All European patent attorneys are members of the Institute of Professional Representatives before the European Patent Office (epi). epi represents the interests of its members in relation to the EPO. In this respect, the European Patent Practice Committee (EPPC) with its various technology groups and working groups is an important body that deals with issues that arise in daily practice.
A large number of epi committees is staffed with Swiss members. The lively exchange between the members of the Association of Swiss and European patent attorneys in private practice (VESPA) and the delegates is essential. Therefore, VESPA launches the ‘epi Roundtable’, to establish a platform for VESPA members to get first-hand information about current projects and changes at the EPO. On the other hand, it also is a chance to point the delegates to issues that should be dealt with in the EPPC or other epi committees, and to discuss questions they might have relating to epi and the EPO.
Alle europäisch zugelassenen Patentanwälte sind Mitglied des Instituts der beim Europäischen Patentamt zugelassenen Vertreter (epi). Dieser Verband nimmt die Interessen seiner Mitglieder in der Zusammenarbeit mit dem EPA wahr. Ein für Fragen der täglichen Praxis wichtiges Gremium ist das European Patent Practice Committee (EPPC) mit seinen diversen Technologie- und Arbeitsgruppen.
Die Schweiz stellt Delegierte in sehr vielen epi-Ausschüssen. Wesentlich ist der lebendige Austausch zwischen den Mitgliedern des Verbands der freiberuflichen Europäischen und Schweizer Patentanwälte (VESPA) und den Delegierten. Dafür ruft der VESPA den ‘epi Roundtable’ ins Leben. Er soll eine Plattform sein, über welche sich die VESPA-Mitglieder einerseits aus erster Hand über aktuelle Projekte und Änderungen beim EPA informieren können. Andererseits bietet er auch die Möglichkeit, den Delegierten Anliegen zur Einspeisung und Vertretung im EPPC oder in anderen epi-Gremien zu unterbreiten und Fragen zu aktuellen Themen im Zusammenhang mit dem epi oder dem EPA zu stellen.
is obvious in view of the state of the art (Art. 56 EPC).
The fate of a patent application thus critically depends on the ‘state of the art’. Now, what is comprised in the ‘state of the art’? The EPO educates its customers in the Inventors’ handbook in plain and simple words:
A prehistoric cave painting can be prior art. A piece of technology that is centuries old can be prior art. A previously described idea that cannot possibly work can be prior art. Anything can be prior art.
Easy, isn’t it? Not so, the closer you look.
In legal terms, the ‘state of the art’ is defined in Art. 54(2) EPC which reads as follows in the three official languages of the EPC (emphasis added):
Den Stand der Technik bildet alles, was vor dem Anmeldetag […] der Öffentlichkeit […] zugänglich gemacht worden ist.
The state of the art shall be held to comprise everything made available to the public […] before the date of filing […].
L’état de la technique est constitué par tout ce qui est été rendu accessible au public avant la date de depot […].
There are at least two issues that have recently been looked at more closely in relation to the term ‘state of the art’ in Switzerland:
How shall a pre-published, non-enabling disclosure be dealt with?
The Swiss Supreme Court recently held that even a non-enabling disclosure well belongs to the ‘state of the art’ (contrary to what the EPO typically does, i.e. to just ignore it; see Guidelines, G-IV, 2). But, in the Supreme Court’s view, such a piece of prior art cannot be assessed with the EPO’s problem-and-solution approach because the objective technical problem in such a case is just to find a working solution for what had been insufficiently disclosed previously, and there is an inherent motivation to search for that solution; see this Blog here.
What actually is the ‘art’ referred to in ‘state of the art’?
At the INGRES annual meeting of July 5, 2018, Hannes Spillmann briefly discussed a clash between two Board of Appeal decisions at the EPO, i.e. T 0172/03 and T 2101/12. The latter explicitly disagrees in its headnote with the headnote of the earlier decision T 0172/03, in the fundamental question of what actually is meant with
state of the art.
Which ‘art’ does Art. 54(2) EPC refer to? Can something described previously be excluded right from the outset just because it is not related to classic ‘technology’? The headnotes of T 0172/03 suggest exactly that (emphasis added):
1. The term ‘state of the art’ in Article 54 EPC should, in compliance with the French and German text, be understood as ‘state of technology’, which in the context of the EPC does not include the state of the art in commerce and business methods. The term ‘everything’ in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology.
2. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons).
