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An invention is compared to known technologies when assessing its patentability. The invention must be novel, meaning that it differs from known solutions by at least one feature. In addition, the invention must be inventive, meaning that it should not be obvious to a person skilled in the art. For example, a product placed on the market can prevent patenting even if the product has not been described in writing.
In the field of chemistry, this can lead to a peculiar situation where the composition is available, but the different components of the composition and their concentrations cannot be deduced without a detailed analysis of the product. The question is whether such composition has become known after the product has been placed on the market.
When drafting the European Patent Convention it was considered that, an invention is disclosed if, by virtue of the disclosure, a person skilled in the art could carry out the invention. Decision G 1/92 further specified that the invention has become known if a person skilled in the art is able to analyse and reproduce the invention without undue burden on the basis of the prior disclosures.
However, the requirement to analyse and reproduce an invention without undue burden is ambiguous and has led to different interpretations in different contexts. A new referral to the Enlarged Board of Appeal of the European Patent Office, G1/23, has therefore been submitted based on decision T 0438/19 of a Technical Board of Appeal. The referral asks for clarification on three issues, in particular with respect to chemical compositions, in order to unify practices.
The first question concerns a situation where a product does not belong to the prior art, because it cannot be analysed or reproduced. In this case, it may be interpreted that the product itself is not part of the prior art, or alternatively that the chemical composition or the internal structure of the product is not known, even though the product itself is known.
The question may seem theoretical, but in practice, problems can arise, for example, when assessing inventive step. If the product itself is not part of the prior art, then a skilled person could not have developed it further. In this case, it is reasonable that the product cannot be used to assess the inventive step of another product.
However, if the product was available, a skilled person could have used it as a starting point for a new invention, even if they could not exactly analyse or reproduce the product. This is especially true if the intended use of the product and its advantages have been disclosed, in which case a person skilled in the art might find the product interesting because of its features. Of course, in these situations it would be natural that a small change in the product would not be sufficient to obtain a patent, even if the exact composition of the product is not known. It may therefore be appropriate to consider that the product has become known, but its composition or internal structure has not
In some situations, an invention may be obvious, even though it cannot be reproduced identically. Should the invention then be considered to have become public or not?
For example, one might consider a situation where the invention is a caramel-colored fizzy drink. It is obvious that Coca-Cola fits the description, but the recipe for Coca-Cola is not known, and a person skilled in the art cannot make an identical copy. Would the invention be novel or not?
Further, some chemical compositions can be very complex, and it can be very difficult to accurately determine their structure and reproduce the product. For example, synthetic polymers comprise similar units linked together in a complex structure. Different polymers may contain same units that are simply organised in different ways. Therefore, such structures are usually described by their properties.
If the reproduction of a composition means making an identical copy, then, for complex compositions, the question arises how to define that a composition is or is not identical when there is no single way to define the composition.
Further, since the decision G 1/92 explicitly states that the principles of analysis and reproduction should be applied to all products, a clarification is also needed for mechanical and electrical inventions. Does the requirement of reproduction concern a part of a product or the entire product? To what extent should the product be reproduced? Must one be able to also analyse the chemical composition of various components? In particular, do the principles of analysis and reproduction also apply to those parts of the product that are irrelevant to the assessment of inventive step?
Often, various marketing materials or technical brochures refer to the features and benefits of a product without providing any details. Obviously, such materials do not permit reproduction of the product, and the question then arises as to whether the published features are prior art.
In the case of the polymers mentioned above, the requirement of reproduction would mean that the way these products are described does not make them or their properties part of the prior art. However, the properties described may be sufficient for a person skilled in the art to use in developing new technologies. In these situations, it would seem appropriate for the disclosed features to be part of the prior art even though they do not enable the product to be reproduced.
Read more here.
A precedential (U.S) Federal Circuit decision issued this week in Inguran, LLC v. ABS Global, Inc., No. 22-1385 (Fed. Cir., decided July 5, 2023) illustrates difference between direct infringement and induced infringement of a US patent. On appeal, the Federal Circuit held that the plaintiff was not precluded from bringing an induced patent infringement claim, based on a prior claim of direct infringement under the facts presented.
