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.
You may also wish to see related posts 10
Observations on the Complexity of Patents and Top
10 Problematic Things for a Patent Attorney to Advise On.
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