Global IP Matters

Coordinated patent strategy for multi-national companies

Enlarged Board of Appeal referral – Challenging clarity of post-grant amendments

Posted in European Patent Office (EPO), European patent prosecution

Authored by Jacqueline Ireland

Lack of clarity is not a ground for opposition before the EPO, but can be raised against amendments filed during the opposition proceedings.  In accordance with Article 101(3) EPC, any amendments made to a granted patent during opposition proceedings must meet the requirements of the European Patent Convention.

A new Enlarged Board of Appeal (EBA) referral asks whether an amendment made during EPO opposition proceedings can be challenged for lack of clarity if the amendment simply involves incorporating the feature of a granted dependent claim into the granted independent claim from which it depends.

Previously in T1855/07, the Board of Appeal declined to refer a question on this matter and held that a mere syntactical incorporation of a dependent claim into an independent claim cannot trigger a lack of clarity objection.

However, a few subsequent decisions, e.g., T459/09, have held that a substantial amendment, i.e., an amendment consisting of the incorporation of a technically meaningful feature into an independent claim, in principle, justifies an unrestricted exercise of the examination power derivable from A.101(3) EPC, irrespective of whether the amendment arises from the combination of a feature from the description with an independent claim, or from the literal combination of claims of the granted patent.

In the light of these conflicting decisions, in T0373/12 (concerning EP05851833.3) the Opponent requested a stay of proceedings to seek guidance from the EBA on this matter and submitted the following question:

“Does an amendment of an independent claim during opposition proceedings hinder the examination with regard to clarity (A.84EPC), if the amended claim is a combination of an independent claim as granted with the elements of a dependent claim as granted? (Contrary to the decisions T 459/09 and T 409/10).”

The Board of Appeal has allowed the referral.   However, the exact form of the referral question may be revised by the Technical Board of Appeal.

How Will ITC Confirmation That It Has Jurisdiction Over Digital Imports Impact Software and Media Industries?

Posted in International Trade Commission (ITC) litigation, Patent litigation

Authored by Aarti Shah, Member of IP Section and former Senior Investigative Attorney, ITC.

The International Trade Commission (ITC) issued its much-awaited decision in Certain Digital Models on April 3, 2014, affirming in a decision with important implications for the software and media industries that digital importation is within the jurisdiction of the Commission.  Though some commentators have characterized this decision as an expansion of the ITC’s powers, the decision actually affirms powers the ITC has always had and previously exercised. However, the decision is important because it highlights the Commission’s jurisdiction over such imports, is an example of how the Commission adapts its remedies to account for the realities of trade today, and because it may indicate that that the recent trend towards limiting ITC jurisdiction is halting.

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Forward-Publishing Patents: A Way to Tell Competitors “Stay Out”?

Posted in European patent prosecution, IP strategy, US patent prosecution

Authored by Paul Davis.

On March 10, 2014, Sonos announced it would forward-publish its patent applications before they would traditionally be available to the public.  This has given rise to quite a bit of discussion in patent legal circles.  What are the advantages and disadvantages?  Should you or shouldn’t you?  Are you giving a leg-up to the competition or telling competitors to “Stay Out”?

The best-case scenario when forward-publishing a patent is that the patent largely reduces competition and gains your company additional funding.  A well-written patent has the capability of warding off competition and preventing other companies from receiving funding. If savvy investors investigating an opportunity see that another company has already filed strong patents in the same space, they will be less tempted to invest in a competitor in that same space. Additionally, forward-publishing can show competitors that a company is confident they will attain a broad patent, potentially keeping those competitors from entering the space.

The worst-case scenario is that a competing company may use the ideas in the applications as a launching pad for their designers and block a move your company has been planning.  If the patent has weaknesses which can be exploited, forward-publishing could result in large monetary loss.

So is the risk worth the reward? The answer is (unfortunately)… it depends on the patent. Forward-publishing a patent should be considered on a patent-by-patent basis and you should discuss the options with your counsel before proceeding.


USPTO Guidance for Examiners Takes Expansive View of Myriad and Prometheus Decisions

Posted in IP strategy, United States Patent and Trademark Office (USPTO), US patent prosecution

Authored by Isobel Finnie and Muriel Liberto, PhD, Esq.

