Tag:  “Patent”  | (36) posts

EPO gets Stricter on Requirements for Recording Assignments

The EPO is going to take a stricter approach for recording an assignment of EP applications. Up until now the EPO has accepted assignment documents evidencing a transfer that had only been signed by the Assignor.

Recordal of assignment is governed by Article 72 EPC which states that “An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract”

The November 15 edition of the “Guidelines for Examination” (at E-XII-3) states that “a declaration of the assignor only is likewise sufficient, provided that the request has been filed by the assignee”.

The above-mentioned section of the EPO Guidelines for Examination has been revised, and the above wording deleted, to be replaced with “Article 72 requires that the signatures of the parties appear on the documents submitted as evidence of the transfer” at new section E-XIII-3.

The new Guidelines for Examination will enter into force on 1st November 2016. Registration of transfers already recorded will not be affected by this change.

Thus, the EPO are getting stricter in following the requirements of Article 72 EPC, and now require that the signatures of both the Assignee(s) as well as the Assignor(s) must appear on the assignment document when recording a transfer.

According to the new guidelines it is however still possible to provide the following other evidences of the transfer: “Any kind of written evidence suitable for proving the transfer is admissible. This includes formal documentary proof such as the instrument of transfer itself (the original or a copy thereof) or other official documents or extracts thereof, provided that they immediately verify the transfer”.

In view of the above change, we should advise all our clients to ensure any assignment documents prepared for the transfer of EP patent applications include the signature(s) of the Assignors(s) as well as the signature(s) of the Assignees(s). Also, to avoid problems with the recordal of assignment at the EPO it is important to ensure printed names and capacity as signatory for both parties in the transfer document.

Although it may seem that the EPO is going belt and braces with this stricter approach it is important to remember the that once a transfer has been duly entered in the European Patent Register, the registration cannot be undone. In case of any doubt, proceedings may have to be stayed until the identity of the legitimate applicant/proprietor has been established.

 

Helle Friis Svenstrup, member of Awapatent’s EPC specialist team

European Patent Office: New PPH agreements on the way

The ever expanding Patent Prosecution Highway (PPH) network keeps getting new additions, and as usual, the AWAPATENT IP Blog sums up the new expansions and arising possibilities.

The PPH is a system of bilateral agreements allowing for requesting accelerated examination at one participating office. The system is based on the search results and a set of claims accepted for grant, in an analogous application, at the other participating office.

Most recently, European patent applicants have been offered the possibility of speeding up and simplifying the examination. Namely, effective as of 1 October 2016, the EPO (European Patent Office) and the Superintendence of Industry and Commerce of Colombia have launched a new PPH agreement. The agreement applies to both national and PCT work products. The EPO’s notification of entry into force can be found here.

Furthermore, the EPO has just announced the signing of three new PPH agreements with the IP offices in Russia, Malaysia and the Philippines. These three PPH agreements will, according to the EPO, enter into force during 2017. The announcement may be found here. The AWAPATENT IP Blog will inform its readers of the actual dates of the entry into force.

Finally, it is worth mentioning that the Chilean and Moroccan IP offices also have joined the PPH network. The Chilean IP office has together with the Mexican, Colombian and Peruvian IP offices signed mutual PPH agreements. The Moroccan IP office has signed a PPH agreement with the Spanish patent office. This makes the grand total of IP offices, participating in the PPH network, 41.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

The value of design patents

It is a perfectly clear, crisp morning as I make my way from Washington DC’s Union Station, through a clean and perfectly trimmed Senate Park, to the white neoclassical palace that houses the United States Supreme Court. The wide pavement and massive stairs leading to the building’s entrance is filled with journalists, photographers and television crews gearing up alongside hundreds of gathered spectators. Inside, the Supreme Court is in session, hearing its first design patent case in 120 years.

What sparks such an unusual interest in the hearing of an IP case is the fact that this is one of the final chapters in the ultimate “super heavyweight” patent rumble, between the largest corporation in the US, Apple and the by far largest South Korean corporation, Samsung. This lengthy dispute has all the components necessary to attract the public’s eye: it concerns a category of products that basically everyone of us is using (on average 40 times per day), the design patents concerned are understandable and the patents cover the iconic design of the game changing iPhone.

