Recruitment of UPC Judges is now open

The preparatory committee has now published the first job openings at the Unified Patent court.

The recruitment of legally qualified and of technically qualified judges of the Unified Patent Court (Court of First Instance and Court of Appeal) has been launched with the publication of the vacancy notices in English, French, and German. The deadline for applications is 4 July 2016.

The finalization of the appointment procedure is dependent on the entry into force of the Protocol on Provisional Application and subsequently the Agreement on the Unified Patent Court.

According to the recruitment information, the following procedure will apply:

The selection process of candidates for judicial posts at the UPC consists of the following steps:

1. A first round of candidates’ selection will be carried out on the basis of answers provided in the Application Form, together with the candidates’ Curriculum Vitae, references and any other relevant document provided.

2. The candidates selected by the Advisory Committee on the basis of this first round of the selection process will be invited to an interview, carried out by members of the Advisory Committee. The interview will aim at evaluating skills necessary for judicial functions at the UPC, such as judicial ethics, experience in meeting tight deadlines, oral communication skills, the capacity to work in a multinational and multilingual environment, etc.

3. Following the first round of selection and the interviews, the Advisory Committee will present a list to the Administrative Committee, recommending the most suitable candidates for posts of judges at the UPC.

4. Based on this list, the Administrative Committee will appoint the necessary number of judges for a proper functioning of the UPC. When appointing judges, the Administrative Committee will ensure the best legal and technical expertise and a balanced composition of the UPC, on as broad a geographical basis as possible among nationals of the Contracting Member States.

This blogger is pleased to note that the "skills" filter (Steps 2 and 3) is applied prior to considering the criterion of a "broad geographical basis", which enters the game only in step 4.  This avoids that unexperienced judges can be favoured over more experienced ones for mere political reasons.


A recent IPKat post pointing out that an independent body for enforcing the code of conduct of future representatives before the UPC is lacking, resulting in a potential violation of Art. 6 ECHR, and the ongoing discussion on disciplinary measures of the EPO BoA made me thinking: How could a hypothetical code of conduct of UPC judges be enforced?

The structure of the code of conduct for the judges will most likely have some similarity to the code of conduct of the ECJ judges, where The President of the Court of Justice, assisted by a Consultative Committee composed of the three Members of the Court of Justice who have been longest in office, shall be responsible for ensuring the proper application of this Code of Conduct. Is this a good solution? Or should the decisions of the president be open to judicial review (e.g. by the ECJ?)

The direct product of a Swiss-type claim is packaged and provided with instructions

In the appeal underlying the decision T 1673/11 (Treatment of Pompe's disease/GENZYME) of 20.10.2015, the patent had been granted with  a Swiss-type claim to a process of manufacture of a pharmaceutical product. The patentee wanted to change the claim category from a claim under the provisions of the EPC 1973 invoking the legal fiction according to G 5/83 to a claim under the provisions of Article 54(5) EPC 2000, i.e. to purpose-limited product claim and the question arose whether this extends the scope of protection.

Though the products covered by the claims may be identical from a pharmaceutical point of view, the difference lies in the packaging and information leaflet:

8. The respondent disagreed with the approach taken in decision T 1780/12 in as far as it was based on a comparison of the claim categories and the principle that a process claim was inherently narrower than a product claim. In the respondent's opinion, such an approach did not take into account the extension of protection by virtue of Article 64(2) EPC and the delimitation of the subject-matter claimed by the technical features. A purpose-limited process claim in the format of a Swiss-type claim was directed to a process of manufacture of a product. According to Article 64(2) EPC the protection conferred by such a process extended to the products directly obtained. Because the manufacturing process in a Swiss-type claim was not limited by any technical feature, the manufacture could not be limiting on the product obtained by it. The medical use as limiting feature was the same whether the claim was drafted in the format of a Swiss-type claim or as a purpose-limited product claim in accordance with Article 54(5) EPC. As a consequence, the protection conferred by both types of claims was the same.  

9. The board does not agree. First, the comparison of the the protection conferred by the categories of claims in the patent before amendment with the protection conferred by the new category of claims introduced by amendment is in line with the test set out in decision G 2/88 (see point 5 above). Second, the protection conferred by a Swiss-type claim in accordance with decision G 5/83 and a purpose-limited product claim in accordance with Article 54(5) EPC is not the same even if, for the sake of argument, it is accepted that Article 64(2) EPC is to be taken into account when assessing the extent of protection conferred by a Swiss-type claim (see decision T 1635/09 of 27 October 2010, point 14.2).  

9.1 Claim 1 as granted is directed to the use of human acid alpha glucosidase in the 100 to 110 kD form in the manufacture of a medicament for the treatment of infantile Pompe's disease. Inasmuch as this use may be regarded as a manufacturing process, the claim would, pursuant to Article 64(2) EPC, confer protection on the product directly obtained thereby. The board judges that the product directly obtained is the manufactured medicament which contains as an active substance human acid alpha glucosidase in the 100 to 110 kD form and which is packaged and/or provided with instructions for use in the treatment of infantile Pompe's disease. Indeed, in a Swiss-type claim, the medicament is characterised by the functional feature of the specified therapeutic application. Contrary to the respondent's opinion, this implies limitations to the product directly obtained, although the manufacturing steps are characterised by the use of a defined compound only.

