UK Blocks the Unified Patent Court

The Financial Times reports that the "patent deal" which was supposed to be agreed upon at the EU summit today was blocked by the UK.

The constant criticism of the experts in the field, which had found their way into the report of the UK Scrutiny Commitee, appear to finally have reached Mr. Cameron, who surprisingly made a gleam of reason shine in this discussion. As the FT reports:

Mr Cameron offered to withdraw his call for the court to be in London if the European Court of Justice – the EU’s highest court – were stripped of ultimate jurisdiction over Europe’s reformed patent system.

This offer was preceded by van Rompuy's proposal to split the court into three parts - the central division being located in Paris and two other divisions in London and Munich respectively and by a Franco-German deal to cut out London, which was allegedly agreed by Mr Hollande and Ms Merkel on Wednesday night (see the FT article).

Latest News: As reported on the IPKat and here (via the reliable german press ageny DPA), van Rompuy's compromise has now been adopted. Further, according to this source, the London branch will deal with the administrative matters and the substantive jurisdiction will be distributed based on the technical field over the 3 cities.

Oral Proceedings before the EPO: event for fledglings

"Oral Proceedings at the European Patent Office" is the title of Management Forum's forthcoming course on that very subject, to be held at the Rembrandt Hotel, London, on 9 and 10 July. As the organisers explain:

The course has been designed for people who are facing their first EPO Oral Proceedings and are rather apprehensive about it, and also for people who have done it before but would like to learn how to do it better. After some tuition and guidance all the delegates are given a patent and have to prepare and present their case (defence and attack) in a court setting, and also experience what it’s like to sit on the Board.

Not surprisingly, participants feel that it’s much better to try out their fledgling advocacy skills for the first time in a safe environment, and without clients’ money at stake! The seminar leaders are Dr George Woods, formerly of the EPO, and William Chandler, a current EPO Appeal Board Member.

Management Forum have kindly offered a 15% discount on the course fee to readers of the IPKat weblog, but the Kat thinks it is more likely to benefit readers of PatLit -- particularly those who are involved in the cut-and-thrust of oppositions and have to deal with real live protagonists as well as the Board itself.  If you want to know more about the programme you can find further details from Management Forum's website here.  To get the benefit of the IPKat readers' discount, please quote code JL30 and be prepared to go "miaow" if challenged.

Mediation, expansion of Opinion service, are open for consultation

Fiction: the disputants are angry,
the mediator is happy. Reality?
The mediator can get fairly
frazzled too ...

There's a new consultation on plans to expand the UK Intellectual Property Office's Patent Opinions service -- a reasonably priced, good quality and surprisingly little used means of getting an expert opinion on the validity of a patent or its scope of protection which can assist greatly in the decision to bring an action -- or to defend one.

There are two sets of proposals on the table: one is for the expansion of the Patent Opinion service to cover supplementary protection certificates (SPCs) for pharma and agrichemical patents. While it seems quite illogical to exclude them, I doubt that the availability of this service would  make much difference in practice to whether SPC-related litigation was launched or not.  The other set of proposals relates to an SME-directed Mediation Service.  According to the BIS web page:

"The Intellectual Property Office (IPO) ... set out proposals to expand its Patent Opinions Service and is seeking views from business on how to improve its Mediation Service.

The Government is committed to providing SMEs with the economic environment and framework they need to grow. The Hargreaves Review identified a number of barriers facing SMEs trying to making the most of their Intellectual Property. One of these was the cost of managing IP, in particular resolving disputes surrounding the enforcement of their own IP rights and defending themselves against allegations of infringement made by others.

...  The IPO’s Patent Opinions Service allows individuals or companies to request an opinion on the validity or infringement of a patent and is well used. A review of this service demonstrated a high desire from users for expansion of the service to aid resolution of further patent disputes. Government is now consulting on the following proposal:

• expanding the questions relating to patent validity that can be the subject of an opinion; 

• expanding the service to offer opinions as to whether a Supplementary Protection Certificate ('SPC') is valid or is infringed; 

• giving the IPO the power to consider revoking a patent following issue of an opinion which concludes it is invalid.

The IPO provides a Mediation Service to any parties involved in an IP dispute who wish to resolve matters without resorting to the Courts. However, uptake of this service is low and the IPO is therefore seeking comments and supporting evidence from key stakeholders and IP right holders on the reasons for this. This will be used to determine what service, if any, the IPO should be offering to support speedier and lower cost dispute resolution".

The Mediation consultation will run for six weeks, ending on 24 July 2012 and your response should ne emailed here.  The Patent Opinions Service consultation will run for 12 weeks and concludes on 4 September 2012. Please send your comments here.

