INDEX

New decision G4/19 on double patenting

The Enlarged Board of Appeal (EBoA) at the EPO has in a recent decision of 22 June clarified the principle of the prohibition on double patenting. The principle of the prohibition on double patenting excludes two patents being granted to the same applicant for one invention.

The Examining Division applied this principle and refused European patent application No. 10718590.2 under Articles 97(2) and 125 EPC on the ground that the applicant already had a patent for the same invention, following an assessment that claim 1 was “100% identical” to the subject-matter claimed in the patent from which 10718590.2 claimed priority.

The decision was appealed by the applicant, who argued in his appeal that the prohibition did not apply to a situation of internal priority. The applicant argued that decisions G 1/05 and G 1/06 on double patenting related to divisional applications and therefore applied only in that context and not in the context of internal priority. Decision T 1423/07 recognised that the applicant had a legitimate interest in obtaining two patents with the same scope, a longer term of protection being available to the applicant as a result of the claiming of an internal priority, since the term of the patent is calculated on the basis of the filing date of the patent application. The applicant therefore argued that there was no proper legal basis for prohibiting double patenting, and that there existed a legitimate interest in obtaining a patent with a later filing date in order to increase the term of the patent.

The Technical Board of Appeal 3.3.01, which handles pharmaceutical matters, referred three questions on the prohibition on double patenting to the Enlarged Board of Appeal (T 318/14, OJ EPO 2020, A104):

  1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal, and are different conditions to be applied depending on whether the European patent application under examination was filed

  1. a) on the same date as, or
  2. b) as a European divisional application (Article 76(1) EPC)

      in respect of, or

  1. c) claiming the priority (Article 88 EPC) in respect of a

      European patent application on the basis of which a European

      patent was granted to the same applicant?

2.2 In particular, in the last of these cases, does an applicant have a legitimate interest in the grant of a patent on the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

After having analysed several provisions of the European Patent Convention with respect to their suitabilities as proper legal basis for the prohibition on double patenting, the EBoA concluded that Article 125 EPC, although providing that “a procedural provision which is absent from the European Patent Convention but which may be established with the help of a principle of procedural law generally recognized in the Contracting States”, may also extend to substantive issues. Therefore, from a purely systematic point of view, Article 125 EPC may provide a legal basis for the regulation of double patenting – whether this means permitting or prohibiting it – even though a consideration of substantive issues may be involved as well.

The EBoA was, however, unable to conclude that the prohibition on double patenting is a principle generally recognised in the Contracting States and therefore had to recourse to the preparatory documents of the convention (the “travaux préparatoires”) for an answer as to whether double patenting is permitted or prohibited.

According to the minutes of the Proceedings of Main Committee I during the Diplomatic Conference in 1973, point 665., a common agreement that double patenting was not possible was already reached. With regard to double patenting, the minutes state that:

In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.

The EBoA found that since the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognized principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, the European Patent Office was thereby not only empowered to apply this principle, but effectively also duty-bound to do so.

It was therefore concluded that a European patent application can be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and if it does not form part of the state of the art pursuant to Article 54(2) and (3) EPC. Question 1 was thus answered in the affirmative.

With regard to question 2.1, the EBoA concluded that the agreement in point 665. of the minutes of the Proceedings of Main Committee I during the Diplomatic Conference in 1973 is not to be read as a legal provision in the usual sense, but rather as what it was intended to be, namely the expression of a general principle. Therefore, the agreement cannot be expected to have been formulated with the precision of a legal provision. Against this background, the EBoA considers that the requirement of the “same date” as stated in point 665. is to be understood as the same “effective date”, such that applications with a common priority are also covered by the prohibition of double patenting.

The EBoA further noted that in the context of divisional applications, a provision prohibiting claims directed to the same subject-matter had been deleted from the draft EPC, and that this provided support for the prohibition being of a more general nature. In Article 137a(2) of the draft EPC relating to divisional applications, the wording “The claims of the earlier application and any divisional application shall exclude the matter for which protection is sought by any of the other applications” was removed. Although this could be construed as endorsing the possibility of claiming identical subject-matter, the German version of the minutes of the Proceedings of Main Committee I during the Diplomatic Conference in 1973 makes it clear that this deletion was made to prevent any inverse conclusion that only divisional applications had to be directed to different subject-matter, whereas other applications of the same applicant were permitted to claim the same invention.

The EBoA therefore considers that the preparatory documents do not point to any special circumstance or condition inherent in the identified constellations which would lead to the conclusion that any of the three constellations of question 2.1 should be treated differently from the others with respect to the prohibition on double patenting.

To summarize, the questions referred to the EBoA were answered as follows:

  1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant and does not form part of the state of the art pursuant to Article 54(2) and (3) EPC.

2.1 The application can be refused on that legal basis, irrespective of whether it

  1. a) was filed on the same date as, or
  2. b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
  3. c) claims the same priority (Article 88 EPC) as the European

      patent application leading to the European patent already

      granted.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

However, even though the EBoA with decision G4/19 has clarified the principle of the prohibition on double patenting, some questions remain unanswered:

  1. Does “same subject-matter” in the context of double patenting mean “identical subject-matter” rather than “mostly overlapping subject-matter”? If so, could an applicant make minor amendments to the claims of a second application to make the claims not identical to the claims already granted and thereby obtain a second patent with essentially the same scope of protection?
  2. Does “same applicant” mean that if, say, a divisional application is transferred to a subsidiary, then even identical subject-matter will not be considered double patenting?
  3. In its Reasons for the Decision, the EBoA considers that the reference to Article 97(2) EPC makes it clear that the referred question is restricted to (the applicability of the prohibition during) substantive examination proceedings under Article 94 EPC before the Examining Division. Hence, it seems that G 4/19 only applies to Examination and not to Opposition. If so, can the claims during Opposition be amended to an identical subject matter as an already granted patent?

 

INDEX

Germany adopts new patent law targeting patent trolls

Today, the German Bundestag adopts a new patent law that introduces the principle of proportionality in the patent law when it comes to patent injunctions. The reform of the patent law aims at putting an end to the abuse of the patent law by so-called patent trolls. Patent trolls do typically not secure patents in order to promote innovations, but in order to use them in a misappropriated manner as a potential threat towards other companies. Concerned about a production stop achieved with an injunction, companies often pay unreasonable amounts to these patent trolls.

A core element of the new law is that a court is not lot required to hand out injunctions automatically, but can take into account disproportionate hardship to alleged infringers or third parties when an injunction is to be enforced. The previous case law of the German Federal Court of Justice will thereby be anchored in law.

If for example the patent claims are upheld while an injunction is rejected by the court, the court would have to order the alleged infringer to pay reasonable compensation to the patent holder. The compensation should at least amount to what would have been paid as a normal royalty for the patent. The amount of the compensation may however be increased in case the alleged infringer failed to conduct appropriate due diligence, or it may be reduced in case the court deems the patent to have been acquired for the sole purpose of forcing the alleged infringer to pay disproportionate settlements under the threat of a patent injunction.

Read more: https://www.wsj.com/articles/germany-shuts-door-on-patent-trolls-11623397397

INDEX

Trademark re-filings deemed bad faith by the EU in MONOPOLY case

In landmark “MONOPOLY” case, EU vetoes re-filings of trademarks to prevent circumvention of the proof of use requirement.

SUMMARY

Hasbro, the American toys and board games conglomerate, famous for its board game MONOPOLY, has recently lost a landmark EU case. A decision by the European Union Intellectual Property Office (EUIPO) was upheld, leaving Hasbro’s EU trademark for “MONOPOLY” partially invalidated on the grounds of bad faith. The ruling is a major development concerning bad faith within trademark law.

THE EU LAW IN QUESTION

Within trademark law, an owner of a trademark must be able to prove that he or she has actually used the trademark within a certain period of years. If this cannot be proved, the owner may risk having the trademark invalidated. If the owner has re-registered a trademark in bad faith, the registration may get invalidated.

THE CASE

In 2011, Hasbro registered an EU trademark for the word “MONOPOLY”. Years before, Hasbro registered three other EU trademarks for the same word in the same classes for goods and services.

