Monday, 18 August 2014

What’s Wrong With an Academic or Rigid Approach to the Patent System?

This post is written by a practitioner who is very appreciative of the role of academics in contributing to the patent system. The purpose is to highlight though how practitioners need to approach the patent system because it is very different from a typical ‘academic’ understanding of it.

1. Patents are a very grey area. There are often good counterarguments to any position which is taken on validity or infringement issues. That means there is a tremendous level of unpredictability and risk involved when making decisions around them. Often the most likely outcome can be defined, but so often the most likely outcome does not happen, and that must be appreciated. So whilst an optimal strategy can be deduced it must be realised there is lot that cannot be catered for.

2. The patent system is changing all the time, sometimes dramatically. The Mayo, Myriad and Alice US Supreme Court cases have transformed the landscape of chemical, biotech and software patent practice in the US in ways that are still not clear. That means the practitioner needs to know the absolutes are changing and be able to plan for that as much as possible. As an example many practitioners were caught by surprise when software became patentable under European practice and their patent applications did not have basis for introducing claims to it.

3. The ‘academic’ approach looks for clear principles with which to understand something. Patent laws and decisions seemingly provide such clear principles. However what might not be appreciated is that the practical interpretation of laws and decisions can change, particularly where concepts such as novelty and inventive step are involved. In addition it can become clear that certain decisions were not correct, and will not be followed.

4. Analysing patentability is complicated, and so different people will have different approaches, coming to different conclusions. Different Examiners, Opposition Divisions and Boards of Appeal are capable of deciding the same things differently. That is part and parcel of legal systems where it is observed that many findings are reversed on appeal and so often decisions on points are not unanimous where there is more than one person who contributes to it.

5. Oral proceedings at the EPO will sometimes determine the outcome of difficult examination proceedings, and usually determine the outcome of opposition proceedings. However many factors will unduly influence that outcome, in particular how the individual attorneys performed on the day: if they are caught by surprise, misunderstand a point or misread what the Division or Board is thinking they may lose the case. That decision would reflect what happened on the day, rather than what should have happened based on case law. Parties taking part in oral proceedings should recognise this can happen, and when one is reading decisions of the Boards of Appeal to determine case law one must understand how such ‘human’ factors might have impacted the conclusion.

6. As well as dramatic changes happening in case law and practice (as mentioned in point 2 above) there are always small changes happening in patent practice. Usually practice seems to get more strict (such as claiming homologues of nucleic acids), but it can also become more lenient (such as the EPO becoming more lenient on added matter recently).

7. It is often difficult to give advice to clients, particularly on the chances of success or the scope of claims that might be gained in examination. Examiners can raise objections that were not predicted, and whether or not basis is available for the required amendments is then a matter of luck rather than justice. Whilst clients prefer more certain answers, that certainty will often not reflect the reality of the situation.

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