Patent Law

Procedure for grant of a patent Patentable subject matter Novelty, Inventive step Sufficiency of disclosure
Bengt Domeij

Patent paradox
Between 1992 and 2002, the number of patent applications filed in Europe, Japan and the United States increased by more than 40%. But patents are essential in only a few industries most notably, pharmaceuticals and some branches Of the chemical industry. In other industries, the standard appropriability mechanisms include: Lead-time or first mover advantages; Trade secrecy/ tacit knowledge.

Patent Cooperation Treaty, 1970

Application costs in 8-10 countries: 5060.000 euros. Very expensive. Try to centralize examination! Preliminary assessment of patentability with PCT-application (international phase) Decision in national/regional phase Can stay in international phase for 31 months.

European Patent Convention, 1973

A step further. Also grant of patents. 31 member countries, incl. Latvia Not EU-institution. Based on int.conv. Only have to pay fee and translate the patent in the designated states.

European Patent Convention

Article 1 EPC: A system of law, common to the Contracting States1, for the grant of patents for invention is hereby established. European patent applications fall apart into separate national parts after grant. What are the legal consequences for the national patent offices?

Filing a patent application

Drafted by patent agent, typically. 10-100 pages. Summary (first page), Description (major part) and Claims (minor part). Article 60 EPC: (1) The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employee is mainly employed

Ownership of new technology

Inventor is owner, irrespective of nationality established in the Paris convention from 1883. Transfer through contracts. Teachers exemption apply in some countries. Necessary to include all scientific personell in the contract. In joint ventures it is necessary to regulate: who will apply for patents, who will maintain the patents and who can use the technology.

The Patent Office and ownership

Article 60(3) EPC: For the purpose of proceedings before the EPO, the applicant shall be deemed to be entitled to exercise the right to a European patent.

Inventor?
What if two inventor invent the same thing? Who gets the patent?

Description
Description: Must allow a person of average skill to practice the invention, Art. 83 EPC. Describes the state of the art and what has been changed. The invention is presented as an alternative or improvement on the state of the art. http://se.espacenet.com/

T 226/85, OJ EPO 1988 s. 336

Even though a reasonable amount of trial and error is permissible when it comes to the sufficiency of disclosure in an unexplored field or, - as it is in this case -, where there are many technical difficulties, there must then be available adequate instructions in the specification or on the basis of common general knowledge which would lead the skilled person necessarily and directly towards success through the evaluation of initial failures or through an acceptable statistical expectation rate in case of random experiments.

Claims
Most important part Defines the scope of protection Art. 69 EPC: The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims. Negotiation between applicant and examiner

Claims EP5129
1. A compound of formula

or a therapeutically acceptable salt thereof in which R1 and R2 are the same or different and are hydrogen, alkyl, halogen, methoxycarbonyl, ethoxycarbonyl, alkoxy, or alkanoyl in any position, R6 is hydrogen, methyl or ethyl, R3, R4 and R5 are the same or different and are each hydrogen, methyl, methoxy, ethoxy, methoxyethoxy or ethoxyethoxy, whereby R3, R4 and R5 are not all hydrogen, and whereby when two of R3, R4 and R5 are hydrogen, the third of R3, R4 and R5 is not methyl.

Art. 83 EPC T 409/91 (OJ 1994, 653)

The invention at issue related to mineral oils containing paraffin wax such as diesel fuel, defined in the claims by a average particle size below a certain number. In the description of the application in suit the use of certain additives was presented as an essential constituent of the fuel oil composition, but this feature was missing in the claims. The Board found that the claims defined some other invention which was not supported.

Pre-grant amendments
It is standard practice that claims are amended during prosecution, i.e. before grant of the patent and in response to prior art not originally considered by the applicant. Amendments are allowed as long as no new technical information is introduced into the application. Amendments need to be directly and unambiguously derivable from the application as filed. In addition, obvious mistakes may be amended, even if not disclosed.

EP425547
Description:

Claim: Emptied through the bottom

Infringing product 1?

Infringing product 2?

Patentable subject-matter, Art. 52 EPC

(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.

T 870/04 (2005-05-11)
[A] vague and speculative indication of possible objectives that might or might not be achievable by carrying out further research with the tool as described is not sufficient for fulfillment of the requirement of industrial applicability. The purpose of granting a patent is not to reserve an unexplored field of research for an applicant.

Patents on computer programs

Copyright on the code Patents on a new function. Code is not mentioned in the claims. What are the difference in scope of protection between a copyright and a patent on a computer-related invention?

Computer-implemented inventions
Program-controlled processes. Unproblematic field automotive and mechnical engineering processes with use of a computer. Data processing creates uncertainity. Inventions in the fields of: digital data processing, data recognition, digital representation, data storage.