Inspection of redacted documents in patent trials

Don't ask for a copy of this extempore judgment, since it's not on BAILII and you'd need to be a Lawtel subscriber to read the Marten Walsh Cherer computer-aided transcript, but Danisco A/S v Novozymes A/S [2012] EWHC 1641 (Pat) is an interesting little Patents Court, England and Wales, judgment from Mr Justice Arnold (yes, he can produce short judgments too: this one covers just four sides). The topic is a delicate one: disclosure of documents and the inspection of redacted [i.e. censored] parts of them.

In short, Daniusco applied for specific disclosure and/or inspection of certain documents in the possession of Novozymes, this being in the course of Danisco's application to revoke a Novozymes patent, there being parallel proceedings in respect of the same patent before the European Patent Office (EPO). One of the documents, a May 2009 report, had been redacted for disclosure but Novozymes' solicitors let Danisco's solicitors inspect it.  Inspection of further redacted monthly reports was also sought. In Danisco's view was that disclosure of the document  was necessary in order to help it understand documents already disclosed; that the redacted parts of the May 2009 report should not have been redacted in the first place and that they were in any event relevant to the dispute; and that the redacted parts of the further monthly reports were relevant to Novozymes' evidence of its production capacity in 2004/5.

Arnold J allowed the application in part. In his opinion:

• The document in question set out the statistical method which was referred to by a number of disclosed documents.  Danisco was not just speculatively fishing when seeking it, but it still had to be asked whether it was actually relevant to the dispute which was the subject of the litigation.
  
• The document was actually necessary in order to understand the figures in another document that had already been disclosed -- though ultimately it might not possess any evidential weight.
  
• Disclosure of that document would not place any substantial burden on Novozymes, nor was it unfair to ask Novozymes to disclose it with the EPO hearing being just two weeks away. In any event, Novozymes could have disclosed the document earlier and, regarding the EPO hearing, the EPO would not allow Novozymes to be prejudiced by this disclosure.
  
•  As to the redacted parts of the May 2009 report, inspection would be ordered.  The report was sufficiently relevant to be able to support Danisco's case or undermine Novozymes'.  If this wasn't a patent trial, disclosure would have been ordered, the problem here only being that Danisco's application for inspection was made outside the four-year window for disclosure in patent cases. Again, no burden would be placed on Novozymes in complying with the inspection request.
  
• Disclosure of the redacted parts of the further monthly reports would not be ordered: they post-dated the issues to which Danisco claimed they were relevant by one-and-a-half to two years.

Federal Circuit Rules That Standard For Pleading Patent Infringement Less Demanding Than Other Civil Actions

The U.S. Court of Appeals for the Federal Circuit recently considered the standard for pleading direct patent infringement in light of several recent Supreme Court cases that increased the amount of factual allegations necessary to state a claim in a civil action. R+L Carriers, Inc. v. DriverTech LLC (In re Bill of Lading Transmission and Processing System Patent Litigation), Case No. 2010-1493 et al., (Fed. Cir. June 7, 2012). Traditionally, civil claims in U.S. federal courts were scrutinized under a relatively generous "notice pleading" standard, which required only that the allegations fairly notify the defendant of the claim. In two cases, Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009), the Supreme Court chipped away at the concept of notice pleading, requiring that a pleading allege sufficient facts so that the allegations, taken as true, stated a claim for relief that is plausible on its face.

In R+L Carriers, the district court dismissed a 100-page complaint alleging direct and indirect patent infringement for failure to plead a claim under Fed. R. Civ. P. 8(a)(2). The Federal Circuit reversed the dismissal of the direct infringement claim. The appeals court noted that the appendix to the Federal Rules includes Form 18, which is a form patent infringement complaint. That complaint only alleges: “(1) an allegation of jurisdiction; (2) a statement that the plaintiff owns the patent; (3) a statement that defendant has been infringing the patent ‘by making, selling, and using [the device] embodying the patent’; (4) a statement that the plaintiff has given the defendant notice of its infringement; and (5) a demand for an injunction and damages.” R+L at 14, quoting McZeal v. Sprint Nextel Corp., 501 F.3d 1354, 1357 (Fed. Cir. 2007). The court noted that under Fed. R. Civ. P. 84, the forms accompanying the Federal Rules “suffice under these rules and illustrate the simplicity and brevity that these rules contemplate.”

Thus, the Federal Circuit concluded that Rule 84 and Form 18 govern the sufficiency of a patent infringement allegation, and that standard can be changed only through the established procedure for promulgating and amending rules, not by court decision (although, somewhat ironically, Supreme Court approval is one step in the amendment process). The appeals court concluded that, “[T]o the extent the parties argue that Twombly and its progeny conflict with the Forms and create differing pleading requirements, the Forms control.” R+L at 15.