9.2 Claim 1 of the main request being drafted as a purpose-limited product claim, on the other hand, confers protection on the human acid alpha glucosidase in the 100 to 110 kD form, whenever it is being used for the treatment of infantile Pompe's disease. Since the claim does not refer to a step of manufacture of a medicament, the product claimed, i.e. the human acid alpha glucosidase in the 100 to 110 kD form, is not limited to a manufactured medicament, packaged and/or with instructions for use in the treatment of infantile Pompe's disease.

9.3 It follows from the above that even if, by virtue of Article 64(2) EPC, the protection conferred by granted claim 1 extended to the product directly obtained by the manufacturing process referred to in said claim, the protection conferred by claim 1 of the main request is broader.

9.4 Nor can the board follow the appellant's argument that since the use limitation of the claims of the main request and of the granted claims was the same, their scope of protection was identical. The board takes the position that, for example, a medicament containing human acid alpha glucosidase in the 100 to 110 kD form packaged and provided with instructions for the use in a treatment other than that of infantile Pompe's disease is encompassed by the scope of claim 1 of the main request when said medicament is being used for the treatment of infantile Pompe's disease. The protection conferred by granted claim 1 does not encompass such use.  

9.5 Consequently, claim 1 of the main request would amend the contested patent in such a way as to extend the protection it confers, contrary to Article 123(3) EPC.

Is the Unitary Patent good for SME's?

The development if the Unitary Patent and the Unified patent court has always been accompanied by the popular narrative of reduced costs and benefit for SME's. Bjorn Ingve Stjerna has now critically tested the promises and political expectations against the reality which is now emerging and compiled his results in an article which is available for download here on his website, which further provides an impressing resource on background documents on the legislative history.

He comes to the conclusion that the alleged support of SMEs by the “unitary patent system” was nothing more than mere lip service in order to maneuver the “patent package” through the legislative proceedings as smoothly and quickly as possible.

Though this result may not come as a surprise given that the system remains essentially unchanged besides or replacing state-subsidized national courts are replaced with the supposedly self-supporting UPC, this article is a fascinating analysis showing how narratives and factoids or half-truths are capable of catalyzing political processes.

On the Role of Scientific Advisers: Transparency and Expectations

PatLit is pleased to have received a guest post by Chartered and European patent attorney Kirwin Lee. Kirwin discusses a very interesting character in the UK patent litigation: The "Scientific Adviser", who is a sort of private teacher which may be hired by the Judge and not to be confused with court-appointed experts. Here are Kirwin's thoughts on this issue:

Although English courts have had the power to call in the aid of scientific advisers (or “assessors”) since 1883, most of our readers are probably aware that this power is scarcely exploited. The disinclination of judges to call upon expert assistance at trial may be due to the technical rating system operated by English patent courts - where cases are categorised by technical complexity before trial so as to ensure that they are allocated appropriately to judges. An inadvertent result of this is that when the court does decide to appoint a scientific adviser in a case, you are almost certainly guaranteed the decision would be an interesting read.

Recently Mr Justice Birss handed down the decision in the case Electromagnetic Geoservices ASA v Petroleum Services and Ors [2016] EWHC 881 (Pat). The trial lasted for 11 days in the Patents Court, which was considered lengthy for one patent. However, as the proceedings were settled shortly before judgement, the decision was relatively brief (only two pages long) and included mainly Birss J’s deliberation on the advantages of appointing a court scientific adviser.

To provide a bit of background, the case concerned a dispute relating to the complex technology of marine CSEM (Controlled Source Electromagnetic) and was rated Category 5, i.e. most technically complex. Although Birss J himself has a technical background and is a Category 4/5 patent judge, it was ordered in an earlier interim decision ([2016] EWHC 27 (Pat)) that a neutral scientific adviser was to be appointed following a proposal by the defendant PGS.

Birss J indicated that the private teach-in session with the appointed expert Dr. Karen Weitemeyer, in which he was able to ask candid questions in the absence of the parties, allowed the speeches and cross-examination to proceed more briskly than would have been otherwise. This significantly improved the Court’s comprehension of the key issues and therefore saved time and cost. Birss J also explained that such “further step” was useful and proportionate in facilitating the understanding of the Court of not only the experts’ opinions but also the material on which those opinions are based and the reasons for them. As also noted in the decision, “what matters is not the opinions the experts' express as to the conclusions to be reached but the reasons they give for them”.

It is worth noting that the claimant/patentee EMGS had previously argued against the appointment of a scientific adviser on the grounds that the case was within the ability of Category 4/5 judge. EMGS also had concerns that a lack of transparency of the information being received by the Court would lead to the inability of the parties to challenge or address any views imparted to the judge by the appointed expert. Perhaps in a bid to address these concerns, the Court decided to settle in advance the set of instructions provided to the expert, the instructions explaining the identified topics to be covered. In addition, written materials of the teach-in were provided to the parties afterwards, such that they could comment on the materials at trial.

