Tag:  “patents”  | (14) posts

UK inches towards UPC ratification

There was a sigh of relief at the end of November when the UK announced that it would proceed with the ratification process to implement the UPC in spite of Brexit.  This renewed the hope that the UPC will come in to force in 2017 as planned.  Whilst this was good news, what did it actually mean for the timescales and where is the UK currently in its legislative process to ratify the UPC?

In order to look forwards, it may be helpful to take a look back to see what the UK has already done to ratify the UPC.  They were, in fact, fairly advanced in the ratification process before the result of the EU referendum put a spanner in the works.

In May 2014, the UK Parliament passed the Intellectual Property Act 2014.  This Act amended the Patents Act 1977 by inserting new sections 88A and 88B in order to introduce the concept of the UPC into the legislation.  These new sections provided that the Secretary of State may make orders to give effect to the UPC Agreement and that such orders must be presented to both Houses of Parliament (the House of Commons and the House of Lords) for approval before they are passed. The UPC was also designated as an “International Organisation” under UK law which allows it to be granted certain privileges, immunities and exemptions if required.

Following on from this Act, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 was laid before Parliament in March 2016.  This order makes various amendments to the Patents Act 1977 in order to clarify the difference between a unitary patent and a European patent and applies and disapplies various provisions of the Patents Act 1977 (as appropriate) to unitary patents.  It is worth noting that this order was debated in the Houses of Parliament in March when confidence was still fairly high that the UK would remain in the EU.  Hansard (the record of parliamentary debates) shows that the House of Commons approved it in just 16 minutes and the House of Lords took only 24 minutes!

Since the UK’s announcement that it will continue to ratify the UPC Agreement, it has shown some progress by signing the Protocol on the Privileges and Immunities of the Unified Patent Court on 14 December 2016.  However, in order to implement this Protocol in the UK, it will need to lay a further order before Parliament for approval.  This order is currently being drafted but no draft has been published and there is no news on when it will be laid before Parliament.  I think what we can expect, when the time comes for the parliamentary debate, is that it will definitely not be as brief as it was for the last order.  What should be a fairly straight forward procedural approval may turn into a wider discussion on the UK’s role in the UPC, how it can function once the UK leaves the EU and whether the ratification should continue.

The UK also needs to deposit its instrument of ratification of the UPC Agreement with the General Secretariat of the Council of the European Union in order to formally ratify.  This will be prepared by the Foreign and Commonwealth Office but should be merely a formal step which will be done once the relevant secondary legislation has been passed.

There is still a lot of uncertainty surrounding Brexit, particularly with the ongoing Supreme Court appeal as to whether Parliament should be consulted before Article 50 is triggered.  The judgement is due this month and may give some clarity on the timing for Article 50.  As the UK is progressing with ratification of the UPC, membership is now likely to be one of the points of negotiation on departure from the EU.

Alicia Kim, Associate

The inventor’s right to waive being mentioned – or Bene qui latuit bene vixit

Roman poet Ovid stated the above latin quote in his work Tristia about 1000 years ago, and French philosopher René Descartes adopted it as his motto: He who has kept himself well hidden has lived well.

But what if you have conceived an invention and you or your employer planning to patent it – is it then at all possible to do so, that is not to be mentioned as the person behind the invention?

The answer is yes! There is an in practice rarely used possibility, which is available in surprisingly many jurisdictions. Namely the inventor’s right to waive being mentioned.

By now you are probably beginning to wonder why you would desire not to be mentioned in connection with your undoubtedly brilliant invention. For that, there may be several good reasons.

It may for instance be that you do not want to be connected with the invention due to it belonging to a technical field being controversial in one way or another. Take, for instance, Alfred Nobel who invented dynamite and patented it. As we know he eventually instituted the Nobel Prize as he later came to regret having made an invention taking so many lives and no longer wanted the money he made off of it. This blogger is pretty sure that Alfred Nobel would have wished that he had known of the possibility of waiving his right to be mentioned as the inventor.

A modern take on the controversial type of invention may be those related to computer software. If possible, patenting your computer software-related invention makes very good business sense. But as many within the software business have strong feelings and opinions about patenting, staying anonymous might just be preferable.