The question that the Supreme Court agreed to hear is not that of infringement, which has already been settled in a final decision by the Court of Appeal for the Federal Circuit (CAFC). Instead, the court is reviewing the size of the damages, and in further detail, the relevance of a century old piece of legislation stating that the infringer in a design patent “shall be liable to the owner to the extent of his total profit”. This in practice means all profit generated by the infringing Samsung Smartphones (article of manufacture), and it is this wording that made the CAFC affirm the $400 million in damages awarded to Apple.

Samsung, as well as several academics, argue that a statement made by the US congress in 1887 that “it is the design that sells the article” (forming the basis for the above wording in the legislation), does not apply to complex products such as the iPhone. On the other side, Apple’s Chief Litigation Officer Noreen Krall, who by the way hired me to my first job in the IP industry, argues the opposite and stated that Apple’s “designers and engineers are distinguished by their originality” and that Apple “firmly believe that strong design patent protection spurs creativity and innovation”.

Knowing how dedicated Apple fans can be, and how much value the Apple customer places in the look and feel of the products, I am inclined to agree with Noreen and Apple. In many instances, I believe that originality and design are features that actually may trump the function of Apples products.

The Supreme Court’s decision is expected in early 2017. Whatever the outcome will be, i.e. if the Supreme Court confirms the principle of the “total profit” or chooses to interpret the law as meaning “total profit” attributed to the specific parts of the “article of manufacture” covered by the patent, the ruling will have a considerable impact on how the IP world views and values design patents.

Joacim Lydén, Awapatent Partner and temporary US Correspondent

Unified Patent Court – one step closer to opening the Court

On October 1 2015, a Protocol to the UPC Agreement was signed by first seven member states [1]. It is open for signing by the remaining Signatory States of the UPC Agreement from this date.
The aim of the Protocol is to allow for some provisions of the UPC Agreement to be applied early, i.e. before the Court opens, in a provisional application phase. The Protocol will enter into force the day after 13 Signatory states (including Germany, France and the UK) have ratified the UPC Agreement.

This provisional application phase will allow for the recruitment of judges and testing of the IT system. Having judges appointed and trained at the date the Court opens is important, as it is conceivable that the Court could receive cases essentially on the first day the Agreement comes into effect.

Further to this, the protocol also allows for the Registry to be operational, which would possibly allow for patent holders to file their opt-out requests for European patents and also Supplementary Protection Certificates (SPC) before the Court opens, during a so called “sunrise period”.

The articles that would come into effect before the Agreement are thus mainly of an institutional character, Article 1-2, 4-5, 6(1), 7, 10-19, 35(1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court and Article 1-7(1), 7(5), 9-18, 20(1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court. Article 1 is related to Establishing the Unified Patent Court. Articles 15-19 are related to the appointment of Judges and Article 10 is related to the Registry [2].

Sofia Willquist, European Patent Attorney

Can innovative clean tech companies save the world…and still be profitable?

Well, as we all know, innovation and research and development usually cost a lot of money, and the simplest incentive for innovations is often to earn more, or alternatively to save, money.

Facing the threat of global warming, i.e. climate change, many new ideas have developed to make us less dependent on fossil fuels, to provide more efficient re-cycling of materials etc.. The development of electrical vehicles and fuel cell cars, as well as the collection of food waste for producing biogas are all good examples of this.

Environmental goals, set out by governments all around the world, are also believed to be a driving force for many companies in being more innovative within the clean tech sector. In Sweden, for instance some municipalities have a goal to become carbon dioxide neutral by 2025. For certain technology sectors stricter environmental goals have been vital for innovations; one example is the pulp and paper industry; which has meet very tough environmental regulations by becoming increasingly innovative.

One way of looking at the climate challenge for many companies is through the question “how much would it cost us to not change”, but it could of course be equally important to ask the question “how much could we earn by changing and becoming more innovative”.

