Friday, 27 March 2015

The Unitary EU Patent System: a new book

The Unitary EU Patent System, edited by the dynamic and thoroughly scholarly pairing of Justine Pila and Christopher Wadlow, has just been published by Hart Publishing. According to the web-blurb:
The purpose of this book is to explore the key substantive, methodological, and institutional issues raised by the proposed unitary EU patent system contained in EU Regulations 1257/2012 and 1260/2012 and the Unified Patent Court Agreement 2013. The originality of this work lies in its uniquely broad approach, taking six different perspectives (historical, constitutional, international, competition, institutional and forward-looking) on the proposed EU patent system. This means that the book offers a multi-authored and all round appraisal of the proposed unitary system from experts in patent law, EU constitutional law, private international law and competition law, as well as leading figures from the worlds of legal practice, the bench and the European Patent Office. The unitary patent system raises issues of foundational importance in the fields of patent and intellectual property law, EU law and legal harmonisation, which it is the purpose of the book to engage with.

This is a work which will enjoy wide and enduring interest among academics, policy makers and decision makers/practitioners working in patent law, intellectual property law, legal harmonisation and EU law.
This blogger hasn't seen it yet and is unlikely to see a review copy for a couple of weeks, so he thought he'd let everyone know that it was available. Justine and Chris have assembled an impressive array of contributors from the UK and beyond, so he'd expect it to be good. Since the new European patent package is still capable of being described as "work in progress", it's unsurprising that this volume is described as the "First Edition": clearly we can expect a sequel.

Further details are available from the publisher's web-page for it, here.

Tuesday, 24 March 2015

Late references to prior art: how to reach a sensible solution

VPG Systems UK Ltd v Air-Weigh Europe Ltd was an extempore ruling of Judge Hacon yesterday, sitting in the Intellectual Property Enterprise Court (IPEC), England and Wales. It will never hit the law reports, but at least it was noted on the Lawtel subscription-only service. It's one of those small but revealing cases that shows how a low-tier court goes about its unglamorous daily business of resolving disputes as efficiently and economically as possible, given the obstacles facing the judge (otherwise known as the parties).

In short, this was all about a pre-trial case management conference in a standard infringement claim where the defendant alleged invalidity. The lists of issues had been determined at a case management conference, following which the defendant sought to include reference to a new item of prior art. Although that item of prior art had not been referred to in the original list of issues, it was not one that surprised anyone since it had been mentioned both in the pleadings and in evidence.

The defendant submitted that its expert had not realised, before the case management conference, that certain documents relating to the new item of prior art were available. It also argued that, since the relevant item of prior art had been referred to in the pleadings and in the evidence, in that sense it was already part of the material before the court.

Judge Hacon granted the defendant's application.

First, the bad news for the applicant: the primary difficulty for the defendant was one of the provisions of the Civil Procedure Rules, CPR r.63.23(2), which deliberately made it difficult for parties to add material into the case after the first case management conference. What's more, the fact that the expert had not realised that documents relating to the relevant piece of art were available before the first case management conference did not constitute an exceptional reason that could justify the proposed amendment.

What about the good news? Given that the prior art had been referred to in the pleadings and in evidence, it could not be said that the defendant was seeking to submit new material into the case; rather, it was seeking to rely on the new material as a specific item of prior art.  This being so, r.63.23(2) did not of itself provide a barrier to allowing the amendment -- and there wasn't any other barrier to allowing the specific item of prior art to be added into the list of issues. Plainly it was an item of prior item with which the patentee was familiar, it having been referred to in the pleadings and in the evidence, and therefore it had to be something that was well within the patentee's contemplation, and there was no real prejudice to the patentee in allowing the defendant to rely on it.

Now for the qualification: since its application would be allowed, the defendant would not be permitted to put in any material relating to the item of prior art that was not already before the court in the form of disclosure or evidence.

This seems to be a neat solution, protecting the interests of both parties and enabling the court to have a better stab at either invalidating or affirming the status of a patent that might well be of interest to others in the same market.