Points 8 to 10 of T 0172/03 referred to in hn 2 leave no doubt that the gist really is to just exclude certain publications from any consideration as ‘state of the art’ whatsoever:
[T]he decision under appeal […] identifies the closest prior art as “the existing order placing mechanism” as if such a business scheme qualified as prior art as any other piece of technical information. […]
It can hardly be assumed that the EPC envisaged the notional person skilled in the (technological) art to take notice of everything, in all fields of human culture and regardless of its informational character. A consistent construction of the patentability provisions requires the term “everything” in Article 54(2) to be understood as concerning such kind of information which is relevant to some field of technology.
I am having difficulties to read an element (“art” / “Technik” / “technique”) of the phrase that is to be defined (“prior art” / “Stand der Technik” / “l’état de la technique”) in Art. 54(2) EPC into the definition itself. This is a Catch-22, in my perception; see also T 2101/12, ¶6.6 in this respect.
Luckily, T 2101/12 sets it right again; the hn reads as follows:
I fully concur with this. Whatever has been made available to the public is to be considered ‘state of the art’ in the sense of Art. 54(2) EPC, irrespective of whether it relates to a field of ‘technology’ or not.
It remains to be seen how the case law of the Boards will develop. Note that T 2101/12 only explicitly disagrees with hn 2 of T 0172/03. However, a quotation from hn 1 of T 0172/03 even made it into the EPO Guidelines for Examination (G-VII, 2):
The ‘state of the art’ for the purposes of considering inventive step is as defined in Art. 54(2) (see G‑IV, 1). It is to be understood as concerning such kind of information as is relevant to some field of technology (see T 172/03).
It is not that I have an issue with this quote. Even a non-technological ‘state of the art’ may well be relevant to some field of technology, e.g. when a mere business method as ‘state of the art’ is automated, and it is patentable when this is achieved in a new and non-obvious manner. This is how T 2101/12 approached it. But this understanding clearly is not what T 0172/03 advocated for. Incomplete reference to only part of hn 1 of T 0172/03 is misleading, at best. In my opinion, reference to T 0172/03 should be deleted from the Guidelines completely.
The following is just to name a few examples of state of the ‘art’ not taken from what one would typically consider a ‘field of technology’. Have fun.
I once had a hard time to properly communicate to a client that a U.S. examiner held SpongeBob to anticipate his invention:
The cartoon SpongeBog SquarePants Episode 1 ‘Help Wanted’ teaches a shearing tool which is mounted coaxially, rotatable, wherein the shearing tool comprises at least a bent arm wherein the tool has at least one opening.
The examiner referred to the following screenshot:
See the tool in motion here, if this meets your sense of humor; the screenshot was taken at approx. 1:04 min.
Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. […] The origin of the drawing is immaterial. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art.
Luckily, the SpongeBob reference was overcome and the application proceeded to grant; US 8,622,507 B1, see the SpongeBob reference on the title page (‘Other Publications’).
2. The Beano
An entry signal system for pets is described and claimed in GB 2 117 179 A (filed March 18, 1983 and claiming priority of March 18, 1982). The applicant had been faced with the comic strip ‘The Beano’ (No. 2015 of February 28, 1981) as ‘state of the art’:
Reference to ‘The Beano, No. 2015, page 1’ is indicated on the title page of GB 2 117 179 A, under the heading ‘Documents cited’.
3. James Bond
On his fourth mission ‘Thunderball‘, James Bond aimed to recover two stolen warheads. They had been taken by the evil SPECTRE organization. The world was held hostage and Bond headed to Nassau where he was forced into a thrilling confrontation with SPECTRE agent Emilio Largo, on board and around his boat, the Disco Volante. Bond used a special breathing apparatus:
This scene was cited as ‘state of the art’ in GB 2 273 053 A; see ‘Documents cited’ on the title page. Indeed, figure 1 of GB’053 shows a stylized special agent with a somewhat similar breathing apparatus:
4. The Holy Bible
If I had prosecuted the following claim (US 10/212,636, claim 2 as filed), I surely had not expected to become best buddies with the examiner:
But being faced with the Holy Bible as ‘state of the art’ might make one’s blood run cold in one’s veins! The rejection read as follows:
[The claim] is rejected under 35 U.S.C. 102(b) as being anticipated by the Holy Bible (Levite, Moses, et al.)
[…] In Genesis, Chapter 41, we are told that Pharaoh appointed Joseph to be his representative and instructed him to enter into contracts to purchase grain. These contracts included an offer with an activity (supply grain) and a benefit (get paid for the grain). Payment was made upon delivery of the grain. The story of Joseph is about 4,500 years old. Neither Joseph nor Pharaoh were considered innovators – the principal / agent relationship is of immemorial antiquity. It no doubt predates civilization itself. The purpose of rejecting this claim using the Bible as reference is to illustrate how ancient the claimed subject matter is. Many of Applicant’s claims could also be rejected using the same reference.