In 2015, a Croatian board game company, which owns a board game called “DRINKOPOLY”, filed a cancelation case against Hasbro’s 2011 registration of “MONOPOLY”. This on the basis that the mark “MONOPOLY” was invalid because Hasbro had acted in bad faith when filing the 2011 application. The Croatian company claimed that Hasbro’s application was a so-called “re-filing” of earlier registrations from 2009 and 2010 and that the main purpose of this re-filing was to circumvent the requirement of proof of use. The re-filing was therefore made in bad faith, the company claimed.

At first, EUIPO rejected the cancellation request from the Croatian company. However, after the company appealed the decision, the Board of Appeal decided that Hasbro had indeed acted in bad faith. The Board of Appeal therefore partially cancelled the 2011 registration. Hasbro appealed to the EU General Court.

THE FINAL OPINION OF THE GENERAL COURT

The Court firstly reminded on a general note that the aim of trademark law is to facilitate a system of free competition. Secondly, that in order to determine bad faith, account must  be taken of: i) whether a trademark registration is abusive or contrary to honest commercial practices, ii) the commercial logic underlying the filing of the application and iii) the chronology of events leading up to the filing.

The Court confirmed that repeat filings of the same trademark is not in itself prohibited, but if a trademark is re-filed to avoid having to prove use of an earlier trademark, it will constitute bad faith. This because it abuses the trademark system.

Hasbro claimed that the re-filing of the “MONOPOLY” trademark was made to make its portfolio management easier in terms of administration. A re-filing practice also commonly known as ”evergreening”. In addition, Hasbro claimed that the strategy was commonly practiced by many brand owners. (Hasbro basically excused itself by saying that everyone else was doing it as well).

The Court found that Hasbro had acted in bad faith. Hasbro’s filing strategy had deliberately taken advantage of the rules by creating a situation in which it would not have to prove genuine use of its trademarks. In addition, the Court rejected the argument that evergreening is widespread, the argument not being substantiated by any evidence.

HOW WILL THIS AFFECT YOU AND WHAT SHOULD YOU DO?

The decision has opened the door for attacks on re-filings of the same trademark on grounds of bad faith. You as a brand owner will therefore most likely have to rely on older trademarks more often and prove use of these older trademarks. This will increase costs. In addition, you as a brand owner will have to be more alert and strategic when deciding which prior rights to cite against third parties in order to avoid counterclaims based on bad faith. This goes both for EU trademark cases as well as for post Brexit UK cases, the UK courts presumably being inclined to follow a similar approach. A clear trademark strategy and portfolio management are therefore recommended.

Feel free to reach out to us should you have any questions or wish a discussion concerning your trademark strategy and brand protection.

FURTHER INFORMATION

Case T-663/19 (21 April 2021 Hasbro, Inc. v European Union Intellectual Property Office)

This news article does not intend to cover all trademark related issues to the case, bad faith, EU or UK law.  The above is only a brief summary of some issues covered and not to be regarded as actual legal advice.  Concrete and detailed legal advice should be obtained if you have any questions on the impact the case will have on your trademark situation and strategy.

 

INDEX

IP Brand Protection during COVID-19: Trends and risks

In this article, we highlight COVID-induced trends and risks that impact you as a brand owner. Secondly, we highlight steps that you can take to protect your IP rights in the new Covid context.

Businesses have positively adapted to Covid via new ways of operating, hereunder via their brand use and increased online selling. However, there has been a large increase in fraudulent uses of brands. One of the big challenges faced by brand owners is thus maintaining the reputation and value of their brands. Secondly, closure of government offices and courts is delaying companies’ abilities to register and enforce their trademarks. Lastly, there is seen a spike in attempts to create COVID-related trademarks and domain names.

In order to protect yourself, you as a brand owner should be vigilant during this period to e.g. i) monitor and take appropriate action against infringement and dilutive use of your trademarks, ii) clear and register trademarks in a timely fashion; and iii) monitor developments regarding COVID-related trademark and domain names.

COUNTERFEIT PRODUCTS AND SCAMS DUE TO INCREASED ONLINE RETAIL

E-commerce has spiked due to the global lock downs of physical stores. According to a EUROSTAT study, the proportion of internet users between age 16-74 in the EU shopped online in 2020 equalled 64%, Denmark having the highest share (89%). In some EU countries, e-commerce grew by as much as 30%.

On the one hand, this transformation is positive. On the other hand, it has led to a boom in counterfeit products and fake sites. Often, buyers cannot check the quality of the goods firsthand. It is often very difficult to verify whether the seller is legitimate. Consumers and business are therefore easily misled. Customs and border protection authorities have seen an uptick in counterfeit products. Obvious products include medical supplies, face masks, test kits. However, many different consumer goods are counterfeited or sold in a lesser standard. In addition, there is a boom in phishing scams, fake charitable websites, and legitimate products’ prices being unreasonably increased. These illegal activities impact brands negatively. They create consumer confusion and damage brand reputation and loyalty.

We recommend that brand owners

  1. resist the temptation to cut back on their IP protection strategies,
  2. review IP portfolios to ensure that they have the necessary trademark and design registrations as well as up-to-date notices filed with border authorities to streamline the process of dealing with counterfeit goods,
  3. consider protecting their brands on the internet via professional monitoring of domain names, social media, mobile apps, and marketplaces.

Deadlines – Clearance and Filing of Trademarks

Businesses are understandably focused on day-to-day operational challenges. However, they should still bear in mind that failing to follow normal trademark clearance and protection protocols can increase risks of trademark claims or loss of trademark rights at a later stage. Brand owners with trademark portfolios should consider how the crisis will impact their ability to prosecute and maintain their portfolios. 

On the positive side – Extensions

Trademark offices around the world have many places extended deadlines automatically or upon request. Some trade mark offices have extended deadlines regarding priority claims from a first filing or have relaxed the documentary requirements for filing of trade mark applications. Opposition deadlines have in some instances been extended. Extended timelines will in some cases be welcomed by brand owners. In on-going registry proceedings or litigation, brand owners can likely benefit from additional time to gather evidence from their business or licensees who have competing priorities.

On the negative side – More difficult to protect

Extensions will cause significant delays in publication or registration of applications. Certain steps in some application processes cannot be completed electronically, the result being a burden of applications to be published and registered.  This could in turn delay the abilities of brand owners to fully enforce their rights. It is becoming more difficult for owners to protect their trademarks through the normal litigation processes. Firstly, courts are curtailing certain operations, including in-person hearings. Secondly, not all types of deadlines and not all authorities have extended deadlines. Trademark owners seeking injunctive or emergency relief need to strategise wisely. Some courts will not be receptive and available to hear requests. Societal emergencies will perhaps be weighed heavier than the relevant case.

We recommend

Far from all countries are extending deadlines or providing relief from existing deadlines. We therefore recommend that you be proactive and meet deadlines as usual, if possible. This will avoid deadline build-up and heavy workload for you at a later stage.  It will also avoid possible challenges by third parties at a later stage to the legality of the extended deadlines. Extensions of deadlines do not necessarily apply to determinations of infringement or priority claims regarding trademark ownership. In addition to the prosecuting of existing brands, if you plan on introducing new brands, product names, or slogans, you should continue to clear those and timely file for trademark protection.

Boom in trademark applications and Domain Names including “COVID-19

Businesses may want a COVID-19-related domain name for a valid number of reasons. A lot of businesses are trying to capitalise on the pandemic. Trademark applications for COVID-19-related phrases and slogans have boomed. Many of these applications are related to clothing and accessories. However, brand owners should be aware that a successful application and registration will depend on various factors. The applicants must have a good faith intent to use the marks in commerce. Moreover, many of the terms will likely not be registered since they will be deemed too descriptive.

We recommend:

COVID-19-related applications should be carefully analysed, watched, and reviewed, especially if you or a competitor wishes to use the same or similar terms in marketing or advertising.