As a result, the Federal Circuit’s standard for pleading patent infringement is arguably more generous than the standard established by the Supreme Court in Twombly and Iqbal for other civil claims.  For example, the Federal Circuit held that R+L’s complaint was adequate even though it did not identify a single customer who purchased and used the accused product. In addition, the pleading did not require specific factual allegations concerning how the elements of the asserted claims were infringed, or even which claims the plaintiff was asserting.

Notably, the court held that Form 18 only applies to pleadings alleging direct infringement under 35 U.S.C. § 271(a). Allegations of indirect infringement, such as contributory infringement under 35 U.S.C. § 271(c) or active inducement under § 271(b) continue to be governed by Twombly.

Judge Posner Changes Mind, Orders Injunction Hearing

In his preliminary order dismissing the Apple v. Motorola patent case, Judge Richard A. Posner cautioned that he might change his mind before issuing a final decision.  Now he apparently has, although the change does not necessarily reverse his view that a right to damages or injunctive relief is an essential element of a patentee's infringement claim.  On June 13, Posner issued a one-paragraph order requiring the parties to appear on June 20 for an evidentiary "eBay" hearing where "[e]ach party may argue that it would be entitled to injunctive relief as to its patent or patents were the other party found to have infringed."  Stay tuned for more twists and turns in this case.

Judge Posner Suggests That Damages Required For Viable Infringement Claim

U.S. Circuit Court Judge Richard A. Posner, a very influential jurist who sits on the U.S. Court of Appeals for the Seventh Circuit, is sitting as the trial judge by designation in the contentious patent infringement litigation between Apple Inc. and Motorola Mobility, Inc. (subsequently acquired by Google, Inc.) pending in the Northern District of Illinois (Case No. 1:11 cv08540). In that lawsuit, Apple and Motorola each assert that the other company infringes multiple patents relating to smartphone technology, including operating systems and touchscreen technology. Recently, practically on the eve of trial, Posner issued a two-page preliminary order cancelling the trial and indicating that he intends to dismiss all pending claims with prejudice.

Although he stated that he would explain his rationale more fully in a forthcoming written decision, Posner suggested that dismissal was required because neither side could prove a right to damages or injunctive relief. In light of his prior evidentiary rulings rejecting the proposed expert damages testimony of both sides, including for failure to meet the standard of technical reliability established in Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993), Posner concluded that neither side was able to prove infringement damages. Thus, he noted cryptically, that failure of proof meant that each claimant failed to create a genuine issue of fact for trial, and all infringement claims would be dismissed on summary judgment.

In addition, Posner noted that although neither company could prove damages, they both contended that damages were adequate to remedy infringement of their patents, so no injunctive relief was available. See eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). Furthermore, he noted that an injunction was not available because “injunctive relief would impose costs disproportionate to the harm to the patentee and the benefit of the alleged infringement to the alleged infringer and would be contrary to the public interest[.]” He also declined to enter declaratory relief.

Thus, it appears that Posner views an entitlement to actual damages, or at least a right to injunctive relief, to be essential for a viable infringement claim, despite the language of 35 U.S.C. § 271(a) (“whoever without authority [practices] any patented invention during the term of the patent therefor, infringes the patent.”). Finally, although Posner noted that a full decision would be issued shortly, he cautioned that in the course of preparing that decision, “I may change my mind.”

TRIPS and trade winds:Spanish injunctions and chemical-pharmaceutical patents

From Fidel Porcuna de la Rosa (Senior Associate, Bird & Bird's Madrid office) comes this fascinating note about the efforts that have been made to delineate the scope of patent protection for chemical and pharmaceutical compounds under pre-TRIPS era Spanish patent law. Fidel writes as follows:

"New winds blow for chemical-pharmaceutical patents in Spain

For almost the past two years, the Supreme Court has been repeatedly reversing the Spanish PTO's dismissal decisions to admit and advertise new revised translations of old --but still in force-- EP pharmaceutical patents so as to include product claims. The decisions, regarding a number of active ingredients (voriconazole, sildenafil, tolterodine, ziprasidone, racemic atorvastatin, etc.), were based on the Supreme Court's interpretation by which the direct applicability of the TRIPS Agreement, in force in Spain as of January 1 1996, anticipated the derogation of the prohibition to protect chemical and pharmaceutical compounds under the old Spanish patent law. Although the prohibition was derogated by the time Spain joined the European Community and the European Patent Convention Treaty in 1986, its effects were extended to patents filed up till October 7 1992 following a temporal reservation introduced by the Spanish Kingdom. For the owners of such patents, this would mean in practice that they had no exclusive right over the chemical or pharmaceutical compound, but just to the method to obtain it.