Monday, 23 March 2015

No new substance, no admissibility - T2077/11

The decision T2077/11  of the EPO's technical board of appeal is a warning for all those who appreciate the art of copy & paste in appeal proceedings.

The appellant had filed a voluminous writ with grounds of appeal against a decision in opposition proceedings. Further scrutiny revealed that most of what was said therein was a copy of the grounds of opposition. Some additional phrases like "contrary to the contested decision" were sprinkled throughout the text but no new substantive arguments were added and none of the reasons given by the opposition division why the arguments of the appellant/opponent was wrong was discussed.

Disregarding what was a copy of the arguments filed in the first instance, the board of appeal summarizes the grounds of appeal as follows:
In fact, the appellant's statement of grounds can be summarised as follows: "We disagree with the contested decision. Contrary to the opinion of the opposition division the subject-matter of claim 1 according to the first auxiliary request fails to meet the requirements of sufficiency of disclosure (Article 100(b) EPC) and does not involve an inventive step (Article 56 EPC) for the reasons given in our grounds of opposition (reproduced here)."
The appellant submitted that the reproduced arguments did substantiate the grounds of opposition and were to be considered correct despite of the finding to the contrary in the first instance. However, the board notes that substantiation of the appeal requires discussing the reasons given for the decision of the first instance, not the grounds of opposition:
The appellant is of course correct in stating that there is nothing in the EPC or in the case-law that prohibits a party from repeating arguments presented during the previous proceedings. This approach however ignores the fundamental function of appeal proceedings, whether ex parte or inter partes, which is the judicial review of a contested decision. To this end it is foreseen that all decisions subject to appeal must set out the reasons supporting the conclusion reached having duly considered all the facts and arguments of the parties (Article 111(2) EPC). By the same token, the party contesting the reasoned decision is expected to consider and rebut at least one of those reasons in its effort to prove that the impugned decision is wrong and should be set aside. (emphasis added)

Friday, 20 March 2015

Patent litigation in Japan: Chief Judge speaks on latest developments

There's a fascinating and highly educative event coming up next month in London, thanks to the generosity of its sponsors and the kindness of its hosts -- our friends the Chartered Institute of Patent Attorneys (CIPA) and the IP Lawyers Network Japan,  The details of this attraction look like this:

Recent Developments in Patent Litigation in Japan

13 April 2015
Time: 5:30-6:30 pm, followed by drinks & canapés thanks to generous contributions from the co-host IP Lawyers Network Japan and sponsors: Asahi Breweries Ltd, Canon Europe Ltd, Fujitsu, Honda Motor Europe Ltd., Kameda Seika Co Ltd, and Niigata University.
CIPA and the IP Lawyers Network Japan are pleased to announce a joint seminar inviting the new Chief Judge of the Japan Intellectual Property High Court (an appeal court), Judge Ryuichi Shitara, as the speaker.
The talk will cover the following topics:
Overview of procedures and recent trends
Introduction to the latest notable IP High Court’s Grand Panel judgments:
  •   FRAND SEP, injunction and damages: Apple v Samsung
  •   Patent term extension: Genentech v Japan Patent Office
Speaker: Judge Ryuichi Shitara, Chief Judge of the Japan Intellectual Property High Court
Price: Free for both members and non-members
CPD: 1 Hour
CIPA members must book on this seminar using the 'book me on event' button [this link should, with luck, lead to the right page]. If non-members or ITMA members wish to book, or for more information on the event, please email cpd@cipa.org.uk.
Fancy writing a report on this event for the CIPA Journal in exchange for a free place? For more information or to volunteer, please contact cpd@cipa.org.uk.

Thursday, 19 March 2015

Patent litigation in England and Wales 2007-2013: is it a predictor for UPC behaviour?

Thanks to IP scholar and enthusiast Luke McDonagh my attention has been drawn to Examining Patent Cases at the Patents Court and Intellectual Property Enterprise Court 2007-2013, a 24-page report on patent litigation in England and Wales which was prepared by Luke together with two other scholars, Christian Helmers and Yassine Lefouili. You can access it on the GOV.UK website here.

