Monday, 23 December 2013
These points are from an article by Mariana Mazzucato published in the Observer on 15 December 2013 called ‘Let's rethink the idea of the state: it must be a catalyst for big, bold ideas’.
1. The function of the state in innovation is not to do things better than others are doing, but to do those things which at present are not done at all.
2. Governments are capable of dreaming up ‘big mission’ projects like putting a man on the moon which lead to development of new technologies which otherwise would be difficult to do.
3. The idea of the government funding the ‘public good’ must be recognised and acknowledged. Transport, healthcare, research and education need to be done by government.
4. Pfizer moved its R&D lab from the UK to Boston because of the £32bn a year that the US NIH spends on biomedical knowledge.
5. All the technologies that make the iPhone smart were pioneered by a well-funded US government: the internet, GPS, touch-screen display and Siri.
6. Public funding should today be used for new missions around climate change, ageing, inequality and youth unemployment.
7. A new narrative is needed to describe the role of government, and its entrepreneurial and risk-taking role should be acknowledged and appreciated by finding ways of it benefitting from its investments.
8. Recent successes with BBC’s iPlayer and Government Digital Services’s website show what can be achieved when brains and knowledge operates within the government sector.
9. Competences and dynamism must be developed within the public sector rather than taking the mindset of axing as much as possible.
10. The ability of government to do ‘big’ things must be recognised and that means forward-thinking public spending is crucial for a creative, prosperous society.
You may also wish to see related articles Top 10 Topical Issues in Commercial Biotech and Problems of Patenting and Commercialising University Research.
Thursday, 19 December 2013
This post is for those that are not familiar with online patent resources and how they can be used by individual inventors or small companies. We advise always discussing a new invention with a patent attorney. However it is also possible to find a lot of information online which will help in decision-making about whether to file a patent application. This post is written from the perspective of a UK-based Patent Attorney advising UK-based individuals and companies.
1. Online Databases of Patent Cases
The following 5 sources provide good searchable databases of existing patent applications and patents:
- The US Patent and Trademark Office
2. Is it New?
2. Is it New?
Many ideas are not patentable simply because they are not new. Searching patent databases will allow you to see whether your idea is new. If a published application or patent describes your idea it will be more difficult for you to obtain patent protection. You may still be able to obtain patent protection for a narrower, more specific, form of your idea.
3. How Might the Idea Be Described in a Patent Specification?
Finding examples of patent specifications in your technical area will show you how an invention is defined in the ‘claims’ and how it is generally described in a patent application. That can help in thinking about the idea in the right way, and may help you to distil the idea into what new products and activities can be claimed.
4. Existing Patent Specifications are a Resource for Ideas and How to Apply Them
Well written patent applications can be filled with ideas for how to use ideas in different ways. By reading existing patent specifications you may come up with new ways of thinking about your idea which may help you to think about how broadly you would want patent protection. It may also allow you to identify other technologies which could be used with your idea.
5. Are Companies Filing Patent Applications in Your Technical Area?
Unfortunately there are certain technical areas where patent protection can be difficult to get. Many apps for mobile phones cannot be protected by a patent, though advice from a patent attorney should be sought on a case-by-case basis because it is a difficult judgment to make. In addition patent filings are sometimes not the best way to proceed commercially. It may be better to rely on the approach of keeping your invention a secret. So, if you are unable to locate patent filings in your technical area you may wish to think about why that might be the case. Is it because this type of technology is not patentable or is it because companies in this area do not consider patents to be commercially useful?
6. Will it be Difficult to Get a Patent?
If you find many patent specifications which describe technologies that are similar to your idea you may find it difficult to persuade Patent Offices to grant a patent for your idea. Patent are granted for inventions which are new, but also inventive. That means they must contribute something that is more than obvious over what is known. However bear in mind that ‘inventiveness’ is difficult to judge and requires patent attorney advice. If you do locate existing patent cases that are close to your idea then it is possible these will also be considered by Patent Offices when they are examining your patent application. You may wish to think about how you could argue your idea is inventive over such cases.
7. Freedom to Operate
Bear in mind that other people’s patents may cover your products and activities. Therefore if you are going to be carrying out your idea yourself you’ll need to establish that you have the freedom to do so. In the UK you can only be sued based on a granted patent. Therefore if you are searching patent databases to discover whether you have freedom to operate you need to bear in mind the difference between patent applications which are not granted and patents which are. In particular the claims of patent applications may change (normally becoming narrower) before grant occurs.