It may also be that there is contractual or other purely business related circumstances making it preferable for the inventor to remain anonymous. This may be particularly relevant for inventions connected with national security interests. Of course, in such a case the patent application itself will most likely be secret, but even so the secrecy will at some point be lifted and even at that time it may be preferable for the inventor to remain anonymous.

Or it may simply be that you feel the same as Australian singer/songwriter Sia, who is not only famous for her music, but also for not wanting to be famous and for trying to stay as anonymous as possible.

Now, how to waive the inventor’s right to be mentioned? And where is it at all possible?

To take the last question first, you will be well covered by applying for regional patents where available as the treaties/conventions governing European, Eurasian, ARIPO and Golf Cooperation Council patents all make it possible, while the national law of many of the member states does not. Further countries include Brazil, Mexico, Russia and Ukraine.

On the other hand, important countries such as the USA, China, Canada, India, Japan and South Korea seem not to have this possibility enshrined in their patent law.

And generally, waiving the inventor’s right to be mentioned is pretty straight forward. With a provisio for national peculiarities, generally all it takes is to file to the relevant patent authority a declaration signed by the inventor stating that he or she wishes to waive his or her right to be mentioned.

Troels Peter Rørdam, European Patent Attorney & Certified Danish Patent Agent

Change on climate and fast-tracking green innovations

A while ago I wrote a blog post about being profitable and still doing good things for the climate. I believe that there are many inventors out there who have found really cool and smart solutions to many of the problems of today, for instance how to provide electricity to poor and rural locations, how to reduce carbon dioxide emissions, how to handle waste and how to provide clean water for the people of the world, but that these inventors sometime struggle to find the right business partners to help them take their inventions to the market.

In an article by Antoine Dechezleprêtre at the London School of Economics and Political the fast-tracking of patent applications that relate to green innovations is analyzed. Green innovations can be related to many different technology fields, such as energy saving, transportation, water handling, biotech, renewable, storage, lighting as well as to recycling, solar and wind. The climate-change related technologies do however appear to represent a majority of the fast-tracked applications.
According to the article seven intellectual property offices have introduced a fast-track system for green patent applications – the US, Australia, Canada, Japan, Korea, Israel and the UK by the end of 2011. These fast-track systems usually comprise an accelerated examination, which for some applicants is of course not desirable, which is also the reason to why many green patent applications are not put through this fast-track system. The article points to studies showing that the green applications that are fast-tracked relates to high value innovations that may be the subject of commercial interest from business partners.

Just at this moment the world’s leaders have gathered in Paris, to set new goals for how to stop or at least minimize the effects of the climate change, and we all hope that this will be a successful meeting in contrast to the meeting in Copenhagen six years ago. During those years we have seen a lot of very innovative technical solutions with regards to for instance reducing carbon dioxide emissions, using raw materials in a more sustainable manner, recycling and more efficient use of energy.
Fast-tracking patent applications relating to green innovations thus appears to be a way of inducing more commercialization around green innovations, thereby creating an environment where innovators more easily can reach potential investors, entrepreneurs and other business partners so that their inventions can be realized and hopefully be a good step on the way of achieving the goals hopefully set out during the Paris meeting.

Sofia Willquist, European Patent Attorney

Patents for protecting others from harm?

Well that would be really nice, wouldn’t it? My daughter came home from school a few weeks ago and told me about one of her friends who had taken a bad fall on the playground and hit his head so badly he had to go to the emergency and get some stitches. She said, “I told him that he should patent that fall so that no one else can do the same.” Quite clever for a six-year-old I think!

However, as we all know, that is not really how it works with patents. She was correct in that the right acquired by a patent holder is a negative right, meaning that you can only prevent others from doing the same. For the case of falling and hitting your head it is, however questionable if that would be industrially applicable, and thus probably not patentable.

But are patents always used to actively stop others from copying your invention? Of course not – most patents are really never enforced.

Even though most patents are not used to sue competitors for infringement, doesn’t mean that they are never used. A patent can be used for many things, just as a scare tactic to keep competitors at an arm’s length (in essence a preventive measure), in marketing, in negotiations with investors, competitors or in joint-ventures, they can be sold and licensed. This means that a company can use their patent or patents when doing business, no matter how strong or weak the patent is.

For smaller inventors, there’s of course a great pride in the fact that you have your product patented, and many larger companies show off their extensive patent portfolios as proof of their inventiveness.

