Icescape v Ice-world: Cool for patentees, chilling for others?

The UK Court of Appeal recently applied the new(ish) ‘Actavis test’ for determining whether a patent has been infringed.

In the Actavis test the Court assesses whether the alleged infringement falls within the meaning of the claim wording. If it does not, the Court then asks whether the alleged infringement is an ‘equivalent’ which should nevertheless infringe the patent.

In this case the inventive features of the claim were found to be flexible joints which allowed a mobile ice rink to be folded. The alleged infringement had these flexible joints but lacked other claimed features which were deemed to be less technically important to the foldability. Although the alleged infringement lacked those claimed features, the features which it did posess were held to be equivalent. Infringement was therefore found. No infringement was found at first instance under the old law.

A secondary point of interest was that, as in L’Oréal, the prosecution history was held to be of no assistance in determining the scope of the claims.

This decision is confirmation that UK Courts have become more patentee friendly. It will be interesting to see how the ‘equivalents’ test is applied to features which themselves are found to give the core benefit of the invention.

By Nick Bennett

L’Oréal in court: You might be worth it, but the prosecution history isn’t

An interesting decision was recently given by the UK High Court, in which RN Ventures was found to infringe L’Oréal’s patent for a skin care device.

It was argued that the prosecution history of the patent application should be used to determine the scope of the patent’s claims. The Court re-iterated the test provided in the recent Actavis case which stated that the prosecution history should only be taken into account if;

“(i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point,

or

(ii) it would be contrary to the public interest for the contents of the file to be ignored”.

Because the wording of the claims was held to be clear, the prosecution history was of no assistance in determining their scope.

It was also emphasised that “reference to the prosecution history is the exception, and not the rule” and that “parties should think carefully in future before incurring additional costs in arguing about the prosecution history”.

Authored by Nick Bennett [:]

EPO revokes CRISPR patent: Priority isn’t connected to entitlement to the invention

The EPO has revoked one of the Broad Institute’s core patents relating to the CRISPR gene editing technology.

The patent claimed priority from US applications which were filed by a number of joint applicants. The revoked patent omitted one of these applicants and the Broad Institute did not show that any right of priority had been assigned. The Broad Institute argued that since the omitted applicant was not entitled to the inventions in the patent, it should not need to demonstrate that an assignment of the priority right took place. However, the EPO held that the claim to priority was invalid which brought intervening prior art into play.

The decision confirms that the right to priority is a stand-alone right which depends on the named applicants, and not on entitlement to the underlying invention.

The Broad Institute has appealed the decision and released a press release alleging that the EPO’s decision is not in line with a proper interpretation of the Paris Convention (which gives rise to the priority right).

Whichever way the appeal goes, this case highlights the importance of assigning any priority rights before a later application is filed.[:]

Further delays for the Unitary Patent, or the beginning of the end?

In March 2017 an individual filed a complaint at the Federal Constitutional Court in Germany that German ratification of the Unitary Patent Court Agreement (UPCA) would be unconstitutional. The German ratification process has therefore been put on hold. German ratification of the UPCA is critical to the Unitary Patent system as Germany is one of the three signatories (along with the UK and France) required for the system to come into force.

In late August 2017, the German court set a tight deadline for selected parties to file submissions on the complaint. These parties include the German Ministry of Justice, the German Bar Association and the European Patent Lawyers Association. The request for submissions perhaps suggests that the court will not simply dismiss the complaint out of hand, whereas the tight deadline might suggest that we can expect a ruling later this year.

However, if the complaint is admitted, there is a chance that questions regarding EU law will be referred to the ECJ. This would lead to substantial delays in the Unitary Patent system’s start date. Equally, with an eye on Brexit taking place in 2019, further political bargaining could affect the viability of the project. If the German court finds that German ratification of the UPCA would be unconstitutional, then the whole future of the system could be in doubt.[:]

Resumption of proceedings at the EPO for cases concerning plants and animals obtained by ‘essentially biological processes’

In November 2016 the European Patent Office decided to halt the processing of some patents and patent applications relating to plants and animals obtained by ‘essentially biological processes’. The stay in proceedings was introduced to give the EPO time to consider how these types of patent applications might be affected by an EU Commission Notice clarifying the relevant EU law.