The applicant took up the fight, and his response really is a good read:
On a sidenote, I have once been told (but did not manage to independently verify) that a patent application pertaining to a voice-controlled automated lighting system had been challenged at the EPO with reference to the Holy Bible, too. More particularly, with reference to Genesis, Chapter 1:
And God said, ‘Let there be light’, and there was light.
5. The Law of Agency
Misfortunes never come singly: The claim recited above in (4) had also been rejected in view of the law of agency. The apparently highly motivated examiner held:
Basic agency law teaches that a principal may conduct any business through an agent (representative) that he could conduct in person. This includes entering into contracts. To enter into a contract, one determines a recipient (the other party) and an offer, which includes an activity (e.g., paint my house) and a benefit (consideration). If using an agent, the principal transmits instructions to the agent to provide the offer to the recipient. In any contract, there is the step of determining whether the recipient has performed the activity and providing the benefit to the recipient if the recipient has performed the activity.
6. Donald Duck
In a 1949 Walt Disney comic, a sunken ship had been raised by Donald Duck and his nephews. They pushed ping pong balls into it to lift it up:
A similar technology has actually been used later, for the first time in 1964 when Karl Kroyer lifted a sunken ship with 6’000 sheep right in front of Kuwait’s major fresh water intake in the harbor.
Rumor has it that Kroyer’s patent application was rejected in view of the comic strip (as reported e.g. in the newspaper scan above), allegedly by the Dutch patent office — but I could not find any proof for this. Patents have been granted elsewhere (e.g. in Germany and the U.S.).
Nevertheless, I have no doubt at all that this comic strip would have had to be considered as ‘state of the art’ in the assessment of patentability of Kroyer’s invention.
It is a good tradition that the President of the Swiss Patent Court takes the opportunity to directly address users of the court at the occasion of the annual INGRES conference, and to remind them (or inform for the first time) of certain procedural aspects of relevance for practitioners.
The new President Mark Schweizer did not break with this tradition:
Mark Schweizer informed about the current workload at the court and presented the figures of the first six months of 2018. Nothing out of the ordinary, actually.
disposed of until
Infringement w/o counterclaim
Nullity w/o counterclaim
Infringement and nullity
disposed of until
injunctive relief / preservation
2. Amendment of the PatCA
The amendements to the PatCA will come into effect as of August 1, 2018, with the most important aspect being that not only the President but also the second ordinary judge (currently Tobias Bremi) may preside over proceedings in the capacity of instructing judge.
See this Blog here for further information about the forthcoming changes.
3. Anonymisation of decisions
Decisions in summary proceedings will not be anonymised anymore (decisions in main proceedings had not been anonymised anyway); see this Blog here.
No rule without exception: If you feel that special circumstances require your decision to be published only in anonymised form, a reasoned request should be filed.
4. Case management
a) Less Doodle
Figuring out a convenient date with Doodle apparently turned out to be more and more time consuming for the court (see this Blog here for further information).
Henceforth, parties will only provided once with a set of only three dates to choose from in a Doodle form (not five dates as under the previous regime), whenever possible in three different weeks and on different days of the week.
b) Preparatory hearing
The parties are summoned to a preparatory hearing not only when both sides desire so, but even if only one side does. And the hearing will be held even if the other side does not appear.
Again, no rule without exception. But one should be prepared that there is no chance to hide from unpleasant provisional opinions or questions of the court; see this Blog here (item 2) for further information.
c) Timeline of proceedings
If no settlement can be reached at the preparatory hearing, a timeline is established for the further course of the proceedings, to ease projectability for the parties and the court; see Art. 8 of the Guidelines on Proceedings.
The date of the main hearing will likely not be fixable at the preparatory hearing, since the full panel of judges is not yet established at that time. But still, a time frame for the hearing will be indicated at the preparatory hearing, with the exact date being fixed thereafter.
It remains to be seen how this works out in practice. Mark Schweizer made the reservation that changes to this procedure are not excluded, in view of the planning fallacy:
The planning fallacy is that you make a plan, which is usually a best-case scenario. Then you assume that the outcome will follow your plan, even when you should know better.