To cut to the chase, the report concludes:
Our data show that 445 patent cases were filed at the PHC [that's the Patents Court] during 2007-2013, whereas a total of 96 patent cases were filed at the IPEC during the same 7-year period [presumably this includes cases filed in the Patents County Court, since the IPEC has only been in existence since 1 October 2013]. This demonstrates that the majority of patent litigation in the UK’s largest patent jurisdiction – England and Wales – takes place at the PHC rather than at the IPEC, even post-IPEC reforms [I think this is a reference to the Patents County Court reform of 1 October 2010, which have that court a considerable boost]. Nonetheless, we also observe that the amount of IPEC patent litigation has increased substantially post-reforms, while over the same period the PHC has not seen fewer cases – quite the opposite, in fact.

Regarding patent-level data, it is worth noting that a very large number of the PHC patent cases - 372 - concern an EP, while at the IPEC 47 out of 96 patent cases centre on an EP. In other words, EPs tend to be the subject of PHC litigation much more frequently than GBs, but there is a more even split at the IPEC. In terms of case-level data, we show that infringement is the most common initial claim at both the PHC and IPEC; but that revocation is a frequent claim at the PHC and a frequent counter-claim at both courts [this confirms the widely-held impression of court users]. With respect to litigant-level data, we observe that more SMEs (106) were involved in PHC litigation than were involved in IPEC litigation (41) over the same period, a fact which shows that despite the increasing popularity of the IPEC, a large proportion of litigant SMEs are familiar with the PHC, something which may enter into their UPC opt-out considerations [that familiarity may not be based on choice, but on technical issues such as the damages limit].

Looking ahead to the UPC, there is little doubt that the answers to two key questions - (i) whether UK firms will begin to opt for UPs, and thus litigate sole at the UPC for these patents and (ii) whether UK firms will decide to opt-out their EPs during the transitional period, and thus continue to solely conduct litigation concerning their EPs at the PHC/IPEC, will determine how substantial and immediate the impact of the coming into being of the UPC/UP will be felt with respect to the amount and types of cases filed at the PHC/IPEC. On the one hand, if patentees decide en masse to opt for UPs instead of EPs or GBs it would seem logical that there would be less litigation at the PHC and IPEC in the coming years. On the other hand, recent survey evidence suggests that not all current patentees are actually considering doing this in the early years of the new system; some are taking a ‘wait and see’ approach (McDonagh, 2014). Indeed, in the coming years patentees may decide to maintain a spread of different types of patents – GB, EP and UP – a decision that would leave multiple potential litigation venues open, and which in turn would mean that in the immediate term the current rates of patent litigation at the PHC and IPEC may not be drastically affected by the coming into being of the UPC. Ultimately, by providing an authoritative, data-driven account of patent litigation at the PHC and IPEC for the period 2007-2013 this report makes a useful contribution to current discussions concerning patent litigation within the UK and the wider EU [I feel that, whatever value these findings have for patent litigation in England and Wales, it is very difficult to draw from them to any likely guidance as to how the same litigants might perform under the UPC].

Litigating in IPEC: a hands-on course

While competition between the various IP professions in England and Wales remains brisk, it's good to see how they cooperate in both running patent litigation courses and in making them available to those who wish to take advantage of them. An example of this cooperation is "Intellectual Property Enterprise Court – Use your rights!" This is a Chartered Institute of Patent Attorneys (CIPA) course which takes place first on Tuesday 9 June 2015 at the headquarters of CIPA, 95 Chancery Lane London WC2A 1DT and thereafter from Thursday 25 June to Saturday 27 June 2015 at Missenden Abbey, Great Missenden, Buckinghamshire HP16 0BD. What's this course all about? The CIPA website explains:
With the growing popularity of the IPEC amongst SMEs, and its more EPO-like procedures, patent attorneys are starting to take the opportunity to offer competitive litigation services. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the court by running a patent case study from issue to trial.