The subject appeal involved a dispute between Inguran, LLC (doing business as STGenetics (ST)) and ABS Global, Inc. (ABS). ST holds a patent (U.S. Patent No. 8,206,987 (the ‘987 patent) for a method of sorting sperm cells based on their DNA characteristics to preselect the gender of domestic animal offspring.
The litigation history between the parties dates back to 2014 when ABS filed a lawsuit against ST alleging antitrust violations. ST countersued, including a claim of patent infringement against ABS based on the ‘987 patent. ABS stipulated to direct infringement of certain claims of the ‘987 patent.
In the initial trial (ABS I), a jury found that one claim of the ‘987 patent was invalid, while the remaining claims were infringed. The jury awarded ST a lump sum for past infringement and an ongoing royalty on future sales of sexed semen straws. In particular, the district court issued a judgment that granted ST an ongoing royalty of $1.25 per straw of sexed semen sold by ABS using the infringing technology.
ST later filed a further suit (ABS III) asserting additional patent infringement claims on the same ’987 patent, including induced infringement of the ‘987, after learning that ABS had begun selling and licensing ST’s system to third parties. The district court dismissed the induced infringement claims of the ’987 patent on the grounds that the claims were precluded by the judgment in ABS I, based on the doctrine of res judicata. Res judicata is a legal principle that refers to the doctrine of claim preclusion, which prevents the same parties from relitigating the same claims or issues that have already been finally adjudicated by a court.
On appeal, ST challenged the district court’s application of res judicata and its interpretation of the scope of the earlier judgment. The primary focus of the appeal was on the issue of induced infringement, which refers to the occurrence where a party actively encourages or facilitates another’s direct infringement of a US patent. Direct infringement refers to the occurrence where “[a party] without authority makes, uses, offers to sell, or sells [a] patented invention, within the United States or imports into the United States [a] patented invention during the term of [a valid] patent…” 35 U.S.C. § 271(a)
The Federal Circuit reversed the district court’s decision, finding that ST’s claim of induced infringement was not precluded by res judicata. In so holding, the Federal Circuit agreed with ST that an induced infringement claim rests on evidence and elements beyond those required by direct infringement. Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., 30 F.4th 1339, 1351 (Fed. Cir. 2022) (“For induced infringement under 35 U.S.C. § 271(b), the two steps become three. In addition to showing direct infringement . . . , the patentee must also show that the alleged infringer ‘knowingly induced infringement and possessed specific intent to encourage another’s infringement.’” (quoting Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398 407 (Fed. Cir. 2018)).; see also Gammino v. Am. Tel. & Tel. Co., No. 12-666, 2013 WL 6154569, at *2 (D. Del. Nov. 22, 2013) (finding that res judicata did not bar a direct infringement claim because induced and indirect infringement claims arise under different statutes and comprise different causes of action).
The Federal Circuit further held that an induced patent infringement claim brought at the time of ABS I would have been based on speculation, the question of inducement was not considered, and the scope of ABS’s direct infringement allegations cannot reasonably be expanded to cover actions of third-party licensees.
In conclusion, the Federal Circuit reversed the dismissal of ST’s induced infringement suit against ABS and held that ST was not precluded from bringing an induced patent infringement claim in ABS III, based on the judgment in ABS I.
We are extremely proud to be recognized once again as one of the top patent law firms in Europe. We have for a long time systematically invested in training our experts and raising the level of our expertise in especially the European level. 16 of our 24 patent experts are qualified European Patent Attorneys, authorizing them to represent our clients in the European Patent Office, EPO. Now, as the Unitary Patent (UP) system, covering several EU countries, has started, with the addition of the Unitary Patent Court (UPC) dealing with infringements and validity of both European and Unitary Patents, the significance of European wide competence of patent attorneys is highly important.