The particular problem relating to the perceived lack of transparency and the potential influence of an adviser on judges’ views was recognised in Halliburton v Smith [2006] EWCA Civ 1599. The appointed expert of the case Professor David Limebeer sent an e-mail message to the members of the Court in attempt “to highlight the key engineering issues in dispute and to propose a possible way forward”. This e-mail prompted the appellent Halliburton to seek removal of the professor as the scientific adviser, on the account that he had allegedly expressed opinions which were not within the remit of his role in the case.

The Court of Appeal disagreed and refused to revoke the appointment. In the judgment by Lord Justice Chadwick it was pointed out that it would be inevitable that there will be matters in complex technical fields upon which it will be impossible for a skilled and experienced scientific adviser to avoid expressing an opinion. The need for fairness was discussed comprehensively in the decision, where Chadwick LJ commented that the fairness requirement was met since the opinions expressed in the professor’s email was disclosed and the parties were given the opportunity to comment as they see fit. Lord Justice Chadwick also clarified the role of a scientific adviser: “to help us understand that evidence, to help us consider whether the judge fully understood that evidence, and to help us evaluate the conclusions which the judge reached on that evidence”.

The two cases discussed above highlight a number of issues worth bearing in mind when dealing with cases where scientific advisers are appointed. The court appears to be fairly flexible on what an appointed scientific adviser is allowed to contribute to the case, as long as the parties are given the chance to comment on such contribution at trial. The uncertainty of what and how educational materials is presented to the judges and the inability to vet the material may induce anxiety for the litigants. Nevertheless, in some instances this may be alleviated when the Court appoints a technically qualified person from the UKIPO, as they are often seen as being more impartial than lay advisers who do not possess any prior legal training. This was the case in PCME v Goyen [1999] FSR 801 and Qualcomm v Nokia [2008] EWHC 329 (Pat).

As a further interesting note, even though scientific advisers are rarely utilised in UK patent litigation, it may be prudent for IP law practitioners to become accustomed to dealing with technical experts during litigation, as the Unified Patent Court (UPC) rules provides for a technical judge to be included in the panel upon the request of a party or a panel.

Common General Knowledge and Inconvenient Details - Accord v Medac and Unwired Planet

Two recent rulings of Mr Justice Birss of the Patents Court, England and Wales contain interesting statements on obviousness attacks based on common general knowledge alone, adding some new aspects to the findings of the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159.  The problem is that what is presented as common general knowledge is necessarily a synthetic picture based on overlaps in various pieces of evidence (and the recollection of experts) where inconvenient details are inevitably (or deliberately?) left out. In Accord v. Medac, Birss J. presents the following caveat:

Obviousness over common general knowledge alone

119. I am not satisfied that the invention is obvious based on the common general knowledge alone attack relied on by Accord. That is because the relevant common general knowledge must be that in the UK (see Arnold J in Generics (UK) v Warner Lambert [2015] EWHC 2548 (Pat) at paragraphs 123-124) and in the UK the skilled clinician was unaware as a matter of common general knowledge what concentrations were being administered subcutaneously to patients and was unaware, without prompting, of any particular issue of pain arising from the subcutaneous administration. There is therefore nothing to provide an impetus to the skilled team to think about the issue at all.

120. Before leaving the argument based on common general knowledge alone, I will mention the words of Floyd J (as he then was) in ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraphs 155-159 and in particular the passage at paragraph 158 which warns that such attacks need to be scrutinised with care since they can be favoured by parties because the starting point is not obviously encumbered by inconvenient details of the kind found in documentary disclosures. I respectfully agree with Floyd J. Since it seems to me that this case provides a good example of the problems identified in ratiopharm I will add a few words of my own.

121. Normally the person attacking validity will rely on a particular concrete document or well defined prior use as a starting point. The fact that such a concrete item of prior art may be part of the common general knowledge is not the point. That is different from an attack based on common general knowledge alone.

122. Many inventions involve a combination of known features. However a combination of features, all of which individually were common general knowledge, can give rise to a valid patent claim if that combination is new and non-obvious. Patent trials are inevitably ex post facto and a key problem is to identify and avoid hindsight. Combinations of features can pose a particularly acute hindsight problem. The thing about concrete items of prior art, whether they are prior published documents or prior used products or processes, is that whatever combination of features that concrete prior art consists of, is not one which was created with hindsight knowledge of the invention.

123. The problem with arguments over common general knowledge alone is that the combination of features relied on is always and necessarily one created with hindsight knowledge of the invention, and worse, is one which the person attacking validity has not been able to find as a pre-existing combination in the concrete prior art. If they had they would have relied on that concrete prior art. Either the combination has not been made in the concrete prior art at all or it only appears with additional inconvenient details. If an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct.

124. The problem is illustrated in this case. Sometimes an invention belongs to a field which is not well documented but in this case Accord did not lack possible starting points. It has pleaded two documents and could easily have pleaded others, such as the existing SmPCs for subcutaneous methotrexate. However the documents contain what might have been thought of as “inconvenient” details. Russo does not mention subcutaneous administration by name and is aimed at JCA rather than RA. Russo is also a small study and was published six years before the priority date. Jansen does mention subcutaneous and is for RA but it does not mention pain and contains the two statements referred to above which medac relies on. That the “inconvenient” details in Russo have not led to a finding of non-obviousness is not the point. To invent as a starting point in the prior art an amalgam of the best bits of the two cited documents while leaving out the inconvenient aspects, which is in effect what the argument was, created a combination which did not hitherto exist.

