These tips are intended to assist patent attorneys when
producing circulars for their clients on patent decisions. The big law firms with specialist news teams
will produce reports very quickly of patent decisions. However patent attorneys can still provide a
valuable service in producing more considered and detailed reports which, though
they take longer to write, are probably more helpful to their clients. The tips are written from the perspective of
a UK Patent Attorney.
1.
The significance of the decision. Sometimes in the wealth of detail, the
significance of the decision is forgotten. Simply summarising a decision might not be
enough to bring out the impact it will have, such as the way that existing
practices might need to change.
2.
The practical implications of the decision. Clients need to know the practical
implications of the decision, for example how it might impact on what can be
claimed or how it might contribute to the decision of whether to file in that
territory.
3.
The background to the decision. It can be helpful to provide a history of the
case or the sector to provide the context for the decision. The previous case law and why it was inadequate
may also need to be discussed.
4.
Is it right or wrong? Decisions can be
wrong. It is useful to point that out to
clients, whilst perhaps also indicating whether the decision can be overturned
or if future more correct decisions can affect the situation.
5.
Wider issues.
Sometimes decisions can shed light on wider issues. For example they can show a trend that might
be happening in the case law or show how the EPO Boards of Appeal think
differently from the UK Courts.
6.
Psychological points. Decisions are written by human beings and so
their psychology will affect the outcome.
For example it is sometimes possible to see instances where the strong
opinions of a judge or Board lead to loss of objectivity.
7.
What the decision does not say. Sometimes it is possible to see what the
decision avoids saying, perhaps to avoid going into unnecessary
complications. Case law does not have to
provide all the answers. It just has to
keep the system functional. There can
be unforeseen consequences of making the decision too broad-ranging.
8.
See the leeway the decision provides. Sometimes it is possible to see areas which
the decision leaves open. For example
the decision might not want to comment on issues where the moral perspectives
or technology might change substantially.
9.
Future implications. A decision can have many different future
consequences, for example on the way that future case law will develop. Certain technology areas might suffer given
that patent protection is no longer available or weakened due to the decision.
10.
New questions to ask. Asking different questions about the decision
can open up new perspectives. For
example asking whether the decision could have been decided in other ways,
whether lobby groups had influence or whether it was too cautious might
highlight nuances in the decision.