These judicial decisions seemed to provide new enforceable patent rights over old EP patents for pharmaceutical companies which were then able to seek injunctions and damages derived from marketing of generic drugs that would fall under the restored scope of such rights. This has had a quite negative impact in the generic drug industry, as well as causing legal uncertainty. Indeed the Barcelona Commercial Court no. 7 granted preliminary injunctions against generic companies under the above legal grounds (Judgment 21 Feb 2012 31 Pfizer Inc. and Pfizer SLU v Kern Pharma, S.L. and others JUR2012/82689).

However, a recent decision of the Barcelona Commercial Court no. 4 (Judgment 7 May 2012, no. 130/2012) offers a fresh interpretation which, while in principle not incompatible with the Supreme Court decisions, could force innovative laboratories to step aside. The judgment dismissed an application for a preliminary injunction sought by H.Lundbeck A/S, Lundbeck España S.A. and Almirall S.A. against the use of Escitalopram by Sandoz Farmaceútica, S.A.. Bexal Faramcéutica, S.A., Cinfa, S.A., Laboratorios Stada, S.L., Actavis Spain, S.A. and many other generic drug laboratories.

The facts are essentially as follows: In 2 February 1995 Lundbeck obtained the EP 347066 on Escitalopram, which expired on 1 June 2009 but for which a SPC was granted until 1 June 2014. Lundbeck's EP 347066 consisted of three different set of claims corresponding to three different groups of the Contracting states designated in the application. While in the first group (AT, BE, CH, DE, FR, GB, IT, LI, LU, NL, SE) Lundbeck protected product claims, in the second (ES) and third group (GR) it obtained method claims. This was due to Spain and Greece's reservations to the European Patent Convention Treaty against patentability of chemical and pharmaceutical compounds. In 30 March 1995 Lundbeck validated the EP in Spain by filing along with the corresponding petition a translation into Spanish of the process claims just granted by the EPO. More than a decade later (24 August 2006), convinced that the derogation of the prohibition to protect chemical and pharmaceutical compounds under the old Spanish patent law was anticipated by the TRIPS Agreement, Lundbeck petitioned to the Spanish PTO to advertise a new translation into Spanish of the EP 347066. This time it was about the set of claims granted for the first group of Contracting states. After much to-ing and fro-ing with the Spanish PTO and the Administrative Courts, the Supreme Court approved the petition and the new product claims were advertised. Lundbeck then addressed the now unauthorized use of Escitalopram products and filed preliminary injunctions before the Barcelona Court against the above companies, some of which would have by then have been marketing Escitalopram products for some time.

The Barcelona Court considered that Lundbeck's manoeuvre failed. The Court noted that the Spanish set of claims was narrower than the set of claims of the first group of Contracting states because it only contained method claims, and not product claims, and so was the subject matter of the validation of the EP 347066 in Spain. It added that Lundbeck requested the Spanish PTO, after several years of the patent being granted, to admit and advertise a new translation of the EP 347066 including product claims which corresponded to the original set of claims for the first group of Contracting states. In the view of the Court, seeking protection for such product claims would extent the original scope of the Spanish portion of the EP. For such translation to be valid, Lundbeck should have first requested the EPO to extent the scope of the set of claims granted for Spain. But the Court reminded that neither the EPO nor national patent office can extend the scope of the EP claims. In particular they can't extend the scope of any of the original set of claims corresponding to each group of Contracting states. This being so, the translation was no more than a circumvention leading to to a dead-end. Additionally, whether the Supreme Court accepted such new translation to be admitted and advertised in the Spanish official gazette, that would not mean to be enforceable for the new translation could never be considered narrower than the original version of the Spanish set of claims, and hence these --composed only by method claims -- would always prevail as the authentic text (section 11 Implementing regulation no. 2424/1986 of the European Patent Convention Treaty in Spain)".

Slumming it? Multinationals take the cheap option

Unilever Plc v S C Johnson & Son Inc [2012] EWPCC 19 (25 May 2012) is an unusual example of a case in which two multinational corporations crossed swords in the Patents County Court (PCC), England and Wales -- this being the tribunal which, as readers of this weblog will probably know by now -- was set up as a cheap, user-friendly and relatively informal cost-capped alternative to the relatively expensive option of litigating in the Chancery Division's Patents Court. This fact prompted Judge Colin Birss QC to make the following comment at [4]:

"The action was commenced in the Patents County Court on 27th July 2011 [ie ten months ago, for revocation of two patents] and has been conducted under the PCC rules. One might ask whether a case between two multinational corporations is suitable for the PCC. Since neither side suggested the matter should be transferred, the question did not arise. I can say this much. In terms of the issues to be decided, the case is clearly suitable for the PCC. There has been no disclosure and the evidence consists only of reports from in-house experts on both sides.  ... As far as I can tell [, the one and a half day trial] has been run expeditiously and without major cost."