Amazons one-click patent

In 1997, Amazon.com submitted a patent application entitled "A Method and System for Placing a Purchase Order Via a Communications Network." On September 28, 1999, Amazon was granted United States Patent Number 5,960,411. The patent describes an online system allowing customers to enter their credit card number and address information just once so that on follow up visits to the website all it takes is a single mouse-click to make a purchase from their website. Sixty to sixty-five percent of online shopping baskets are abandoned before they are checked out.

Amazon v. Barnesandnobel
Just twenty-three days after the 1-Click Patent was issued, Amazon.com filed a lawsuit in the federal district court of Seattle against Barnesandnoble.com, a rival online bookseller and their largest competitor. Amazon's goal was to stop Barnesandnoble from using their "Express Lane" shopping process on the grounds that it infringed upon Amazon's patented 1-Click business method.

US Court of Appeal
Infringed, but not valid because of a webpage on the application day that allowed you to see a graph by clicking on a stock symbol for 50 cents. This was finalizing a purchase with one interaction.

No technical contribution T 931/95, September 9, 2000 Pension benefits system

The improvement envisaged is an essentially economic one and therefore cannot contribute to inventive step. The assessment of inventive step has to be carried out from the viewpoint of a software developer or application programmer.

T 315/03 (OJ EPO 2005 s. 246) Onco-mouse

A transgenic non-human mammalian animal whose germ cells and somatic cells contain an activated oncogene sequence introduced into said animal, or an ancestor of said animal, at a stage no later than the 8-cell stage Not animal variety or immoral.

T 866/01 (2005-05-11)
The patenting of an invention does not grant the patent holder a positive right to exploit the invention but rather the right to exclude others from exploitation during a limited period of time. Conversely, the refusal of patent protection does not mean that the exploitation of the invention is forbidden. Accordingly, patent law is generally not a legal instrument for averting or preventing abuses or risks associated with the exploitation of an invention

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Novelty Art. 54 EPC

(1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

Non-medical second use G 6/88 OJ EPO 1990 s. 114

Compound added to oil known to reduce friction, was shown to also prevent corrosion (rust). Under the EPC, a hidden or secret use, because it has not been available to the public, is not a ground of objection to the validity of a European patent. [T]he Enlarged Board would emphasise that under Article 54(2) EPC the question to be decided is what has been made available to the public: the question is not what may have been inherent in what was made available

Selection inventions EPO Guidelines C IV 7.4.

In considering novelty it should be borne in mind that a generic disclosure does not usually take away the novelty of any specific example falling within the terms of that disclosure, but that a specific disclosure does take away the novelty of a generic claim embracing that disclosure, e.g. a disclosure of copper takes away the novelty of metal as a generic concept, but not the novelty of any metal other than copper

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Inventive step Art. 56 EPC

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. EPO Guidelines C IV 9.4: The term obvious means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art

EPO Guidelines C IV 9.4

Thus the question to consider, in relation to any claim defining the invention, is whether at the priority date of that claim, having regard to the art known at the time, it would have been obvious to the person skilled in the art to arrive at something falling within the terms of the claim. If so, the claim is bad for lack of inventive step. The term obvious means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art.

T 192/82, OJ EPO 1984 s. 415

The skilled man must be free to employ the best means already available for his purposes, although the use of means leading to some expected improvements may well be patentable in relying on an additional effect, provided this involves a choice from a multiplicity of possibilities. The lack of alternatives, in this respect may, therefore, create a one-way-street situation leading to predictable advantages, which remain obvious in spite of the existence of some unexpected bonus effect.

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Infringing acts
A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent: (a) from making, offering, putting on the market or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes; (b) from using a process which is the subject-matter of the patent ; (c) from offering, putting on the market, using, or importing or stocking for these purposes the product obtained directly by a process which is the subjectmatter of the patent.

Pioneer v Warner Music Court of Appeal 28/11-96

A method for forming "a stamper for use in moulding optical disc replicas It is not correct to say that the finished discs are identical copies of the masters. [T]he finished disc differs in material from the master and is the result of three further stages of production. From each of those stages emerges a new and different product which is a necessary instrument in the production of the finished disc. Neither the master nor any of the intermediate products is capable of performing the same function as the finished disc, in illustration of which it is only necessary to observe that none of them can be put into the compact disc player and played in the home.

Article 9
Limitation of the effects of the Community patent The rights conferred by the Community patent shall not extend to: (a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes relating to the subject-matter of the patented invention;

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Exemptions
(a) acts done privately and for non-commercial purposes; (b) acts done for experimental purposes relating to the subject-matter of the patented invention; The rights conferred by a Community patent shall not extend to acts concerning a product covered by that patent which are done within the territories of the Contracting States after that product has been put on the market in one of these States by the proprietor of the patent or with his express consent

Scope of protection The fundamental problem

What latitude is there for a finding of infringement, if what the defendant is doing does not seem to be precisely what is claimed? Companies constantly try to avoid the patents of others. This leads to valuable new technical developments, but can also lead to a waste of resources and possibly to a loss of faith in the patent system.

