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Disengage the Simulator – G1/19 Oral Proceedings are Imminent
Photo by Markus Spiske on Unsplash
Elton John was of the opinion that sorry seemed to be the hardest word. That may well be true in general life, but in the European Patent Convention, that hardest word is “technical”. It underpins everything, yet is never defined – apparently, you know it when you see it1. Much of the challenge it provides results from the need to engineer a definition of “technical” which circumvents the exclusions from patentability set out in Article 52(2) EPC. These exclusions are treated as relating to “non-technical” subject matter by the EPO – such subject matter is excluded from patentability but (as set out in Article 52(3) EPC) only to the extent to which a European patent application or European patent relates to such subject-matter or activities “as such” (two more of the harder words in the EPC).
As a result, many inventions as claimed relate to a mix of “technical” and “non-technical” subject matter. The central case in this area is T 0641/00 (Two identities/COMVIK), which indicates that not only can “non-technical” subject matter not contribute to inventive step unless it somehow contributes to technical character, it can even be used to establish the objective technical problem solved by the invention (whether or not it is found in the prior art). This can lead to a higher “step” in arguing for inventive step, and determination over whether specific features are technical can be a key battleground in patent prosecution before the EPO.
This is the context for the referral of G1/19 to the Enlarged Board of Appeal. This referral was made by the Technical Board of Appeal in T 0489/14, which is an appeal from the decision to refuse EP1546948 – the best place to find all the documents for this case is the European Patent Register entry for EP1546948, including a large number of amicus briefs. (more…)
Patent Amendment in the US and Europe
This article compares amendment of patent applications before the USPTO and the European Patent Office (EPO), focussing on the differences in law and practice between these jurisdictions. Adaptation of a PCT application for regional phase entry in each jurisdiction is also discussed. References are made to the EPO Guidelines, which is the main source for European Patent Office practice. Some guidance is also provided on differences between claim interpretation in Europe and the US. (more…)
Nobody Knows Just We Two – Patents, Sales and Confidentiality
The differences between US and European patent law can often trip up practitioners unless they are careful – while most European patent law is (fairly) well harmonised, US patent law is quite different. While the two are closer in some ways than they have been – obviousness in the US has become much more like inventive step in Europe since KSR v. Teleflex, for example – there are some sharp differences. One subtle one is the interplay between confidentiality and sale. The recent decision in Helsinn Healthcare S.A: v. TEVA Pharmaceuticals USA INC., et al., reported here in IPKat, shows that one very real trap still exists. (more…)
Somebody Else’s Problem – SEPs and the Commission
Small quantities of excitement have been created by the “Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee” entitled “Setting out the EU approach to Standard Essential Patents”, linked on the Commission’s Patents and Standards page. Given the largely innocuous content of the Commission-originating document and the complexity of EU decision making processes, the title may well be the most contentious thing in the document. However, there are good reasons why the content is a little blander than might have been hoped, as set out in this article by Richard Vary (a distinguished standards warrior from his time at Nokia). (more…)
Cure is the New Disease – Poisonous divisionals, red-shirts and plums
Watch out for the Gorn (Photo by Ladyheart at Morguefile.com)
“They’re dead, Jim.”
Like the red-shirted crewman in the original series of Star Trek*, the poisonous divisional has apparently breathed its last, though in this case in the comfortable home (for the time being) of the Boards of Appeal in the Isar building of the EPO, rather than a few miles outside of Los Angeles at the Vasquez Rocks where pretty much every episode of Star Trek appears to have been partially filmed.
In this case, the fatal weapon was not a phaser, but a blunt instrument of similar vintage – FICPI Memorandum C (M/48/I) of the travaux préparatoires to the EPC 1973. The analysis of partial priority in this document was used heavily by the Enlarged Board in G1/15 (see 5.2.1 in particular) to indicate how partial priority was embedded in the European patent system, and how it allowed a resounding “No” to be given to the first question referred to the Enlarged Board of Appeal, repeated in all its tongue-tripping elegance below: (more…)
Logic and Proportion – Enfish and Resolving the Mysteries of Alice
The US software patent environment is very different in the year following Alice v. CLS than in the year after State Street v. Signature . It was expected that when the Supreme Court finally had to take a view on eligibility of subject matter, things would change. After years of waiting for the other shoe to drop, it did (in a strange multi-stage process involving Bilski v. Kappos, Mayo v. Prometheus and Alice) – but nobody seems terribly sure where it landed. (more…)
Law in the Global Marketplace – Hogan Lovells Annual Patent Conference
Hogan Lovells demonstrated its global reach by holding its annual UK patent conference in London as a joint session with its “Law in the Global Marketplace” conference in California. A presentation on the current status of the UPC was made from London, an update on US patent legislation was made from California, and a transatlantic panel session followed (chaired from London by a German). The session was interesting, and featured a variety of views leading to an open discussion. Highlights follow below. (more…)
Exotic Creatures of the Deep – Huawei Technologies v. ZTE at the CJEU
Standards Essential Patent (SEP) matters are the giant squid of the intellectual property ocean. Enormously powerful and capable of making or disrupting the commercial plans of some of the world’s largest companies, they prowl a zone so mired in technical complexity and commercial confidentiality that their mighty struggles are largely obscured from view, despite their potential to swing hundreds of millions – even billions – of dollars from one group of companies to another. Under these circumstances, it is not so surprising that a universally respected commenter on IP matters openly wondered what all the fuss was about after delivering an impeccable summary of the most important decision in this area for several years. At first sight, the lack of excitement is understandable – the decision just seems to be a lot of stuff about who should do what when and looks about as thrilling as the rules for filing a tax return. Let us, in the manner of James Cameron descending into the Challenger Deep, see if we can shed a little light on the ecosystem of the sea bed and explain why this decision might matter. (more…)
EPO Enlarged Board of Appeal on Clarity: Clear As It Has Ever Been
The Enlarged Board of Appeal has now issued its Decision on referral G 3/14. G 3/14, originally reported in IPcopy here and with subsequent updates, most recently here, relates to how issues relating to clarity should be considered in opposition and opposition appeal proceedings. The Enlarged Board was faced with a choice between a “conventional” approach in which clarity can only be considered where the lack of clarity lies in the amendment (a line of cases which the EBA considered to lead from T 301/87) and a “divergent” approach allowing a wider power to examine for clarity (a line of cases considered to lead from T 1459/05 – the EBA drew particular attention here to T 472/88). The Enlarged Board came down clearly on the side of the conventional approach, but also went beyond the circumstances of the case referred to discuss the boundary between claims that should and should not be examined for clarity. (more…)
Some Reality Beyond the Gilded Cage – Limelight Networks v. Akamai Technologies
It’s the Summer of Patents at the Supreme Court of the United States of America! After a number of years when SCOTUS did its level best to ignore all patent matters, the coming into force of the America Invents Act and increased attention to patent issues in general commercial life seems to have created a climate in which the Supremes consider that their guidance on matters of patent law is more frequently needed – there is also a suggestion that the Supreme Court is less than impressed with recent CAFC decisions. One of the bumper crop of recent cases is Limelight Networks, Inc. v. Akamai Technologies, Inc., available here. Limelight addresses one of several issues relating to infringement of claims relating to activities involving multiple parties communicating electronically – can there be inducement to infringe a claim if no single party has directly infringed that claim? (more…)
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