8. Potential Customers, Collaborators, Investors and Licensees (or Lack of)
Identifying parties who are filing patent applications in your technical area could be commercially useful in many ways. Such parties could be potential customers, collaborators or investors. They could also be interested in buying your patent application or patent, or in taking a licence. Conversely if you do not find parties filing in your technical areas then this indicate a lack of commercial interest, and you may find it difficult to sell or licence your patent case.
9. Likelihood of Attack on Your Patent Cases
Monitoring the behaviour of parties in your technical area may also give you an indication of how likely it is that your patent cases could be attacked by competitors. Patent cases can be attacked before and after grant, for example using third party observations and opposition procedures. Patent databases can be used to see how often patent cases in your area are attacked and may allow you to identify companies with aggressive patent policies.
10. Competitor Activity
Parties filing patent applications in your area could be potential competitors. Their patent filings may give you an idea of their areas of interest, the directions they are taking and how fast they are progressing. Knowing about their patent cases will also allow you to consider whether you wish to attack them, particularly if they are relevant to your freedom to operate.
Friday, 13 December 2013
We have worked with university tech transfer offices, small research companies and investors. Here are our observations on different types of research.
1. Ground-Breaking Patentable Research
When scientists opens up a new area of research in their work, it is more likely to be distant from the prior art, and that will allow broad patent claims to be obtained. In addition the work is less likely to be covered by the patent claims of third parties, and so there are less freedom-to-operate issues. However such research tends to be done by scientists who are more ambitious and willing to take risks. Ground-breaking research is also more likely to lead to disruptive technologies.
2. Follow-On Patentable Research
Follow-on research tends to build on ground-breaking work. It may represent important development of a technology and therefore be necessary. However there tend to be more problems obtaining patents as the previous ground-breaking research will be relevant prior art, and only narrow claims might be obtained. In addition there may be freedom-to-operate issues due to patents directed to the ground-breaking work.
3. Commercialisable Research
Tech Transfer Offices are in the position of having to identify research that will attract commercial interest. In our experience they only succeed in finding commercial partners for around 5% of their patent cases. The markets are not necessarily the most-informed or wisest decision-makers, often following trends and being shy of areas where there have been a lot of failures.
4. Patentable Research That Cannot be Policed
Sometimes it is possible to obtain a patent for an invention, but due to its nature it can be difficult to police infringement of the patent. Screening methods which identify useful compounds are an example of this, where it is impossible to tell from the marketed product how it was identified. These considerations apply to many research tool inventions, and so the commercial reasons for filing a patent application must be reviewed carefully to ensure the patent will provide value.
5. Risky Research
Some types of research are simply not successful. Promising drug candidates will often turn out to be ineffective in clinical trials. These risk considerations should be properly understood when investing and when deciding whether to file a patent application.
6. Competing Technologies
It must be remembered that successful research is often difficult to translate into commercial success because the new technology must displace existing technologies, and if that is not economically feasible then customers may decide not to invest in the new technology. At the moment this is particularly true with new drugs which are not substantially better than existing drugs.
7. Essential Non-Commercialisable Research
Certain types of research are needed simply for the advancement of science, but there has to be an acceptance that there is little chance that patents or commercialisation will be possible. Clearly public funding is a very good way of ensuring such research is done.
8. Research in the National Interest
Clearly every government must review whether or not it needs to fund certain areas of research to further its national interests. That may be for the purpose of ensuring its own food security, for example, or to develop a research base in an important area. However research is not always the best option. For example it may be better for certain countries to have more mobile clinics rather than funding expensive research into new treatments.
9. Researching Appropriate Technologies
Where solutions are being developed to solve certain problems, there must be choosing of the most appropriate technology. Cost, ease of maintenance and repair, and ability to operate optimally in local conditions all need to be considered. High tech solutions may not always be the answer.
10. Research That Does Not Duplicate Efforts
A lot of research is duplicated around the world. The internet provides a new means to assess what research has already been done by other organisations and how best to make use of that. For example pharma companies are presently offering their existing compound libraries for testing against new diseases.
You may also wish to see related articles What Do You Need to Know About Commercial Biotech? and What is Wrong with Big Pharma R&D?