Infringement procedures and sanctions

Procedural costs (average) Scandinavia: First instance $120,000 Second instance additional $50.000-100.000. UK: $600.000-1.200.000 USA: $1.000.000-1.500.000 Injunction and Damages (compensation for normal licens fee, erosion of market position, loss of future income)

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Considerations before claiming patent infringement

Other actors in the market will be affected by the outcome of the case. If the patentholder loses the case, it will be open to all to use the technology. Uncertainity is reduced. Preliminary injunctions are seldom attractive, due to the damages that may occur. Consider carefully any possible countermeasures from the defendant in other areas, e.g. other patents, research cooperation or purchases that the defendant is making.

Article 69 EPC
The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

[T]he scope of protection of a process patent is not restricted to methods that in every respect implement the instructions specified by the contents of the relevant claim in the patent. Modified methods are also covered as a rule if their embodiment has the same or essentially the same effect and could be found as a solution to the problem underlying the invention by the person skilled in the art using his specialist knowledge and applying considerations that take as their starting point the meaning of the patent claims, i.e. the invention protected by the claims.

BGH Bratgeschirr, June 28, 2000

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BGH Numbers in claims (Custodiol II, IIC 2003 p. 197)

Invention was improved solution for protection of organs during surgery. Claim 1 specified 11 additives defined in millimol per liter, each with tolerances resulting in upper and lower limits. One disputed feature: Magnesium chloride 10 +/- 2 mmol/l. Contested product used 4 mmol/l of the additive.

Bundesgerichtshof, Custodiol II, IIC 2003 p. 197

In the case of an embodiement that departs from the semantic contents of the patent claims, there may be a use if the skilled person in the art, applying considerations based on the semantic content of the invention protected in the claims, could, on the basis of his specialist knowledge, recognize that the modified means used in the contested embodiement are of the same effect for the solution of the problem underlying the invention.

Bundesgerichtshof, Custodiol II, IIC 2003 p. 197

The magnesium chloride concentration did not affect the intended calcium-antagonist effect. But still no equivalence, because the skilled person would have thought that the tolerance in the claim was critical due to the sensitive nature of pharmacological treatment of the heart. The patentee bears the responsibility to set out what he wants to protect in the claims.

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Bundesgerichtshof, Custodiol II, IIC 2003 p. 197

A skilled person will attach a higher degree of certainity and clarity to figures, dimensions or ranges than to verbal descriptions of the elements of the teaching. As a matter of principle, an unambigous figure determines and delimits the protected object exhaustively in this respect; figures above or below are therefore as a rule no longer to be included within the subject matter of the patent claim. This will apply at least when a skilled person know it is a critical value (referred to Catnic).

Amgens patent, claim 1

"A DNA sequence for use in securing expression in a procaryotic or eucaryotic host cell of a polypeptide product having at least part of the primary structural [conformation] of that of erythropoietin to allow possession of the biological property of causing bone marrow cells to increase production of reticulocytes and red blood cells and to increase [haemoglobin] synthesis or iron uptake, said DNA sequence selected from the group consisting of: (a) the DNA sequences set out in Tables V and VI or their complementary strands; (b) DNA sequences which hybridize under stringent conditions to the protein coding regions of the DNA sequences defined in (a) or fragments thereof; and (c) DNA sequences which, but for the degeneracy of the genetic code, would hybridize to the DNA sequences defined in (a) and (b)."

House of Lords Kirin-Amgen v Hoechst, 21 October 2004

Lord Hoffman approved of the following statment in an old UK case: The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not to extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.

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Kirin-Amgen v Hoechst
The object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee? Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim.

House of Lords Kirin-Amgen v Hoechst

The House of Lords ruled that the method for producing Transkaryotic Therapies' gene-activated erythropoietin product, epoietin delta, did not infringe Amgen's patent. Based on the following argument:

Lord Hoffman
The specification appears anxious to point out that the invention covers the use of mammalian cells which already have an EPO gene of their own: "It will be understood that expression of, eg, monkey origin DNA in monkey host cells in culture and human host cells in culture, actually constitute instances of 'exogenous' DNA expression inasmuch as the EPO DNA whose high level expression is sought would not have its origins in the genome of the host." That certainly suggests that the patentee regarded it as essential to his invention that the DNA of which high level expression was sought should not have its origin in the genome of the host cell. That would clearly exclude the DNA sequence which expresses GA-EPO, which forms part of the genome of the host cell. For these reasons, which I find entirely convincing, the judge came to the conclusion that the person skilled in the art would not regard the endogenous coding sequence which expressed GA-EPO as falling within claim 1.

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