Risk of ”Non-Use” and what it means to you

In most jurisdictions, trademarks must be used genuinely to create a market for the goods/services for which the mark is registered. If the owner does not use the mark, a third party may revoke it on the basis of ”non-use. The owner can defend himself by showing that there are “proper reasons” for the non-use. Many consumer-facing businesses are not using their trademarks genuinely during lockdown, e.g. restaurant chains and hotels. At a first glance, the risks posed by a non-use attack appears to be low. In the European Union, for example, there must be no use in a period of five years. However, a real risk exists in case lockdowns continue, if a severe recession enters, or if the trademark has already not been genuinely used for some years. Some courts and offices, e.g. in the UK, have held that economic recession does not amount to a proper reason for non-use.

We recommend

If you reduce production/services during a recession, you risk exposing your trademarks. If the marks are revoked and new rights acquired by third parties, you as the trademark owner will be unable to resume providing those goods/services in the future under the brands. It is therefore recommended that you mitigate the risks of non-use attacks.

How may COVID affect protected designations of origin and geographical indications

Protected Geographical Indications and Protected Designated of Origin protect names of specific products in order to promote their unique characteristics that are linked to their geographical origins and traditional production processes, e.g. Champagne. On a negative note, with Corona lockdowns, many producers are struggling to comply with elements of the relevant product requirements. On the positive side, the EU has allowed temporary amendments to help producers. For example, the milking times for Parmigiano Reggiano have been extended. In order to ”get on the EU’s list”, a complex process has to be followed, which e.g. involves notification to the European Commission together with an explanation of why the amendment is necessary. More changes may come. We recommend therefore to stay up to date with the relevant regulatory developments via your legal experts and if necessary, to file for extensions in order to be granted a relevant extension.

Conclusion – Which steps should you take?

  1. Identify and pursue misuse of trademarks such as counterfeit goods or use in connection with practices that could negatively impact your brands;
  2. Set up brand registry accounts on online platforms and market places where you list your registered trademarks in order to prevent listing and sale of counterfeit trademark goods and to facilitate the removal of the goods;
  3. Set up watch services to ensure that your brands are not being misused, hijacked or combined online, hereunder with COVID-19-type terms;
  4. Record trademark registrations with custom and border protection authorities to develop anti-counterfeiting strategies so that officers at entry points will be able to identify infringing goods;
  5. Keep on top of trademark office deadlines and developments;
  6. Clear and register trademarks and advertising slogans in due time, since it could impact trademark rights down the line;
  7. Mitigate risks of non-use attacks, so that you will not end up being unable to use your brand for certain goods/services in the future;
  8. Stay up to date with relevant regulatory developments via your legal experts and file for extensions should you sell products that are protected based on origin or geography and you are struggling to comply with requirements due to COVID.

Links and sources:

EUROSTAT: Statistics Explained (https://ec.europa.eu/eurostat/statisticsexplained/) – 27/01/2021

This news article is meant for general information and discussion only. It is not a full analysis of the matters presented, and shall not be regarded as or relied upon as legal advice.

INDEX

Long Covid in the way we work

We have all had to adapt our way of working to the new reality we have lived in the last year. One significant change for those of us regularly doing oral proceedings before the European Patent Office (EPO) (and not living in the Munich area) is that we have not actually gone to the EPO since the beginning of the pandemic.

The EPO showed great initiative when they introduced the pilot project for conducting oral proceedings in opposition proceedings by videoconference (ViCo) in May 2020. Until then, it had only been possible to do oral proceedings by ViCo before Examining Divisions. Since it was a pilot project, oral proceedings by ViCo before Opposition Divisions were made dependent on the consent of the parties to the proceedings.

The conclusion in November 2020 was that only few oral proceedings (230-240) were carried out by ViCo in the first six months of the pilot project. This meant that a large number of opposition cases were left undecided. This seemed to be the main driver for introducing the measure from January 2021 that all oral proceedings were to be conducted by ViCo, independently of whether the parties consented or not. This is, in the context of the Covid-19 pandemic, understandable since endless delays of the proceedings would be denying justice to opponents and patentees alike.

The Boards of Appeal of the EPO did not introduce a blanket ban on oral proceedings in person in the same way that Opposition Divisions did and still, over the summer and autumn of 2020, conducted some oral proceedings in person. The Boards of Appeal also only conducted oral proceedings by ViCo with the agreement of the parties.

Similar to the measure introduced by the Opposition Divisions, the Boards of Appeal introduced new Article 15a of its Rules of Procedure, which allowed them to conduct oral proceedings by ViCo without the consent of the parties to the proceedings. Article 15a formally entered into force on 1 April 2021. However, when it was announced in December 2020, it was stated that Article 15a was merely a clarification of “an existing possibility”. One cannot help but wonder why, then, it was necessary to introduce Article 15a in the first place…?

These measures by both instances of the EPO are understandable in the context of the Covid 19 pandemic. An unacceptable backlog would be the result of not dispensing with the consent of the parties to have oral proceedings by ViCo. However, do they also make sense in a post-Covid world?

Before the pandemic, nobody entertained the notion of doing oral proceedings by ViCo, even though the same technology being used now already existed. From a common sense perspective, if you are going to try to persuade someone of something that they might not initially agree with, you would want to try to persuade them in person. Why would this be different now?

I don’t know anybody who is not tired of having meetings by ViCo. Most people will therefore undoubtedly go back to having meetings in person when it once again becomes possible (which, surely, it will). There is, however, no expiry date on the new Article 15a of the Rules of Procedure of the Boards of Appeal. Hence, oral proceedings by ViCo (without the parties’ consent) could continue indefinitely, despite the fact that everybody is craving in-person meetings.

The question also arises whether oral proceedings by ViCo are as good as oral proceedings in person. The Enlarged Board of Appeal (EBA) must try to answer this question in the proceedings pending as G 1/21. The exact question put to the EBA is:

Is the conduct of oral proceedings in the form of a videoconference compatible with the right to oral proceedings as enshrined in Article 116(1) EPC if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference?

In an amicus curiae brief, the association of Swiss and European patent attorneys (VESPA) provided research-based evidence showing that pleading by video is not as effective as pleading in person, and that oral proceedings by video may alter the outcome. I do not see how the EBA can ignore this evidence. Nevertheless, I fear that the most likely outcome of G 1/21 is that the question posed will be answered in the positive.

The epi, the association of European Patent Attorneys, have also filed an amicus curiae brief in G 1/21. They point to the fact that the President of the Boards of Appeal already, with the statement issued in December 2020, basically stated that oral proceedings by ViCo without the parties’ consent was acceptable. The President of the Boards of Appeal is also the Chairman of the proceedings in G 1/21. The epi very reasonably ask whether this gives the impression of impartiality, and whether the President of the Boards of Appeal should not recuse himself? As an additional detail, the oral proceedings before the EBA, involving the parties to the proceedings in the referring appeal, are to be conducted by… ViCo.

Personally, perhaps naïvely, I hope that the EBA are able to free themselves from the tunnel vision that Covid-19 can sometimes give and also think in terms of the post-Covid scenario in view of the evidence presented. The term “Long Covid” is used for those people who have overcome Covid-19, but who are nonetheless suffering from long-term consequences, such as loss of sense of smell, fatigue, etc. The EBA have the final say as to whether those of us regularly doing oral proceedings before the EPO have to suffer from “Long Covid” in the way we work.

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Digital Learning during lockdown

The past year has seen us spend countless hours in the digital world. We’ve had digital meetings, lunches, coffee talks, but we’ve also been faced with a new paradigm in digital learning, at least from the perspective of education in one way or another.

Over the last decade, several online courses and higher education programs have emerged from high ranking universities and the number of students enrolled in digital programs have increased immensely. The past year alone has forced the development of ways to go about digital teaching and learning, and the world of Intellectual Property Rights (IPR) is no exception. As an example, this year’s European qualifying examination (EQE) was entirely digital and could be sat from home or wherever it fitted the candidates.

Although digital learning makes participation in courses easier, it also imposes new challenges on participants.

Participating in teachings from a non-designated teaching environment may complicate the active participation in the course. Distracting elements, such as dirty dishes, piles of laundry or staying at home kids, may draw away your attention from the lecture.