These wise words are re-emphasised in the most recent decision in Unwired Planet v. Huawei saga as follows:

A final general point on obviousness
233. I have addressed the obviousness arguments on their merits. However in my judgment the argument based on common general knowledge alone contained a good number of the familiar flaws in arguments of this kind which were discussed by Floyd J in Ratiopharm v Napp [2008] EWHC 3070 (Pat) at paragraph 155-159 and by me in Accord v Medac [2016] EWHC 24 at paragraphs 119-124. The argument in this case had not been properly pleaded. That is not the defendants' fault because the parties agreed to treat Mr Townend's first report as a statement of the case. However the case then shifted very close to trial, which demonstrated why it should have been pleaded properly in the first place. Furthermore the argument presented a combination of common general knowledge features which had been created with hindsight knowledge of the patent. It was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and it presented points of common general knowledge at a level of generality which itself was crafted with hindsight.   

Instructing the Expert - American Science & Engineering Inc v Rapiscan

One of the key differences between the UK patent litigation system and the continental system is the role of expert evidence, in particular when it comes to inventive step. German courts consider obviousness to be a question of law, the role of the experts being only to shed light on the knowledge and mindset of the the person skilled in the art at the priority date. Finding a compromise between both of these positions will surely be a crucial task to tackle in the first decisions of the UPC.

In the decision American Science & Engineering Inc v Rapiscan Systems Ltd [2016] EWHC 756 (Pat) (11 April 2016)  , justice Arnold shares the following general comments on how to instruct the expert:

General comments on the expert evidence
 
109. Each party contends that the other party instructed its expert to ask himself the wrong question. Both sides' solicitors proceeded in a carefully structured manner by first asking their expert to consider the person skilled in the art and the common general knowledge, then to consider the prior art relied upon by Rapiscan and only then to consider the Patent. The difference between them was that AS&E's solicitors asked Dr Bjorkholm to consider obvious developments of the prior art before showing him the Patent, whereas Rapiscan's solicitors only asked Dr Lanza to consider the question of obviousness after they had shown him the Patent.
 
110. In my view there is force in the criticisms which each side levels at the other's approach. The approach adopted by AS&E's solicitors had the advantage that it enabled Dr Bjorkholm to consider obvious developments of the prior art free from knowledge of the Patent; but it meant that he never addressed in his reports the question of whether the differences between Swift and the claimed invention constituted steps which would have been obvious to the person skilled in the art. The mere fact that a step did not occur to Dr Bjorkholm when reviewing the prior art was not sufficient to exclude the possibility that he might agree that it was obvious if asked. Unlike the person skilled in art, real people sometimes miss the obvious.
 
111. The approach adopted by Rapiscan's solicitors avoided that difficulty. The problem is that, whereas the correct question is whether, viewed without any knowledge of the claimed invention, the differences constituted steps which would be obvious, Dr Lanza expressed his understanding of the question he had been asked to consider without referring to the need to exclude knowledge of the claimed invention. Moreover, this does not appear to have been an artefact of the drafting of the report. On the contrary, Dr Lanza confirmed in cross-examination that his approach had been to consider obviousness as if the skilled person had been shown the claims and asked if they were obvious. Thus Dr Lanza does not appear to have understood the importance of trying to avoid hindsight.

Report on the 15th UPC Preparatory Commitee Meeting

The UPC Court of Appeal Building in Luxembourg

The Report on the 15th Meeting of the UPC Preparatory Committee Meeting is available here.

Good news is that Bulgaria is about to ratify and that the recruitment package was agreed (but not yet published) and that adverts for judicial appointments will be advertised in early May.

A draft code of conduct for representatives is being elaborated by the epi, EPLAW and EPLIT and has been discussed (but not yet published). The same applies for the Rules on Arbitration and the Rules of Operation of the Patent Mediation and Arbitration Centre of the Unified Patent Court.

The next meeting will take place on May 26 in Germany and a signing ceremony for the "protocol of provisional application" will take place in June.

Inescapeable Priority Trap - T 1983/14

In the case T 1983/14, the patentee hat gotten into an inescapable trap situation by adding a limitation to the claim which had been disclosed in the EP application as originally filed but not in its Irish priority application. To make it even worse, the patentee had publicly used the invention during the priority period.

The patent related to an apparatus capable of topping up a prepaid credit on a mobile phone as well as purchasing other products (judging from the priority date 2004 I presume that the other products included ringtones, which was quite fancy at that time). The feature in question was that the "mobile telephone credit product" and other products on the apparatus were invoiced as one transaction".

The deletion of this feature would have contravened Art. 123(3) EPC while keeping the feature renders the priority claim invalid such that the patentee's prior use is prior art.

The Board points out that there is an analogy to the inescapable trap in G 1/93 as follows:

Article 123(3) EPC prevents the removal, after grant, of a problematic, limiting feature. The problem described in G 1/93 was a violation of Article 123(2) EPC. In the present case, it is lack of novelty due to loss of priority. See point 5.3 of the reasons.

 This blogger's attention was drawn to the "unambiguous disclosure" test applied by the board:3.7

The Board considers the most promising basis for "one transaction" to be the statement on page 4, lines 12 to 13 of the priority document:  

"[a]lternatively, the top-up software control module has means for printing the top-up code onto a customers receipt and adding the value of the top-up to the total receipt".  