True, there wasn't much law to bandy around, but the point is made clearly enough: the PCC provides an attractive alternative to the more up-market Patents Court and, whether SMEs and individuals make much use of it or not, we may certainly expect big and well-resourced litigants to do so.  Incidentally, Judge Birss has been doing quite a bit of work as a High Court judge too over the past couple of years -- so parties opting for the PCC may find themselves before the same judge they might have been allocated had they taken the Patents Court route.

Silence Speaks a Thousand Words

PatLit is delighted to host this guest post from Liz Cohen, a partner in Bristows and an enthusiastic patent litigator. Liz writes on a topic which is of great evidential value and philosophical interest: the extent to which it is permissible to draw an inference as to the intention of a party which is based not on what it says but on what it declines to say:

"Silence Speaks a Thousand Words

The recent case of Merck Sharp Dohme Corp and Bristol -Myers Squibb v Teva [2012] EWHC 627(Pat) is the latest in a long line of cases in the pharmaceutical arena where a generic company, (in this case Teva), has faced an application for an interim injunction to prevent it launching a generic drug pending full trial. The case law before the English and Welsh Patents Courts is well established in relation to such applications, the deciding factors being those established almost 40 years ago by the then House of Lords in American Cyanamid v Ethicon Limited [1977] FSR 593 (archived on BAILII here). Although subject to some occasional fine-tuning, the factors that the Court must consider in deciding whether to make an order for an interim injunction remain by and large the same:

i. Is there a serious issue to be tried; 

ii. If so, would damages be an adequate remedy for either party? 

iii. If not, where does the balance of convenience lie?

It is this last criteria that is usually the subject of most evidence from both sides and where much time is spent in the development of arguments and submissions to convince the Court to make the order for an interim injunction or, alternatively, dismiss the application altogether.

However, this case serves as a sharp reminder that it can also be what, is at best, not said, and, at worst, deliberately omitted, that can be just as important to the Court as the wealth of written evidence and submissions served in deciding the application for an interim injunction, and was in fact critical in this case.

The case related to a patent (EP 0 582 455) owned by Merck and Bristol-Myers Squibb (‘BMS’) which provided compound protection for efavirenz, an anti-retroviral medicine used in the treatment of HIV and AIDS. An SPC obtained on the basis of the patent expires on 20 November 2013. Teva obtained a Marketing Authorisation (“MA”) for its efavirenz product via the Centralised Procedure, 22 months before the expiry of the SPC.

Just before Teva’s MA granted BMS’ lawyers wrote to Teva seeking an undertaking that Teva would not launch its efavirenz product in any country in which the patent remains in force. No undertaking was given by the requested deadline and BMS informed Teva that they therefore presumed Teva indeed intended to market the product imminently. In light of this, and taking into account that Teva launched its generic atorvastatin surreptitiously last summer, BMS applied for an interim injunction in the High Court of England and Wales.

In his judgment from the inter partes injunction hearing Judge Birss QC clarified that, in order to bring an action for interim relief on a quia timet basis (in other words, on the basis of a threat to infringe, rather than an actual act of infringement), as BMS had here, a defendant must have threatened and intended to infringe the patent in question. The intention to launch did not have to be immediate – if the intention was to launch before expiry of the patent, this would be enough even if expiry was someway in the future. How this was proved would depend upon the facts of each case.

On the facts before him, Judge Birss considered that it was reasonable to infer that Teva intended to launch before the expiry of the SPC. He considered the timing of the MA (as noted above, just less than 2 years before expiry) and the absence from Teva of a satisfactory explanation as to why an application so far in advance of patent expiry was necessary, to be important factors. He also noted that, while a failure to offer satisfactory undertakings or indeed any form of response does not in itself prove the existence of an intention to infringe, at the interim stage it may, depending on the circumstances, be fair to draw an inference from the silence.

In arguing that an injunction should not be imposed, Teva claimed that divulging its launch date would expose a valuable commercial secret. Judge Birss agreed that the date of any launch could be a valuable commercial secret. However, the fact that Teva, a generic company, intended to launch a product on patent/SPC expiry would “not be news to anyone.” Therefore if this was Teva’s plan, they could simply have said so.

Accordingly, an interim injunction was granted to BMS pending a full trial on the merits.

This decision is in line with the rationale of English civil litigation that potential parties to litigation should communicate with each other and try to resolve disputes without recourse to litigation. While the Judge stressed that each case turns on its particular facts, this action brings strongly into focus the need for a generic company to be clear about its commercial intentions if it wishes to resist a preliminary injunction ahead of patent expiry. If it is not, it is clear that the Courts will be prepared to draw a negative inference from its silence".

Innocent Questions and the Sound of Silence

The question "should I better file an auxiliary request now?" may put judges in real trouble. 

We as attorneys rarely have the opportunity to glimpse into the minds of judges when being faced with such questions. The decision 7(W) pat 66/09 published with a headnote gives us one such rare example.