10 Observations on ‘Combating Transnational Intellectual Property Crime’ organised by the Arab-British Chamber of Commerce.
1. Keynote speakers included Ministers for Justice from Saudi Arabia and Jordan, the UK Minister of State for Justice, the UK Parliamentary Under Secretary of State for Intellectual Property and Cherie Blair. So it was clearly both a diplomatic and IP conference. It showed that IP issues are taking a much higher profile in International relations and even countries in the Middle East are accepting that the implications of the knowledge and digital economy affects every country.
2. The WTO and TRIPS were essentially the driving forces for Middle Eastern countries providing IP rights and methods of enforcement.
3. Saudi judges and legal practitioners in the area came across as very aware of the correct balance needing to be struck between IP rights holders and third parties, and there were clearly mechanisms in place in Saudi Arabia to regulate prices and to keep in check the behaviour of IP holders.
4. The topic of whether infringement of IP rights should be a criminal act was mentioned by several speakers, and clearly there are counter-arguments to this. It was clear that whilst the overall tone of the conference was very supportive of IP rights holders, there were also moderating voices.
5. It was clear that enforcement of IP rights was within Islamic legal principles. There was also an understanding that it was in the national interests of Middle Eastern countries, though this is probably a complex conclusion to establish.
6. Morocco is keen for its population to take much more advantage of IP rights, particularly for handicrafts. It recognises that it is exposed to open competition and operates within a knowledge economy.
7. Many consumers do not presently see anything wrong with illegally downloading films and music or buying fake luxury goods. Consumer education was seen as a priority.
8. Cybercrime and security were seen as areas of concern.
9. It was noted that the controversy of pharma patents making drugs expensive in the developing world was harming support for IP rights holders.
10. We noted from people that we met at coffee that the Middle East is attracting UK IP lawyers. D. Young & Co., a UK patent firm, has opened offices there recently.
Tuesday, 10 December 2013
1. The UK remains a centre of excellence for research. It produces 5% of the world’s scientific research, but has less than 1% of the world population. However it is perceived as being poor at commercialising research.
2. Investors are more risk averse and are less likely to invest in companies whose future depends on the success of a single drug. Companies are finding ways to de-risk.
3. A lot of UK biotech companies have gone under in the last few years. However certain opinions say that is not necessarily a bad thing.
4. Biotech financing increased in 2011 in the UK compared to the previous two years, but lack of financing is still seen as a big obstacle in the sector.
5. Big Pharma seems to be leaving the UK. However GSK has publically welcomed the tax benefits of the Patent Box scheme and seems committed to the UK. Whilst Astra-Zeneca is down-sizing in the UK, it is still here.
6. UK academics are now much more commercially aware, and are often keen to have their own startups.
7. The current biotech buying spree in the US could potentially come to the UK at some point (in a more modest form).
8. There is disappointment that the UK has not been able to create more large biotech companies, ideally those able to easily carry out their own clinical trials.
9. The UK does have experienced management in the biotech sector. However UK corporate culture remains too risk-averse.
10. The next UK biotech IPO remains a long way away.
It is not always easy to assess what the contribution of the invention is on a complex biotech case. How this is an important issue to think about because it will determine the scope of claims that should be drafted or the arguments that can used when defending claims.
Often biotech inventions can be seen at different ‘resolutions’. If X has been found to treat Y and information was available about the mechanism through which X acts then this could be claimed in the following ways:
- X for use in a method of treating Y
- X or a substance that works in the same was as X for use in a method of treating Y
- X for use in a method of treating Y or a condition with the same basis as Y
The different claims reflect possible extrapolations of X and Y. Which of these claims can be obtained will depend on how close the prior art is and the extent to which the claims would be considered sufficient and supported.
Where the invention concerns the finding that an SNP in a gene causes a certain condition, the following contributions could be considered:
- the invention shows involvement of the gene in the condition
- the invention shows that changes to the gene expression or activity are relevant to the condition
- the invention shows that the gene is naturally polymorphic and that the polymorphisms are relevant to the condition
- the invention shows that modulation of the gene activity or expression can be used to treat the condition
- the invention shows that countering the in vivo effect of the SNP can be used to treat the condition.
Thus claims to diagnosis and treatment of the condition could be possible. The different diagnostic claims might be allowing the following lines:
Method of diagnosing condition Y in an individual by determining whether the individual possesses polymorphism Z in gene A.
