Tuesday, 3 December 2013
10 Points from IPO Patent Decisions in 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 There was no response from the Applicant and 14 months after the application was deemed withdrawn for failure to file the Form the Applicant asked when the examination report would issue.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.