For many years, our colleague Marianne Johansen has been an external lecturer at the University of Copenhagen where she has taught courses on the intricacies of IPR. Under normal circumstances, these lectures are given in an auditorium or classroom with 20-30 students. The possibility of students interacting with the lecturer and other students creates a dynamic and makes the teaching more vivid and inspiring for all participants. Last year the course became digital which meant that everything had to be re-evaluated.

Apart from educating the students in IPR, an important task of the course is to make the students curious on the subject and to give an understanding of the importance of IPR in their future jobs and in business in general.

How would teaching in a forum where you can’t see the participants and their reactions to the taught matter affect the dynamics of the lectures? How would tasks normally performed in groups be handled in the digital space? How can the focus of the participants be maintained when the participants are subject to increased distractions?

According to Marianne, the best way is to continuously adapt your teaching method as much as possible and try to involve the students on a regular basis.

In order to implement this in the digital format, a number of changes were made to the course.

Firstly, the length of the lectures was reduced to 30-40 minutes. Secondly, students were encouraged to interrupt the lecture either by chat function or by raising a digital hand, so that the teacher could stop and clarify specific topics or answer questions. Thirdly, each lecture was followed by a short break and a session of Q&A and/or quizzes on the taught subject. The quizzes enabled the students to see if they had understood the topic of the lecture and allowed the lecturer to obtain the required feedback on topics that had not been clear or understandable to the students. Fourthly, digital break-out rooms related to the lecture were introduced for group discussions.

By implementing these changes, Marianne experienced an active learning environment with a dynamic atmosphere in the digital learning space.

So here are our key take-away messages:

  • Keep sessions short
  • Interact with the audience using questions and quizzes – this can be used to evaluate your teaching
  • Use a chat function for two-way communication with the audience
  • Share the presented material
  • Use chatrooms and break-out rooms for group discussions
  • Remember that you cannot see the audience and the reaction from the audience – encourage the audience to interrupt by using the chat function or raising a digital hand

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Meet Philippe Benjamin Skow – the creative lawyer

On the 1st of March this year, Philippe Benjamin Skow joined the legal team at aera.

Philippe holds a Master of Law and has previously worked as a Legal Counsel at the successful compliance-software company CYBOT and as an Assistant Attorney at the Danish law firm Havemann where he advised within IP, Tech, Media Entertainment, and Corporate Commercial Law.

Besides his legal work, Phillippe is an acclaimed international concert violinist and has since the age of five played numerous solo concerts around the world. So how did he become interested in IP?

“Being brought up by an international attorney and a royal ballerina, law and the creative industries have been a natural part and passion since childhood. At age 2, I received my first violin, and from age 5 I earned my first money as a concert violinist from solo performances in the Tivoli Concert Hall and on radio and TV. During my law thesis I had the opportunity of diving into IP protection of business concepts within Tech and Entertainment. Having afterwards worked for a software company and studied computer science at Harvard, tech law has furthered an even bigger curiosity of the creative side of digitalisation. Not least of how IP in tech can secure and drive value” he explains and continues:

“My fields of expertise are trademarks, copyright and design, especially within tech, pharma, fashion and entertainment. I think speaking 6 languages and having a global background and network, makes me capable of understanding international clients and their needs and to render them efficient advice.”

As a legal consultant Philippe enjoys when a client sees the value of his work, no matter in which area or at which business level he is working:

“I love when sitting in a meeting and clients realise to which great extent IP can actually not only save, but also secure their hard work, and boost their business and value. In our team we work mainly with large Danish and international corporations, but also with startups and scale-ups across sectors. From pharma, shipping and energy over fashion to gaming and tech. I find it ever more fascinating and inspiring to work with tech, seeing how it drives, influences and improves our society” he elaborates before we jump to the unavoidable and big question:

Besides working as a lawyer, you are a professional violinist. How do you combine the two worlds and is there any synergy between the two jobs?

Philippe Benjamin Skow and a Stradivarius from the 17th century worth €10 millions

“Haha. I have always worked a lot. Becoming a classical violinist and performing internationally at a top level is very comparable to professional sports such as tennis. The 6-15 hours of daily practice and preparation from childhood is extreme and very detail focused. The performances are powerful and under intense pressure. Having been in that since childhood, it falls very natural having, in law, a preparation period with focus on the smallest nuances and details followed by high performance with communication in a concise, efficient and convincing manner under intense pressure. Secondly, having performed internationally for state leaders, large corporations and their leaders, cultural institutions and in media entertainment, I have had the pleasure of forming close relations to inspiring people across sectors, which is rewarding on all levels. Not least when I get the pleasure of connecting people on my path, adding value for them in a business context. Finally, analysing complex works of some of the world’s most brilliant geniuses harmonises with the analysis of complex law. Interpretation of music and forming legal arguments are highly creative, since one really has to think out of the box, see things from different angles and in a new light. Law and forming legal arguments are, to many people’s surprise perhaps, highly creative” he finishes before rushing back to work.

If you want to meet Philippe and the rest of the legal team at aera, please don’t hesitate to send us a message.

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Digital Meetings during lockdown

Staying in touch means the world to us!

One year ago, we hosted our last OPEN event before the lockdown due to COVID-19. The OPEN events are for creative people who value the benefit of meeting other creative people for a chat, a drink or even business. It doesn’t matter if they are interested in IPR or whether they are clients, non-clients or competitors. We believe that an open mind and social events facilitate constructive discussions and relationships.

Meeting face-to-face gives us the opportunity to learn from each other and experience what is behind the look. In face-to-face meetings, spontaneous conversations occur and the dynamic between people brings energy, creativity and progression into the room.

During the lock-down period, we have not had many face-to-face meetings. IP conferences – where you meet people you already know as well as new people – have been held digitally and have therefore mostly been relevant for attending the professional program.

However, what we have had are numerous digital meetings with our clients over Teams, Zoom, Cisco Webex, etc.. It has been of utmost importance that these digital meetings have been possible in order for us to keep in close contact with our clients.

The digital meetings have been indispensable. It has been so good to see each other and to discuss IP matters and exchange views on outstanding issues and the like.

Admittedly, digital meetings have advantages: you save money as no one needs to travel, only one person speaks at a time, you save time as the meetings are normally very efficient, and since you can see each other it is easy to see if you agree or disagree.

That being said, where are the dynamics, the spontaneity and the social benefits?

In an attempt to compensate for the missing face-to-face meetings, we developed aera bento box digital lunch. With this concept, we have found an alternative way of bringing digital meetings and meetings in person together. With aera bento box, we meet with our clients on Teams and have lunch together just as if we had invited our clients for lunch at a restaurant. We book the table (order the food) and of course we pick up the bill. Until now everyone has been thrilled about this new way of having lunch together and we really enjoy meeting our clients on this more informal basis.

Of course, we look forward to seeing everyone in person again, but when things get tight, we believe that it is important to look for solutions, just as we do in our approach to business.

 

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Simplifying Complexity: G1/19 Computer-implemented inventions are all treated equally at the EPO  – simulation inventions included

The G1/19 decision by the Enlarged Board of Appeal of the European Patent Office issued on 10 March 2021 provides some clarity for simulation inventions.

Many computer-implemented inventions or software can be illustrated by the below figure: input, output, and optionally input/output interactions during the computer-implemented process. An example of input may include measurement data. An example of output may include control signals for controlling a machine.

This figure shows:

in a simplified, non-exhaustive form – how and when “technical effects” or “technical interactions” may occur in the context of a computer-implemented process.

Source: EPO

To demonstrate a technical character, a technical effect of a simulation invention can take place within the computer-implemented process (e.g. by specific adaptations of a computer or of data transfer). The technical effect does not need to be only related to input (e.g. the measurement of a physical value) or output (e.g. a control signal for a machine). Further, a direct link with physical reality is not required.

The two-hurdles approach is valid and applicable to simulation inventions: The first hurdle is overcome when the claimed invention is carried out in a computer. The second hurdle is overcome when the distinguishing features of the claimed subject-matter from the prior art contribute to a technical solution for a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.