Monday, 9 December 2013
Here are 10 different, potentially overlapping, scenarios in which patent applications might be filed or assessed. Each scenario requires different strategies and therefore a patent attorney needs to recognise which scenario is applicable when they draft, advise or assess. We have provided only brief comments on each scenario since the actual strategy will obviously be more complex and will need to be tailored to the specific commercial situation.
1. Tech Transfer Office.
When drafting for a university tech transfer office it is important to bear in mind that there will almost certainly be a disclosure of the invention by the inventors soon after filing. Therefore the strategy could essentially be to claim as broadly as possibly as downstream filings may not be possible.
2. Sole Inventor
In the classic situation of an inventor who has an idea independently of a research company and with little funds, one must give realistic advice about whether a patent application is worth filing at all. Filing an application and then selling it quickly is highly unlikely to happen and if this is the plan the inventor should try and identify potential buyers when thinking about how to proceed.
3. A Scientist Setting up a Company
All decisions need to be taken very carefully as the early filings which are done when there are few resources may turn out to be the most important in value. Ownership issues and the relationship to research done previously at another company or in a university need to be clear-cut.
4. An Early Stage Company
There has to be a clear idea of when a product will be launched and how this fits into patenting timelines and building up a patent portfolio. Competitor activity should be monitored, but it may be too early to know what patent strategies should be pursued against competitors.
5. An SME Selling a Product
Having multiple layers of protection for the product, having freedom to operate and having patent cases that can be used in negotiations may be important. Clearly it may be important to build up a strong defensive position and be aware of the possibility of cases being opposed or litigation happening.
6. Strategy for a Large Company
Building up portfolios in areas of interest and ensuring that defensive portfolios are in place for important areas. Having a detailed picture of third party rights and the freedom to operate landscape, and if necessary being prepared for oppositions and litigation by third parties, and in turn assessing how aggressive to be against third party patents.
7. A Company Looking for Investment/Collaborators
The portfolio must be maintained with the knowledge that it will undergo due diligence. Clearly regular filings each having a specific commercial purpose and showcasing the research the company has been doing will look more impressive to investors.
8. Technology Sector
One should recognise the extent to which patents add value in the technical sector which the company operates in. Many ICT companies may find that trade secrets and first to market advantages outweigh the benefits provided by patent. However in other areas, such as biotech, patent protection is the norm and is integral to creating value.
9. Taking Over a Company
Beyond the initial identifying of outstanding deadlines, the patent portfolio will need to be assessed quite soon to determine whether it needs fixing in any way, in particular whether new filings are needed in view of available research data or whether any existing cases should be abandoned.
10. Investing in a Company
When carrying out due diligence, beyond determining whether there are problems (such as ownership issues) and looking at territorial coverage, it is important to see how adequately the portfolio protects the product. Is broad coverage provided? Are the claims likely to be valid? Are there multiple layers of protection?
Friday, 6 December 2013
We’ve chosen these websites as useful science resources on the internet. They relate to how governments and other institutions are thinking about science policy, science projects they are funding and research that is available for commercialisation. We have not listed websites from specific universities or research institutes which are also a rich resource of information about commercialisable science. We are UK based and so our perspective is admittedly a UK and European one.
1. The United Nations’ Science Page (see here). This is about science which is relevant to the UN’s policies.
2. The European Union’s Science Projects (see here). This is the science being funded by the EU.
3. US Government website (see here). There are clearly a lot of science related US government websites. This one shows science which is being funded by the US government.
4. UK Research Councils’ website (see here). This is a portal that provides a search facility for publically funded research in the UK.
5. UK Parliament Research Briefings (see here). This is a useful indicator of what the UK government wants to know about science.
6. _connect Pipeline (see here). A searchable portal for finding technologies from UK universities and research institutions.
7. Bilat (see here). A portal about projects involving countries that have science and technology agreements with the EU.
8. Japan Science and Technology Agency (see here). The JST is implementing the Japanese governments Science and Technology Basic Plan.
9. The Russian Government website (see here). This is not a science portal as such, but does have a lot of information about Russian policies towards science.
10. Science Europe (see here). This provides policy information about science in Europe.
You may also wish to see the related articles What Do You Need to Know About Commercial Biotech and Problems of Patenting and Commercialising University Research.
