No stay: balancing justice, speed and the chilling effect of uncertainty

Actavis Group PTC EHF v Pharmacia LLC [2014] EWHC 2265 (Pat), decided earlier this month by Mr Justice Arnold in the Patents Court, England and Wales, is yet another case involving an application for a stay. There sometimes seem to be more applications for stays than there are substantive proceedings, which says a lot about the way in which litigants have to struggle with a multitude of jurisdictions and causes of action in the Europe of today.

In this case Pharmacia owned a European patent relating to sustained release dosage forms of pramipexole, a product used for the treatment of Parkinson’s disease and restless leg syndrome. Actavis applied to revoke the United Kingdom designation of this patent on various grounds, there being parallel opposition proceedings relating to the same patent before the European Patent Office (EPO).

A dispute arose as to how quickly the EPO proceedings were likely to be resolved, both without and with expedition, and taking into account a possible appeal to the Board of Appeal and the remission of the case  by the Board of Appeal to the Opposition Division. Pharmacia then sought a stay of the UK revocation proceedings until the EPO proceedings had finally ground to a halt, while offering a number of undertakings as a sort of sweetener. These were (i) to seek expedition of the EPO proceedings, (ii) not to seek an injunction against Actavis or its customers until the determination of the EPO proceedings and (iii) only to seek damages of 1% of Actavis' net sales during the period from launch until the determination of the EPO proceedings if the patent was held valid both by the EPO and in the UK.

Actavis was unhappy with this, submitting that a stay should be refused because the proceedings regarding the UK segment of the patent would be resolved significantly earlier than the EPO proceedings and that the decision regarding the UK would provide it with reasonable commercial certainty, at least in the UK, and might assist in promoting settlement.

Arnold J, in a brief (33 paragraph) judgment, dismissed the application for a stay.

* the court's discretion to grant a stay of proceedings, which was very wide, should be exercised to achieve the balance of justice between the parties, having regard to all the relevant circumstances of the particular case;

* while that discretion was indeed wide, previous cases suggested that the default option was that the proceedings should be stayed. It was thus for Actavis to show why no stay should be granted.

* resolution of the proceedings before the courts in England and Wales was likely to take two years. In contrast, while both the Opposition Division and the Board of Appeal were likely to expedite the proceedings, neither the fact of expedition nor its outcome could be guaranteed.

* even with expedition, the EPO proceedings were likely to take at least three years to resolve -- possibly considerably more, if the Board of Appeal remitted the case to the Opposition Division.

* if the national proceedings were stayed, the oppositions failed and the national proceedings were then resumed, they would not be resolved until at least five years from now. In terms of commercial certainty, the starting point was to consider what Actavis’ position would be if there were no stay: it would be exposed to commercial uncertainty with regard to its position in the UK during the two years it would take to resolve the national proceedings.

* while the competing considerations were finely balanced, ultimately they favoured the refusal of a stay.

Arnold J's observations concerning the undertakings that Pharmacia was willing to offer is worthy of note. he said, at [30]:

"... Pharmacia's undertakings go a considerable way to reducing the commercial uncertainty to Actavis in the UK if the English proceedings are stayed, but in my judgment not quite far enough. While they do largely eliminate the commercial uncertainty during the period of the stay, and indeed give Actavis the positive benefit of ensuring that it can get on the market during that period rather than having to rely upon a claim under a cross-undertaking in damages, the problem is that they do not address the uncertainty caused by the prospect that Actavis may be removed from the market by an injunction in, say, five years' time and may have to pay ordinary damages or account for its profits for the last two of those years. That uncertainty will inevitably have a chilling effect on Actavis' investment decisions".

No stay of UK patent revocation proceedings in favour of later-filed Northern Irish court action

In Kayfoam Woolfson v Recticel SA & Recticel Ltd, BL O/315/14, 17 July 2014, UK Intellectual Property Office (UKIPO) hearing officer Phil Thorpe held that the UKIPO did have had jurisdiction to hear an application for revocation of a patent on the basis that the issue of revocation would not more properly be determined by the court.

By way of background, Recticel had already commenced infringement proceedings against Kayfoam in the Intellectual Property Enterprise Court (IPEC), England and Wales. As it happened, Recticel had discontinued its claim before Kayfoam's application for revocation was filed; although Kayfoam had reserved its position without actually opposing the discontinuance of Recticel's infringement proceedings, that reservation did not keep the action alive. Accordingly there was no action pending before the court at the date of filing f Kayfoam's revocation application.

As it happened, Recticel had also commenced infringement proceedings in Northern Ireland (also part of the United Kingdom, therefore covered by the same patent, but with its own separate judicial system).  However, Kayfoam's application for revocation before the UKIPO had been made before Recticel's Northern Ireland complaint was served.

Haqving taken all the relevant factors into account, the hearing officer concluded that this was not one of those cases that would be more properly determined by the court. Both the UKIPO proceedings and the Northern Ireland proceedings were still in early stages, which meant that there wouldn't be too much wastage and inconvenience if a stay were ordered. The stay would however be refused because the present situation was caused by Recticel discontinuing its IPEC action.

"Limitation and Amendments of claims during litigation" -- a report

"Limitation and Amendments of claims during litigation" was the theme of a conference held in Milan last month, the details of which were sent to us by our good friend Anna Maria Stein (Franzosi Dal Negro Setti). Anna Maria promised to keep PatLit informed of what transpired at this attractive event and, true to her word, this is what she says: Dear Jeremy,

This is a short update on the Conference on claims amendments. John Allen made a great speech and he was very appreciated by the audience [and indeed by all of us: see Katpost here].

1. The European Patent Convention allows limitations and modifications of claims after grant. Articles 105(a) and 123 EPC. When this is done at the EPO (central limitation), the effects are regulated (in a not totally clear manner) by Article 68 EPC. But also most national laws allows limitation or modification of claims of granted patents (local limitation). Each member state may behave differently: local limitations are governed by national laws. These laws should be in conformity with the European system, but full conformity is not guaranteed. The result is that a European patent may be modified differently in different States, thus resulting in different national patents, a variable geometry system. The European patent is granted unitarily, but then may be transformed into different titles, with different scope: quite embarrassing.