 The Bundespatentgericht BPatG had to decide in an appeal against a decision of the Opposition Division (OD - actually, the OD is identical to the examining division at the DPMA) to revoke the patent. According to the protocol, the chairman asked whether anybody had new requests before closing the oral procedure.

The patentee filed a request for correction of the protocol, in which he argued to have told the OD that he had brought auxiliary requests and asked whether he should better file these auxiliary requests and that the chairman explicitly said that this would not be necessary.

In the decision rejecting the request for correcting the protocol, the OD declared not to have said anything about auxiliary requests, neither encouraging the patentee to file such request nor that the filing of auxiliary requests was not necessary. However, the OD did not dispute that the patentee has indicated to have auxiliary requests in his briefcase.

The Bundespatentgericht decided that this "saying nothing" constitutes a violation of the right to be heard.

Accordig to the 7th senate, this right includes the right not to be caught by surprise by the decision of the court, i.e. that the decision does not correspond to what the parties might have reasonably expected as a possible result. The latter expectations may only be based on the indications the OD-gives during the procedure. Furhter, these indications do not only include explicit answers to questions of the parties. Provided that the patentee had really offered the auxiliary requests in advance, the fact that a question whether or not he should file them by now was left unanswered could be interpreted by the patentee only in such a way that he could expect his main request to be granted.

What should the OD have answered? According to the 7th senate, the OD should have answered that it is not entitled to give indications on the chances of success and that it is in the discretion of parties to file auxiliary requests or not. Given that the result is open, the OD should have said that "in the case of doubt (im Zweifel), it is always advisable to file auxiliary requests".

Proposal for Patent Law Reform in Gemany

Leutheusser-Scharrenberger looking forward to a bright new
future for the German patent law

The German Federal Government Cabinet has agreed to a proposal of the Minister of Justice Sabine Leutheusser-Schnarrenberger to reform the German patent law.

Key points include:

• The prolongation of the opposition period from 3 months to 9 months.
• The search report will include a written opinion similar to the European Search Opinion.
•  Oral proceedings in the examination procedure will become mandatory if the applicant requests it (for the current situation, see here)
• The prolongation of the delay for filing German translations of applications originally filed in English of French language from 3 months to 12 months from the filing date but not later than 15 months from the priority date. The examiner may invite the applicant to file the translation earlier in exceptional cases of particular complexity.
• Applications for which the translation is not timely filed are no longer deemed to be not filed but deemed to be withdrawn. The consequence is that the priority may still be claimed.

According to the explanatory remarks of the proposal (page 27, 1st paragraph), the DPMA will carry out the search and issue the search opinion for applications filed in English or French even if the translations are not yet provided.

The new language regime and the new legal consequence of the missing translation opens the possibility for new and very interesting filing strategies. Applicants may file their first applications in English language and will obtain a preliminary opinion prior to the expiry of the due date for filing the translation into German and decide on the basis of this opinion on his further strategy. The (slightly increased) search fees of EUR 300 are a very competitive price for a reasoned opinion and if the applicant decides to file an EP application to be validated in Germany later on, the original German application may be dropped and no translation of the full specification into German will ever be necessary.

The proposal has yet to be ratified by the Bundestag and Bundesrat.

French survey invites responses

The attention of this blogger has been drawn to a survey which may be of both interest and future significance to readers of this weblog.

In short, a number of French bodies and associations whose logos appear on this website have come together to support the project of the European Union and its Member States to create a unitary patent and a specialized jurisdiction which can give judgment in litigation relating to this patent and the European patent. Those bodies and associations represent

-Companies using these instruments via the MEDEF, the AFEP, the CGPME and their intellectual property specialists (ASPI)
-Lawyers who specialize in intellectual property (AAPI)
-Patent attorneys in private practice (CNCPI et ACPI)
-Intellectual property associations : the French group of AIPPI, LES France, the APEB, the AACEPI, the AFPPI.

The rubric goes on to explain:

In agreement with the INPI (« Institut National de la Propriété Industrielle », the French Patent Office) and with the support of all the magistrates specialising in intellectual property in Paris (Tribunal de Première Instance, Cour d’Appel et Cour de Cassation), they support the choice of Paris for the seat of the Central Division.

Setting aside political considerations which may enter into this choice, we think it is important to allow those working in the profession to set out their wishes for the organization and working of this jurisdiction.

For this reason, the enclosed questionnaire has been drawn up by people working in the profession for others working in the profession and is intended to allow us to draw the attention of the competent European authorities to the needs which need to be met.

We should be grateful if you could reply to the questionnaire so that we can all prepare the future, without delay.

PatLit readers who are responsible members of the European patent litigation community are invited to participate in the survey, which you can access via the link above or click directly here.