The Decision G1/19 confirms that the two-hurdles approach, which is already applied before the EPO for computer-implemented inventions, is correct and valid also for computer-implemented simulations.

As for any other computer-implemented invention, simulations may be patentable if an inventive step can be demonstrated based on features contributing to the technical character of the claimed simulation method. This is valid irrespective of the nature of the system or the process being simulated. For example, when the process simulated in an invention is seen as a non-technical process, the simulation of such process can contribute to the technical character of the invention. On the other hand, there may be situations where the simulation of a technical system does not contribute to the technical character of an invention.

The Decision G1/19 discusses “potential” technical effect vs “calculated or virtual” technical effect. Calculated technical effects of a simulated system, as well as algorithms used in the simulation process, can contribute to the technical character of the invention if they are related to its specific technical purpose.

The Decision G1/19 also confirms that simulations are to be treated in the same manner as any other computer-implemented invention. Simulation inventions do not hold

a privileged position within the wider group of computer-implemented inventions without there being any legal basis for such a privilege.

The Decision G1/19 clarifies that there is no need for the application of special rules regardless of whether a simulation is claimed as part of a design process or not.

A simple three-points conclusion is:

  1. A computer-implemented simulation of a technical system or process that is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer.
  2. For that assessment it is not a sufficient condition that the simulation is based, in whole or in part, on technical principles underlying the simulated system or process.
  3. The answers to the first and second questions are no different if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design.

Read more: www.epo.org/law-practice

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Attorney responsibility: Read the text carefully before you approve it

Acting as European patent attorneys on behalf of our clients, we appreciate the importance of carefully studying and understanding the content of all communications of the European Patent Office (EPO) sent to us as representatives of our clients.

A recent decision from the EPO underlines the importance of our responsibility, also in cases in which the EPO made the error. The decision relates to a case in which a patent was issued, but without any drawings. The applicant did not address this error in due time, and therefore, the error could not be corrected.

Prior to grant of a European patent application, the applicant must approve the text on the basis of which the EPO intends to grant a patent. The legal basis can be found in Rule 71(3) EPC. According to Rule 71(5) EPC,  the text is deemed to have been approved by payment of the grant fee and by filing of translations of the claims. Thus, the applicant should carefully study the text on the basis of which the EPO intends to grant a patent and request any corrections at the latest at the same time as responding to the Communication under Rule 71(3) EPC.

Recently, the Boards of Appeal of the EPO published a decision, T 0265/20, that relates to a situation where the Examining Division issued a Communication under Rule 71(3), requesting the applicant’s approval of the text within a four months deadline.

The text mentioned in the Communication under Rule 71(3) was approved, the patent was granted, and subsequently the patentee realised that the text approved was  incorrect,  the drawing sheets not being indicated by the Examining Division in the Communication under Rule 71(3). The drawing sheets were included in the application as filed and had not been changed during the prosecution of the application.

The patentee filed a request for correction and an appeal against the grant of the patent, requesting that the patent be granted on the basis of the text mentioned in the Communication under Rule 71(3) with the addition of the drawing sheets.

The patentee requested inter alia that the decision under appeal be set aside and the case be remitted to the Examining Division.

The main arguments of the patentee were that the text intended for grant indicated in the Communication under Rule 71(3) EPC was not the text on the basis of which the Examining Division intended to grant a patent. Given that the application documents forming part of the original application as filed contained drawing sheets 1/4 to 4/4, that the file history did not indicate the removal of any drawings, and that the references to the drawings still formed part of the description of the granted patent, it was clear that the drawings were intended to be part of the granted patent. The granted version therefore did not correspond to any text submitted by the appellant, nor did it correspond to any text agreed to by the same.

The patentee also argued that Rule 71(5) only applied when the applicant was in fact informed of the text that reflected the true will of the Examining Division.

The decision from the Boards of Appeal can be summarised as follows:

BA decision on a European patent application pursuant to Article 97(1) EPC complies with Article 113(2) EPC when it is based on a text submitted to the EPO or agreed by the applicant. Before the examining division decides to grant the patent, it shall inform the applicant of the text on the basis of which it intends to grant the patent (Rule 71(3) EPC). According to Rule 71(5) EPC, if the applicant pays the fee for grant and publication and files the translations of the claims in the other two official languages within a period of 4 months, the applicant shall be deemed to have approved the text communicated under Rule 71(3) EPC.

The concluding step in establishing the final text for grant is thus the approval of the text by the applicant. Without the applicant’s approval of the text intended for grant, there is no grant of the patent.

In the present case, it is undisputed that the applicant/appellant, upon receipt of the Communication under Rule 71(3) EPC indicating the text intended for grant, in which drawing sheets 1/4 to 4/4 were missing, made no comments. Instead, the applicant paid the fee for grant and publication and filed the translations of the claims in the other two official languages within the 4 months period.

Thus, the Board of Appeal concludes as follows:

  1. The appellant is adversely affected by the decision to grant a patent in the present case, as all of the drawing sheets as requested are missing from the text of the granted patent.
  2. It is not the content of the text intended for grant which triggers the deemed approval under Rule 71(5) EPC, but rather the applicant paying the fee for grant and publishing and filing the translations according to Rule 71(5) EPC. Thus the “true will” of the members of the examining division when editing the communication pursuant to Rule 71(3) EPC is of no relevance.

 

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New EU fund to support SMEs in protecting their IPR

Small and medium-sized enterprises (SMEs) based in the European Union are crucial for the European economy, and the COVID-19 pandemic affects the competitive position of these SMEs.  Accordingly, a fund under the European Commission’s new IP Action Plan was set up in December 2020 to help SMEs manage their IP assets.

There will be five application windows with different deadlines, however, it is recommended to apply as soon as possible since each application window will close as soon as the available budget is reached.

The second application window, covering reimbursements of up to a maximum of EUR 1,500 for IP pre-diagnostic services (IP scan) and/or trademark and design applications, opened Monday and closes on 31 May

The IP scan service may help SMEs decide what IP rights to apply for, how to develop their IP portfolios if they already have registered rights, and how to plan their strategies for the future.

Trademarks and designs can be applied for at one of the national intellectual property offices of the EU (national level), in the Benelux Office of Intellectual Property (covering Belgium, The Netherlands and Luxembourg; regional level), or with the EUIPO (covering all the Member States of the EU).

More information about the deadlines and general guidelines can be found here https://euipo.europa.eu/ohimportal/en/grants-sme-fund#call-for-proposals.

You are welcome to contact us for further advice on what service(s) to apply for.

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Meet European Patent Attorney Marianne Johansen – celebrating her first year with aera

Since Marianne Johansen in 1989, when working in a research group at the University of Copenhagen, came across the world of patents, she has been hooked on IP:

“After my Ph.D., I worked as an associate professor at the University of Copenhagen, Department of Pharmaceutics. During my research, I was part of a research group working with drug delivery systems, and we invented a drug delivery system based on dextrans. We wrote and filed a patent application and contacted companies that could have an interest in taking the project further. During this work, I experienced the contrast between scientific papers and legal documents like patent applications – a difference that I had not previously been aware of. Moreover, the huge amount of knowledge hidden in patent documents was a big surprise to me.

It created my curiosity for IP, and one of my friends held a position at an IPR firm and talked with passion about her work – thus, when a position became available, I applied for it – and I was caught with the same passion. The work is highly interesting, you work with highly skilled people and it never becomes routine. Your work is in front of the technology, and the IP regulation and practice change. All in all, you need to be alert” she explains.

With more than 30 years of IP work on her back, Marianne is one of aera’s most experienced attorneys, and looking back on that period, she enjoys the development of the focus on the business aspect within IPR:

“When I started working with IP, it was more or less only engineers who became patent attorneys, and the work was based primarily on relationships between foreign associates and the IP firm. Incoming work from local companies was sparse. In general, IP firms were not oriented towards the businesses of their clients.

At that time, I believe that the only IP firm that employed people with another scientific background and where local clients and their businesses were important was the firm where I was employed. In that firm, the innovative aspects of the IP business were top priorities and I believe that today, most of the IP firms in Denmark have more or less realised the importance of bringing business and IP together.”