The Nordic countries have for a long time been innovative and successful in creating strong industries. Now these industries face the challenge of climate change, and the fact that in the development countries the technical development is going faster right now, than it is in the industrial world. One example is China, which has encouraged innovation, and also patenting over the past decade. One way of keeping track of the technical developments in your own field is of course through monitoring of published patent applications, which is an excellent way of finding out what is going on, and an excellent way of getting new ideas of your own, and to get into the forefront of technology development.

Clean tech companies will also inevitably develop technologies that can be used by other companies, and this should of course be an incentive to protect the innovations made, for instance trough filing patent applications, for instance for use in licensing and joint ventures.

This brings us back to the main question, is it possible to save the world and still be profitable?

My answer is yes!

The fact is, if you are an innovative clean tech company, you should tell the world, and not be afraid to actively use this in your branding, in your marketing and in your business relationships with partners and competitors. By using IPR as a tool, you can also easily find and work with investors, find joint ventures, and partners, and thereby grow your company and become more profitable.

Sofia Willquist, European Patent Attorney

The Indian Jungle – an IP perspective, part 2

To foreign applicants filing a patent application in India takes place “at the IPO”, but in reality there is a choice of venue which is not trivial. The Indian patent office (IPO) is headquartered at Kolkata (formerly known as Calcutta) with branches in Chennai (formerly Madras), New Delhi and Mumbai (formerly Bombay). The office of the Controller General for Patents and Trademarks is located in Mumbai, a city regarded as the commercial capital of India (Delhi being the actual capital). The four branch offices are fully functional, so once an application is filed with a particular office it normally stays there throughout the life of the application. Foreign applicants can choose where to file, no matter which Indian associate they work with, but as most Indian patent agents are located in the Delhi area, most foreign applications are by default filed with the Delhi patent office, as this is most convenient for the patent agent.

There is presently a huge backlog of unexamined patent applications at the IPO which means that it takes ~4 years before an applicant receives the first examination report. Due to differences in staffing and workload the Mumbai office is however almost 2 years ahead of the Delhi office and 1 year ahead of the other two offices. Secondly, there is a difference in the way the Indian Patent Act and case law is followed at the four offices. Thus the Delhi and Chennai patent offices are unkindly referred to as “pharma application graveyards”. The Kolkatta office is regarded as the best place to file mechanical and automotive applications, whilst the Mumbai office is best equipped to handle pharma, biotech and computer science applications. Applicants who need a speedy prosecution should thus consider filing in Mumbai, especially if their application falls under the pharma, biotech and computer science areas.

Disclosure formalities

The IPO imposes very extensive disclosure (IDS) requirements. The IPO thus requires that information regarding any related foreign applications to be filed periodically with the IPO. The time period within which the applicant is required to notify the IPO regarding any related foreign application is currently six months. In addition the applicant is required, within six months of receipt of communication to that effect from the Controller, to furnish information relating to objections or rejections in respect of novelty and patentability during prosecution of corresponding applications elsewhere. Not furnishing this information is one of the grounds of invalidation of a patent. The disclosure requirements can be complied with by scheduling six-monthly filings in Form 3 with details of prosecution progress of related applications elsewhere.

Compulsory licensing

The compulsory licensing provisions according to Indian law are contingent on a determination: (a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or (b) that the patented invention is not available to the public at a reasonably affordable price, or (c) that the patented invention is not worked in the territory of India. In 2012 India granted its first compulsory license ever to the Indian pharmaceutical company NATCO against Bayer Corporation. Natco cited the high cost of treatment using the drug Nexavar (sorafenib tosylate) in their application. The above example is thus far the only compulsory license being granted.

Summary

India’s IP laws can be seen as a balancing act between on one hand a desire to fully comply with WTO/TRIPS requirements and on the other providing affordable medicines to its vast numbers of poor people. India however also offers exciting opportunities in the electronics, automotive and computer science areas where the quickly growing Indian middle class wants access to new, imported products which should be protected by patents, designs or trademarks. Please contact Awapatent if you need strategic advice on how to protect your IP rights in India!