2. The first day of the Conference the various systems were compared (UK, DE, NL, FR and IT). What is surprising in the system (and to the present writer, somehow shocking) is that the patentee may change the patent at any time. Therefore claims may be changed in the first year after grant, or the second, or the last. They can be changed even after the patent expires. Whether Article 68 EPC mitigates the inconveniences is a question to be considered.

3. On the second day of the Conference a mock trial (or a series of trials) was conducted, and several patent attorneys discussed whether some modifications were allowable and what not. The results were somehow encouraging.

Not forgetting
the Mock Turtle ...

Although, in principle, all national systems have different rules, ultimately those rules could be interpreted in a not too dissimilar manner. This conclusion was evidenced by the mock trial, where six cases of claim modification were discussed. A mock court composed of mock judges of four mock countries (Sir Robin Jacob, Dr Marina Tavassi, Dr Klaus Bacher, Professor Jean-Christoph Galloux, Professor Mario Franzosi) issued a mock decision on the allowability of modifications.

Here's the sample mock patent [which you can read here or download here], with the mock amendments.

These six cases have all been discussed and decided. Adds Anna Maria: "I will let you have as soon as available the text of the decision issued by the panel".  Thanks so much, Anna Maria, we really appreciate this!

Precedent, the European Patent Office and a chance to discuss

"What is precedent and does the EPO have it?" is the title of a blogpost today by Darren Smyth on the IPKat weblog, here, with some input from fellow bloggers David Brophy and me. It raises questions relating to, among other things, the extent to which European Patent Office Board of Appeal and Enlarged Board of Appeal are governed, in theory and in reality, by the principle of being either bound or strongly influenced by their own decisions and those of other tribunals, as well as the extent to which national courts and patent-granting authorities are influenced or bound by them.

The IPKat's colleague Merpel concludes that:

" ... whether a decision is non-binding and non-influential, non-binding but influential, or binding, is a matter that has a substantial impact on players other than the relevant court or tribunal: it affects the decisions of parties whether to file, oppose, litigate and so on. It also affects the decisions of legislators as to whether a rule needs changing or not. If it is consistently applied with a consequence that is considered undesirable, legislative intervention is more likely than where bad decisions are distributed among good ones because the latter are not binding. Therefore, she points out, lack of consistent understanding and terminology between practitioners before the EPO is highly undesirable".

It would be good to hear from practitioners from outside the zone of Common Law countries as well as those who have grown up with the habit of precedent and who intuitively give advice on the assumption that it exists.

The place of patent drawings in IP litigation: a new article

"IP Litigation: What Place for Patent Drawings?" is the title of an article published online in the current (June 2014) issue of the WIPO Magazine. The author, Bernadette Marshall (NBG Drafting and Design, USA), opens by stating that

In today’s ever more complex technology landscape, the number of patent lawsuits is on the rise and patent litigation costs are skyrocketing. This is especially true in the United States where, in 2012, according to a recent study by PricewaterhouseCoopers over 5,000 patent lawsuits – an all-time record – were filed, each costing on average around US$2.8 million. Within this setting, companies should not underestimate the importance of using simple, clear and precise illustrations, not only to enhance their chances of obtaining a patent in the first place, but more importantly to defend their rights in the event of litigation.

You can read the article, which links to Bernadette's earlier WIPO Magazine article "Better Drawings Make a Better Patent", in full here.  Its principal relevance is to the United States, in respect of which the article refers to the US's design patents as well as the conventional sort, but the essential message is that, the more clearly an invention is described, the less room there is for uncertainty, ambiguity and mistake, and that an accurate depiction is likely to help achieve that end.

Secondary Legislation Implementing the Unified Patent Court: a consultation and workshops

The UK Intellectual Property Office (UKIPO) has organised a free webcast for this coming Wednesday 16 July at 4 pm for IP professionals on the following title "Consultation on Secondary Legislation Implementing the Unified Patent Court". 

You can get the details here. Follow-up workshops, run by the UKIPO, are being offered as follows:

• London, 30 July at 2 pm, hosted by UKIPO
• Edinburgh, 23 July at 2 pm, at the Law Society of Scotland
• Newport, 28 July at 2 pm, again hosted by UKIPO
• Manchester, 31 July at 2 pm, in the offices of Squire Patton Boggs LLP

Spaces are limited for the workshops, so please email UPCconsultation@ipo.gov.uk to reserve your place.

This blogger is conscious of the fact that, being based in the UK, he usually spots what is going on there but often misses parallel developments in other jurisdictions. He therefore wonders whether, and to what extent, the UPC's secondary legislation is under review in other UPC states. 

After Woolf comes Fox: a new book on patent litigation

I've just received the following information concerning a new title from publishers Sweet & Maxwell which is of obvious relevance to patent litigation in England and Wales. The author is Angela Fox, whose many qualifications and virtues are listed on her Jenkins web page here.  The book's subject matter is the functioning of an exciting experiment in civil litigation, very much in the spirit of the Woolf Reforms (here and here) of civil procedure rules.

According to the publishers:

"Intellectual Property Enterprise Court: Practice and Procedure is a unique standalone guide to practice and procedure before the Intellectual Property Enterprise Court, formerly the Patents County Court.

It provides a reference for all litigators and practitioners seeking to make the best use of the court’s unique streamlined procedures for the cost-effective resolution of intellectual property disputes involving UK or Community IP rights.

• Discusses essential topics including pre-action matters, starting proceedings, case management, applications, evidence, experiments and disclosure, trial, appeals, costs and small claims 

• Covers the jurisdiction of the Intellectual Property Enterprise Court, the types of proceedings it undertakes and representation before the court, offering practical guidance on navigating the system effectively 

• Looks at the specialist rules of procedure introduced in 2010 and since that have broadened the Court’s appeal as a forum for resolving IP disputes in a streamlined and cost-effective way 

• Also considers other dispute resolution mechanisms relevant to claims that may be brought before the IPEC, including domain names and company names, as well as ADR Includes example statements of case for a range of IP subject matter 

• Draws on a range of sources to present a complete picture, including extracts from relevant source materials, court guides and the Civil Procedure Rules".