— Daniel Kahneman
d) Single exchange of briefs in summary proceedings
The typical course of actions in summary proceedings is:
reqest for interim injunctive relief;
no second exchange of briefs;
plaintiff’s limited reply to validity issues raised by defendant (if any);
expert opinion of the judge-rapporteur;
the parties comment on the expert opinion at the hearing (orally).
4. Specific cases
The President briefly presented the following decisions:
If you missed the Zurich IP Retreat last weekend, you really missed a lot. I trust there will be some kind of conference proceedings later on, but you will only catch a glimpse of all the fruitful discussions on the various aspects of hindsight that we had on the spot.
The blue elephant will constantly remind me of hindsight issues …
I noted two points of specific concern for proceedings at the Swiss FPC that I want to share with you:
Closest prior art
It is not uncommon (to say the least) that one party in nullity proceedings is not in agreement with the selection of the ‘closest prior art.’ Mr Brändle made it perfectly clear how this is dealt with at the FPC:
If there are several valid starting points (and everything that cannot be excluded right away is ‘valid’) we look at every single one, and don’t even raise the issue of the closest one. If the patent is found to be obvious over any one of the pieces of prior art, we stop right there. And there is – very important – no room for the argument ‘you did not start from the closest prior art’.
Mr Brändle referred to decisions 138 III 111 (r 2.2) of the Supreme Court and O2013_011 of the FPC in this respect. In sum,
[t]here is absolutely no use to fight over the question which of the prior art brought forward to show lack of inventive step is the closest one. We will look at all of them, unless already one of them renders the invention obvious, which then is the end of the case.
The skilled person’s knowledge – at which point of time?
The knowledge of the skilled person may change over time. Some discussion evolved around the relevant point of time in the assessment of infringement. The skilled person’s knowledge and understanding is relevant e.g. for both the second and third question in the typical assessment of equivalents (see the detailed discussion of the questionnaire on this Blog here).
Mr Brändle emphasized that the FPC relies on the skilled person’s knowledge at the point of time of the infringement in its assessment of infringement.
The annual INGRES conference took place yesterday, July 5. It is a good tradition that the most relevant patent-related decisions are summarized by an attorney-at-law and a patent attorney. Just in case you missed the event (you shouldn’t, not only because of the famous boat trip on lake Zurich!):
The latter decision could not be discussed on the merits; an appeal is currently pending at the Supreme Court.
Dieter BRÄNDLE, the President of the FPC, presented a very helpful overview of the time limits which are generally set by the FPC for the various procedural steps, including the potenial term extensions. In brief:
advance payment / security obligation
2w + 1w
1w + 1w
statement of defense / answer to counterclaim
6w + 2w
2w + 1-2w
answer to counterclaim and reply
6w + 2w
2w + 1-2w
reply / rejoinder
4w + 2w
2w + 1-2w
rejoinder and reply to counterclaim
4w + 2w
2w + 1-2w
rejoinder to counterclaim incl. comments on new factual allegations in rejoinder
4w + 2w
2w + 1w
4w + 2w
2w + 1w
comments on new factual allegations in the rejoinder
2w + 1w
1w + 1w
comments on submission with new factual allegations
2w + 1w
1w + 1w
comments on expert opinion of the judge-rapporteur
4w + 2w
2w + 1w
comments on procedural motions
2w + 1w
1w + 1w
comments on security obligations
2w + 1w
1w + 1w
comments on cost issues
1w + 1w
1w + 1w
unconditional right to reply
The overview of time limits will also be made available on the website of the FPC in due course.
Dieter BRÄNDLE also made clear that certain party submissions are just unwanted, ie those which contravene the court’s intention to have an equal number of party submissions per issue on file before the instructional hearing (see eg O2016_012 and O2012_039). Beware: Even a fine for the respective attorney was mentioned in case of non-compliance.
Finally, Dieter BRÄNDLE expanded on dos and don’ts for offers of evidence. The court won’t search for proper evidence somewhere in the docket when it is merely referred to proof ‘mentioned elsewhere herein’ or the like. Evidence should be properly identified where it is relied on. And it does not make much sense to ‘reserve the right to submit further evidence’: A party either has the right to do so by law (then the statement is not necessary), or the exchange of party submissions is already finished. In the latter case, there is no right to be reserved and the statement is useless.
It will be held on September 8-9, 2017 in honor of Dr. Dieter Brändle, the first President of the Swiss Federal Patent Court who will step back at the end of 2017. Opinion leaders in the law of innovation and technology from all over the world, including judges, litigators, patent attorneys, in-house lawyers and academics, will have the chance to discuss one of the fundamental problems in patent law:
Patents and Hindsight
Not sure if this is for you? Well, just have a look at the lineup!