On March 4, 2014, the U.S. Patent and Trademark Office (“USPTO”) issued a memorandum to the Patent Examining Corps with guidance for determining the patent eligibility of claims relating to products of nature and laws of nature (“the Guidance”) in view of the U.S. Supreme Court decisions in Assoc. for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (“Prometheus”).  While the Guidance does not have the force or effect of law, it will have a significant impact on the prosecution of pending U.S. applications having claims falling within its scope.  And that scope is extremely broad.

The question of patent eligibility touches upon whether or not the claimed subject matter is something for which a patent can be granted.  Although the language of the U.S. statute broadly defines the scope of this subject matter, the U.S. Supreme Court has, over the years, carved out three general exceptions:  products of nature, laws of nature, and abstract ideas. The Guidance deals with the first two of these, products of nature and laws of nature.  We can expect a further memo dealing with abstract ideas following the Supreme Court decision in CLS Bank later this year.

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Beware the Ides of March at the US Patent and Trademark Office

Posted in United States Patent and Trademark Office (USPTO), US patent prosecution

Last March, the USPTO experienced an enormous spike in the typical number of application filings per week, as numerous US provisional and non-provisional patent applications were filed in advance of the March 16, 2013 effective date for the “First to File” provisions of the America Invents Act (AIA).

Thus, a large number of provisional applications are due for conversion in the coming days.  As you are preparing your applications for conversion and/or foreign filing, there are few things to keep in mind to make sure your filings go smoothly:

  • Anticipate that there will be a serious strain on the electronic filing systems at the USPTO and be prepared for unexpected delays and outages.  Alerts about the current status of the electronic filing systems of the USPTO can be found at:

  • Have an emergency plan in place in case you cannot file electronically.  Ensure everyone on your staff is familiar with alternative means for filing US nonprovisional and PCT applications.  Locate your closest Post Office and have additional supplies ready for paper filing, if necessary.
  •  Arrange to have multiple methods available to pay all necessary filing fees:
    • If you have a Deposit Account, be sure to replenish it as often as possible to ensure sufficient funds are available for your daily filings
    • If you are using a credit card to pay for filings, check that your available balance can accommodate all filings

Good luck!

Federal Circuit Decision Impacts Patent Term Adjustment Calculation

Posted in United States Patent and Trademark Office (USPTO), US patent prosecution

Authored by Christina Stock and Mark Giardina.

Recently, the Federal Circuit issued a decision in Novartis v. Lee (2013-1160, Fed. Cir., Jan. 15, 2014) which alters Patent Term Adjustment (PTA) calculations for patents where a Request for Continued Examination (RCE) was filed during prosecution.

In the Novartis decision, the Federal Circuit agreed with the USPTO that the filing of an RCE tolls the running of the three year B-delay clock regardless of whether the RCE was filed before or after the 3 year date.  Thus, the Federal Circuit concluded that once an RCE is filed, no B-Delay is available for any time in continued examination.  (See Novartis at page 13).

The Federal Circuit also held that, for cases where an RCE was filed during prosecution, applicants could be entitled to B-Delay for the time period between allowance and issuance.  The USPTO currently excludes all time following the filing of an RCE from the B-Delay calculation.  However, in the Novartis decision, the Federal Circuit held that the time from allowance to issuance does not fall under the exclusion set forth in 35 U.S.C. 154(b)(1)(B)(i).  Thus, according to the Federal Circuit, the “examination” referred to in the 35 U.S.C. 154(b)(1)(B)(i) exclusion presumptively ends at allowance, unless prosecution on the merits resumes following receipt of a Notice of Allowance.  (See Novartis at pages 15-16).

Because RCEs are filed in many cases, the Novartis decision could potentially impact a large number of patents.  The USPTO has not yet indicated when it will change its procedure for calculating B-delay in cases where an RCE has been filed or whether the decision will be applied retroactively.

We recommend reviewing all patents that have issued recently where an RCE was filed to determine whether they may be entitled to additional PTA days in view of this decision.

EPO Divisionals Update

Posted in Divisional applications, European Patent Office (EPO), European patent prosecution

Authored by David Wraige.