More information about this timely book can be obtained from its website here. It costs £165, so I'll wait till I can get hold of a review copy rather than rushing out to buy it myself. Meanwhile, if anyone has any perspectives or insights into it, can they please share them with us.

Playing the game: amendments and double patenting

Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) is a decision of Mr Justice Birss, Patents Court for England and Wales, going back to 20 June of this year. It's a 452-paragraph judgment, produced pretty speedily by the judge following seven days of hearings just one month earlier.

In short, Philips sued Nintendo, alleging that the latter's Wii computer game console infringed three of its patents for computer implemented inventions. Nintendo counterclaimed for revocation and Philips then applied for conditional amendments to all three patents. The court had to decide on infringement and, inter alia, (i) whether the proposed amendments should be allowed or whether they would introduce added matter; (ii) whether one of the patents was obvious over the prior art, and (iii) whether the two other patents were valid as granted and whether there was an element of double patenting.

Birss J held that all three patents were invalid as granted but that the second and third, when amended, were both valid and infringed. He gave some helpful guidance with regard to double patenting that runs like this (at paragraphs 302 to 310):

1. First, the idea at the heart of the double patenting objections is that ordinarily an applicant should not obtain two patents for the same thing filed at the same time. That is because an applicant ordinarily has no legitimate interest in doing this [if this is so, should it not then apply equally to other registered IP rights, for example trade marks, where the question of double protection is more complex on account of considerations such as genuine use?].

1. Second, however "double patenting" is not a ground of revocation of a patent. It is not in s72 of the Act [Patents Act 1977, here] nor Art 138 EPC [European Patent Convention, here]. In the UK there are particular circumstances in which double patenting can lead to refusal (or revocation on the Comptroller's initiative). They are defined by statute (s18(5) and s73(2)).

1. Third, the EPO does recognise a double patenting objection as a ground for refusing amendments to a divisional application. Two conditions have to be satisfied. The proposed amended divisional claim has to claim the same subject-matter as a parent and the applicant has to have no legitimate interesting in obtaining the divisional claim. Generally if the first condition is true the second is likely to follow but there can be cases, such as T 1423/07 in which a legitimate interest in obtaining the divisional claim can be shown to exist irrespective of the relationship between the scope and subject matter of the parent and divisional claims.

1. Fourth, the EPO does recognise that if the independent claim of a divisional has the same scope as an independent claim in the parent then double patenting exists and an amendment which would give rise to that state of affairs will be refused. It is a test of substance and not merely form. It is not the settled jurisprudence of the EPO that double patenting exists merely because the scopes of the two claims overlap.

1. Fifth, one needs to take care when comparing the different procedural circumstances in which this point can arise. The EPO only deals with one patent at a time and so an EPO case considering a divisional application will not contemplate making changes to the claims of the parent to overcome an objection. Although post-grant centralised amendments are now possible in the EPO, that is a fairly recent development. In the UK the point only arises in two very specific statutorily defined circumstances.

1. Sixth, the judgment of the Court of Appeal in Marley's Roof Tile [1994] RPC 231 is directed to a point on statutory construction of s73(2) of the 1977 Act. Although both s73(2) and the objection applied by the EPO are referred to as "double patenting" and have the same underlying rationale, the Court of Appeal's judgment is not binding on the question arising in relation to the exercise of discretion under s75 of the Act.

1. Seventh, a patentee may have a legitimate interest in obtaining a divisional patent with claims which are broader than but encompass the scope of a parent patent. During prosecution of the parent the examiner may object to a broad claim but indicate that a narrower claim would be accepted. The patentee may not agree but may recognise that to win the point will need many more months or even years of proceedings and possibly appeals. This is true in both the EPO and UKIPO. However in the meantime the patentee may want to obtain an early grant because a competitor has launched an infringing competitive product [This is where commercial considerations come into play ...]. The infringing product may be very close to the patentee's invention and within the narrow claim on offer. At an early stage in this new market for a new product the patentee's business may be particularly vulnerable and the loss caused by the infringement may well not be fully compensatable in damages under s69 of the 1977 Act (Art 67 EPC). Thus the patentee decides to take what is on offer and obtain grant of the parent patent with a narrow claim. Under s76 of the Act and Art 123(3) EPC post grant amendments are not permitted to widen the scope of monopoly so, in order not to give up scope to which the patentee is entitled, a divisional application is filed. If the divisional is granted with a broader scope than the parent then the patentee's stance has been entirely vindicated.

1. In my judgment a patentee in the case I have described has a legitimate interest in obtaining the divisional in addition to the parent and it would be wrong to apply a double patenting objection based on overlapping scope such as in T307/07 or Marley's Roof Tile to prevent this. I also do not believe that a disclaimer or carve out amendment from the divisional to remove the scope of the parent claim should be required since such negative features can introduce uncertainty and make the claims hard to interpret.

1. I find that as a matter of UK law a double patenting objection taken as a ground for refusing a post-grant amendment to a claim can be taken but should only be taken in the following circumstances:

(i) The two patents must have the same priority dates and be held by the same applicant (or its successor in title); 

(ii) The two claims must be for the same invention, that is to say they must be for the same subject matter and by this I mean they must have the same scope. The scope is considered as a matter of substance. Trivial differences in wording will not avoid the objection but if one claim covers embodiments which the other claim does not, then the objection does not arise. 

(iii) The two claims must be independent claims. This necessarily follows from the rejection of the point on overlapping scope. If two independent claims have different scope then there is no reason to object even if the patents contain dependent claims with the same scope. The point might arise later if an amendment is needed e.g. to deal with a validity attack but in the case the point can be taken then. 

(iv) If the objection arises in the Patents Court in which both patents are before the court then it can be cured by an amendment or amendments to either patent. 

(v) Even if the objection properly arises in the sense that two relevant claims have the same scope, if the patentee has a legitimate interest in maintaining both claims then the amendment should not be refused.

Do readers agree with this summary, or does it invite comment and qualification?

SDL wrongful threats case: counterfactual history reaps reward

Almost exactly a year ago, PatLit posted this item on SDL Hair Ltd v Next Row Ltd and others; Master Distributor Ltd v SDL Hair Ltd and others [2013] EWPCC 31, a Patents County Court, England and Wales, decision on, among other things, the making of unwarranted threats of to sue for patent infringement.

