cage itself. The English version of claim 1 of the patent as approved by the applicant, reads as follows:

Pallet container (1) for the transporting and storing of liquids, having a flat pallet (11), an exchangeable inner container (2) made of plastic material with an upper, closable filler opening (3) and a lower emptying device (5) and also, surrounding the inner container, one outer sleeve (8) which consists of vertical and horizontal lattice bars (9, 10) made of metal which support the plastic inner container filled with liquid, the lattice bars which are configured as tubes being indented at the intersection points (15) to form trough-like, double-walled recesses (16) extending in the longitudinal direction of the lattice bars in such a manner that at each intersection point between the longitudinal edges (18, 19) of the recesses (16) of two lattice bars lying perpendicularly one above the other there arise four contact points (20) with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, and the four contact points of the two lattice bars being welded together at the intersection points, characterised in that the trough-like recesses (16) of the vertical and horizontal lattice bars (9, 10) have a central raised part (17) extending across the cross-section of the recesses, two lattice bars (9, 10) respectively lying one above the other at the intersection points (15) are welded together at the four contact points (20) of these raised parts (17) and the incisions (25, 26) of the recesses (16) of the lattice bars (9, 10) adjacent on both sides to the raised part (17) with the contact and weld points (20) form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part (17) for relieving the weld joints at the intersection points (17) upon application of static and/or dynamic pressure on the lattice sleeve (8).

In my view, if this claim were to be submitted as part of an answer to a patent drafting paper at the EQEs or the UK finals, the candidate would suffer a loss of many marks due to the unnecessary inclusion of features unrelated to the invention, i.e. the pallet and the inner container, as well as other marks due to the lack of  overall clarity of the claim, and would probably fail the exam as a result. However, in the strange world of patent litigation, and in particular the even stranger world inhabited by Lord Justice Jacob, the resulting patent was stronger for what the proprietor wanted to use it for than it would have been if it had been drafted properly. It is certainly possible to imagine how the claim might look if it had been drafted to concentrate only on the features essential for defining the inventive concept. Leaving mostly aside the fairly clunky wording, claim 1 re-drafted accordingly would read something like:

A lattice sleeve (8) for supporting an inner container filled with liquid, the lattice sleeve (8) comprising vertical and horizontal lattice bars (9, 10) made of metal, the lattice bars (9, 10) configured as tubes being indented at intersection points (15) to form trough-like, double-walled recesses (16) extending in the longitudinal direction of the lattice bars (9, 10) in such a manner that at each intersection point (15) between the longitudinal edges (18, 19) of the recesses of two lattice bars (9, 10) lying perpendicularly one above the other there arise four contact points (20) with a material accumulation respectively corresponding to the quadruple lattice bar wall thickness, the four contact points (20) of the two lattice bars (9, 10) being welded together at the intersection points (15), characterised in that the trough-like recesses (16) of the vertical and horizontal lattice bars (9, 10) have a central raised part (17) extending across the cross-section of the recesses (16), such that two lattice bars (9, 10) respectively lying one above the other at the intersection points (15) are welded together at the four contact points (20) of these raised parts (17) and the incisions (25, 26) of the recesses (16) of the lattice bars (9, 10) adjacent on both sides to the raised part (17) with the contact and weld points (20) form restrictedly elastic bending points with a reduced bending resistance moment relative to the raised part (17) for relieving the weld joints at the intersection points (15) upon application of static and/or dynamic pressure on the lattice sleeve (8).

It is perfectly clear where the inventive concept lies in the above claim, which is in the construction of the lattice sleeve and not with the other components of the IBC, which are not claimed. I see no reason why this claim could not have been allowed by the EPO. The question is then whether the same decision would have been arrived at by the Court of Appeal. I think not, because it would be hard to argue that the inventive concept could lie outside the scope of a claim (although the claimant would probably have done anyway). In rejecting the "whole inventive concept" test (see paragraph 72 of the Court of Appeal judgment), Jacob LJ had clearly not looked very hard at the actual patent. If he had, it would have been clear that the inventive concept could not have lay outside the cage, and had nothing to do with the other components of the IBC. It was not "fuzzy and uncertain", as claimed, but the wording of the patent made it quite clear that the feature to be concentrated on lay in the cage and not elsewhere. The fact that the cage in practice operated in conjunction with the bottle, with the improved weld allowing for more flexibility, may have been a factor in considering whether the skilled person would consider the feature obvious, for example when trying to solve a problem relating to IBCs as a whole, but this lay in deciding whether the invention was obvious, not in where the inventive concept lay. It was certainly quite wrong to view the solution to any problem as having anything to do with a component outside the cage, and in particular the welded joints making up the latticework of the cage.

If the Court of Appeal decision had not been overturned, I wonder how far the rejection of the whole inventive concept test would go. Would it be possible for a claim to a car comprising a new and inventive cigarette lighter to have a better scope for protecting against infringers than a claim to the cigarette lighter alone? Perhaps things would not be taken to that extreme, but it might have made claim drafting for UK patent applications more complicated if such an illogical decision had to be taken into account. Thankfully we do not have to, and can carry on drafting patent claims in the way we were taught to.

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.

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).