We extend our heartfelt appreciation to all our clients and colleagues worldwide who actively participated in this survey. The consistent dedication and investments we have made in delivering client-centric services have yielded remarkable results. Moving forward, the advancement of our operations and the enhancement of our clients’ experiences will remain our utmost priority. We would also like to express our gratitude to each and every one of our employees, whose unwavering commitment to our clients’ intellectual property rights has been invaluable.
It is important to note that the survey “Europe’s Leading Patent Law Firms” conducted by the Financial Times – one of the most distinghuished and widely circulated business newspapers in the world – is objective and impartial. The rankings are based on recommendations by clients and other patent law firms, with no influence from the firms recognized. For a detailed overview of the ranking list and the survey methodology, please visit here.
Unified Patent Court (UPC) has started its operation on June 1, 2023. The UPC system simplifies patenting in Europe such that it is possible to request for unitary effect for a granted European patent in the countries, which have ratified the UPC Agreement (UPCA) (17 EU member states in the beginning). A European patent with unitary effect may also be referred to as a Unitary Patent (UP).
The countries which have ratified the UPCA are (marked with green in the map): Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden.
All EU member states have not ratified the UPCA. For example Croatia, Poland and Spain have not ratified the UPCA. Non-EU member states cannot participate in the UPC system. For example Great Britain, Norway and Switzerland cannot participate in the UPC system.
Unitary Patent (UP) will be automatically under the jurisdiction of the UPC. UPC’s jurisdiction comprises litigation of UPs and European Patents, precautionary measures, and injunctions in the territory of UPC member states.
Existing European patents will fall under the jurisdiction of the UPC if they are not specifically excluded (opt-out). During the transitional period (at least 7 years), national validations of a traditional European patent may be excluded from the jurisdiction of the UPC, in which case proceedings take place before national courts. It is also possible to withdraw the opt-out (opt-in). However, it is worth remembering that these procedures can be done only once.
National patents are not under the jurisdiction of the UPC. The effects of the UPC system must be taken into account in any case, because of your competitors’ European patents and UPs, for instance.
If your strategy for the UP and UPC is still under planning or you need more information/recommendation, your EP attorney at Laine IP and our UPC specialist team (upc@laineip.fi) will help you forward.
Original news can be found from here.
Assignment/transfer agreement
A document in which the owner of the right transfers the right to another party. For example, an inventor may transfer the right (i.e. ownership) of the invention to the applicant, or a company may transfer a trademark to another company. For transfers between companies, a transfer agreement is often signed in addition to a sales contract, so that the sales contract does not need to be filed at an office.
Employment invention
In some countries, like in Finland, the employer has the right to inventions made by their employees, against a reasonable compensation. If the employment invention law (or for example a research contract) does not apply to the inventor, the inventor is free to do whatever they want with the invention.
License agreement
An agreement between the owner of a right (licensor) and a licensee, giving the licensee the right to use the registered right (patent, trademark, design, utility model). Often a license agreement also covers transfer of for example knowhow. A license agreement may be limited to a geographical area, and it may be exclusive (i.e. the licensee is the only one who can use the right) or non-exclusive (in which case the licensor can give rights also to others).
Power of attorney/authorisation
A document by which the applicant authorises the attorney or agent to act on their behalf towards the office. The attorney thus handles all correspondence with the office.
European Patent Attorney, U.S. Patent agent Toimi Teelahti has been elected Chairman of the Board of Laine IP. Previous chairman Kathy Wasström will continue as a member of the Board, as well as board members Simo Hovi, Tom-Erik Hagelberg and Mirja Matilainen.
Since joining us in 2016, Toimi has become familiar to many of our clients, particularly through his work on US patent prosecution. He is particularly interested in developing our customer and employee experience. Toimi would like to thank all the Laine personnel, including his predecessor Kathy, for their trust and exemplary work.
” IPR as a business will undergo major changes in the near future. A good example of this is the new unitary patent system in Europe. With our young and enthusiastic team, Laine IP will have excellent opportunities to improve our performance and grow.,” says Toimi.
