patents - slim version

decision tree on patent qualification

gate 0 - is it an invention at all?

• excluded anyway?

• industrially applicable?

• novel?

• inventive?

• properly disclosed and drafted?

• —> granted

gate 0 - is it an invention at all?

technical character plus reproducibility. A discovery, a business scheme, an aesthetic creation or a mere idea stops here.

industrially applicable?

can it be made or used in any kind of industry?

novel?

is there one SINGLE document, use or oral disclosure showing every feature together?

its absolute, worldwide, no grace period

inventive?

does it involve a technical advancement that is not obvious to a person skilled in the field?

It should contribute something new beyond existing knowledge.

properly disclosed and drafted?

it has to meet the requirements of sufficiency, clarity and unity

consequences of granted patent

it still doesnt mean you may sell it. it can be opposed for nine months or revoked later

two different kinds of patent refusal

art. 52 says this is not an invention at all

• art. 53 says this is an invention, and we are refusing it anyway

what is a patent - the professor's slide definition

a legal title giving its holder the right to PREVENT third parties from commercially using the invention without authorisation

• in return, the holder must disclose the invention to the public

• limited in time (generally 20 years) and in territory (a specific geographic area)

the patent 'social contract' - the five elements on the slide

an invention

• its documentation

• an administrative procedure

• a granted exclusive right

• a NEGATIVE exclusive right

what does the negative right mean

its the power to prohibit others. it is not permission to do anything yourself

what the patent gives you

the right to stop anyone else, in that territory, from:

• making the product,

• offering, marketing or using it,

• importing or stocking it for those purposes

• using or offering a patented process

• and dealing in any product obtained directly by that process

what does not the patent give you

any right to sell, use or even make your own invention

• that depends on two separate things:

• other people's patents - your product may sit inside someone's broader claim

• and regulatory clearance from the EMA, the FDA or an environmental agency, which is a completely separate legal world

art. 64 EPC - rights conferred by a European Patent

the bundle - a european patent is not one european right. on grant it turns into a pile of national patents, each as strong as a patent that country would have granted itself, and no stronger

• the process bonus - own a method, and you also own whatever comes straight out of it

• "dealt with by national law" - the EPC grants but it does not enforce. Infringement, remedies and damages come from national law or the UPC Agreement

what if the invention is illegal in some countries

it is not enough - a product may be patented if it can lawfully be made for export to states where it is permitted

EPO's threshold for the art. 53(a)

abhorrence test: the objection bites only where the public would find the invention so repugnant that granting a patent is inconceivable - f.ex. letter bombs, anti-personnel mines

art. 53 EPC - exceptions to patentability

morality - contrary to ordre public means shocking to the basic moral floor of society, not merely banned somewhere. illegality in a member state proves nothing

• plants and animals - varieties have their own system so theyre out from here. same with classical crossing and selection

• but microbiological processes and their products are in

• doctors, not products - the act of surgery, therapy or diagnosis on the body cannot be patented

• the tool (f.ex. scalpel) can be patented (same with instruments, devices and substances used in those method)

morality

out:

• human cloning

• altering the human germ line

• industrial use of embryos

• causing animals suffering with no real benefit

plants and animals

out:

• varieties and essential biological processes

• in: microbiological processes and their products

medical methods

out: surgery, therapy, diagnostics on the body

• in: the instruments and substances used in them

• (the scalpel yes, the operation no)

art. 53(c) EPC - where the medical-method exclusion came from

EPC 1973 put it in art. 52(4) (treated as lack of industrial application) • EPC 2000 moved it to art. 53(c) - a purely editorial change • the legal position did not change, so the old interpretation stays valid (G 1/04)

art. 53(c) - what is excluded and what is not

out: methods of treatment of the human/animal body by surgery or therapy, and diagnostic methods practised on the body • in: products, in particular substances or compositions, for use in those methods • reason: patents should not stop doctors doing their job ('what the doctor does')

art. 83 EPC - sufficiency of disclosure

carried out by a person skilled in the art - means hand the document to a competent professional in the field, and they must be able to build the thing without undue burden and without inventing anything themselves • two ways to fail • the skilled person simply cannot make it work - a critical step, parameter or starting material is missing or wrong • or it works, but only for a sliver of what you claimed • the principle underneath both: the monopoly must correspond to your actual technical contribution

art. 33 trips - term of protection

the term shall not end before - states may give longer (SPCs f.ex.), but never shorter • the clock starts at the filing date