Protective letters are frequently used. See the most important do’s and don’ts here. In addition, note that protective letters can be filed by a legal representative or the party itself, but not by a patent attorney.
The audience unanimously critcized decisions D2015_035 of 08 March 2016 (hn: A protective letter may not be withdrawn) and, to less extent, D2015_035 of 09 February 2016 (no later addendum to a protective letter, except for proper and improper novae).
By the way: A protective letter may not only be useful in anticipation of a request for ex parte interim injunctive relief, but also in anticipation of a request for preliminary measures to secure evidence like this one here.
S2017_002 and S2017_003 made clear which requirements are to be fulfilled for an ex parte register ban to be successful; the former failed, the latter has been successful.
It became clear in the discussion that the surprising effect is not the only motivation for practitioners to request ex parte interim measures. Actually, ex parte interim measures are perceived by some as the only way to get speedy relief. Interim measures typically take seven to twelve months if they really dive deep into the subject-matter at stake (which is more the rule rather than the exception). Some participants questioned whether there is actually any difference to main proceedings, besides the fact that judicial vacations are not applicable. Sure, court fees are reduced — but so is the party compensation. On the other hand, parties typically do not perceive that the reasonable effort in summary proceedings is reduced by half.
iii) Service of process
Two Swiss parts of European patents have been recently revoked by the FPC in judgements rendered in absentia; O2015_007 and O2015_017. The patentees / defendants did not respond at all. At least for O2015_007, it is clear meanwhile that this happened by accident; see the detailed discussion here. In both cases, the U.S. patentee / defendant had been directly served with the writ in accordance with the Hague Convention and Art. 137 CPC. In accordance with U.S. rules, the Swiss embassy in the U.S. thus served the writ to the patentees / defendants by registered letter. In the absence of any reaction, the FPC had published subsequent notifications to the patentees / defendants only in the Swiss Official Gazette of Commerce; Art. 141 CPC.
It has been proposed that the FPC could at least bring the subsequent publications in the Swiss Official Gazette of Commerce also to the attention of the representative on file at the Swiss Federal Institute of Intellectual Property for the patent in suit.
On a personal note: I have my doubts. (I have been involved in O2015_007, but this case is finally concluded now.) It may well appear formalistic to only publish a notification in the Swiss Official Gazette of Commerce when contact details of a representative of the patent are available from Swissreg. As a patent attorney on file in Swissreg, one may easily find it unsatisfactory to just be ignored. But it’s the law. Even if such an additional notification would not constitute a breach of judicial confidentiality: It surely is more than what is required by law. Nota bene: In inter-partes proceedings. Any assistance by a court for the potential benefit of one party is of potential disadvantage for the respective other party; and I cannot see any superordinated public interest, either. This is why I am hesitant. But may the lawyers have their say on this.
iv) Doctrine of Equivalents
Discussion of decision 4A_131/2016 of the Supreme Court highlighted the apparent gap in the assessment of literal infringement and infringement under the DoE; see this Blog here. But let’s focus on the positive: The three-step questionnaire for the assessment of infringement under the DoE is approved. Let’s await the next decision(s) of the Supreme Court which hopefully provide further guidance.
As to the assessement of the third question in O2015_004, it has been discussed whether the actual wording of a claim is more binding if the alternatives are readily apparent — both for the person skilled in the art reading the patent, as well as for the patentee when drafting the application. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)
v) Abandonment of subject-matter
A further interesting aspect of O2015_004 surely is the issue of abandonment of subject matter; see this Blog here for further details. (Note that Hepp Wenger Ryffel is involved in this matter, and the decision is not yet final. It can thus not yet be discussed in detail here.)
Discussion briefly touched decisions 4A_427/2016 of the Supreme Court with respect to the legal standard of implied confidentiality (see this Blog here) and S2016_002 with respect to the admitted prior art as supporting basis for claim construction (see this Blog here).
Reported by Martin WILMING
BE ON THE KNOW
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Don’t miss VESPA‘s annual evening seminar on case law of the FPC on Thursday, March 30 in Zurich (Hotel Krone, Schaffhauserstrasse 1, 8006 Zurich). Gain first-hand insight from Tobias BREMI (second ordinary judge at the FPC) and Michael RITSCHER who will lead the discussion. See the programme for details.
The event is free of charge for VESPA members; the fee for non-members is CHF 90,–. Dinner afterwards is offered for CHF 80,–.