Planning patent litigation in Europe? This may be for you

Bad news for supporters of bifurcation? German
invalidity proceedings take a lot longer than
infringement proceedings

I've recently learned from my friend Derek Tong (Managing Editor, Bloomberg BNA) that his title World Intellectual Property Report has now published the first of a six-part series by Jonathan Radcliffe (a partner in Mayer Brown's London office) which seeks to explore the strategic and planning considerations for patent litigation in Europe. Says Derek,

"Given the multinational nature of many patent disputes, Jonathan sets out to provide an understanding of the distinctive differences that operate within European jurisdictions and how these might be deployed to maximum advantage when managing an international patent litigation campaign".

You can access this series via Bloomberg BNA's IP and Communications Newsletter here (this page also offers links to other IP topics) or you can click directly on to it here

China Patent Forum: special offer

Readers of the IPKat weblog have been offered a substantial discount on the normal registration fee for a forthcoming Management Forum event, the China Patent Forum on Thursday 31 May.  There appears to be no reason why readers of PatLit who are not also readers of the IPKat should not be able to take advantage of the same offer. A substantial proportion of the programme is devoted to patent litigation and its alternatives.

Essentially, it's a day of good conferencing for £250 plus VAT, for which you can also pick up accreditation.  Click here for details.

UK Scrutiny Committee: unified patent proposal excoriated; Minister "oddly detached"

"Europe’s Unified Patent Court will hinder SMEs, not help them, say MPs" is the title of a press release issued by the British Parliament's European Scrutiny Committee -- a cross-party body of elected Members of Parliament which examines European legislative proposals and advises Parliament as how to respond to them. It reads as follows:

The draft agreement on the Unified Patent Court (UPC) is likely to hinder, rather than help, the enforcement of patents within the European Union, says the European Scrutiny Committee in its report, published today.

The Committee has held the draft agreement on the UPC under scrutiny since September last year. There has been vehement opposition to the draft agreement from national and European patent professions.

The Committee is particularly concerned about the effect the agreement would have on small and medium sized businesses (SMEs) who are supposedly the main intended beneficiaries. The patent profession was overwhelmingly of the opinion that the current draft of the UPC Agreement would actually increase litigation costs for SMEs and be far more burdensome than the existing system in the UK.

The overall aim of the UPC was to allow SMEs in particular to be able to obtain a single patent covering 25 countries at an affordable cost. However, the Committee heard that very few SMEs actually require protection in all 25 States and so cost savings would not be as great as was expected, and that litigation before the UPC was likely to be convoluted, expensive and protracted.

The Committee says that it is vital that the UK Government adopts a strong position reflecting the concerns of practitioners in the final negotiations of the agreement, as well as calling for the Central Division of the UPC to be in London in order to mitigate the most damaging effects of a unitary EU-wide patent.

Chairman of the European Scrutiny Committee, Bill Cash, says

“Although the theory of a single EU-wide patent - with a single court to administer it - has long been thought desirable, the practice has long been elusive. These latest proposals appear, regrettably, to be a further example of this. They would increase costs for SMEs and hinder the enforcement of patents within the EU, particularly by giving additional jurisdiction to the Court of Justice of the EU and not allowing the invalidity of a patent to be a defence to infringement proceedings. The negotiations have been rushed and effectively excluded the views of European patent professions.

“We found the responses of the Minister, Baroness Wilcox, oddly detached from the evidence we heard on these important points. This appears now to be a damage-limitation exercise but the UK Government must bring the practical concerns we heard to the table as negotiations conclude, and in particular ensure that the Central Division of the UPC sits in London.”

You can read the full report here.  It is 103 pages in length and consists of one of the most detailed and pertinent reviews of the unified patent court system that this blogger has yet seen.  Readers can expect further comment on the IPKat weblog from patent litigator Annsley Merelle Ward, whose detailed accounts of the various stages of the proposals and what passed for a debate on them have served as an effective briefing document for many of those whose submissions have helped persuade the Scrutiny Committee of its position.

Economics of litigating IP (or is that just patents?)

Both proactive and defensive  options  
can be expensive  and labour-intensive 
 for IP litigants ...

With apologies if you have already seen this on the IPKat weblog, here's a link to Nicola Searle's Katonomics post last night on the economics of intellectual property litigation. As is immediately apparent from Nicola's post, most of the data on which economists work is (i) drawn from patent litigation, since it is in numerical terms the most prevalent form of IP litigation and (ii) based on the data available in the United States.

Among the things that might particularly interest the patent-litigating reader of this weblog are the references to game theory as a means of assessing the basis on which to progress and/or settle a dispute and the question whether -- when so much information is available to both sides in a dispute -- one might expect more of them to settle without the need to go to court.

These and other matters are topics on which PatLit will be delighted to hear from readers. If anyone would like to write a critique of Nicola's post which this weblog can host, can such person please email me here and let me know.