SPCs in Europe

CORRECTED - the earlier version of this card said "term = 5 years" which is wrong • it is a separate right starting the day the patent expires • only medicinal and plant-protection products • term = (filing date —> first EU marketing authorisation) MINUS five years, capped at 5 years, plus 6 months for paediatric studies • so it is almost never a full five years

how to armour your patent

patent the core concept, disclosing the bare minimum that satisfies art. 83. • keep the optimisation know-how secret - the exact temperatures and pressures, the catalyst formulation, the manufacturing tricks, the source code.

art. 52 EPC - patentable inventions - and what is an invention?

new, inventive, industrially applicable (technical character smuggles itself in undefined "inventions" and "in all fields of technology") • the list of things that are not inventions • theyre all abstract - knowledge, beauty, rules, information • the list is indicative, not exhaustive • "as such" is the escape • the exclusion only bites on the pure, unapplied version • a mathematical method as such is out, but the same maths controlling an anti-lock braking system is in

substantive patent law pre-grant - the three questions (slides)

1. concept of invention - what is patentable? (technical character, excluded subject matter art. 52(2)) • 2. patentability criteria - novelty, inventive step, industrial application • 3. exclusions from patentability - human body in its natural state, morality/ordre public, plant and animal varieties and essentially biological processes, medical methods

why the art. 52(2) items are not inventions (EPO guidelines)

the EPC does not define 'invention' • art. 52(2) is a NON-exhaustive list of non-inventions • they are all either abstract (discoveries, scientific theories) and/or non-technical (aesthetic creations, presentations of information) • an invention must have technical character, in any field of technology

what is the technical character rule adopted by EPO

its an objectively determinable • human intervention using forces of nature • to achieve a technical effect • it is providing a concrete solution to a technical problem and it must be reproducible

reproducibility

follow the instructions and you get the same result every single time • if it works by chance, luck or magic, it is not an invention • an idea alone never is

"as such"

only the naked version is excluded. dress the excluded thing in hardware and it leaves the list

how much hardware does a claim need to escape art. 52(2)?

any technical means at all • a computer, a processor, a memory, a network - gives the claim technical character as a whole, so it is not excluded "as such"

Comvik approach

an invention consisting of a mixture of technical and non-technical features is assessed as a whole for inventive step, BUT • features which do not contribute to technical character of the invention cannot support the presence of inventive step • the non-technical aim may legitimately appear in the formulation of the objective technical problem as a constraint or requirement to be met - the "requirements specification" handed to the technically skilled person • the consequence: a clever business idea implemented in an obvious way is obvious, however commercially brilliant the idea is

further technical effect test

used for softwares. running any program makes currents flow - that ordinary physical interaction between software and hardware is not enough - you need an effect beyond it • has a further effect: code that controls an ABS braking system, encrypting a transmission, a network restructured so a neural net runs faster • has none: software that books meeting rooms, a prettier invoice layout, an algorithm that calculates commission • each just uses the computer as a computer

discovery v. invention

natural state - discovery • a gene sitting in a human body, a wild plant in the forest, the law of gravity - not patentable • human intervention - invention • the gene isolated, purified and given a stated technical function • patentable, even though its structure is identical to the natural one

rule 29 EPC - the human body and its elements

finding is not inventing • isolating is inventing (even if the structure is identical to that of a natural element) • state the function of invention or it fails - no function, no industrial application

what does the art. 53(b) EPC exclude

plant and animal varieties, and essentially biological processes (classical crossing and selection) for producing them • but! there are two refinements that matter

what are the two refinements that matter - plants, animals

plant varieties are excluded because they already have their own system (plant variety rights) • but a claim that is not directed to one specific variety (f.ex. a gene insertion that works across many tomato varieties) is not caught - G 1/98 • animals have no parallel system of protection, so animal claims above the variety level are possible, but subject to the art. 53(a) morality test (oncomouse)