Now, in  which emanated last month from Mr Recorder Richard Meade QC. With so much going on, it got overlooked at the time -- but it's still worth noting. Now, in SDL Hair Ltd v Next Row Ltd & others [2014] EWHC 2084 (IPEC), an Intellectual Property Enterprise Court ruling of 3 July 2014, in a 98 paragraph judgment Judge Hacon addresses the question of quantum: how much damage was caused by the making of wrongful threats?  In this case, said the judge, the total loss was £40,500, a sum on which the defendant was required to pay a so-far-unspecified sum of interest.

The judge's decision incorporated his reconstruction of what might have been, had the wrongful threats not been made, by setting out what he termed a "counterfactual history" at paragraphs 54 to 72 of his judgment. While this counterfactual history is obviously highly fact-specific, the approach is one which might expect to see transferred to other situations in which ungrounded threats of patent infringement are made , thus guiding the innocent party's decision whether to sue for damages or not.

Summary judgments: when experts can be dispensed with

In Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWHC 2196 (Pat), a 3 July 2014 Patents Court, England and Wales, decision of Mr Justice Birss, some useful light was cast on the availability of summary injunctive relief in low-tech patent litigation.

This action involved an application for summary judgment where Alpla was seeking a declaration that a redesigned bottle did not infringe Nampak's patent for a plastic milk bottle, after Nampak --a manufacturer of moulded plastic milk bottles -- had commenced infringement proceedings against it. Having produced its modified design, Alpla invoked the commercial need for certainty at an early stage and sought summary judgment on the declaration.

According to Birss J, while although summary judgment was unusual in patent cases because claim construction and infringement determination generally required expert evidence, where a patent owner seeks to resist summary judgment he must give specific details as to issues where expert evidence would be required, since general assertions would not suffice. In this case, this patent was sufficiently simple for there to be no call for expert evidence: its claims did not use terms of art.  Accordingly the court could proceed to construe the claims.  On the facts, those claims would not be infringed by the redesigned bottle, so summary judgment on the application for a declaration of non-infringement would be granted.

Appearance before a national office and subsequent determination of jurisdiction

Future New Developments Ltd v B & S Patente Und Marken GmbH [2014] EWHC 1874 (IPEC) is a 9 June 2014 decision of the England and Wales Intellectual Property Enterprise Court (Judge Hacon).

In brief, by Article 5 of Council Regulation 44/201 on the Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968:

"A person domiciled in a Member State may, in another Member State, be sued: … (3) in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur".

Article 23(1) adds:

"If the parties, one or more of who is domiciled in a member state, have agreed that a court or the courts of a member state are to have jurisdiction to settle any disputes which have arisen or may arise in connection with a particular legal relationship, that court or those courts shall have jurisdiction. Such jurisdiction shall be exclusive unless the parties have agreed otherwise. Such an agreement conferring jurisdiction shall be either: (a) in writing or evidenced in writing; or (b) in a form which accords with practices which the parties have established between themselves..."

And, by Article 24:

"Apart from jurisdiction derived from other provisions of this regulation, a court of a member state before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22".

A German-domiciled company, B&S, was the registered proprietor of a European patent for energy-saving technology for use with fluorescent tubes. The application, filed in September 1999, was assigned to FND in October 2001. It appeared from a written declaration of March 2009 that FND had assigned the patent to B&S, this alleged assignment being registered by the United Kingdom Intellectual Property Office (UKIPO). Following a subsequent dispute before the UKIPO as to whether the patent had been assigned FND issued proceedings in the Intellectual Property Enterprise Court (IPEC), maintaining that the person who signed the declaration had no authority to do so.

At this point B&S challenged the jurisdiction of the courts of England and Wales on the basis that Article 22(4) of the Convention did not apply to a dispute about the ownership of registered intellectual property rights. Since it was domiciled in Germany, the dispute should be brought there. FND disagreed, arguing that Articles 5(3), 23(1)(b) and 24 of the Convention applied.

Judge Hacon ruled that the courts of England and Wales did indeed have jurisdiction.

* The words "matters relating to a tort, delict or quasi-delict" in Article 5(3) embraced all actions which sought to establish the liability of a defendant and which were not related to a contract. In this case FND was relying on the torts of misrepresentation or fraud.

* On the meaning of "liability" of a defendant, FND's claim was to the entitlement of the patent; it was not alleged, nor could it be alleged, that the patent was owned by B&S through any misrepresentation on the part of B&S itself.

* Article 23(1)(b) allowed for an agreement on jurisdiction to be validated even where there was an absence of writing to record the assent of the party to be bound, so long as there was evidence of a practice having been established between the parties.

* In this case the litigation was not based on any agreement between the litigating parties and it was likely that, before the UKIPO, B&S had expressly abandoned any challenge to the jurisdiction of the courts of England and Wales. That would have been a concession by B&S in the course of the proceedings, not an agreement between the parties by way of a course of conduct or, more exactly, an agreement in a form that accorded with practices which the parties had established between themselves. The submission that the court had jurisdiction by agreement under Article 23(1)(b) would therefore be dismissed.

* The Convention had however undoubtedly been engaged. On the evidence, the overall conduct of B&S before the UKIPO could only be interpreted as its willingness for the dispute with FND to be heard in England, initially by the UKIPO and subsequently by the Patents Court or IPEC. Because B&S had entered an appearance before a court of the UK within the meaning of Article 24 of the Convention, the IPEC had jurisdiction.

All of this leaves parties such as B&S in a difficult position when contemplating the issue of jurisdiction. They must measure their response to any legal claim not just from the point of view of what they say but how their actions are likely to be construed.

EPO not moved by "change of venue" plea

Have you ever wished that your oral proceedings before the European Patent Office were held somewhere more convenient? If so, take note of Case T 1142-1112 Polyethylene composition for injection molding with Improved stress crack/stiffness and impact resistance relationship/Borealis Technology Oy, a Technical Board of Appeal ruling of 8 April 2014 . According to the decision's Catchword:

The question of the venue of oral proceeding is a matter of organisational nature which belongs to the management of the Office pursuant to Art.10 (2) EPC.