European Patent Attorney Kathy Wasström will continue as a member of Laine’s Board. Kathy states:
” Fresh perspectives and ideas are critical in board work. Being Chairman has been a fantastic role for me as I think Laine is the best company and we have wonderful personnel. However, I wanted to pass the baton to my successor in good time. I am very pleased with our choice of a new Chairman, as Toimi has ideas that are a perfect fit for our company. ”
Laine IP thanks the previous Board for its work and wishes the new Board good luck.
The EUIPO’s SME Fund grant scheme provides financial support for the protection IP to small and medium-sized enterprises. As part of this program, eligible SMEs can apply for the patent voucher, which will be available as from April 27, 2023. The voucher is worth 1500 euros and can be used to cover costs related to patent applications and patent novelty searches carried out by public authorities.
1. Submit an application with the EUIPO website
2. Wait for the grant decision and patent voucher to be issued
3. Apply for a patent!
4. Submit a reimbursement request to the EUIPO
NB Remember to wait for the grant decision and the voucher before submitting a patent application.
The EUIPO SME Fund support program for 2023 will continue until December 8th – but hurry, the funds are limited and available on a first come, first served basis.
Don’t forget that the SME Fund 2023 also offers grants for the protection of trademarks and designs as well as for covering the cost of an IP Scan! Learn more about the SME Fund program on the EUIPO website here or contact our SME Fund expert directly:
Reijo Kokko, reijo.kokko@laineip.fi / +358 44 070 4779
Patent applications must contain an abstract which briefly (typically with a maximum of 150 words) summarises the invention. In most jurisdictions the abstract is only for information, and its final content is determined by the examiner.
Claims should, when possible, be written in two parts, where the characterising part lists the novel and inventive features of the invention. The characterising part follows the terms “characterised in that”.
The scope of protection of patents and utility models is defined by the claims. The claims thus describe in technical terms the invention for which protection is applied for or obtained. Claims are thus the most important part of the application. They must be clear and concise, and a reader must understand the claims on their own, without reference to the description or the drawings. The claims may however comprise reference numbers used in the drawings, while the reference numbers do not affect the scope of protection.
A claim that is in the same category (for example a device, a system, a method) than another claim, and comprises all its features. Often a dependent claim expressly refers to another claim with a number.
If an application contains more than one invention (from the filing or because the claims have been amended), the second or further inventions can be divided to their own application. A divisional application can only contain subject-matter present in the original (parent) application. It has the same effective date as the parent application.
The scope of protection of a design application is defined by the drawings (or photos), and thus the drawings must be identical or very close to the product coming to the market. In some cases, the scope of protection of a trademark application is also defined by a drawing. Patent and utility model applications often have drawings which illustrate the invention and help understanding it. Such drawings do not need to be detailed and to the scale, they can be simplified.
A patent and utility model application has, in addition to the claims defining protection, a description which describes the invention in more details. The description typically has a very brief introduction, a brief background part which discusses the prior art, and a description of the invention. The description of the invention often also includes different variants of features of the invention, also variants that are not in the claims. The description may also contain examples, especially in the field of chemistry.
An invention often has different embodiment, wherein the invention defined in the independent claim is the most narrow (i.e. it has the least features), and the other embodiments have additional features. Different embodiments are described in the claims and the description mainly in view of the situation where the original independent claim is not patentable, but needs to be narrowed by adding additional features therein.
Applications in different countries relating to a same design, trademark or invention for a family. The family is based on a priority application, i.e. the family comprises all applications/registrations which have the same priority, as well as the priority application/registration.
An official fee which has to be paid for the application to remain pending. In some countries the filing fee must be paid to obtain the filing date. During prosecution, the applicant typically must also pay further official fees, at different stages of the prosecution.
A claim which does not refer to another claim and does not contain the subject-matter of another claim in the same category. Claim 1 is in practice always an independent claim, followed by dependent claims referring to it, and thereafter a possible second independent claim.
In a two-part claim, the first part of the claim. The preamble contains those features of the invention which are known, and it ends with the terms “characterised in that”.