when the process is essentially biological

only if it consists entirely of natural phenomena • add a technical step that changes the genetic characteristics and you are outside the exclusion

when does the article 53(b) not apply

it doesnt apply to microbiological processes or their products

what is the rule from Tomatoes II & Broccoli II and the change that happened because of Pepper

crossing-and-selection processes stay excluded but the resulting plants and fruits are patentable • in Pepper the EB reverses itself by dynamic interpretation: for applications with a filing or priority date on or after 1 July 2017 (rule 28(2) EPC): plants, plant parts and animals obtained exclusively by essentially biological processes are entirely EXCLUDED

art. 6(1) biotech directive vs art. 53(a) EPC

unpatentable where COMMERCIAL EXPLOITATION would be contrary to ordre public or morality • but not merely because exploitation is prohibited by law or regulation • art. 6(2) gives the specific list (cloning humans, germ line modification, industrial/commercial use of embryos, animal suffering without substantial medical benefit) - copied into rule 28(1) EPC

ordre public - what the örtenblad slide says

inventions likely to induce riot or public disorder, or lead to criminal or generally offensive behaviour • being illegal is not enough (laws differ between countries) • inventions may have both moral and immoral uses - f.ex. a copying machine - that does not exclude them • economic impact is not important

how to destroy novelty

one single document must show all your features together • features found separately in D1 and D2 leave you novel, but whether combining them was obvious is the next question under art. 56 • the disclosure has to be explicit and implicit - stated in words or drawings, or if the skilled person would directly and unambiguously infer it as an inevitable consequence • (an obvious variation is not implicit disclosure - that argument belongs to inventive step)

novelty - the part II slide points

art. 54(1)-(2) EPC • absolute novelty standard - in any form, anywhere in the world • POTENTIAL disclosure rather than actual - it's enough it was made available • before the priority date • no grace period in europe • art. 54(3) - earlier applications published later count for novelty

novelty - the fundamental question and the two special cases

when is the invention part of the prior art? • 1. other patent applications filed earlier but published on or after the priority date - art. 54(3): count for novelty only • 2. excluded from prior art: evident abuse/breach of confidentiality and certain international exhibitions - art. 55

other requirements - implicit but fundamental (part II slide)

sufficiency of disclosure • clear and concise claims • reproducible

where sufficiency actually bites

art. 83 is the requirement • art. 100(b) makes insufficiency a ground of opposition • art. 138(1)(b) makes it a ground of revocation • art. 84 clarity is NEITHER - it must be raised during examination or never

statute of venice 1474

10 years • the first systematic patent law • balanced rewarding the inventor's intellect and capital against getting the technology back to the community quickly

patent v trade secret - the decision rule

if it can be seen in the product, patent it (a mechanical design, a circuit layout - secrecy is an illusion) • if it stays in the factory, keep it secret (a catalyst formulation, process temperatures, source code on your own server)

two hurdles - art. 52(2)-(3) and art. 56

hurdle 1, eligibility: is there at least one technical feature? any hardware at all - a processor, a memory, a physical apparatus • yes —> passes, not excluded "as such" • no —> refused under art. 52(2), a non-invention as such • hurdle 2, inventive step (comvik): do the non-technical features interact with the hardware to solve a genuinely technical problem? • yes —> granted • no —> refused under art. 56 • this is where software claims actually die

the shape of every software case

passes eligibility easily, dies at inventive step • say it out loud in an exam

the coffee-cup rule

"a method of calculating stock-market arbitrage" —> refused, a business method as such • "a computer-implemented method of calculating stock-market arbitrage, using a processor and memory" —> clears hurdle 1 instantly • nothing of substance changed, and that is the point. hurdle 1 is almost free

comvik citation and facts

COMVIK GSM / two identities, T 641/00 • a SIM card allocating calls to two separate identities so private and business calls could be billed separately • hardware conventional, novelty lay in an administrative idea (splitting the billing) • claim failed: the technical implementation of the non-technical billing concept was routine