When not acceding to a request for holding oral proceedings in Munich instead of The Hague, the Examining Division does not take a decision but only expresses the way the EPO is managed.

Consequently, that issue is not subject to appeal, nor can the Board refer a question on the venue of oral proceedings to the Enlarged Board of Appeal.

The applicant, Borealis, was based in Linz (in Austria, but a convenient train ride from Munich), and its attorney was based in Munich, which would have made Munich a more convenient place from its point of view. The EPO was literally not moved. At 2.3.1. the Board said:

"If the Examining Division may decide on the location of oral proceedings on a case by case basis, then it would be obliged to justify its decision to refuse a request for oral proceedings in Munich on the basis of the provisions of the EPC, of the Rules or of the Guidelines and in consideration of the reasons given by the applicant. The reasoning on this issue would thus be part of the contested decision which would therefore be subject to appeal".

This blogger thinks that Borealis and others can face a lot more travel in time to come, with the new unitary patent system and unified patent court ...

When it's too late to seek a stay ...

Kennametal Inc v Pramet Tools SRO and Associated Production Tools Ltd [2014] EWHC 1438 (Pat) was decided in the Patents Court, England and Wales, back at the beginning of April, but this blogger hasn't had time to deal with it earlier.

In short, Kennametal applied to stay an order revoking a patent pending the outcome of proceedings to amend it in the European Patent Office (EPO). The UK patent had been held invalid and Kennametal did not apply for permission to appeal that decision. However, Kennametal submitted that the court should follow the recent Court of Appeal decision in Samsung Electronics Co Ltd v Apple Retail UK Ltd [2014] EWCA Civ 250 [noted by the IPKat here], in which that court adjourned the hearing of an appeal against a UK judgment pending the conclusion of an amendment application that had been made to the European Patent Office (EPO). No, said Pramet: the reasoning in Apple did not apply, because in that case there had been concurrent proceedings in the UK and the EPO -- which was not the case here.

Henry Carr QC, sitting as Deputy judge, refused the application, finding that the situation in Apple was completely different. In this case, the UK revocation proceedings were dead and buries: there had been a final judgment and it was not the subject of an appeal. No attempt was made to seek these amendments in the course of those proceedings and it there was no justification for awaiting the uncertain outcome of the EPO proceedings before revoking the patent.

Priority and indirect infringement of second medical use claims: when the Sun shines in the Netherlands

Last month, at the International Trademark Association (INTA) Meeting in Hong Kong, this blogger had the pleasure of an encounter with Jaap J.E. Bremer and his colleague Marleen van den Horst (both of the Dutch firm of BarentsKrans N.V.). There, in that undoubtedly trade mark-friendly environment, we discussed a case that Jaap and Marleen were involved in before the Provisions Judge of the District Court, The Hague, regarding indirect infringement of a second medical use patent and the validity of priority claims (among other things). The decision in this action has since been handed down and Marleen and Jaap have kindly treated PatLit readers to the tale of its outcome. As Jaap explains:

Zoledronate

"The case concerns Novartis’ patent EP 1 296 689 for a “Method of administering bisphosphonates”. It claims, inter alia, a dosage regime (2-10 mg once yearly) of the active substance zoledronic acid / zoledronate, administered intravenously for the treatment of osteoporosis. The Dutch litigation between Novartis and Sun Pharmaceuticals runs parallel to the case in England and Wales between Hospira & Generics UK (Mylan)/Novartis that was reported here on the IPKat weblog not too long ago. Marleen and I represented Sun.

Sun had obtained a marketing authorisation for generic zoledronate for the treatment of Paget’s disease and osteoporosis. The use of zoledronate for the treatment of Paget’s disease was not patent-protected. Sun had requested that the indication osteoporosis be removed ("carved out") from the Summary of Product Characteristics and patient leaflet of its product. In October 2013, Sun participated in a public tender by Dutch health insurance company VGZ, which it won. VGZ's tender conditions did not allow specification of the indication.

Novartis alleged that Sun's generic product (in)directly infringed EP 689. It started preliminary injunction proceedings against Sun, seeking an order (a) to stop it selling generic zoledronic acid to the extent that Sun knew or had reasonable grounds to suspect that its product would also be used to treat osteoporosis, and (b) to stop Sun participating in tenders, unless those tenders would allow designation of the product for Paget's disease only.

Sun disputed the allegations of (in)direct infringement and the orders requested by Novartis. In addition, Sun argued that EP 689 was invalid for lack of novelty over the Reid publication as Sun contested that Novartis was entitled to its priority claims. The PI judge of the District Court in The Hague held that the priority right was most likely invalid, since the priority document US 689 did not directly and unambiguously disclose the combination of intravenous use and the dosage range of "2 up to about 10 mg". The PI judge referred to the decision of the courts of England and Wales. The PI judge found that there was a serious, non-negligible chance that the patent would not survive invalidity proceedings on the merits (the validity test in Dutch preliminary injunction cases), rejected Novartis’ claims and ordered Novartis to pay Sun's costs The PI judge did not rule on the other grounds of invalidity, as presented by Sun, nor on the issue of (in)direct infringement".

Thanks to Marleen and Jaap, we also have an unofficial English translation of the Dutch decision of 12 May 2014. You can read it online here or download it here.

U.S. Supreme Court Decides Alice v. CLS Bank: Computer Patents Ineligible Unless Claims Recite Non-Conventional “Inventive Concepts”

[This post was written by David, and posted by Stefano on his behalf]

This morning, a unanimous U.S. Supreme Court ruled that claims directed to computer-implemented methods and related systems are not eligible for patenting under 35 U.S.C. § 101 unless they contain a non-conventional “inventive concept,” and that a generic reference to a general purpose computer, or even “purely functional and generic” hardware components, does not make an otherwise ineligible invention patentable. The complete opinion is here.

Although the decision (by Justice Thomas) falls short of a bright-line test for patent eligibility, it does elaborate on the two-step analysis that should be applied.