Some patents are really obscure, and some cover technologies that have changed the world. Having a good strategy for your patent and IP portfolio can be the difference between failure and success.

The final question is – what could patents and IP do for your business? Contact us at Awapatent and we can help you with your IP strategy!

Sofia Willquist, European Patent Attorney

The 2014 World Cup from an IP perspective

Football enthusiasts all over the world indulged in the fantastic spectacle of the World Cup in Brazil this summer, enjoying a large goal average (2.88 goals per group stage game), witnessing flabbergasting results (e.g. Spain vs. the Netherlands 1-5 and Brazil vs. Germany 1-7) and reading everything about the headline-making profiles such as Neymar, Suarez, Rodriguez, Robben and Müller. Eventually, as you all know, Germany won their 4th World Cup title.

As a devoted patent attorney, I cannot escape from the thought of the important role IP plays on the pitch (well, perhaps it shouldn’t be construed as the 12th player, but you’ll see my point soon). For example, does the beautifully composed preamble of patent application US2012148741 ring any bells? “A foaming composition for generating temporary foam-made indications used for marking lines and/or areas to be clearly visualized during a limited period of time and then disappearing without leaving any residues or traces…” A great story lies behind this application: the (alleged) inventor of this “vanishing spray” is the Argentinean journalist Pablo C. Silva (seems like a great name for a football player, too). During a football match, Silva had a free kick blocked by defenders rushing towards him. When driving home later after losing the game, Silva thought he must invent something to stop this, eventually leading to the efficient spray now used by many referees.

What about the balls? Needless to say, they are the subject of many patent applications and patents. Adidas AG is the proprietor of US8529386 which reveals the technology leading to the making of the Brazuca match ball. People with expertise in the field say that the ball flies true and doesn’t knuckle anywhere near the extremes that its predecessor managed, making life a bit easier for the goalkeepers. It should be noted that during the World Cup, the Mexican Institute of Industrial Property (IMPI) reported a confiscation of 4,000 fake versions of these Brazuca balls. Furthermore, IMPI reported that in addition to this, two containers with almost 17,000 (!) fake Brazuca balls were retained since a previous confiscation. Enough is enough.

For supporters, the recently published Brazilian (surprised?) utility model BRMU9002206 “Camisa de futebol com dispositivo musical” discloses a football shirt with an incorporated electronic musical device which plays the hymn of the shirt’s team or country. Indispensable, if you ask me.

With the ever-increasing development of football gear and materials, it is of vital importance to obtain protection for the innovations associated therewith. Furthermore, considering that games may attract up to a billion television spectators, the possibility for multinational companies to expose their brands is paramount. Hence, IP plays a vital role in football and means big business – just as Neymar.

Love Koci, Patent attorney

Important judgement on business method patent in the United States

On 20 June 2014, the U.S. Supreme Court handed down an important decision, Alice v. CLS Bank, clarifying the extent to which business methods can be patented. The earlier stages of the proceedings have been well covered in the media as this is one of relatively few times the Supreme Court has interpreted 35 U.S.C. § 101, with a potential to shape the future of computer-implemented inventions in general. Some of the claims at issue were actually not explicitly drawn to computer implementations or software, but the Court alleges it has considered the claims with an understanding that they “require generic computer implementation.”

One of Alice’s claims is found here, and the full judgement here. From the explosion of analyses by local practitioners, we were particularly impressed by 1, 2 and 3 and recommend them to you.

The judgement affirms the lower-instance judgment, which in turn is in keeping with current practice in the USPTO. In brief, the Court decided to revoke Alice’s patent because the method claims were allegedly directed to an “abstract idea” whose implementation was too generic to transform the idea into a patentable invention. The computer system and storage media claims were refused for the same reason; possibly the decision would have been different had the claims recited more implementation details. The language may be problematic to practitioners: just how abstract is an “abstract idea”? and is a programmable computer too “generic”? The challenging task of steering clear of “abstract ideas” and “generic implementation” is illustrated by the allowed and rejected claims from previous Supreme Court judgements: compare, in the same claim tableFlook and Diehr.