As of 1 July 2017, the stay has been lifted and the processing of affected applications/patents will be gradually resumed.[:]

Brexit and Registered EU Designs

At the moment designers can apply to the EU Intellectual Property Office to obtain EU-wide registered protection for their designs. Brexit has however created some uncertainty surrounding these EU design registrations.

The main question is, will EU registrations still provide protection in the UK once the UK leaves the EU? Although this is unlikely to be decided for some time, we think that the UK will almost certainly provide transitional mechanisms to ensure that proprietors of existing EU registered designs have the opportunity to maintain their protection in the UK. On that basis, there is no need for alarm.

After Brexit eventually happens, designers might need to apply separately in the EU and the UK to obtain protection in both of these territories.

We will continue to monitor the situation and will advise on any developments as they become available. In the meantime, we are happy to provide further tailored advice on request.[:]

Going Global – 11-12 May 2016

Cleveland IP will be exhibiting at the Going Global exhibition on 11 and 12 May 2016 at ExCel London. We would love to see you on our stand 2414.

Nick Bennett will be giving a talk on “An Introduction to Intellectual Property” at 11.00 on Wednesday 11 May in the UK Trade and Investment lecture theatre. Patents, registered designs, trade marks and copyright will all be discussed. The talk will also cover the assets which your business might be able to protect, for example your inventions, your brand or the aesthetic appeal of your products. This will be done with an eye on protection in your markets overseas, as well as in the UK.[:]

Going Global

Cleveland exhibited at the Going Global show at Kensington Olympia on 3 and 4 December 2015.

Nick Bennett, a patent attorney in our chemistry department, delivered a brief introduction to intellectual property.  The talk covered the assets which your business might be able to protect, for example your inventions, your brand or the aesthetic appeal of your products.[:zh]Cleveland will be exhibiting at the Going Global show at Kensington Olympia on 3 and 4 December 2015.

Nick Bennett, a patent attorney in our chemistry department, will deliver a brief introduction to intellectual property at 14.00-14.30 on Thursday 3 December in Hall 20. Patents, registered designs, trademarks and copyright will all be discussed. The talk will also cover the assets which your business might be able to protect, for example your inventions, your brand or the aesthetic appeal of your products. This will be done with an eye on protection in your markets overseas, as well as in the UK.

Feel free to visit us at stand G186 or drop in at Nick’s talk.[:ja]Cleveland will be exhibiting at the Going Global show at Kensington Olympia on 3 and 4 December 2015.

Nick Bennett, a patent attorney in our chemistry department, will deliver a brief introduction to intellectual property at 14.00-14.30 on Thursday 3 December in Hall 20. Patents, registered designs, trademarks and copyright will all be discussed. The talk will also cover the assets which your business might be able to protect, for example your inventions, your brand or the aesthetic appeal of your products. This will be done with an eye on protection in your markets overseas, as well as in the UK.

Feel free to visit us at stand G186 or drop in at Nick’s talk.[:]

Speedy Patents

In the past few years there have been significant increases in the numbers of patent applications being filed around the world, putting pressure on the patent system. A couple of schemes have been introduced to avoid the resulting backlogs and allow applicants to make use of their intellectual property more quickly than ever before.

Traditionally, an applicant has needed ‘good reasons’ to accelerate examination of their UK patent application. There is no clear definition of what constitutes ‘good reasons’; however the existence of an infringer or licensing negotiations concerning the application are normally accepted as valid reasons to accelerate examination. A relatively new scheme has broadened the circumstances in which applicants will be granted accelerated examination. Now, applications concerning ‘green technology’ will be accelerated upon request. The Intellectual Property Office has provided guidance that technologies such as solar panels and wind turbines will clearly fall into this category. However, other less obviously ‘green’ technologies, such as more efficient manufacturing processes, may also be considered as eligible for acceleration.

The UK’s ‘Patent Box’ scheme has also introduced a new reason for requesting speedy processing of a patent application. The Patent Box scheme provides a reduced rate of corporation tax to income derived from patented inventions. Importantly, the benefits of the Patent Box only apply after grant. Therefore, accelerated examination is now possible, if required to bring forward Patent Box benefits.