In October 2013, we reported that the EPO had removed the time limits for filing divisonal applications. An outstanding detail at that time was the level of the fees that would be levied for filing second or any subsequent generation divisional applications. Those fees, which are payable in addition to the filing fee, have now been announced:

  • Additional fee for a divisonal application of second generation – €210
  • Additional fee for a divisonal application of third generation – €420
  • Additional fee for a divisonal application of fourth generation – €630
  • Additional fee for a divisonal application of fifth or any subsequent generation – €840

It seems unlikely that these fees will put  applicants off since they already have to pay retrospective renewal fees for divisional applications, which will often swamp the new fees. It would nevertheless be worthwile taking care to file new divisional applications based on the oldest generation earlier application that is still pending to minimise the fees due. The new fees will be payable from 1 April 2014.

New Global Patent Prosecution Highways to Accelerate Examination of Patents

Posted in European Patent Office (EPO), European patent prosecution, International patent prosecution, IP strategy, Patent Prosecution Highway (PPH), US patent prosecution

Authored by Julian Crump.

The Patent Prosecution Highway (PPH) gives applicants the opportunity to accelerate the examination of their patent applications in multiple countries once they have received a favourable report in one country.  This is useful to inventors and businesses because it allows foreign patents to be granted sooner, and by having IP offices make use of the work products of other offices also yields cost savings and other efficiencies to the benefit of all stakeholders.  In January 2014, further improvements to the system will be launched in the form of the Global Patent Prosecution Highway (GPPH).

The first PPH agreements were bilateral, allowing favourable examination reports in the office of first filing to be employed in a second office to short-circuit the examination process.  Since 2006, 30 separate bilateral PPH arrangements have been implemented, resulting in a complex network of agreements that is sometimes called “The Spaghetti Bowl“.  The problems with these early PPH agreements is that they required an applicant to have a positive examination report in his office of first filing before he could accelerate processing in the office of second filing, which was not always possible, especially if the first application was withdrawn in favour of an international application under the PCT, and there were disparate formalities requirements under different agreements, leading to even greater complexity.  Subsequent developments were the PCT-PPH, allowing users to make use of a favourable international preliminary examination report in participating offices, and, most significantly, PPH 2.0 or “Mottainai” which allowed applicants to make use of any positive examination report – not just one from the office of first filing.

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Australian High Court confirms that methods of medical treatment of the human body are patentable inventions

Posted in European Patent Office (EPO), European patent prosecution, International patent prosecution, Uncategorized, United States Patent and Trademark Office (USPTO), US patent prosecution

Authored by Isobel Finnie and Jennifer Karnakis.

On 4 December 2013, the High Court of Australia handed down a decision confirming that methods of medical treatment can fall within the scope of patentable subject-matter.

It is interesting to note that this is the first time that the High Court of Australia has explicitly considered this question.  Accordingly their consideration involved an extensive analysis of case law on what is excluded from being a manner of manufacture and hence excluded from patentability.

The conclusion is good news in the form of certainty for patent applicants and patentees in the healthcare sector.

While methods of medical treatment fall within the scope of patentable subject-matter in the United States, it remains the case that methods of medical treatment are not considered patentable subject-matter by the European Patent Office. Patent protection for such subject-matter in Europe should be sought via alternative claim types, such as first and second medical use claim formats.

ITC Pilot Program Promotes Early Disposition of Investigations

Posted in International Trade Commission (ITC) litigation, Patent litigation

Authored by Rob Moore.

Recent years have seen a surge in the number of investigations before the United States International Trade Commission (ITC), owing to the promise of speedy resolution combined with the leverage that accompanies the threat of an exclusion order.  With the increased volume of investigations have come calls for the ITC to streamline the process of an investigation.  In June 2013, the ITC announced one such effort, a pilot program for early adjudication of certain potentially-dispositive issues.

Specifically, for investigations in the program, the ITC will expedite initial determinations on threshold grounds, such as:

(A) domestic industry (19 U.S.C. § 1337(a)(3));
(B) importation (19 U.S.C. § 1337(a)(1)(A)); and
(C) standing.

In so doing, the ITC seeks to save the parties the time and expense of full discovery and litigation of the investigation in its entirety where the case turns on such a dispositive issue.

The firm’s alert on the pilot program, International Trade Commission Takes Steps to Promote Early Adjudication of Dispositive Issues, provides a greater level of detail.