A registered trademark does not automatically provide protection for all existing goods and services. Goods and services for which trademark protection is sought have to be identified when filing the application. To make this more simple, a system for classification has been created. This system is applied almost everywhere in the world. The trademark classification system is based on 45 classes for different goods and services. Each class contain an alphabetical list of goods or services in that class. When filing a trademark application, the applicant adds those goods and services in the application for which protection is sought by using the classification system. The added goods and services will determine the final scope of protection of the trademark.
Find more abbreviations in the field of IPR here.
A few considerations with the change:
If you have any questions on the new eGrants (US electronic patents), please do not hesitate to contact Mark Scott or a member of our US IP Team.
A link to the USPTO announcement page on the subject
The European Patent Office (EPO), as well as some other offices such as the Finnish office, assesses inventive step using a so-called problem-solution approach. An important part of this approach is the technical effect achieved by the feature(s) by which the invention differs from the closest prior art.
As we previously told in this news item, a question on this issue was referred to the Enlarged Board of Appeal of the EPO. The decision is finally out, but what does it say? Do we need to draft the applications differently in the future? Does the decision have some other effect?
The referral included a question on how the principle of free evaluation of evidence is to be considered in the situation where the technical effect is proven by a publication that is later than the filing (or priority) date of the application.
The Enlarged Board of Appeal slightly re-phrased the questions asked, and the decision gives has a very clear statement that such evidence may not be disregarded solely on the ground that it had not been public before the filing date of the application or patent. The decision also clearly states that the principle of free evaluation of evidence is to be followed also in cases where the applicant or patentee provides proof of technical effect after the filing date of the application.
The formulation of the Enlarged Board of Appeal differs slightly from what is i.a. used by the EPO in their Guidelines for examination.
According to the decision, an applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention. The Guidelines (G-VII, 5.2) on the other hand states the following: “It is also possible to rely on new effects submitted subsequently during the proceedings by the applicant, provided that the skilled person would recognise these effects as implied by or related to the technical problem initially suggested.”
The difference is thus that previously the technical effect was linked to a technical problem originally disclosed in the application, but the new decision refers more broadly to the technical teaching and invention in the application. It can thus be expected that this issue will in the future be interpreted in a somewhat more liberal manner. It will be interesting to see how this will be formulated in the next edition of the Guidelines in March 2024.
As expected, the decision also clearly puts forward that it is not possible to give a clear yes- or no-answer applicable to all cases, but rather that the situation depends on the case. For some reason, according to the decision, this may also depend to some extent on the technical field. However, as the patentability criteria should be the same irrespective of the technical field, it remains to be seen how this will be interpreted in practice.
In practice it is quite safe to say that from the viewpoint of an applicant or patentee, the situation is at least not worse than before. The rights of third parties are also secured even in the future, as even after this decision the applicant or patentee cannot come up with a completely new and surprising technical effect, so to say out of the blue, to validly argue inventive step, if the effect is in no way connected to the original invention.
It thus seems that this new decision does not have an effect on how applications are drafted. In the future, it will therefore still be necessary to try to include all possible technical problems that the invention and its embodiments solve, as well as any evidence and support thereof in the application when drafting.
In particular in the field of chemistry and biotech, it is however often necessary to have also comparative examples in order to support the inventive step. According to the decision G2/21, the applicant still does not need to carry out an exhaustive preliminary search to find all possible relevant closest prior arts, and to perform comparative examples in view of all of them prior to filing the application. It is of course important to remember that this decision only applies to the EPO, and not for example outside of Europe.
In addition to what is written above, it is worth to note that in the intermediate conclusions of the decision, it is stated that according to established jurisprudence of the Boards of Appeal of the EPO, it is clear that late filed evidence can be used in proving sufficiency of disclosure in a much narrower way than for inventive step. Examples and comparative examples will thus be important in drafting also in the future.
Link to the decision https://www.epo.org/law-practice/case-law-appeals/recent/g210002ex1.html
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