You may also wish to see the related articles What Do You Need to Know About Commercial Biotech and Problems of Patenting and Commercialising University Research.
Tuesday, 3 December 2013
This is about decisions of the UK Intellectual Property Office. These cases were mentioned at a CIPA event on 27 November 2013. The decisions are not binding on the courts, but they illuminate how the IPO is thinking about issues.
1. Ex partes decisions often concern objections raised by Examiners, though they can also be about other matters, such as SPC’s. There were 63 ex partes decisions issued between November 2012 and November 2013. 36 were about excluded matter (of which only 1 was allowed), 10 were about inventive step, 7 were about sufficiency/industrial applicability and 6 were about added matter.
2. There were 50 inter partes decisions in November 2012 to November 2013. 35 were about entitlement and inventorship, 4 were about revocation and 4 were about amendment.
3. The IPO has seen an increase in cases relating to business methods. IPO practice on identifying business methods is to look at the nature of the contribution and whether it is technical. The use of a computer is not in itself enough to make an activity inherently technical.
4. Specific Business Method Cases:
- In Aueon Inc (BL O/248/13) a method of generating a list of cancer drug treatment options based on the molecular markers on the tumour and other patient information was held to be a computer program as such as the contribution was essentially an improved method of interrogating a database and ranking treatment options.
- In WMS Gaming Inc (BL O/260/13) a gaming system in which a player could use funds from a third party in a wagering game was held to be a business method.
- In Visa USA Inc (BL O/149/13) enabling electronic payments where the software resolves incomplete seller information was held to be a business method.
- In LexisNexis Risk Solutions Inc (BL O/111/13) an improved method of data analysis for detecting mortgage fraud was held to be a business method. In LexisNexis Risk Solutions Inc (BL O/281/13) a database for calculating insurance premiums was also held to a business method.
- In Shop.com (BL O/489/12) a web-based tool allowing gift recipients to choose gifts was held to be a business method.
5. YKK Europe Ltd (BL O/006/13) concerned a lost reminder to file a Form 10. After publication a reminder for a Form 10 was issued. There was no response from the Applicant and 14 months after the application was deemed withdrawn for failure to file the Form the Applicant asked when the examination report would issue. The Applicant believed the Form 10 had been filed and did not receive the reminder. It was held that Rule 107 relating to procedural irregularity could not be used to remedy the situation as it was not clear the IPO that done anything wrong. It was also held that Rule 111 relating to delays in communication services could not be used as failure to file the Form F10 was not ‘wholly or mainly attributable’ to the lost reminder.
6. In Genzyme Corporation (BL O/418/13) the IPO held that in view of Article 297 TFEU saying that EU decisions take effect upon notification then an SPC term must be calculated from the date of notification (not issue) of the marketing authorisation. That means an extra 2 to 4 days of SPC term due to the time taken for notification to occur. This decision clearly does not apply to UK marketing authorisations.
7. In International Stem Cell Corp (BL O/316/12) the IPO rejected a case concerning a parthenote, an embryo-like structure that can be formed from an unfertilised human ovum, on the grounds it related to use of an embryo. This was appealed to the High Court which has now made a reference to the CJEU. [Update Advocate General recommends allowing parthenotes to be patented (see here)]
8. In Sonomatic v Flexlife (BL O/001/13) a post-grant amendment was opposed and unusually the IPO had to consider whether the amendment did ‘more clearly distinguish’ over the prior art as the patentee said, though validity cannot be put at issue in such proceedings.
9. In Opinion 31/12 (Adams’ Patent) providing a ‘heavy metal’ barrel for a dart with a patented stem-barrel weight ratio was found to be supplying an essential element under s.60(2).
10. In a Review of An Opinion on O’Hare’s Patent (BL O/449/13) the Opinion was set aside because the Hearing Office had construed ‘comprising a plate with substantial oval apertures’ wrongly.
Monday, 2 December 2013
These cases were mentioned at a CIPA event on 27 November 2013.
1. There are presently 5 pending referrals to the Enlarged Board: G1/11 (jurisdiction of the Legal and Technical Boards of Appeal), G1/12 (Correction of Appellant name), G2/12 (plant breeding (Tomatoes II)), G1/13 (party status) and G2/13 (plant breeding (Broccoli II)). No G decisions issued in 2013. The number of Petitions for Review continued to decrease following a peak in 2010/11.