This is in Marianne’s opinion central if you aim to become a good attorney:

“I believe the most important skills lie in the interface of business skills, technology skills, language skills, legal skills, and communication skills. Working in this interface is challenging and always exciting. I also believe that my background as an associate professor, working with research projects and researchers, gives me an excellent basis for discussions with inventors and for applying legal framework to technologies. Moreover, in my mind a patent application is not just a piece of technology put into a legal frame – it is an important business opportunity that must be seen as a tool for obtaining a desired business strategy.”

Marianne works for all kinds and all sizes of companies within the Life Science field. Naturally, her main focus is on patents, but synergies within all areas of IPR and strategy also play a big role in her work:

“My main interest has always been patents, but I value the importance of the synergies between all kinds of IPR in order to obtain the best possible IP protection. Thus, my interest is in the interface between IPR and exclusivity, and in the advantages obtainable using patents, designs, trademarks, etc. in combination.”

Another area is the strategic aspect – it concerns every aspect of IP and any time period within the development process. Due diligences, e.g. in connection with mergers, acquisitions or IPO’s, and freedom to operate evaluations are also important and enjoyable tasks.

“When a client’s IP is turned into a business success and the client realises the value of its IP, I find my work both meaningful and satisfying.”

During her career, Marianne has held several CEO positions, so we were extremely happy that she chose to continue her IP career at aera when she joined our company last January.

Here she explains why:

“aera is a relatively new IP firm established by a highly innovative and business-oriented team of European patent attorneys. I have worked with several of them in my previous positions and know that they have the right spirit and the talent to make aera an important player on the international scene of IP. I believe that aera has the ability and the will to be more than a traditional IP firm. My colleagues fully understand the importance of providing our clients with the best possible service, irrespective of whether it relates to IP in Denmark, Europe, the USA or other countries.”

Visit Marianne Johansen’s profile to learn more or get in touch.

 

 

 

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The CRISPR priority decision is out

ALL the applicants of a priority application must be named in a subsequent EP application

As discussed in a previous post, there were oral proceedings before EPO Board 3.3.08 on 13-17 January 2020 in appeal number T 844/18 in one of the so-called “CRISPR cases”. The written decision, which concluded that the patentee did not claim a valid priority, is now online. In the decision, the board confirmed the EPO’s use of the so-called “all-applicants approach” (in a simplified version):

  • A and B are applicants on the priority application.
  • A filed the subsequent application claiming priority from the priority application.
  • The priority is invalid because not all the applicants of the priority application were named on the subsequent application.

The board discusses in detail the meaning of the term “any person” in Article 87(1) of the European Patent Convention (EPC)/Article 4 of the Paris Convention (PC). The conclusion is that the term is not clear, but that it is established practice to require all applicants on the priority application to also be named on the subsequent application. Hence, abandoning the “all-applicants approach” would disrupt current practice, which in turn means (according to the board) that the patentee was faced with a heavy burden of proving the current practice wrong. The board found this burden not to have been lifted.

The board also considered the purpose and spirit of the Paris Convention as discussed in T 15/01:

  1. The right of priority is generally regarded as one of the cornerstones of the Paris Convention and was already incorporated in the original text of 1883 (cf Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969, Article 4, Section A(1), point (a); Ladas, Patents, Trademarks, and Related Rights, Vol. I, 1975, p. 456). Its basic purpose is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law.
  1. In the course of the revisions of the Paris Convention, several amendments were made to its priority provisions in order to enhance their flexibility and thereby ameliorate the legal position of patent applicants. It was considered that overly strict solutions would hardly be in accord with the spirit of the Union treaty which is aimed at fostering and encouraging inventive genius (cf Actes de la Conférence réunie à Washington du 15 mai au 2 juin 1911, Berne 1911, p. 45). In particular, the Paris Convention in its present version (Stockholm Act) explicitly recognises the possibility of claiming multiple and partial priorities (cf Article 4F) and guarantees the right to divide patent applications while preserving the benefit of the right of priority also for the divisional application (cf Article 4G Paris Convention). The same principles are reflected in the corresponding provisions of the EPC, ie Articles 76(1), second sentence, and 88(2) and (3).
  2. In the light of the above, the board disagrees with the view expressed in decision T 998/99 (point 3.1), according to which the international priority provisions contained in the Paris Convention have to be regarded as a body of exceptional rules which should be interpreted strictly. Rather, they have to be construed in a manner which ensures that the general purpose they serve, namely to assist the applicant in obtaining international protection for his invention, is fulfilled as far as possible.

The board agreed with these remarks but found that the Paris Convention does not aim to help others than the correctly determined “any person” and that it therefore did not help the patentee’s case.

The board also addressed whether it was competent to assess whether it was the correct (legal) person who had filed the subsequent application claiming priority. The board distinguished between the formal naming of applicants on the priority application and whether these applicants were in fact entitled to be named as priority applicants. The board found the EPO to be competent to assess the former and that the latter was not relevant for their decision.

Article 87 EPC also refers to a “successor in title” of the priority applicant. The board stated that the EPO requires evidence of succession in title, but that since no succession in title was alleged by the patentee, they did not have to review it. What remains unclear is what would constitute sufficient evidence (and what succession is in fact meant since the EPO is not required to assess entitlement to the priority application per se).

The board did not address the so-called “co-applicants approach” in their decision since it was not relevant for reaching the decision. Hence, the decision still leaves open a number of issues concerning the right to claim priority.

Further appeal cases that may clarify the EPO’s position on the right to claim priority are T 2749/18, T 1837/19, and T 477/19 (Aera is representing the patentee in the latter appeal). A decision in any of these cases is unlikely to be available for at least another couple of years.

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Meet US Patent Attorney Dan Fischer – our new colleague from New York

Last week Dan Fischer joined the aera team, bringing the total number of employees up to 24. Dan comes from his position as Partner at the IP firm Knobbe Martens, and is now settling in at his new home in Vesterbro, Copenhagen.

Dan grew up in Naperville, Illinois, close to Chicago, before he moved to California for law school where he finished his education and began working for Knobbe Martens. In 2017 he moved to New York City where he helped open and build Knobbe Martens’ new office near Time Square. This year showed another big change for Dan, moving to Europe and joining aera:

“I love to take on new challenges and opportunities and coming to aera just felt like the right type of opportunity. While I have great memories of the States, I am excited to get to know a completely new continent! I think it is important to experience new places to gain a fuller perspective of the world” he says, and continues:

“I first took a Scandinavian trip when I was in law school, where I visited Finland, Sweden, Norway, and Denmark. In fact, when I moved out here in September, I stumbled past the same bar I vividly remember from my law school trip!  Outside of that one trip, I admit I probably do not know Scandinavia too well… outside of IKEA of course.”

His interest in IP began after he graduated with an engineering degree: “I really enjoy learning all sorts of new technology and being a patent attorney allows me to see so much of that!  IP also allows me to use the many technical skills I developed in college, especially allowing me to understand the complex technology that these brilliant inventors come up with. I have worked in a number of different IP areas in my career, but I think medical devices are fascinating.  I relish being involved in such cutting-edge technology, especially when it comes to improving people’s lives.  In fact, at one point I thought about becoming a doctor before deciding on the law” he explains.

His best IP experience was also connected to his high interest in medical devises: “I found out that someone I knew had undergone a medical procedure using technology that I had helped do patent work on. I thought that was a crazy coincidence and made me feel like I was truly helping to make a difference!”

Overlooking his new city through the window from the aera office at the 18th floor, which of course is a big change from his former office in Manhattan: “Copenhagen is a beautiful city and quite a change from NYC. Everything feels a bit slower, in the best possible way. I have already purchased a bicycle and I love how bike friendly everything is with the dedicated bike lanes.  O, and I cannot wait to check out Tivoli” Dan says with a big smile on his face.

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No to Peppers – but you can keep Tomatoes and Broccoli

Yesterday, the Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) and in conclusion, plants and animals exclusively obtained by essentially biological processes are no longer patentable.