Here, "adding [...] to the total receipt" could, indeed, refer to a running total, which is invoiced in one sum at the end. In other words, the statement on page 4 can be interpreted to cover the "one transaction" feature. That is, however, not enough. A basis must be direct and unambiguous. Thus, the question remains whether this statement is open to any other reasonable meaning.  

3.8 In the Board's view, there is an ambiguity to be resolved. "[T]otal receipt" can be read as referring to the complete physical document provided to the customer, comprising the top-up code and the receipt of payment for the top-up. In other words, both the top-up code and the price paid for the top up are to be printed on the receipt. That is, indeed, an interpretation that accords with the statements on page 1 of the priority document (see point 3.5, above). Thus, in the Board's opinion, there is no implication that the receipt is for other products than mobile top-up. Consequently, there is no direct and unambiguous implication that the purchase of other products is included in the same transaction.

In other words, a statement is not unambiguous if it is not open to any other reasonable meaning. I do not remember to have seen this test in the EPC case law and wonder if it could be helpful? As an opponent, it would be possible to disprove unambiguous disclosure by presenting a reasonable alternative interpretation. However, the discussion would then probably shift to whether or not the interpretation is still reasonable or not, which is not much different by the

The Parliamentary History of the European "Unitary Patent"

German attorney and Certified Specialist for IP Law Ingve Stjerna is known to our readers as an alert and critical commenter of the UPC legislation process (see posts here, here, here, here, here ) and constitutional issues. I do not know what was the reason to abandon the Opt-Out-fee but I think that Ingve's convincing arguments might have played a role.

For those who want to recapture the fascinating parliamentary history of the UPC legislation or simply express their gratitude for Ingve's fight to saveguard our constitutional rights, PatLit recommends to invest one the saved Opt-Out-Fees into his new book:

The Parliamentary History of the European "Unitary Patent"  

Verbatim protocol of selected meetings in the European Parliament and its Legal Affairs Committee (English and original language)  

This book documents the course of the negotiations on the “Unitary Patent Package”. It reproduces the wording of statements made in selected public meetings of the European Parliament and its Legal Affairs Committee on the “Patent Package”, thus permitting a detailed review of the different stages and developments of the legislative procedure, for instance the perception of the European Court of Justice’s opinion 1/09 on the originally planned structure of the Patent Court system, the discussions about invoking the procedure of enhanced cooperation as well as the origins of the controversies about the former Articles 6 to 8 of the “Unitary Patent” Regulation, their escalation after the European Council summit decisions in June 2012 and their resolution according to the Cyprus Council Presidency compromise proposal. 

The book "The Parliamentary History of the European Unitary Patent" is available in two different language versions, German (ISBN 978-3-7345-1071-7) and English (ISBN 978-3-7345-1742-6), more information can be found here (German) and here (English)

EPO Social Unrest: The AC speaks

The Meeting of the Administrative Council has been eagerly awaited by the intersted public and the report is available here. As a very extraordinary measure to increase pressure onto the parties to resolve the situation, the AC has published the following "resolution on the social situation":

RESOLUTION ADOPTED BY THE ADMINISTRATIVE COUNCIL ON 16 MARCH 2016
 The AC,  

in its capacity as supervisory organ of the EPOrg
- having repeatedly expressed its deep concerns about the social unrest within the EPOffice;
- having repeatedly urged the EPOffice President and the trade unions to reach a consensus on an MOU which would establish a framework for negotiation between social partners;
- noting that disciplinary sanctions and proceedings against staff or trade union representatives have, among other reasons, made it more difficult to reach such a consensus;
- noting that these disciplinary sanctions and proceedings are widely being questioned in the public opinion; recalling the importance and the urgency of the structural reform of the BOA;
- recognizing the important institutional role of the AC and its dependence on a well-resourced and independent secretariat;  

Calls on both parties to the social dialogue to recognize their responsibilities and to work diligently and in good faith to find a way forward, and:  

Requests the EPOffice President

• to ensure that disciplinary sanctions and proceedings are not only fair but also seen to be so, and to consider the possibility of involvement of an external reviewer or of arbitration or mediation  

• pending the outcome of this process and before further decisions in disciplinary cases are taken, to inform the AC in appropriate detail and make proposals that enhance confidence in fair and reasonable proceedings and sanctions;  

•  to submit to the AC a draft revision of the Staff Regulations which incorporates investigation guidelines (including the investigation unit) and disciplinary procedures which have been reviewed and amended;  

• to achieve, within the framework of the tripartite negotiations, an MOU simultaneously with both trade unions, which would have no pre-conditions or exclude any topics from future discussions;  

• to submit proposals to the AC at its June 2016 meeting, after discussion in B28, for immediate implementation of the structural reform of the BOA, on the lines of the 5 points agreed by the AC at its December 2015 meeting and of the legal advice given by Prof. Sarooshi, and taking into account comments from the Presidium of the BOA;  

• to submit proposals to the AC at its June 2016 meeting, after discussion in B28, for reinforcement of the AC secretariat and a clarification of its position in terms of governance. 