howard florey / relaxin - the two stages

opposition division 1994 (OJ EPO 1995, 388) rejected the oppositions; on appeal T 272/95 (board 3.3.4, 23 october 2002) dismissed the appeal - the patent stood • claimed: DNA encoding human H2-preprorelaxin, a hormone relaxin variant isolated from tissue donated with consent • morality (art. 53(a)): DNA is not "life", consent was given, a patent gives no rights over the woman - not universally regarded as outrageous • discovery (art. 52(2)(a)): no - H2-relaxin DNA was unknown before and was obtained by a technical process • opponents: the Green group in the European Parliament (admissibility of their joint opposition went to the enlarged board, G 3/99)

rule 27(a) EPC

biological material isolated from its natural environment or produced by means of a technical process may be the subject of an invention • even if it previously occurred in nature

rule 26(4) - what a plant variety actually is

the lowest rank of plant grouping: one defined, distinguishable, stably reproducible kind • two details examiners love: • it counts irrespective of whether it could actually get a plant variety right, so you cannot escape by saying "it would never qualify" • it may be a seed or other propagatable part, not necessarily a whole plant, and how it was obtained is irrelevant

plant varieties - art. 4(1) biotech directive and the slide points

plant varieties are not patentable • it does not matter HOW the plant was obtained (method or steps) - even a genetically engineered variety is out (G 1/98) • a plant variety may be represented by a seed or other propagating material - it does not have to be a whole plant

pepper G 3/19 - the phrase that earns the mark

dynamic interpretation • a particular interpretation given to a legal provision can never be considered carved in stone • enlarged board opinion of 14 may 2020, on a referral by the president of the EPO under art. 112(1)(b) • cut-off: applications with a filing OR priority date on or after 1 july 2017

the full pepper sequence, in order

2015 - tomatoes II and broccoli II (G 2/12, G 2/13): products patentable • 2017 - the administrative council enacts rule 28(2) saying the opposite of the case law • T 1063/18 - a technical board holds the convention prevails over the implementing regulations • the president refers • 2020 - G 3/19: the board follows the council • the cleanest example in the course of politics moving law

pepper G 3/19 - the answer the enlarged board gave

art. 53(b) now excludes product and product-by-process claims to plants, plant material or animals if the product is EXCLUSIVELY obtained by an essentially biological process (or the process features define one) • reason: dynamic interpretation in light of rule 28(2) EPC (in force 1 july 2017), adopted by the administrative council 35 for, 1 against, 1 abstention • no retroactive effect: patents granted before 1 july 2017 and applications filed (or with priority) before that date are unaffected

pepper G 3/19 - admissibility of the president's referral

art. 112(1)(b) requires different decisions of two boards of appeal • the board found them: T 1063/18 (a rule cannot change an article as interpreted by the enlarged board) vs T 272/95 and T 315/03 (a later rule CAN influence how an article is interpreted) • the board rephrased the president's questions and refused to apply art. 112(1)(b) by analogy

brüstle v greenpeace

C-34/10, grand chamber, 18 october 2011, on art. 6(2)(c) of the biotech directive • "human embryo" gets an autonomous EU-wide definition, read WIDELY • the prior-destruction rule: an invention is excluded where the teaching claimed requires the prior destruction of human embryos or their use as base material • whatever the stage at which that takes place, and even if the claim says nothing about embryos • scientific research use is not saved

the two refinements on brüstle

international stem cell corporation, C-364/13 (2014) - a parthenote incapable of developing into a human being is NOT an embryo, which narrows the first limb • the EPO's parallel to brüstle is WARF, G 2/06 • and the assessment is made at the filing or priority date

why brüstle succeeded where relaxin failed

brüstle: a SPECIFIC rule on embryos did the work • relaxin: only the general abhorrence test was available, and it almost never succeeds

relaxin (T 272/95) - why rules 23d/23e applied to an old case

the biotech rules (then rules 23b-23e, now rules 26-29) entered into force 1 sept 1999 without transitional provisions • the board concluded they merely INTERPRET art. 53 as intended from the start, so they apply to pending cases (and checked conformity under art. 164(2)) • rule 23e(2) (now rule 29(2)): an element isolated from the human body or produced by a technical process, including a gene sequence, may be patentable even if identical to a natural element