2. There has been another successful Petition for Review by the Enlarged Board, R15/11. The Petitioner argued that the clarity objection on which the appeal was decided had never been raised. The Enlarged Board agreed that violation of the petitioner’s rights under Article 113(1) EPC had occurred as clarity had not previously been raised.
3. There are pending referrals to the Enlarged Board on the tomato (G2/12) and broccoli (G2/13) cases. These concern whether Article 53(b) EPC excludes patentability for products which are the result of essentially biological processes (i.e. a breeding program). Previous Enlarged Board decisions G2/07 and G1/08 had found the method claims relating to producing a broccoli or tomato by breeding were directed to an essentially biological process and thus not patentable subject matter.
4. Interestingly, in T15/10 a claim to a method of selecting an avian by testing for a fishy taint in eggs (by a genetic test) and using the information for ‘breeding considerations’ was held to be patentable since the none of the claims was actually directed to a method of producing an avian, and so they could not cover an essentially biological process.
5. In T1670/07 the Board decided that a method of planning shopping trips using a mobile device was not technical and in its reasoning referred to the ‘technical leakage fallacy’, ‘the broken technical chain fallacy’ and the ‘nontechnical prejudice fallacy’.
6. In T2619/11 the Board took a lenient view of added matter saying that the application is directed to a technical audience rather than a philologist or logician.
7. T1961/09 concerned intervention proceedings where intervention happened just before Oral Proceedings in Appeal. That can sometimes cause the case to go back to first instance to deal with new objections from the intervener. In this case the Oral Proceedings went ahead, but the intervener agreed not to make submissions on novelty and to withdraw the clarity objection. This was tactically correct as the patent was revoked. [This item was corrected after the original posting]
8. In T1799/08 the Board had to decide how to deal with evidence from the Patentee which was not contested by the Opponent that did not appear at the Oral Proceedings. The Board decided it was not its job to substitute for the Opponent and the patent was found valid in amended form.
9. In T1351/10 the Patentee had not maintained the original claim 1 as a request at first instance in Opposition. The Board did not allow it to be introduced into the Appeal proceedings. This was not helped by the fact that the original claim 1 was only filed as a request a month before the Appeal Oral Proceedings.
10. Similarly in T2075/11 the patentee amended the Main Request to narrow claim 1. That was rejected at first instance, and the Board refused to allow the claims as granted to be introduced into the Appeal proceedings as a request, as the Patentee’s own actions had led to the claims as granted not being part of the first instance decision that was being appealed.
You may also wish to see related articles Top 10 Tips for Success in the EPO Appeals on Biotech Cases and Tips for Opposition Success.
This list was published in the Observer newspaper on 1 December 2013. It caught our attention as providing a representative perspective of startup activity in the UK. The breadth of the technical areas, the ambitiousness of the projects and their altruistic nature show the UK at its best.
Aqdot makes microcapsules that control-release active ingredients and which have many uses, including nutraceuticals and agrochemicals. They see their primary opportunity as growing by licencing.
CCS make small scale mobile phone base stations that are based on microwaves.
This provides a search service for finding alternative finance options, such as crowd finance. They aim to become the market authority for alternative finance.
They use electrochemical technology to produce energy while also locking up CO2 in carbonates.
Eight19 makes flexible lightweight printed solar cells. It has already spun out a company, Azuri Technologies, which offers pay as you go solar technology to consumers in rural areas without mains electricity.
The makers of the world-famous customisable computer.
Delivers teaching materials via tablets and mobiles to students in the emerging economies.
Provides an intelligent discovery platform for science helping people to keep up with scientific developments.
This is a cyber security company that uses maths to spot unusual behaviour as it happens.
Developing new cancer therapies.
Developing technologies that can identify chemically altered DNA to study epigenetics.
They hook up wireless-enabled sensors to industrial equipment and processes to improve efficiencies.
13. Audio Analytic
Develops software for identifying specific sounds, even in noisy situations.
Helping consumers to get the best free apps.
Provides a secure messaging service for patients to undertake cognitive behavioural therapy from home.
Develops telecommunications equipment for the internet of things (IoT), allowing people to manage their IoT devices in the field.
Friday, 29 November 2013
These points are from a talk held at CIPA on 27 November 2013 given to UK Patent Attorneys.