Requests the staff representation and the Trade Unions  

• to acknowledge the importance of firm and fair disciplinary procedures; and  

• to respond constructively to the initiatives set out above, in particular to work rapidly to an agreement on Union recognition without preconditions.

This is a strong call to order, I would say, but only a "last chance" in June 2016 with no factual progress whatsoever.  While the social situation, the disciplinary issues and the reform of the BoA have been widely discussed, there appears to be a further issue with the staffing and resources of the AC secretariat and the clarification of its role.

This blogger does not have any knowledge about 5 points agreed by the AC at its December 2015 meeting and of the legal advice given by Prof. Sarooshi. If any reader knows more about this, we would be pleased to share this information.

A separate report on the 19th meeting of the select committee will be published on the EPO website within short.

"Up to the hilt" and "beyond reasonable doubt" - any difference?

In the EPC case-law, the standard of proof for the public availability of documents or information which are completely under the control of one of the parties (e.g. public prior use by the party) is said to be "up to the hilt". The "hilt" is the part of the sword that shields the hand or is the transition part of the sword from blade to the handle and I wonder who has had the idea to use this martial expression which sounds more like medieval inquisition than like civilized EPO proceedings in well-illuminated rooms. 

In the decision T 2451/13, the board dealt with the public availability of a commercial brochure D16 bearing a "copyright date" 4 years before the filing date. Pictures identical to those of the brochure appeared in another publication. No further evidence that the brochure was indeed distributed and not kept in the drawer of the opponent had been offered. The board summarizes the case-law and concludes that up to the hilt and beyond reasonable doubt are the same thing:

If the publication date of a document originating from an opponent (or a subsidiary thereof) is in dispute, the opponent must prove that date "up to the hilt". The yardstick for this proof is that of "beyond reasonable doubt" rather than "absolute certainty" (point 3.2).

The more detailed reasoning is as follows:

3.2.4 T 472/92 did not specify precisely the conditions to be fulfilled in order for a party to prove its case "up to the hilt". However, when discussing the disputed issues, the board stated that its conclusions were based on "... an extremely high degree of certainty", which is thus clearly the yardstick - rather than "absolute certainty" - for "up-to-the hilt" proof. It is thus evident that the standard of "up to the hilt" does not require absolute certainty but that "an extremely high degree of certainty" suffices.

3.2.5 In subsequent decisions T 97/94, T 55/01 and T 2/09, this standard of proof was consistently interpreted to mean "beyond reasonable doubt":

"According to this decision [T 472/92], where practically all the evidence lies within the power of the opponent, the assessment of probability which normally underlies the boards' opinion must cede to a stricter criterion close to absolute conviction. In other words there should be a degree of certainty which is beyond all reasonable doubt" (T 97/94, point 5.1, insertion in square brackets by the present board).

"It is true that, in cases where only one party has access to information about an alleged public prior use, the case law has tended towards expecting that the public prior use be proved beyond any reasonable doubt ("up to the hilt"), answering the typical questions "What?", "When?", "Where?", "How?" and "To whom?", since the other party was reduced to merely pointing out inconsistencies or gaps in the chain of evidence; see T 472/92, reasons, point 3.1 (OJ EPO 1998, page 161)" (T 55/01, point 4.1).

"However, especially in cases where only one party had access to information about an alleged public prior use, the case law has tended toward expecting that the public prior use be proved beyond any reasonable doubt or "up to the hilt" (see e.g. T 55/01, point 4.1 of the Reasons, and T 472/92, OJ 1998, 161, point 3.1 of the Reasons)" (T 2/09, point 3.2). Also in T 782/92, where a public prior use by the opponent had occurred, the standard of proof of "beyond reasonable doubt" was applied (point 2.2).

Lastly, in decision T 1553/06 (point 6.3.3), which dealt with the public availability of internet disclosures, it was stated that "Contrary to the opponent, the board regards the terms "beyond reasonable doubt" and the more colloquial term "up to the hilt" as being equivalent".

3.2.6 The board agrees with the appellant that the standard "up to the hilt" also applies to the present case. Document D16 originates from a company (Gerber) which is now a subsidiary of the respondent.

Therefore, all the evidence about the publication date of D16 is essentially in the hands of the respondent. It thus has to be examined whether the respondent has proven beyond reasonable doubt that D16 was available to the public before the priority date of the patent.

D16 addresses parents and gives them instructions on how to feed their infants. In view of this, it would be contrary to life experience to assume that D16 was not published but rather kept by Gerber in the drawer for about 4 years, i.e. until at least (after) the priority date of the patent. This is corroborated by D17, which is an advertisement of Gerber in the spring 2002 edition of the journal PediatricBasics. In this advertisement, Gerber gives the same recommendations to parents and, in part, uses the same pictures as in D16. The board is therefore convinced that it is not only more likely than not, but quite clearly beyond reasonable doubt that D16 was published before the priority date of the patent.

German Draft Legislation for the UPC

The German Ministry of Justice and Consumer Protection (BMJV) has now published the draft ratification instrument and draft amendments to the Law on international patent conventions (IntPatÜG).