relaxin (T 272/95) - novelty and inventive step

novelty: no document mentioned the H2-relaxin gene at all • inventive step: closest prior art = the cloning of RAT relaxin DNA; problem = isolate DNA for a further relaxin • hybridisation with a probe from another species was common, BUT evidence showed rat and porcine relaxin DNA did not hybridise, and the human protein sequence was unknown • —> no reasonable expectation of success —> inventive

what counts as making available to the public

writing, speech, use, a demonstration, a thesis in a peruvian library, a github commit, an unrecorded lecture in kyoto • it is POTENTIAL availability that counts - nobody has to have actually read or heard it • one person free to pass the information on, with no duty of confidence, is enough • a signed NDA keeps it OUT of the state of the art

explicit versus implicit disclosure

a document says "a steel bolt fastened into the aluminium housing" • explicit: steel, bolt, aluminium housing • implicit: that the housing has a threaded hole - the skilled person infers it directly and unambiguously as an inevitable consequence • what does NOT count: a titanium bolt, just because swapping metals is routine. that is an inventive-step argument

art. 55 - the two narrow escapes

an evident abuse in relation to the applicant or his legal predecessor • or display at an official or officially recognised international exhibition • both only within SIX MONTHS preceding the filing date • this is not a general grace period, and it is measured from filing, not priority

art. 56 - the second sentence

if the state of the art also includes art. 54(3) documents, those documents shall NOT be considered in deciding inventive step • the carve-out is written into the statute itself

the person skilled in the art

an average expert in the field • with the complete common general knowledge • and NO creative imagination whatsoever • a very well-read person with no ideas of their own, frozen at the priority date • do not confuse with the average consumer of trade mark law

mnemonic for the problem-solution approach

CDEPW - could dogs even pull wagons? the answer must be WOULD • closest prior art • difference (the distinguishing feature) • effect of that difference • problem, objectively formulated from the effect • would, not could • two riders: never put the solution into the problem (that is hindsight), and non-technical aims enter only as constraints in the problem

could versus would

anyone COULD wrap rubber around a mug, rubber exists • but WOULD a cookware engineer have done it, absent any document teaching that a sleeve solves hand-burning? • if nothing in the art prompts it, the combination is inventive

the coffee cup with a rubber sleeve, worked

closest prior art: a plain ceramic cup, it gets hot and burns your fingers • difference: a rubber sleeve around the middle • technical effect: thermal insulation, fingers protected • objective problem: how to modify the cup so hot liquid can be held without burning • could/would: see the could v would card

secondary indicators

supporting arguments, NEVER decisive • closeness to prior art - how far you really moved • comparative efforts - others tried and failed • long-felt want - the problem sat unsolved for years • commercial success - weakest, may be marketing not merit

the asymmetry in the state of the art

the same body of material for novelty and inventive step, BUT • art. 54(3) applications drop out for inventive step • and documents from unrelated fields drop out too, because the skilled person would never have found them • and it is used differently: for novelty one document alone, for inventive step a combination

art. 57 - industrial application

can it be made or used in any kind of industry, including agriculture? • a very low bar • commercial demand is IRRELEVANT

art. 57 - passes and fails

passes: a solar-powered motorised hat for dogs that plays classical music. zero people will buy it, irrelevant, it can be made in a factory and used on a dog • fails: perpetual motion - it violates thermodynamics so it cannot be made or used as claimed • fails: purely contemplative acts, f.ex. a method of meditating

where art. 57 does real work

biotechnology • you may not claim a biological substance without disclosing what it is for • a gene sequence with no stated function fails - which is why rule 29(3) exists • same idea as the isolated-enzyme point, seen from the other side

art. 93 - the eighteen month clock

the EPO publishes the application as soon as possible after 18 months • measured from FILING, or from PRIORITY if you claimed it • from that moment the application is prior art against everyone and the file is open to the public

art. 115 - the competitor's weapon

after publication, ANY third party may present observations on patentability • without becoming a party to the proceedings • no fee, anonymous in practice • it costs nothing and it is how invisible prior art becomes visible

proving a digital disclosure

a web page, a blog post or a github commit destroys novelty if it was publicly accessible before your filing date • but SOMEBODY has to prove it was there, and on what date • standard tools: the wayback machine, wikipedia version histories, timestamped email headers • watch for content behind a login or paywall (arguably not available) and content pulled in by links or iframes