1. There are currently 8 proposed bills pending in the US Congress directed at abusive patent litigation, i.e. non-practising entities. They include provisions for loser pays, disclosing the real party in interest, staying litigation against end user customers, heightened pleading standards for infringement, eliminating Post Grant Review estoppel, expanding the CBM (Covered Business Method) program, shifting the discovery fee and the concept of bankruptcy not terminating some licenses.
2. The Supreme Court decided in Bowman v Monsanto that patent exhaustion permits re-sale of a patented item, but does not allow new copies to be made. That includes the situation where the item is a self-replicating product, in this case a GM bean.
3. The Supreme Court decided in Association for Molecular Pathology v Myriad that isolated naturally occurring DNA molecules were not patentable subject matter, though cDNA is patentable. Also comparing or analysing DNA sequences is not patentable.
4. In Aristocrat Techs v International Game Tech the Federal Circuit reversed the summary judgment for indirect infringement at first instance which relied on the fact direct infringement did not occur, citing Akamai v Limelight which had held that indirect infringement does not require direct infringement to occur as long as there is inducement to others to collectively practice the steps of the patented method.
5. In CLS Bank V Alice Corp. (en banc) the Federal Circuit had the intention of providing guidance on patentability of software. Instead 7 different opinions were issued by 10 different judges, with none getting a majority. It is likely that the Supreme Court will intervene in the next few years to clarify this once and for all.
6. In Wyeth v Abbott the Federal Circuit decided that the term ‘rapamycin’ lacked enablement in as far as it covered tens of thousands of analogues, even though routine assays could identify them.
7. The Federal Circuit started to be influenced by secondary considerations of nonobviousness, such as long felt need, commercial success, failure of others, teaching away from the prior art, industry praise, etc. Three cases in which this happened: Apple v International Trade Commission, Leo Pharm v Rea and Rambus v Rea.
8. Inequitable conduct became less important as the Therasense v Becton Dickinson guidance of ‘specific intent to deceive the PTO’ was implemented by the Courts. Allegations of inequitable conduct have fallen more than 50% since 2008 (from 41% of all cases to 20%).
9. In Fresenius v Baxter the Federal Circuit decided that where the PTO rejected claims in reexamination before an infringement case final decision, then the PTO decision overrode the Court decision on the validity of the claims.
10. The US Patent Trial and Appeal Board is proving very popular, with 514 Inter Partes Reviews, 8 Covered Business Methods and 1 Derivation Proceedings in 2013. They can be strict about opportunities to amend the claims, can cope with complex arguments, will only grant additional discovery if you can show what you expect to find.
Thursday, 28 November 2013
These decisions were discussed at a CIPA event on 27 November 2013, and the following points are based on the cases selected by the speakers.
1. UK Patent cases in 2013: there were 32 High Court cases, 13 Court of Appeal, 2 Supreme Court and 12 PCC (now Intellectual Property Enterprise Court). Of these Birss handled 15 (9 at the PCC, 6 at the High Court), Arnold handled 8, Floyd handled 7 and Mann handled 4.
2. Virgin v Zodiac concerned res judicata and the end of the Unilin principles. Previous case law based on Unilin was that estoppel protects damages findings even if the patent is subsequently revoked. The Supreme Court decided in Virgin v Zodiac that action estoppel was not ‘absolute generally’, and though Zodiac could not challenge the Court of Appeal’s findings on validity it was able to rely on the fact that subsequent amendments at the EPO meant that infringement did not occur. Therefore the damages were not now payable. This case changed res judicata principles.
3. In IPCom v HTC the Court of Appeal revised the Glaxo guidelines for whether UK proceedings should be stayed if EPO proceedings are continuing, bringing commercial impact and certainty into the decision.
4. In Schutz v Werit the Supreme Court disagreed with the Court of Appeal on the test for ‘making’ in a repair context, and provided a new test which focused on replacing a subsidiary part.
5. In Nestec v Dualit the High Court had to decide on ‘making’ in the case of capsules for a coffee machine. However more seriously Arnold decided that one’s own published priority case could be section 2(3) prior art and held that claim 1 was not novel over the priority application. Claim 1 was held to not have clearly defined alternatives as discussed in G2/98. Loss of priority has been a key issue in at least 5 cases in the last year and so it becoming important in UK proceedings.
6. In HTC v Apple the Court of Appeal overturned the High Court and found that multi-touch control on a screen did have technical effect and was patentable. The fact the device was improved as result was key point.