Michael Bech Sommer, European Patent Attorney

The Indian Jungle – an IP perspective, part 1

Now these are the laws of the jungle, and many and mighty are they…” – Rudyard Kipling wrote these lines over 100 years ago in his “Law for the Wolves” from the famous Jungle Book. As IP practitioners we are constantly reminded of the complex nature of today’s Indian IP jungle and the many and mighty laws therein. This article will discuss some of the peculiarities of the Indian patent laws with the 1st part focusing mostly on differences in patenting practice between Europe and India. The differences in practice between the four Indian patent offices will be discussed in the 2nd part of the article, incl how clients should use this strategically.

India is a WTO member and has signed the TRIPS Agreement which provides patent protection for a period of 20 years from the filing date of the application. In addition to the typical requirements for novelty, inventive step and industrial application the subject matter of the invention must moreover not fall under one of the (many!) excluded classes from patentability, the best known being the Section 3(d) exception relevant to many pharmaceutically active compounds, which holds i.a. that a new form of a known substance is not an invention unless it shows “enhanced efficacy”.

Indian case law (Glivec case: Novartis vs. Union of India) has established that by “efficacy” is meant therapeutic efficacy which means that arguments for inventive step accepted under EP law like eg. higher stability of new crystalline compounds or salts will not be accepted as “enhanced efficacy” under Indian law. Improved bioavailability is on the other hand specifically mentioned in Glivec as not ruled out as an example of “enhanced efficacy”. Thus some hope still exists!

India does not permit claims to a method of medical treatment, nor claims presented in 1st or 2nd medical-use format. Claims to a pharmaceutical composition containing two or more active components may be permitted, provided 1) all the active components and their concentrations are specified in the claim and 2) support for an unexpected synergistic effect are provided in evidence of an enhanced efficacy of the claimed composition in comparison to known compositions. Such comparative data (ie not stand-alone) must be present in the application at filing in India.

India does not allow for utility model protection, but does allow for “Patents of Addition” which relate to improvements or developments of the invention to which the patent application or granted patent relates; the subject matter does not have to involve an inventive step over the parent patent or application, but must share the same inventive concept and have absolute novelty. The term of a Patent of Addition is the unexpired term of the main patent. No annuity is payable. Patents of addition should be considered as an interesting option for European clients.

Publication of the unexamined Indian application occurs at 18 months after filing; an examination for novelty etc. is subsequently conducted before a decision is made whether to grant the application. Typically this process takes 5-8 years. In contrast to European practice, pre-grant opposition may be filed at the IPO by any party, and without payment of fee. Post-grant opposition may be filed within 12 months of grant at the Indian courts but only by an “interested party”, and can be a very longwinded affair. The grounds for both pre- and post-grant opposition include i.a. the right to the invention.

Once granted, India has a working requirement: Every patentee and licensee has to furnish annual statements regarding the working of the patented invention on commercial scale in India. Importation does not count towards the working of the invention. Compulsory licensing may be granted to local Indian companies in case working requirements are not met.

In the second part of the article we will discuss some further peculiarities of the Indian patent system incl. options for patent office “forum shopping”, the extensive disclosure formalities and compulsory licensing issues.

Michael Bech Sommer, European Patent Attorney

European patent validation in Morocco and Tunisia

Recently, the EPO has initiated work on a new interesting possibility for European patent applicants.

Namely, the EPO has reported having signed an agreement with the Tunisian government on the validation of European patents for Tunisia. A similar agreement has previously, in 2013, been signed with the Moroccan government.

According to the agreements, European patents validated in these countries will have the same legal effect as Moroccan and Tunisian national patents, even if neither Morocco nor Tunisia is an EPC contracting state. Also, European patents validated in these countries will be subject to Moroccan and Tunisian patent legislation. Morocco and Tunisia will thus become States recognizing European patents upon request or, in terms of the EPC, Extension States.

However, the Moroccan and Tunisian governments will first have to ratify the agreements before they enter into force. To do so it is also possible that the Tunisian and Moroccan legislation must first be amended.