The present case highlights the limited usefulness of the concept “software patents.” While patents covering software typically cause little or no public debate when granted for inventions in conventional technology, software realizing business methods is more controversial. As shown by an overwhelming majority of the submitted amicus curiae briefs in Alice, the IT industry has a keen desire to dissociate itself from the “plague of abstract computer-related patents”, as the brief by Amazon, Google and others puts it. The brief cites Bill Gates in 1991 (in another court case), where he claims the software industry would have been at a “complete standstill” if the early inventors had applied for all the patents they could. The statement illustrates not only that the USPTO has become more stringent, but also reminds us of the much higher IP awareness in Mr Gates’ industry today, which has had to get used to – and benefit from – the existence of patents just like in other technical fields.

As European practitioners, we regularly ask American patent attorneys to prosecute our applications before the USPTO, making it essential for us to keep our drafting practices up-to-date, to be able to present the invention from the right angle and in all required detail. Unlike judgements like Bilski (2010), the Alice case represents no sudden change but will probably be received as a sign that the practice has stabilized. With its insistence on technical improvement, the Alice judgement in fact lands its conclusions rather close to the current European examination practice, despite its very different legal starting point.

The judgement should be reassuring also to Japanese applicants, whose applications are normally drafted to convince the JPO examiner that “information processing by software is concretely realized by using hardware resources” (JPO Guidelines, part VII), sometimes rephrased to mean that the implementation is “particularly suitable for a use purpose”. This intention should also limit abstraction and genericness.

Anders Hansson and Joacim Lydén, European Patent Attorneys

The life sciences patent maze – USA

ON MARCH 4, 2014, the US Patent Office issued new guidelines on how to evaluate the patentability of inventions reciting or involving “laws of nature/natural principles, natural phenomena, and/or natural products”. Considering the fact that the first federal patent statute of the United States was established in 1790, one might be inclined to believe that the boundaries for what can be patented has long since been settled, but this is far from true. The explosive growth within the life sciences field in the last few decades has really put pressure on the patent system to adapt to the technologies “of our time”. Of course, the legislators in the late 18th century had no idea of concepts like gene therapy and cloning.

Under the current US patent law, the four statutory categories qualifying for patent protection are: process, machine, manufacture or composition of matter. Over the years the courts have interpreted the categories as excluding laws of nature/natural principles, natural phenomena and/or natural products.

Generally speaking, inventions in the following fields are at risk of being classified as ineligible for patent protection:

  • chemicals derived from natural sources (e.g. antibiotics, fats, oils, petroleum derivatives, resins, toxins, etc.);
  • foods (e.g. fruits, grains, meats and vegetables);
  • metals and metallic compounds that exist in nature; minerals; natural materials (e.g. rocks, sands, soils);
  • nucleic acids;
  • organisms (e.g. bacteria, plants and multicellular animals);
  • proteins and peptides; and
  • other substances found in or derived from nature.

The key factor in determining whether or not an invention qualifies for patent protection lies in the level of difference from what exists in nature; a claim reflecting a significant difference from what exists in nature is eligible, while a claim effectively drawn to something that is naturally occurring is not.

The new guidelines are intended to assist in making this determination, by establishing six factors weighing towards eligibility and six factors weighing against eligibility. On balance, if the totality of the relevant factors weighs towards eligibility, the claim qualifies for patent protection, while if the totality of the relevant factors weighs against eligibility, the claim should be rejected. Crystal clear, right? Well, the new guidelines also provide some specific examples to illustrate how the guidelines are to be implemented in practice. More information can be found here.

Initially, the new US guidelines appeared to be well-received within the patent community. However, as the practical consequences of the new guidelines sank in, an uproar of
protests have arisen. It also remains to be seen whether the courts’ view of the law is consistent with the USPTO’s guidance. Somehow, it seems unlikely that these guidelines will be the end of the story, so the evolvement of US patent law can be expected to continue for some centuries yet.

Inga-Lill Andersson, European Patent Attorney, Partner

A slip of the pen?

A claim for 90 MSEK worth of damages is being filed today in the Skellefteå District Court by 707 Chilean plaintiffs, who were poisoned by arsenic-containing waste products deposited near their hometown in the early eighties. The defendant, the Boliden mining group, had commissioned a Chilean company to take care of the waste according to best practice at that time. But according to the plaintiff side, Boliden knew that best practice was not good enough – as the background section of their patent application SE8001847-6 reveals:

“The arsenic content of such waste products is often up to 20–40 %, rendering it difficult to safely dump said waste products because of the enormous environmental problems created thereby, even though the prescribed safeguards per se have been taken.”