Paint-spray, proof and prior disclosure

Wagner International AG & Others v Earlex Ltd [2012] EWHC 984 (Pat) is a decision of Mr Justice Floyd on 18 April in the Patents Court, England and Wales. Though not a major ruling, enriched by profound pronouncements of legal principle, it is nonetheless instructive for the tidy and efficient manner in which the trial judge marshalled the evidence -- and as a reminder of how easily a claimant patent owner can sow at least some of the seeds of its own defeat in court through disclosure of its own prior art in an exhibition. Wagner's patent was for a paint spray gun with venting passages in the air cap which relieved the problem of back pressure to the air source. Earlex made a spray gun which, according to Wagner, infringed. Earlex denied infringement and counterclaimed invalidity.

After comparing Earlex's products with the patent as claimed, the judge dismissed the infringement claim.  He then turned to the patent itself.

In the first place, Wagner's patent was invalid for added matter since the content of the specification of the granted patent extended beyond that disclosed in the application for the patent as filed. As if that wasn't enough, there was a problem of prior disclosure too. It appeared that at least one prototype of Wagner's paint sprayer with the venting passages in the air cap, as described in the patent, featured at their exhibition stand at the Home Center Show 1991 in Chicago, which the public could not only see but even try for themselves. The holes in the air cap would have been visible to anyone who looked at the gun with interest and there was evidence that it would be possible from an examination of the device to estimate the holes' diameters and their relative positioning on the air cap. Having installed the venting holes, the skilled person would undoubtedly have been able to make adjustments by a simple process of trial and error to avoid interference of the venting air with the paint spray, and would thereby be working the invention. The skilled person would be interested in the function of the holes, which represented a departure from the standard air cap, and would be able to establish their function without the exercise of inventiveness. Accordingly, the invention as described in the patent was obvious in the light of the disclosure at the show.

This conclusion is a neat blend of objectively provable fact, plausible hypothesis and projection of the characteristics of the person skilled in the art. Since the burden in civil proceedings is only on the balance of probabilities, inferences such as that drawn by the judge in this case are more than plausible: they are constitutive of fact.

Book Review: China Court Cases on Intellectual Property Rights

Like it or not - the rapidly developing field of intellectual property law in China including its national procedural particularities will inevitably move into the focus of everybody working in international IP prosecution and litigation. However, the non-chinese language references are still rare, such that the new book edited by Professor Zhou Lin is highly welcome to anybody doing business in china.

According to the publisher’s blurb:

This book presents, in extraordinary detail, sixteen landmark cases that profoundly affect the protection of intellectual property rights in China. Written by six prominent Chinese legal scholars and jurists – including judges who themselves participated in these decisions – each case is fully described and analysed: the parties and their representatives, the basic facts, the facts ascertained by the court, the evidence presented by plaintiffs and defendants, the judges’ opinions with their arguments and reasoning, the unanimous conclusions, and the judgment, along with a wealth of deeply informed comment.

The book includes cases covering the entire field from unfair competition over trade secrets, copyright, trademarks to patents, wherein only one of the cases is a purely patent law case. The cases are explained in detail in a language that is not always easy to read. However, it gives a good impression on the course of litigation procedures in China and on the decisive legal questions in the 16 cases in a way that is understandable for readers acquainted with the basic concepts of Intellectual Property Law.

A little bit disappointing for a book edited in September 2011 is the fact that the decisions date from 1996 – 2001. It is called an "Update and Commentary Version" of an earlier version published in 2002 in the context of the EU-China IPR Cooperation Programme. However, the updates are difficult to identify.  Given the rapid development of its subject-matter, e.g. copyright law in the internet, some more recent cases would surely be interesting. Further, the task of sorting out the special features of the Chinese case-law as compared to what is commonplace in the rest in the world is left to the reader.

Bibliographic Data:

Edited by: Zhou Lin
September 2011,  ISBN 9041134190
XV+316 pages, Hardcover
USD price: $174.00

Web page here

Australia fine-tunes non-infringement declarations

All the way from Australia comes some news from Baker & McKenzie of the Intellectual Property Laws Amendment (Raising the Bar) Act 2011, which covers a range of IP areas. This Act, which came into force on 16 April, makes provision for a number of legislative reforms that don't take effect until 15 April 2013. One such reform will interest PatLit readers since it deals with how declarations of non-infringement are pleaded. According to our source:

"The statutory reference to a person who wishes to "exploit the invention" will be replaced with a person who "has done, is doing, or is intending to do an act". This means that a person seeking a declaration will need not have sought or been granted a patent themselves in order to make use of the provision, and clarifies that a declaration can apply to a present, current or future act. An applicant for a non-infringement declaration will also be able to challenge the validity of a patent in the same proceedings".