A-publication and B-publication

the A document is the application as published at 18 months, cited EP … A1 • the B document is the granted specification, cited EP … B1

the sentence that frames the whole filing question

there is no such thing as an international patent • every patent is national in the end • what differs is the route you take to get there

mnemonic for the four filing routes

NEUP - new europe uses PCT • national - one country, and the priority year • EP classic - one examination, a bundle of national patents • unitary - one right, one renewal fee, one revocation risk • PCT - one filing, up to 141 countries, and above all TIME (30 to 31 months)

mnemonic for the three paris convention principles

TNC - take no chances, file at home then everywhere • territoriality - rights stop at the border • national treatment - a foreign applicant is treated like a domestic one • convention priority - the twelve months that let you file at home first and everywhere else later, keeping the first date

paris priority - the trap in a combined paper

patents and utility models: TWELVE months • trade marks and industrial designs: SIX months • if the paper covers both halves of the course, this is where people lose a mark

convention priority - the diagram

F0 = first filing ('priority') in state A • F1 and F2 = second filings in states B and C within 12 months - entitled to use the priority date as their filing date • F3 = filing in state D after 12 months - NOT entitled to the priority date

the EPO procedure, start to finish

day 0 - filing and formalities examination • then - search report with a preliminary opinion on patentability. your first real read, and your first chance to withdraw quietly • 18 months - publication of the application and the search report, third-party observations become possible • years 1 to 5 - substantive examination, office actions and replies, ending in grant, refusal or withdrawal • about 4 to 5 years - grant, publication of the specification, then validation in the designated states or a unitary effect request • plus 9 months - opposition window under art. 99

art. 99 - opposition

anyone may oppose, within NINE MONTHS of publication of the mention of GRANT • not from the A-publication, watch this • it is a centralised attack: success revokes the patent in all designated states at once • after the window closes, attacks go country by country, or to the UPC

art. 100 - the grounds of opposition

lack of patentability (arts. 52 to 57) • insufficiency (art. 83) • added subject matter (art. 123(2)) • clarity under art. 84 is NOT on the list

the two arms of the european patent organisation

the administrative council - delegates from member states, legislates and supervises. this is the body that enacted rule 28(2) in the pepper saga • the european patent office - the executive that actually examines

the unitary patent - mechanics

built on regulations 1257/2012 and 1260/2012 plus the UPC agreement • 25 EU states joined the enhanced cooperation • within ONE MONTH of grant you request unitary effect • no validation in each country, no separate national cases, ONE annual renewal fee

membership numbers - do not mix them up

the EPC has 39 member states, 27 of them EU • only 25 EU states joined the unitary patent • so EPC membership and EU membership are not the same thing

the UPC - structure

first instance: a central division (paris, munich, milan) plus local and regional divisions • the nordic-baltic regional division sits in STOCKHOLM • appeals go to luxembourg • defendants inside the EU are sued where the infringement happened or where they are established • defendants outside the EU, at the central division

the UPC - jurisdiction and speed

exclusive over unitary patents, over national validations of EPs unless opted out, and over SPCs based on EPs • written, interim and oral stages run on strict deadlines, decisions inside a year • that favours the PLAINTIFF, who prepares at leisure while the defendant gets three months

UPC costs - the general picture

court fees = a fixed fee (11 000 € for infringement, 20 000 € for revocation) + a value-based fee for high-value cases • small and micro entities get a reduction; part of the fee is refunded if the case is withdrawn or settled early • the loser pays the winner's attorney fees, but only up to a ceiling set by the value of the case

UPC timetable - why it favours the plaintiff

written procedure: statement of claim —> statement of defence (3 months) —> reply (2M) —> rejoinder (2M); counterclaim/amendment requests run in parallel • then interim procedure, then oral hearing • the plaintiff prepares as long as they want, the defendant has only THREE months to respond • decisions within about a year