It will be a crucial point to prove that Boliden’s decision-makers were as knowledgeable about chemical hazards as their patent drafters. A not-unexpected defence – and maybe a successful one – might be to have a patent attorney confirm that patent backgrounds often are very concerned about the shortcomings of the prior art, to draw a flattering backdrop for the invention.

The new claim brings to mind a case (judgment of 27 May 2003 by Bavarian Administrative Court of Appeal in case 5 CE 02.2931) where the holder of European patent EP0236736 requested the German Patent Office not to publish his competitor’s patent DE4332545 unless the competitor removed his disparaging statements about the former’s beverage cans:

“EP0236736B1 … show[s] a tearable lid … These stiffening ribs are however interrupted … so that the achievable stiffening action is more or less lost. Because further the pulling ring is substantially immersed in the U-shaped seam, it is difficult to get hold of the ring with a finger nail …. Yet another drawback is the considerable mechanical tensions in the lid, which develop during manufacture as a consequence of the many seams and deformations, and which lead to undesired displacements in the plate.”

The holder of EP0236736 produced evidence that these statements were much exaggerated. He cited § 4 of the German Act Against Unfair Competition (UWG), by which discrediting statements are an unfair commercial practice.

The court noted that the Patent Office has no duty to scrutinise statements in the background section, so that the public ought to read that section of patent publications with caution. Further, most applicants will want to highlight their invention by stressing the disadvantages of earlier solutions, of course within reason and without downright insulting their predecessors. Moreover, while patent rights may be powerful business tools, the court couldn’t agree that patent publications have a significant commercial impact. This decided the matter and the background section in DE4332545 was left unchanged.

It will be very interesting to see what importance the court attaches to the statements in Boliden’s 1980 patent application.

Anders Hansson, European Patent Attorney, member of Awapatent’s Specialist Team Litigation

It’s time for the first patent application

The “trainee tour” has moved on to Gothenburg and we have now spent almost three weeks in the world of IP and the pace of learning is increasing. The first two weeks gave us a comprehensive introduction to patents and now we have been assigned the task of writing our own patent application, which is an interesting and most challenging task at this stage. Although the patent claims are provided to us in this particular assignment, we have had a few study sessions of how to write claims, so the fog that surrounds this challenging topic is starting to clear up for all of us.

We also discussed a fictional case described as a smorgasbord of opportunities for Awapatent consultants. The smorgasbord case concerned a company with its own R&D department that acquired a second company mainly for their IP-portfolio. It turned out that we in this case could provide services within design, trademarks, agreements, litigation, due diligence, among many other things. In another lecture, it was also interesting to hear about how design may penetrate patents, trademarks, and copyright, apart from being a field of IP in itself. It certainly feels like the diverse world of IP is opening up more and more.

Tonight we are going to experience the annual crayfish party at the Gothenburg office, which is one of many examples of fun activities happening within Awapatent. We still have no clue about any surprises that may appear at this event!

We are only half way through the first theory period of five weeks so there is a lot more to come; the next stop on the trainee tour 2012/2013 is Stockholm!

Fredrik Öisjöen, Associate

A new study year at Awapatent’s trainee programme

After the first few days we are starting to grasp how much there is to learn and master. Everything from law, business and creativity to sales and of course science and technology are all parts of what will become our ordinary day – although  I’m not entirely sure that you can call a combination of so diverse fields ‘ordinary’?

IP is an interesting field where so many things are happening right now. It seems like the Apple vs. Samsung case has made the public more aware of patents; last week half the front page of an ordinary newspaper was referring to articles regarding patents. And a few days ago there was a news story on Swedish national television about patents being just as important as R&D for technical companies.

As trainees we have an interesting time ahead; we’ll both get to know each other and we will feel like students once again. What could be a better start in a new field than to spend this much time with senior consultants at the company and to get the opportunity to get to know the different regions and offices? And at the same time learn about the history of the company and see its vitality, always looking into new business cases and looking for improvements?

Magnus Gyllenhammar, Associate