First the Court must decide whether the subject matter claimed is directed to a patent-ineligible law of nature, natural phenomenon, or abstract idea. The Court reasoned that the intermediated settlement concept claimed in the Alice patents was not meaningfully different from the concept of risk hedging found to be ineligible in Bilski. Like the Court in Bilski, however, the Court avoided defining “abstract idea,” instead stating that “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Slip op. at 10.

Second, if the claims are directed to an ineligible concept, then the Court framed the second step based on Mayo’s “inventive concept” requirement:

If [step one is met], we then ask, “[w]hat else is there in the claims before us?” [Mayo,] slip op., at 9. To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Id., slip op., at 10, 9. We have described step two of this analysis as a search for an ‘inventive concept’ - i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id. slip op., at 3.

To apply this second step, the Court noted that the claims must recite some element that is an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent eligible invention. On this point, the Court cautioned that merely reciting a generic computer, or even conventional computer components or function, is inadequate. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement’ an abstract idea "on … a computer," that addition cannot impart patent eligibility.” Slip op. at 13, quoting Mayo.

Applying the two-step test to Alice’s claims, the Court found them to be ineligible. First, the method claims were addressed to the abstract concept of settlement intermediation. Second, although the claims recited computer-implemented steps, those steps (alone or in combination) were “purely conventional.” The Court concluded that the claims did not improve the functioning of the computer, or reflect an improvement in any other technology or field. “Instead, the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer.” Slip op. at 15. Therefore, the claims were ineligible for patenting.

Alice’s system claims fared no better under the two-step test. Although the system claims recited specific hardware components (such as “data storage unit” and “communications controller”), the Court dismissed those elements as “purely functional and generic.” Slip op. at 16. As a result, the elements did not provide meaningful limitations, and only linked the concept to a particular technological environment – in this instance implementing the concept using a computer. The Court reasoned:

Put another way, the system claims are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer ;the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting §101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Mayo, slip op., at 3.

As a result, the system claims were also ineligible.

Justice Sotomayor, joined by Justices Breyer and Ginsburg, concurred in the result, noting their belief that business method patents are ineligible per se.

Consultation on UPC rights of audience: it's time for a discussion

With apologies to IPKat readers for the cross-posted subject matter (see the first item on today's Wednesday Whimsies, here), there's a storm brewing in the United Kingdom over who will have rights of audience before the Unified Patent Court (UPC) and what sort of training they will have to be put through if, despite their professional training and expertise, they are not technically "lawyers".

Following Darren Smyth's post yesterday on this subject on the current consultations, we learn from Vicki Salmon that

The Chartered Institute of Patent Attorneys (CIPA) and the UK Intellectual Property Office (IPO are holding a joint seminar to discuss this consultation on Wednesday 2 July 2014, in CIPA Hall. Registration begins at 4.30 in anticipation of a 5 pm start, with drinks and networking provisionally to start at 6.30 pm. There will be no charge. Although this has been planned for a while, it could not be advertised until the new draft was published and the consultation open -- so apologies for the short notice. The event will be recorded and that will be made available afterwards to those who could not attend.

The panel will include Mr Justice Birss and a representative from the IPO. Vicki Salmon will be chairing. To book your place, click here.

This blogger wonders the current consultation on rights of audience before the UPC is being discussed in other jurisdictions within the EU and, if so, how they are shaping up.  Does anyone know?

UPC ratifications: how many so far?

This blogger is getting a bit confused. On 26 May the European Commission announced that

Once the Danish Parliament ratifies the Agreement, Denmark will be the fifth Member State to ratify it (after Austria, Belgium, France and Malta). Ratification by thirteen Member States is required for the Agreement to enter into force.

This information was duly reported on this weblog.  Subsequently he has received two media releases from his friends at law firm Rouse. The first informed him yesterday that

Sweden has become the third EU Member State (behind Austria and France) to ratify the UPC Agreement.

A little later, from the same firm, this blogger learned that

Belgium has crossed the UPC ratification finish line hot on the heels of Sweden. The Belgian Parliament passed the law authorising ratification of the UPC Agreement just before the national elections in May 2014.

What has happened to Malta? Is it still there ...? Or should it have never been listed in the first place? Does anyone know.

Litigation training for newly-qualified UK patent attorneys: latest news

If you can't get interim injunctive relief through the courts,
it's handy to know what other options are available ...

This morning the IPKat posted a guest piece from Vicki Salmon, Chartered Institute of Patent Attorneys (CIPA) council member and Chairman of the litigation committee, on compliance by newly-qualified patent attorneys in the United Kingdom with the requirement to take a basic litigation skills course and to obtain required certificate within three years from going on to the register.

Vicki's post, which is not reproduced in full here, summarises the steps taken by CIPA to facilitate compliance and reflects both the degree of interest in this issue and the degree of uncertainty that persists with regard to it.

In the meantime, CIPA plans to re-run its course for litigating in the Intellectual Property Enterprise Court, England and Wales.  The course takes place on 2 September 2014 followed by a long weekend (from Thursday morning to mid-afternoon Saturday) on 18-20 September at Missenden Abbey.  Advance information is available here and booking forms will be available soon. While the course is open mainly to CIPA members, a few spaces will be available to non-members.

Limitation and Amendments of claims during litigation: a conference

From Anna Maria Stein (partner, Franzosi Dal Negro Setti, Milan) comes news of a conference on claim limitation/amendment during patent litigation. This event will be held on June 27 and 28 at the Aula Magna of the Court of Milan.  Says Anna Maria

"In particular, laws and procedures of five countries (Germany, France, Italy, the Netherlands and the UK) will be compared. The solutions at the European Patent Office (Articles 105a and 123 EPC) will also be considered. We would like to share with European colleagues a general overview of the problem. In fact the various systems present non-irrelevant elements of divergence, so that a unitary title of protection may assume a different geometry when litigated in various countries".

This is the link to the website of the Court of Appeal of Milan where external attorneys may register: http://www.ca.milano.giustizia.it/formazione_magistrati.aspx?iscriviti_incontro=800 . No fee is due for the registration and participation at the two days conference. While the registration form is in only in Italian, it is quite simple -- and Anna Maria is available here if you need support, information and other details. Anna Maria's firm also has a web page dedicated to the conference, with the updated programmes and listing a set of questions in order to collect information on this matter from various countries.