7. In Novartis v Generics the Court of Appeal agreed that an enantiomer was obvious, dismissing analysing inventive step ‘by chopping it up into a series of sub-questions’ and not allowing unpredictability to contribute.
8. In Generics v Yeda and Teva the Court of Appeal disagreed with the High Court which had found that when looking at whether the specification makes it plausible that the invention solves the technical problem it is not possible to rely on post-dated evidence. The Court of Appeal felt there could be no objection to admission of evidence on the true nature of the advance by the invention.
9. In Sudarshan v Clariant the Court of Appeal held that a threat to sue customers was an actionable action.
10. The change of name of the Patents County Court to the Intellectual Property Enterprise Court was noted. Richard David Hacon is the new judge. Case breakdown is: 40% trade marks and passing off, 25% copyright, 20% patents and 13% designs.
You may also like the see the related posts on The Disadvantages of Having a Specialist Patent Court and Tips for Attorneys on How to Report Patent Decisions.
You may also like the see the related posts on The Disadvantages of Having a Specialist Patent Court and Tips for Attorneys on How to Report Patent Decisions.
Monday, 25 November 2013
This is drafted from the perspective of a European Patent Attorney working in the biotech/pharma areas. However clearly many of the points listed below apply generally.
1. The Inventions is Well-Presented
The overall impression from the patent application should be of a distinct well-presented invention, where it is relatively easy to see why it is clever and/or impressive. When drafting a case it is easy to lose sight of the overall impression which it gives to the reader. For example claim 1 can describe the invention as a list of features, but that will sound less impressive than if you are also able to reflect the problem which is solved and the advantages which are provided (An X ray machine which provides higher definition pictures…).
2. Be Consistent
Be careful about being consistent. For example the degree of extrapolation from the Examples to the claims should be consistent with the contribution over the prior art. For example if you have identified specific mutations which are difficult to find then you should be wary of trying to claim equivalent mutations that have not yet been identified.
3. Avoid Repetition
Everything in the application should contribute something. Clearly there should be counterparts of the claims in the description, but apart from this repetition will serve no purpose other than increasing page fees and translation costs.
4. The Summary Should Show the Contribution
The Examiner will try to assess what the contribution is over the prior art. He/she is more likely to come to a favourable view of this if an actual contribution is provided in the ‘Summary of the Invention’. The Summary should reflect the extrapolation which the Applicant is making from the Examples, and if necessary should justify the extrapolation. However the Summary clearly also needs to be written in a way which accommodates the problem being solved changing during examination.
5. Reasonable Claims which are Prima Facie Clear
The claims should give the impression of having a reasonable scope and if possible unclear terms should be avoided in claim 1. The Examiner is more likely to be persuaded if the patent application comes across as being reasonable, even if it is ambitious in the claim scope which is being pursued.
6. Provide the Correct Perspective with which to See the Invention
The entire patent application should be drafted from a perspective which directs the Examiner to see it in the way you wish it to be seen. Therefore the ‘Background to the Invention’, the ‘Summary of the Invention’ and the claims should together allow the Examiner to see how the invention happened in an objective way. Giving that overall perspective will make it more likely that the Examiner will view the invention favourably when he/she first reads it.
7. Don’t Lose Credibility
Make sure everything in the patent application is credible. It is pointless to present something as novel if it is not. Having discovered that a supposedly novel product is not novel, the Examiner might then assume there is nothing else in the application which makes a contribution to the art.
8. Show the Significance of Modest Contributions
You must recognise when the invention is modest and make sure in that situation that the patent application shows the significance of the contribution that is made by the invention. It is better to avoid an inventive step objection being raised than having to deal with it once it is.
9. All the Claims Should Contribute Something
Whilst the independent claims are the most important, the dependent claims should be thought about carefully. Dependent claims can be directed to commercial embodiments, be drafted to cover additional infringers or reflect additional technical effects.
10. Pay Attention to Detail
Make sure there are no errors in claim 1 and try to ensure there are no spelling mistakes or grammatical errors in the application. Making corrections after filing will add to costs. In addition it should be remembered that a published patent application could be used to showcase the invention to potential investors.
You may also be interested in the related articles 10 TopTips for Patent Drafting and Top 10 Reasons For Filing A Biotech PatentApplication.