This blogger had been eager to learn how double protection would be dealt with.  Here it is: It will be possible to hold a national patent in parallel to a European Patent with Unitary Effect because, according to §15(1) of the draft amended IntPatÜG, the prohibition of double protection according to §8 IntPatÜG does not apply to European Patents with unitary effect. However, an infringement action based on such a national patent will be inadmissible if the EPC counterpart thereof is or was the subject of a procedure at the UPC (§18 of the draft legislation). This does not apply to nullity actions nor to utility models but does apply to cases where the UPC action is filed later than the national action.  The defendant may render any pending national infringement action inadmissible at any time by filing a parallel action for declaration of non-infringement.

This "prohibition of double-enforcement" is applicable for patents claiming the same priority (priority date or priority application?) and originating from the same inventor and insofar as the patents protect the same invention. In cases of doubt, the national court may stay the procedure.

The draft legislation is supposed to pass the parliamentary chambers (Bundestag and Bundesrat) in Summer 2016.

Soybean Event Does Not Imply Sexual Crossing

The decision T915/10 relates to soybean plants and soybean seeds containing a DNA insert with the name "insertion event MON89788"  which is supposed to improve the yield relative the a comparable line. The DNA can be inserted by inserting a larger section of DNA named SEQ ID NO: 9.

The board applies G 07/10 to judge wether or not claimed method is an "essentially biological process for the production of plants" pursuant to Article 53(b) EPC come to the conclusion that:

The method is defined solely by the technical process step of introducing SEQ ID NO: 9 into the genome of the plant by transformation of plant cells with heterologous DNA, i.e. a genetic engineering step introducing heterologous DNA in plant cells. The board notes that the introduced trait is due directly to the expression of the inserted DNA and is not the result of a plant breeding method characterised by crossing and selection. Indeed, the method as claimed does not require nor define steps of mixing genes of plants by sexual crossing and subsequent selection of plants, either explicitly or implicitly.

The underlined sentence above relates to the origin of the introduced trait. Does it matter if the artificially introduced trait of essentially biological origin or synthetic, i.e. if steps preceding the claimed method are essentially biological or not? The board appears to try finding the answer by drawing an analogy to "mixed" methods including crossing and selection steps and additional steps of a technical nature (emphasis added):

53. Furthermore, when considering patentability of plant breeding methods in the context of claims for methods including crossing and selection steps and additional steps of a technical nature and in contrast to the situation pertaining to processes containing a technical step which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants, the Enlarged Board of Appeal held that "[i]f, [...] such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC" (see decision G 2/07, supra, Headnote, Answer 3). This statement is considered by this board as confirming the patentability of methods for genetic engineering of plants (see decisions G 2/07 and G 1/08, supra).

Accordingly, the field of patentable genetic engineering methods outside of the realm of Art. 53(b) EPC starts where the method contains at least one step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome, irrespective of whether the preceding or subsequent steps are of essentially biological nature or what the origin of the introduced trait might be.

LCII Half-Day Conference: Regulating Patent “Hold-Up”?

Readers who share this blogger's view that the CJEU decision in the matter Huawei ./. ZTE (see e.g. here)  still leaves room for discussion will be pleased to learn that the LCII wants to offer this room in the next event:

REGULATING PATENT “HOLD-UP”? AN ASSESSMENT IN LIGHT OF RECENT ACADEMIC, POLICY AND LEGAL EVOLUTIONS

Abstract: The patent hold-up theory has nurtured many policy developments in the past ten years. On the one hand, Standard Setting Organizations (SSOs) have been exploring changes to their licensing policies, in particular in relation to the commercial implications of FRAND pledges given by holder of Standard Essential Patents (“SEPs”). On the other hand, antitrust agencies and patent courts across the globe have been confronted with several waves of cases Those proceedings have generated a thick, diverse and somewhat inconsistent body of case-law on a wide array of topics, including the availability of injunctive relief, patent valuation, portfolio licensing, practicing and non-practicing entities, etc. This conference seeks to provide a 360° state of play on patent hold-up in contemporary antitrust and patent policy.

This Half-Day conference will take place in Brussels, on February 29th, 2016. The full Conference programme is available here, Registration here.

Speakers include the most prominent scholars, judges and advocate generals in the field such that the event will surely be beneficial to all those who attend.

Mock Trial in Munich - Chris Ryan reports

Solicitor Chris Ryan was so kind to report in the mock UPC trial which had been organized by EPLIT in Munich last Friday. 

The idea of the European Patent Litigators Association (EPLIT) to run a mock UPC trial based on the famous Improver v Remington litigation of the late eighties and early nineties struck me as a really interesting idea when I first heard the suggestion. It turned out to be a fascinating and highly educational experience when it was run last Friday (22 January) at the Sofitel Bayerpost Hotel conveniently close to Munich station. 

The Improver litigation did more than establish the “Improver questions” in English law for assessing equivalence ([1990] FSR 181). It led to a series of decisions around Europe, based on the same European patent and the same alleged infringement, in which judges reached very different conclusions on the question of whether a claim for a “helical spring comprising a plurality of adjacent windings” covered a solid rubber rod with slits cut into it, which was capable of performing the same task – pulling out hair when set up in an arcuate configuration and rotated at speed around its axis.