I have taken the liberty of cutting and pasting the contents of this promising events from the attachments to Anna Maria's email:

Friday, June 27, 2014

Aula Magna “Emilio Alessandrini and Guido Galli” – Court of Milan

 

TRAINING AND UPDATING COURSE IN COMPARATIVE AND EUROPEAN LAW

 

-LAST INTERDISCIPLINARY SESSION-

 

EUROPEAN PATENT: A VARIABLE GEOMETRY RIGHT?

Limitation and Amendments of claims during litigation.

 

(In Italian and English with simultaneous interpreting)

 

8:30                     Registration

9:00                     Greetings

Baldo Marescotti, Subst. President Court of Appeal, Milan

Roberto Bichi, Subst. President Court of Milan

9:30                        Definition of the terms of discussion: different problems connected to patent amendments and limitations (chaired by dott.ssa Marina Tavassi)

                                   - Amendments and limitations in the European and national systems; during patent granting proceedings and after the patent is granted (Professor Mario Franzosi, Visiting Professor, University of Washington - 20')

- Amendments and limitations in the European system (Heli Pihlajamaa, Director EPO - 20')

- Amendments and limitations during patent grant proceedings: the Italian law (Professor Giuseppe Sena; Emeritus Professor I.P. law, Milan State University- 20')

10:45                        Amendments and limitations in the national systems – Part I (chaired by Rt Hon Robin Jacob)

- The English experience: Rt Hon Robin Jacob (Judge in the Court of Appeal of England and Wales - 20') + Penny Gilbert (London - 20')

- The German experience:  dr. Klaus Bacher (Richter Bundesgerichtshof - 20') + dr. Thornsten Bausch ( Munchen - 20')

- The French experience: Jean-Christophe Galloux, Président IRPI, Professeur Panthéon-Assas, Paris- 20') + Darius Szleper ( Paris - 20')

- The Dutch experience: prof. Jan Brinkhof, Professor Utrecht University ; Former Presiding Judge of the Court of Appeal The Hague - 20') + John Allen ( Amsterdam - 20')

13:15                        Break

14:30                        Amendments and limitations in the national systems – Part II -The Italian experience chaired by prof. Adriano Vanzetti (Emeritus Professor Intellectual Property, Catholic University, Milan- 20') - dott. Claudio Marangoni (Judge – Tribunal of Enterprises, Milan- 15'); dott. Umberto Scotti (President, Tribunal of Enterprises, Court of Turin- 15'); dott. Gabriella Muscolo (Member of Italian Competition Authority - 15'); Luciano Bosotti, President I.P. Counsels - 15'); prof. Giovanni  Guglielmetti (I.P. Professor, State University Milano-Bicocca- 15').

16:15                        Discussion       

17:45                        Final summary: Marina Tavassi (President of the Specialized Division for Enterprises of the Court of Milan - 20)

Sabato 28 giugno 2014

9,30      illustrazione del caso (Mock Trial) e presentazione delle modifiche proposte alle rivendicazioni del brevetto

10,00     difesa di parte attrice: giustificazione delle modifiche

10,40     difesa di parte convenuta: contestazione delle modifiche

11,20      pausa

11,35      camera di consiglio: un collegio costituito da tre persone in funzione di giudici

in contemporanea il pubblico, diviso in gruppi di lavoro, ricerca le possibili soluzioni

12,30     lettura della decisione e dibattito

13,00     fine lavori 

This Convention is aimed to magistrates and judges in ordinary training, judges and justices of the peace.

The conference is also open to the participation of lawyers (up to a maximum of 150), as well as to students of specialization advocate schools (maximum of 30).

For organizational reasons, the judges who wish to attend the meeting are asked to subscribe online through the website www.corteappello.milano.it, in the lower right part of the home page at “Formazione Decentrata Magistrati Incontri di Studio Iscrizioni e Materiali.”  Participants will receive a certificate of attendance.

The meeting is part of the initiatives which provide the provision of credits by the “Consiglio dell’Ordine degli Avvocati” under the Rules of the Consiglio Nazionale Forense concerning the Professional Training.

For this purpose, 150 seats are reserved to the Board of the Bar Association of Milan. Entries must be made through the system”RICONOSCO”.

If you have any further questions about this event, please contact Anna Maria here

Supreme Court Rejects Federal Circuit Standard For Indefiniteness, But Precise Rule Remains Elusive

In a pair of unanimous decisions issued June 2, 2014, the U.S. Supreme Court rejected Federal Circuit rulings addressing patent validity and infringement. However, in keeping with its recent practice, the Court refrained from articulating its own concrete tests, leaving to the lower courts the task of applying relatively vague concepts. The Court's treatment of the standard for claim definiteness is illustrative of this approach.

In Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, the Supreme Court considered the standard for claim indefiniteness under 35 U.S.C. § 112(b). The Federal Circuit had applied an extremely high standard for defendants challenging claims as invalid as indefinite, holding in earlier cases that an offending claim term was not invalid if it remained “amenable to construction” and was not “insolubly ambiguous.” See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Supreme Court rejected that test as too lax:

Those formulations can breed lower court confusion, for they lack the precision §112, ¶2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” against which this Court has warned.

Slip op. at 12 (citation omitted). Instead, the Court applied a test based on the ability of a person of ordinary skill in the art to grasp the scope of the claims:

To determine the proper office of the definiteness command, therefore, we must reconcile concerns that tug in opposite directions. Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916).

Slip op. at 11 (emphasis added). Instead of applying the new test to the disputed claims in Nautilus, the Court remanded to the Federal Circuit. A copy of the Court's opinion is HERE.

The lower courts, no doubt, will need to fashion a workable rule applying the new “reasonable certainty” concept.  How much information is needed to be enough to "inform ... about the scope of the invention"? What is "reasonable certainty"?  Can a person skilled in the art take advantage of the teachings of the art in interpreting claims? The Court's decision creates a flexible standard, as is required to balance the competing policy goals impinging on the definiteness question. But the standard needs significant refinement before it is of any practical use.