Furthermore, it is not yet established what documents will be required for validation, what the official fees applicable will be and what the translation requirements will be.

Until, and by all likelihood also after, ratification of these agreements patent protection in Morocco and Tunisia may be obtained by filing national patent applications and/or PCT national phase applications.

Furthermore, in light of the above, it is worth noting that patent protection in Morocco extends to Tangier and Western Sahara.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Link to the EPO press release

The on-sale bar under the AIA

Do non-public sales in Europe destroy novelty in the U.S.?

Among the many news that applicants have had to digest in the America Invents Act, the revised on-sale bar may be one of the more intriguing. Before the law reform, grant of a patent was excluded whenever

the invention was … in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.
(35 U.S.C. section 102(b); emphasis added)

I was then able to reassure my local clients that they could sell products or prototypes embodying a yet unpatented invention as long as the sales were secret and did not involve a U.S. buyer. Indeed the courts had clarified pre-AIA that also private sales, even offers to manufacture a new product, could destroy novelty and invalidate a granted patent.

Under the AIA, the same section reads:

A person shall be entitled to a patent unless (1) the claimed invention was … in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(35 U.S.C. section 102; emphasis added)

Section 103, concerning obviousness, has been amended similarly.

The geographic limitation “in this country” has been deleted. Clearly my clients’ activities within U.S. territory will count the same as outside.

So what about secrecy? An American friend – he’s actually a patent attorney friend – tells me that it’s quite unlikely that non-public sales will qualify. The language “on sale, or otherwise available to the public” is rather clear, suggesting that sales activities are relevant only to the extent they are public. This conclusion was not contradicted by any political statements during the legislation process, and the USPTO appears to embrace it.

However, the legislator deleted “in this country” but did not care to insert, say, “[on] public [sale]”. My friend tells me this fact could support an argument that the legislator did not intend to distinguish secret sales from non-secret sales.

It may take years before an influential U.S. court speaks on this matter. Till that time, we know that it is fairly safe to sell unpatented products under NDA. If you feel your inventions deserve better, remember to file before you sell – at least a simple first version.

Anders Hansson, European Patent Attorney

The pride and joy of working as a Patent Attorney

What was your dream job as a child? My best guess would be astronaut, musician, actor, fireman, veterinarian or soccer player. But what about Patent Attorney? Not on your list?

Definitely, the dream job changes if you ask a child compared to a university student or a newly-graduated student. Lists are regularly published regarding the most popular professions and employers for this group, which is not surprising – the information about the favourite professions is used by politicians, universities, etc., to monitor the educational trends, and companies are more than keen to see how popular they are as an employer.

If you study a recent list of the most popular professions in Sweden, you will find engineer, economist and teacher at the top positions. Furthermore, for engineers, traditional and relatively large Swedish companies constitute the major part of the list of the most popular employers, although foreign companies like Google, Microsoft and McKinsey also do well.

Looking from my own perspective, the profession as a Patent Attorney is hard to come across in surveys of this kind. Even though the mentioned list of the most popular employers does not reveal what kind of profession these companies are looking for, my guess is that an employment as a Patent Attorney at the company is not what comes up first in mind for a student. Furthermore, one could note that no patent agency is to be found in the Swedish top 50 list.

My explanation for this is that the profession – for many people – is rather anonymous. When asked my profession at meetings, parties, etc., I actually get the feeling that my answer puzzles my interlocutor. However, when I continue to describe the details in what I do, i.e. having meetings with companies, universities and inventors regarding their technical development and inventions, drafting patent applications and constructing patent strategies, debating with patent offices and having world-wide contacts with fellow patent agencies, the facial expression of the person in front of me often changes as if he or she was thinking “hey, that sounds interesting!”

So, looking for a career where you can combine a technical knowledge with a linguistic aptitude, see the leading edge of technology, get international contacts, develop your legal knowledge and defend the rights of your company/client? Look no further. The job as a Patent Attorney is interesting, dynamic, challenging, fun and rewarding, and should most definitely qualify amongst the most popular professions around.       

Love  Koci, Patent attorney