Will the arrival of the UPC repair the fault line in the European Patent system, which the Improver story so clearly identified? On the evidence of the mock trial it will do just that. The “mock” Local Division in Munich reached a decision on validity and infringement which took effect in every designated Member State albeit that it may take time to develop a body of interpreted law and procedure that is consistent across the territory of the EU and distinct from that of the individual Member States from which judges may be drawn.

The panel of judges consisted of Prof Haedicke (Oberlandesgericht in Düsseldorf), Mr Zigann (Landgericht in Munich) and Mr Van Walderveen (District Court in The Hague). They were joined by Mr Klein as Technical Judge (formerly of the Boards of Appeal of the European Patent Office). 

The patent proprietor was represented by Rainer Beetz (Sonn and Partner, Austria) and Leythem Wall (Finnegan Europe LLP, Great Britain). The defendant was represented by Marek Lazewski (Lazewski Depo and Partners, Poland) and Jan Stein (Ipracraft AB, Sweden). The case documents had been prepared by these representatives together with Markus Rieck (Fuchs Patent Attorneyes, Germany).

I found the main trial (in the afternoon) was slightly less interesting than the Case Management Conference which preceded it in the morning. The final conclusion was that the patent was valid and infringed. However, it was not the outcome that I found most interesting. It was the differences in approach adopted by advocates and judges and the manner in which the presiding judge ran the business of the trial.

On the first point, the debate on validity turned on inventiveness over two elements of prior art. It was not entirely clear (to me, at least) which of several available tests for determining inventiveness was being relied on at different stages of the debate between the judges and the advocates, or in the judges’ deliberation over their conclusion. Similarly, in respect of the infringement issue, all parties seemed to agree that two questions required to be asked by the judges but were unsure whether there was a third question and, if so, what it should be. I suspect that all the judges were deliberately staying within the comfort zone of the approach that would be adopted at each stage within their own domestic courts. Their approach certainly illustrated the challenge facing the UPC (at both first instance and appeal level) of establishing a body of jurisprudence over time which will be distinct from the law emanating from national courts. 

The second point that struck me was the power of the presiding judge in setting an agenda and then outlining each issue in some detail before inviting the parties’ advocates to address it. It may be, of course, that the stark contrast with the way in which a case would be conducted in London was accentuated by the artificiality and time constraints of a mock trial. And no doubt those familiar with EPO hearings will find the inquisitorial approach and management of the debate on each issue more familiar. It certainly led to a crisply efficient disposal of each element of the case and the dispute as a whole.
Firm management of the process and the emergence of national differences in approach were even more evident during the Case Management Conference.

The organisers of the event had tweaked some of the facts of the original case in order to create some interesting preliminary issues. Had the proprietor opted back into the exclusive competence of the UPC in time where the defendant had issued an application for a declaration of non-infringement in the English Court on the same day as that on which the application to opt back in was entered on the register (Rule 5.9 – opt out not permitted where “an action has been commenced before a court of a Contracting Member State …prior to the entry of the [opt back in] Application in the register…”). If it had, should the UPC proceedings nevertheless be stayed under the Brussels Regulation’ requirements to avoid multiplicity of proceedings. And if the proceedings were still on their feet after those two challenges did the Local Division have jurisdiction over the dispute, given that, first the only sales in Germany had been a couple made by a third party who had acquired the goods in Poland and on-sold them in Germany against the wishes of the defendant and, secondly, very substantial sales had been made in the UK. 

There was also an application at the Case Management Conference to strike out the claim of literal infringement because it was unarguable (application granted by the Rapporteur but reviewed at the main hearing, when the ruling was reversed) and the court required the claimant/plaintiff to amend the request for remedies (prayer for relief) by providing a great deal more detail as to the scope of the injunction sought. The amended version available at the main hearing tracked the language of the relevant patent claims in identifying which products would be covered and even included a photograph of the defendant’s product. The difference between the precision of drafting expected in, for example, the German courts was contrasted with the broad scope of injunction sought and granted in the English courts. In this case the German pattern prevailed, designed, it was said, so that a court bailiff called upon to enforce it would have no doubt as to whether a product he came across did or did not fall within the scope of the court order. 

Other issues touched upon included the language of the proceedings (English because it was one of the languages which the Local Division had designated), translation facilities at the main hearing, summoning of witnesses, the appointment of a technical judge and, in the light of his appointment, the need for any expert evidence (and in which field of technology), as well as security for costs.

Listening to the well-structured submissions on each of the issues raised, and then eavesdropping on the judges as they considered their decision, proved to be an extremely effective means of improving (gaining) familiarity with the relevant procedural rules. 

The judges helpfully paced both the debate with the advocates and their own deliberations to assist the audience in tracing each issue, and the decision made on it, back to the language of the current draft of the rules. 

Judges, advocates and organisers are to be congratulated on an extremely informative and interesting learning experience. Another success for the increasingly effective Association which brings patent attorneys together from around Europe in its continuing efforts to assist their preparations for the new court and to influence the way it will operate.

This blogger is very grateful for this report because he was unable to attend to the event himself.  The report confirms my impression form previous mock-trials that the degree of activity of the presiding judge in managing the discussion in the trial and asking questions is one of the aspects of procedureal law which is still entirely unharmonized.  Mock trials with international panels really give an impression on the clash of (legal) cultures we will be experiencing once the UPC is up and running.