This course, which was run successfully in 2011 and 2012, will give you the tools to conduct proceedings in IPEC, either alone or with a barrister – or at the very least give you the confidence to look after your client through the litigation process. This time, we also hope to provide direct experience of the IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course.

The course starts with an introductory day at CIPA Hall followed by a residential “long weekend” (Thursday lunch time to mid-Saturday pm). This takes place at conveniently situated Missenden Abbey, in the Chiltern Hills. Much of the time will be spent in groups of four or five working on the case study, under the supervision of a tutor. There will also be plenary sessions dealing with procedural law, case management and practical aspects of running a case and preparing for trial. There is nothing like a “long weekend” course, with hands-on experience for delivering the required levels of competency and confidence to act.
Further details of the course, which is being run by Vicki Salmon (IP Asset) and Richard Davis (Hogarth Chambers), can be found here. The contributions of Vicki and Richard will be augmented by the contributions of others, drawn from the ranks of the nation's IP barristers, solicitors and patent attorney litigators.

While this course is designed for Fellows of the CIPA, a limited number of places are available for solicitors and barristers. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning.  The cost of the course includes accommodation at Missenden Abbey together with meals. CPD: 16+ hours Cost: Members: £1,560 (£1,300+VAT), Non-Members: £1,920 (£1600+VAT)

Tuesday, 17 March 2015

Patent litigation and dispute settlement: a conference

"Litigation and Settlements in Patent Disputes", an attractive two-day conference organised by the Academy of European Law (ERA), takes place in Trier on 7 and 8 May 2015. Its main themes are (i) how to make the best use of EU and international legal instruments and (ii) invalidity, infringement and damages actions. There is a strong cast of speakers drawn from the judiciary, academe and private practice.
  Click here for programme details and registration.

Monday, 16 March 2015

EPO petitions for review are not third level hearings

Case R 0005/14, Apparatus for circulating flows of washing and rinsing liquids in a laundry washing machine/CANDY SpA (4 March 2015) a reminder from the Enlarged Board of Appeal of the European Patent Office (EPO) that petitions for review of decisions of the EPO's Technical Board of Appeal are not third level hearings, despite the view that many petitioners seem to take to the contrary. The review procedure is an exceptional means of redress, introduced into the amended European Patent Convention 2000 with a view to rectifying intolerable procedural violations.

The review procedure, as the Enlarged Board emphasises, was never intended to operate as a third instance. As it states in its decision:
2.2 As to the substantiation of the petition, the Enlarged Board can see no evidence that the dismissal of the appeal results from any violations of the right to be heard or from other procedural defects within the meaning of Article 112a and Rule 104 EPC. ...

The reference made to gaps in the minutes to support the petitioner's argument that it was impossible to verify –in the absence of a recording of the oral proceedings – whether his arguments were indeed taken into account, or to establish the circumstances surrounding the Board's refusal of his request to hear a university professor, is immaterial: the Enlarged Board notes that all the petitioner's grounds mentioned in the petition received a written response, irrespective of their relevance or acuity. However, as shown by ... the contested decision, some of them were completely ineffective or even alien to
patent law. In such circumstances, it may well be that the petitioner has not grasped the full import of the reasons given for the decision, but if so, that certainly does not mean that the Board has infringed his right to be heard.

3. The review procedure is an exceptional means of redress created by the legislator in the amended EPC 2000 with a view to rectifying intolerable procedural violations. It was never intended to operate as a third instance. These principles were established in the first decisions taken on petitions for review (see e.g. R 0001/08 of 15 July 2008, Reasons 2 and 3). The right to be heard does not mean that the Board must accept argumentation; it must merely consider it. Equally, it does not mean that the Board has to allow requests; it simply has to give reasons when refusing them. If the Board's response does not satisfy a party, that is not a procedural violation; it simply means that the Board took a different view of the facts. And that is not a matter for the Enlarged Board. ...
This blogger is willing to bet that this is not the last time that a petition for review will be made in the hope that it will fulfil the function of a further level of hearing.