Many applicants are not only interested in the progress of their UK patent applications, but also of their patent filings around the world. Indeed, some of the delays in foreign patent offices are much worse than those in the UK. As of January 2014, a Global Patent Prosecution Highway (GPPH) enabled applicants whose application had been deemed patentable in the UK, to request accelerated prosecution in certain foreign territories (and vice versa). There are currently 19 GPPH members including the commercially important markets of the US, Japan, Korea and Russia. Patent examiners in these states will, on request, make use of the examination conducted in the UK with a view to reducing processing times. Although China and Germany are not part of the GPPH scheme, similar agreements are in place to ensure that accelerated prosecution can be requested in China and Germany, providing that a patentable UK application exists.

Of course, acceleration of patent applications may not always be the best strategy. In some circumstances the flexibility of a patent application may be preferred, since its scope could potentially be tailored depending on the activities of an infringer. Additionally, accelerated proceedings can bring costs forward, which may not always be desirable.

The acceleration schemes discussed have however been welcomed by applicants, and should ensure that the patent system does not hold up important business decisions.

Patent Box Update

Patent Box is a UK tax regime for providing tax breaks to companies who profit from patented inventions. Under Patent Box, corporation tax on these profits may be reduced from 20% to 10%. The scheme was introduced in 2013 with the aim of making the UK a top location for innovative industries and encouraging growth.

The system has however been criticised for encouraging companies to artificially shift their profits into the UK. In particular, the German government and the OECD have been vocal in their criticism.

A proposal for watering-down the Patent Box has therefore been drawn up between the UK and Germany. If implemented, it would mean that Patent Box would only apply to profits from intellectual property which was generated in the UK. Accordingly, companies who do not undertake R&D in the UK would no longer be eligible for the Patent Box. The existing scheme will be closed to new applicants after June 2016, and the benefit to those already in the scheme at that point would only continue until June 2021.

Given current uncertainty about the new rules, companies may wish to accelerate prosecution of their patent applications in order to obtain a qualifying patent before the June 2016 deadline. Mechanisms for accelerating prosecution of patent applications exist at both the UK and European Patent Offices.

It is hoped that agreement on the proposal will be reached in 2015- watch this space for further updates.[:zh]Patent Box is a UK tax regime for providing tax breaks to companies who profit from patented inventions. Under Patent Box, corporation tax on these profits may be reduced from 20% to 10%. The scheme was introduced in 2013 with the aim of making the UK a top location for innovative industries and encouraging growth.

The system has however been criticised for encouraging companies to artificially shift their profits into the UK. In particular, the German government and the OECD have been vocal in their criticism.

A proposal for watering-down the Patent Box has therefore been drawn up between the UK and Germany. If implemented, it would mean that Patent Box would only apply to profits from intellectual property which was generated in the UK. Accordingly, companies who do not undertake R&D in the UK would no longer be eligible for the Patent Box. The existing scheme will be closed to new applicants after June 2016, and the benefit to those already in the scheme at that point would only continue until June 2021.

Given current uncertainty about the new rules, companies may wish to accelerate prosecution of their patent applications in order to obtain a qualifying patent before the June 2016 deadline. Mechanisms for accelerating prosecution of patent applications exist at both the UK and European Patent Offices.

It is hoped that agreement on the proposal will be reached in 2015- watch this space for further updates.[:ja]Patent Box is a UK tax regime for providing tax breaks to companies who profit from patented inventions. Under Patent Box, corporation tax on these profits may be reduced from 20% to 10%. The scheme was introduced in 2013 with the aim of making the UK a top location for innovative industries and encouraging growth.

The system has however been criticised for encouraging companies to artificially shift their profits into the UK. In particular, the German government and the OECD have been vocal in their criticism.

A proposal for watering-down the Patent Box has therefore been drawn up between the UK and Germany. If implemented, it would mean that Patent Box would only apply to profits from intellectual property which was generated in the UK. Accordingly, companies who do not undertake R&D in the UK would no longer be eligible for the Patent Box. The existing scheme will be closed to new applicants after June 2016, and the benefit to those already in the scheme at that point would only continue until June 2021.

Given current uncertainty about the new rules, companies may wish to accelerate prosecution of their patent applications in order to obtain a qualifying patent before the June 2016 deadline. Mechanisms for accelerating prosecution of patent applications exist at both the UK and European Patent Offices.

It is hoped that agreement on the proposal will be reached in 2015- watch this space for further updates.[:]