In a much-awaited decision, the Enlarged Board of Appeal of the European Patent Office yesterday settled several issues concerning both lawmaking and interpretation of the law. It adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process, thus closing a short-lived and highly controversial window of opportunity for patenting these products. A decision that will be applauded by most in the Plant-Breeders’ Community.

The Enlarged Board held the referral by the President of the European Patent Office to be admissible. The referral was made under Article 112(1)(b) EPC and concerned the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II), and in particular in view of new Rule 28(2) EPC in light of decision T 1063/18 which held that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC.

It found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. Thus, decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

In summary, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC is to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

Still, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board further ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date. In practical terms, if priority was claimed, the priority date is the date deciding if a pending application is exempt from Rule 28(2) EPC (point XXIX of G 3/19).

Read more:

The opinion

The non-legally binding press-release

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One (US) size does not always fit all

Most applicants seeking patent protection do not wish to limit themselves to obtaining a patent in just one country or region. It is therefore necessary to be aware of the practice not just in your own country or region, but also in other countries around the world. Even though many of the overall principles behind the patent laws around the world are the same, they can be implemented very differently.

A prominent example is added matter. The principle behind it is simple: the applicant should not be allowed to patent something that was not already disclosed to the public when the application was filed. However, the European Patent Office (EPO) is notoriously strict in applying this principle. When the EPO makes the assessment of whether subject-matter has been added to the original application, it uses the so-called “Gold standard” of direct and unambiguous disclosure.

This standard is much stricter than the standard applied at the US Patent and Trademark Office (USPTO). American applicants at the EPO can therefore be caught by surprise when amending their patent claims. One example of this is recent decision T 1362/15.

In this decision, a board of appeal of the EPO found added matter in claim 10. Claim 10 combined the features of the original claims 13, 14, 15, and 17. However, the problem was that the claims were drafted with a claim dependency where claims 14 and 15 depended from claim 13, and claim 17 depended from claim 15. This would, even under the EPO approach, without a doubt have been considered a direct and unambiguous disclosure of the combination of features from claims 13 and 14 on the one hand and the combination of features from claims 13, 15, and 17 on the other hand. But not, regrettably for the applicant, of the combination of all the features of claims 13, 14, 15, and 17.

This approach may be considered harsh, but it is one that applicants need to be prepared for. Ironically, the claim dependency of the original application was drafted in what might be called “US style” in that American practitioners tend not to draft claims with multiple dependencies (which results in higher fees at the USPTO), whereas European practitioners tend to draft dependent claims as depending from “any one of the preceding claims” (which does not result in higher fees at the EPO). Had the original claims in T 1362/15 been drafted in the “European style”, they would have complied with the strict EPO criterion.

The point here is that when we draft patent applications, we need to be aware of practice not only in our own jurisdiction, but also of practice in other jurisdictions where we may eventually file our application. Added matter is the most prominent example of when US applicants may be caught by surprise, but not the only one (priority, which was covered in this article, is another one).

It is of course not one-way traffic. European applicants often find that inventions already granted in Europe are found obvious at the USPTO by combining a high number of prior art documents (which is not done at the EPO). Another example is patent applications for inventions in the field of diagnostics. Patenting of these inventions in the US is tricky, to say the least. The advantage for Europeans, though, is that these problems do not necessarily have to be addressed already at the time of filing the original application.

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Is your priority a priority?

Most of the people who have been in contact with the patent system will be familiar with the concept of claiming priority from a previously filed application. Most of them will also be aware that it is the subsequent application that claims priority (and therefore an effective filing date) from the first application. However, claiming priority can be much more complicated than that. This is illustrated by one of the so-called “CRISPR” cases that over the past few years have drawn headlines in the world of IP.

The IPKat recently warmed up to the oral proceedings before EPO Board 3.3.08 on 13-17 January 2020 in appeal number T 844/18 by discussing the need for clarity on the so-called “co-applicants approach” when claiming priority at the EPO. The “co-applicants approach” is briefly explained by the following situation:

  • A is applicant on the priority application.
  • A and B file a subsequent application claiming priority from the priority application.
  • Since A and B are co-applicants on the subsequent application, they are allowed to claim (together) the priority right belonging to A.

This is, however, not the only issue surrounding priority that could use more clarity from the Boards of Appeal of the EPO. Indeed, the issue at hand in T 844/18 is actually the opposite of the “co-applicants approach” (in a simplified version):

  • A and B are applicants on the priority application.
  • A filed the subsequent application claiming priority from the priority application.
  • The patentee in T 844/18 (The Broad Institute et al. – “Broad”) argues that “any person” in Article 87(1) EPC should be interpreted to mean that any of A and B may claim the subsequent priority.

Decision T 788/05 and some subsequent decisions contradict Broad’s position. This is acknowledged in the preliminary opinion issued by the Board in T 844/18 (paragraph 38). However, the Board also acknowledges (paragraph 39) that allowing A to claim priority may actually leave B in a better position, since a lack of priority potentially leads to revocation (and hence nothing for B to reclaim), whereas a valid priority (and therefore, potentially, a valid patent) would let B recover his/her part in the patent. The preliminary opinion further seems to acknowledge that a strict formal approach to claiming priority could go against the spirit of the Paris Convention (on which the EPC’s priority system is based), which is supposed to make it easier to file patent applications worldwide.

Imagine the following situation:

  • A and B together file a priority application covering aspects X and Y of the invention.
  • A and B have a mutual (non-written) understanding that A owns X and B owns Y.
  • A year later, they therefore file two different applications, both of which claim priority from the priority application: A files an application directed to X, and B files an application directed to Y.
  • Under the approach of T 788/05, the priority could be considered invalid for both the subsequent applications.

Evidently, if A and B had done their homework and signed an assignment document, they would relatively easily be able to provide the necessary proof under the approach of T 788/05 that they are each other’s “successors in title” for X and Y, respectively. Another issue concerning the transfer of priority is that the transfer must be done before claiming priority (T 1201/14). Hence, A and B cannot assign retroactively. If, for whatever reason, A and B did not have time to complete the assignment before filing the subsequent application, another possible “fix” would be to file the two subsequent applications together and then assign each of the two subsequent applications according to their (non-written) understanding.

Bottom line is that under existing case law, it is a guide in “100 ways of getting priority wrong”. In that sense, claiming priority is a lot more unforgiving than other formal acts that must be completed in order to obtain a European patent. As an example, most missed deadlines under the current EPC can be cured by filing a request for further processing (Article 121 EPC) with payment of the appropriate fee. If the 12-month deadline for claiming priority is missed, only Re-establishment under Article 122 EPC is available, and it must be proven to the satisfaction of the EPO that the deadline was missed despite all due care under the circumstances (which is interpreted strictly).

Some even  argue that the “co-applicants’ approach” is too lenient on applicants and that only A and B (or their successors in title) may claim priority from a priority application filed by A and B. Hence, if A, B, and C were to claim the priority, they would argue that priority is invalid. Derk Visser (of Annotated European Patent Convention textbook fame) argues that T 1933/12, which introduced the “co-applicants approach” in case law, is poorly substantiated and that following T 788/05 would result in only A and B being able to claim the priority (since A and B are considered a legal unit for the priority right).