Coincidentally, the USPTO announced the launch of its Glossary Pilot Program on the same day Nautilus was decided.  The pilot is designed to enhance claim clarity in the specification of software-related patent applications by encouraging the use of glossaries in applications. The program allows applicants to petition for admission to the pilot program, which will last for 6 months or until 200 applications have been accepted. Applications in the program "must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements" of the pilot program. Application accepted into the program will receive "special" status. Full details of the pilot program are posted HERE. 

Danes vote to ratify the Unified Patent Court agreement

But 5-0 is not enough ...

Via a European Commission media release comes news that the Danes have voted in a referendum in favour of joining the Unified Patent Court (UPC).  This decision empowers the Danish Parliament to ratify the UPC Agreement.

Denmark will be the fifth member state to ratify it (after Austria, Belgium, France and Malta). However, the UPC will not come into being untl the UPC Agreement has been ratified by 13 European Union Member States (which must include Germany and the UK in addition to France).

Germany has indicated its willingness to ratify the agreement, which it proposes to do so later this year. The UK expects to ratify the agreement before the end of the current parliament in 2015, following passage of the Intellectual Property Act 2014 which makes provision for that eventuality.

UPC: suddenly more popular than we thought?

Here's a surprise press release from Allen & Overy, published today and discussed by the IPKat and Merpel here.  The press release is reproduced in full below, with some comments in red:

"Research reveals growing business support for UPC – crown jewel patents opted in; move to Europe for major patent disputes

LONDON – Research published by Allen & Overy today demonstrates surprising support for Europe’s hotly debated Unified Patent Court, with almost three-quarters (74%) of those responsible for overseeing preparations for the new system expecting it to be positive for their company – and only 15% expect it to have negative consequences for them.

While on the big question of whether to opt in or opt out of the new system during its seven-year transition period, the majority of respondents are undecided on the bulk of their portfolio (68% on average), close to half (49%) of those surveyed said they would definitely opt in at least some of their patents, while only 15% say they would definitely opt out some.

Crucially, where businesses have made a decision to opt in, about 24% of their portfolio on average, they are deciding to opt in their most valuable, or crown jewel, patents. This suggests that, where it matters most for business, they will opt in.

As one Dutch head of IP strategy commented: “The economics of a single enforcement action outweighs the risk of Europe-wide invalidation.”

As this statement and the research suggest, despite the faltering reception the new system has received from companies across the globe, its impact is likely to be significant. The UPC will offer patentees the ability to obtain broader remedies than those currently on offer in the U.S., with a larger customer base impacted and injunctions that are easier, cheaper and quicker to obtain. Costs are estimated to be at least five times lower than in the U.S.

These advantages alone mean there is likely to be a shift towards Europe’s UPC as a forum of choice to rival the U.S. for major patent disputes. This is further supported by the majority of respondents indicating they will file unitary patents, as opposed to classic European or national patents, under the new system.

Despite its potential impact on business, the report also highlights an alarming lack of engagement among senior management on the UPC. Only 13% of those responsible for preparations for the new regime say their senior management are ‘fully engaged’ on the issue and appreciate the potential implications. One consequence of which could see businesses lose exclusivity for their products, or worse still, have their business or products locked out of the entire continent.

The scale of the change taking place means that companies cannot prepare for it overnight. If they don’t engage strategically with the changes now, they could find their competitors dragging them into UPC or national patent litigation on their own terms.

While the decision on what to do with a companies’ most valuable patents seems clear, what to do with a business’s less valuable patents is anything but. The 68%, on average, of their portfolio that business are still undecided on is largely made up of their secondary patents. Lack of clarity on costs is cited as the main barrier to being able to make decisions according to two-thirds (67%) of respondents. Only when this is clarified will businesses be able to undertake a proper cost-benefit analysis on their less valuable patents and whether it is more economically beneficial to opt them in or out".

At this point, the statistics stop and the comment begins:

"As well as clarity on costs, there is a pressing need to clarify a few areas where interpretations of the rules differ. This risks leaving companies with dangerous gaps in the understanding of the strategic implications of their decisions [The words 'risk', 'pressing need' and 'dangerous gaps' are interesting here: would the level of willingness to commit 'crown jewel' patents or to express confidence in the new system have been the same if these points had been addressed to respondents before they completed the survey? Or would they consider that the new system merely replaces one set of risks and uncertainties with another, exchanging 'known unknowns' for 'unknown unknowns'?]. In particular what happens to patents that have not been formally opted out of the UPC? These “opt-in orphans” can be litigated during the transitional period in either the national courts or the UPC. But it is not clear what happens after proceedings have been completed and whether national court proceedings could effectively opt them out of the UPC for the life of the patent. An extreme example would be a pharmaceutical generic company launching a revocation action against, for example, the Latvian part of a blockbuster patent. The company could then withdraw the action, having effectively forced the patentee out of the UPC system. This goes entirely contrary to the original intention to leave as many patents as possible in the system [Is this a temporary evil, as it were, which it's worth tolerating on political grounds for the sake of post-transitional period gains, or is it more serious than that?]. Another interpretation of the rules could also see the possibility of concurrent litigation in both the UPC and national courts which could lead to contradictory decisions if, for example, a national court upholds a patent and the UPC revokes it. This is the very type of clash the UPC is designed to avoid [but it's quite akin to the sort of contradictory judicial decision-making which patent owners and their foes have lived with since the European patent came into our lives: it's undesirable, certainly, but the fact is that most businesses have managed to cope]. Greater clarity is urgently required for these “opt-in orphans”.

Commenting, Geert Glas, head of Allen & Overy’s IP practice said: “Companies cannot afford to wait until they have an absolute and final answer to every question [Never was a truer word spoken: we still await absolute and final answers to many questions arising out of the now-mature Community trade mark system ...]. There is now evidence enough for them to decide whether or not to use the system [Unfortunately much of this evidence, being speculative, is of little probative value -- and may spark off different evaluations depending on the industrial sector concerned and whether it's at its green field stage or taping out into a series of incremental improvements over a long-established technology]. Time is running out before the UPC becomes active. Companies can’t afford to hesitate over one of the bigger strategic decisions their organisations will face for many years."”