This is in our opinion in stark contrast to the realities facing patent applicants, as well as the purpose and spirit of the Paris Convention. T 15/01 concerned the issue of exhaustion of priority, but also contained remarks on the purpose of the priority right under the Paris Convention:

  1. The right of priority is generally regarded as one of the cornerstones of the Paris Convention and was already incorporated in the original text of 1883 (cf Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as Revised at Stockholm in 1967, 1969, Article 4, Section A(1), point (a); Ladas, Patents, Trademarks, and Related Rights, Vol. I, 1975, p. 456). Its basic purpose is to safeguard, for a limited period, the interests of a patent applicant in his endeavour to obtain international protection for his invention, thereby alleviating the negative consequences of the principle of territoriality in patent law.
  1. In the course of the revisions of the Paris Convention, several amendments were made to its priority provisions in order to enhance their flexibility and thereby ameliorate the legal position of patent applicants. It was considered that overly strict solutions would hardly be in accord with the spirit of the Union treaty which is aimed at fostering and encouraging inventive genius (cf Actes de la Conférence réunie à Washington du 15 mai au 2 juin 1911, Berne 1911, p. 45). In particular, the Paris Convention in its present version (Stockholm Act) explicitly recognises the possibility of claiming multiple and partial priorities (cf Article 4F) and guarantees the right to divide patent applications while preserving the benefit of the right of priority also for the divisional application (cf Article 4G Paris Convention). The same principles are reflected in the corresponding provisions of the EPC, ie Articles 76(1), second sentence, and 88(2) and (3).
  2. In the light of the above, the board disagrees with the view expressed in decision T 998/99 (point 3.1), according to which the international priority provisions contained in the Paris Convention have to be regarded as a body of exceptional rules which should be interpreted strictly. Rather, they have to be construed in a manner which ensures that the general purpose they serve, namely to assist the applicant in obtaining international protection for his invention, is fulfilled as far as possible.

This decision was cited by Broad in T 844/18 and acknowledged in paragraph 39 of the preliminary opinion of the Board. It seems difficult to reconcile with the more formalistic approach in T 788/05, and it will be interesting to see which balance is struck by the Board in T 844/18. After January 17, more clarity is hopefully achieved, but there is no guarantee. In the meantime, it is important for applicants to be aware of and comply with the formalistic approach as much as possible.

A further issue raised by Broad, but not addressed explicitly in the preliminary opinion by the Board in T 844/18 is whether the EPO is competent at all to assess the entitlement to priority. When a European patent application is filed, the EPO does not require proof of entitlement to priority from the applicant under Article 88 and Rule 52 EPC, not even if the European application is filed in a different name than the priority application. Indeed, the legislator explicitly rejected this possibility when the EPC was prepared.

Therefore, from a strict fairness perspective (which is not a legal standard per se), it begs the question why the EPO should assess priority 10-15 years later when a third party with no real interest in the priority right (other than to see the patent revoked) could oblige the EPO to make that same assessment that it was not allowed to make at the point in time (i.e. upon filing) when the applicant most easily would be able to provide the necessary proof.

It is unclear whether the Board will actually address this fundamental issue, which was not dealt with directly by a board before. Since, in the existing case law, nobody asked whether the EPO (of which the boards are a part – Article 15(f) EPC) was in fact competent, the boards dealt with issues for which they may not be competent. A parallel is Article 60 EPC, which concerns the right to the European patent application. The EPO is very explicitly not competent to deal with the issue of right to the European patent application, which issue is a matter left for national courts under the Protocol on Recognition.

Further appeal cases that may clarify the EPO’s position on the right to claim priority are T 2749/18, T 1837/19, and T 477/19 (Aera is representing the patentee in the latter appeal). A decision in any of these cases is unlikely to be available for at least another couple of years.

INDEX

Possible changes in recovery of costs in Danish patent litigation

On 29 August 2019, the Danish Eastern High Court issued a decision that partially relates to the recovery of costs of a winning party in the Danish Maritime and Commercial High Court.

In its decision, the Court reversed a decision on the recovery of costs in a patent litigation case relating to a preliminary injunction and an invalidation suit, the Court increasing the recovery from 8% to approximately 50% of the documented costs of the winning party. What is interesting about this decision is that the Court decided that the winning party would recover 100% of the costs incurred for a European Patent Attorney assisting the winning party.

The decision further recognized that the “standard” hourly rate of a specialized Intellectual Property Attorney is higher than that of a general Attorney-at-law. This is in line with recent decisions made by the Court of Justice of the European Union. The decision of the Danish Eastern High Court may be seen as a precedence-setting decision as the Court is a higher instance than the Maritime and Commercial High Court.

The decision on cost recovery will hopefully encourage companies to look again towards the use of the Danish courts for future patent litigation after a long period of significant reduction in patent litigation within the Danish legal system.

Read more here

INDEX

New EPO decision on personalized medicine

Decision G 2/08 firmly established the patentability of new medical uses at the EPO under the revised European Patent Convention. Among other things, it was also established that this applies to treatment of a new patient group even if the same compound was previously known for treatment of the same disease in a different patient group.

 

What was still missing was clarity on the situation where the only difference resides in the presence (or absence) of biomarkers in the treated patients. In such cases, the patient group defined by certain biomarkers (e.g. presence of a certain genetic mutation, elevated blood levels of a certain compound etc.) typically overlaps with the patient group known to be treated with the same compound. In fact, the compound would typically already be known for treatment of the general patient population, which overlaps with all patient subgroups.

A recent decision from technical board of appeal 3.3.09 addresses this issue. The Headnote of T 694/16 states:

If a claim is directed to a known compound or composition for use in a therapeutic method of treatment or prevention of a disease, and the claim specifies that the subject to be treated displays a clearly defined and detectable marker, which is not displayed by all subjects affected by or likely to develop that disease, then the purposive selection of the patients displaying the marker for the specified treatment is a functional feature characterizing the claim.

 

We would highlight the terms “clearly defined and detectable” and “purposive selection”. The purposive selection is further highlighted in point 5.14 of the Reasons:

For this reason, the issue of whether patients displaying the markers of claim 1 were present among a population of previously treated patients and were already “inevitably” or “inherently” treated is irrelevant for assessing novelty in the present case. The only thing which counts is that D1 and D3 do not disclose a method whereby a patient or a group of patients displaying the relevant CSF markers, but not affected by dementia, was purposively and selectively targeted for carrying out the preventive treatment defined in claim 1. (emphasis in the original)

 

This decision provides a very welcome clarification for innovative companies working on personalized medicine. It means that it is possible for the innovative companies to be rewarded by the patent system for targeting treatments to the needs of specific individual patients, based on the characteristics of each patient.

INDEX

INDEX

A Guide to Foundations for SME’s and Start-up’s

We have made a list of some of the foundations and programs that we believe are interesting for many of our clients and people working in the start-up environment.

These types of applications usually contain a mandatory part concerning IP and patents – we have experience in scoping and adding value here. Contact any of our attorneys directly or at for an informal discussion about the options.

The deadlines for applying for these innovation and research programs and foundations are approaching fast – so get started and good luck!

EC Horizon 2020: SME instrument

To Whom: One of more European SMEs
How much: 50.000 – 2.5 M € in two phases over 6 – 24 months.
When: Next deadline is 3 April 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/sme-instrument

EC Horizon 2020: Fast Track to Innovation (FTI)

To Whom: 3-5 European entities.
How much: up to 3 M €, close-to-market innovation.
When: Next deadline is 28 February 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/fast-track-innovation-pilot

EC Horizon 2020: Future and Emerging Technologies (FET) Open

To Whom: at least 3 entities
How much: 0.5 – 3 M € for radically new technologies.
When: Next deadline is 28 September 2019.

Read more her:

https://ec.europa.eu/programmes/horizon2020/en/h2020-section/fet-open

You can find an overview of some of the EC programs her: http://ec.europa.eu/research/eic/pdf/eic_instruments_table.pdf

The EU has also initiated Eurostars for the development of research projects with high-tech SMEs in international partnerships.

Eurostars SME

To Whom: The funding options are different from country to country. In Denmark is the focus up to 75% of actual costs to salary, travel and material. Other costs must be defined and approved.
How much: 300.000 € if one Danish partner participates, 500.000 € if there are two or more Danish partners.
When: Next deadline is 28 February 2019.

Read more here:

https://www.eurostars-eureka.eu/countries/denmark

For Denmark there are also more focused foundations in 2019. These include:

Innovationsfondens “InnoBooster”

To Whom: Innovative SMEs and startups.
How much: 50.000 – 5 M DKK.
When: Next deadline is 19 February 2019.

Read more here:

https://innovationsfonden.dk/da/programmer/innobooster

Innovationsfondens “Grand Solutions”

To Whom: Larger projects with focus on research, development and/or commercialization in a wide variety of technological areas.
How much: 5 – 30 M DKK
When: Ongoing evaluations from 1 February 2019.

Read more here:

https://innovationsfonden.dk/da/programmer/grand-solutions