Tag:  “Europe”  | (8) posts

European patent validation in Morocco and Tunisia

Recently, the EPO has initiated work on a new interesting possibility for European patent applicants.

Namely, the EPO has reported having signed an agreement with the Tunisian government on the validation of European patents for Tunisia. A similar agreement has previously, in 2013, been signed with the Moroccan government.

According to the agreements, European patents validated in these countries will have the same legal effect as Moroccan and Tunisian national patents, even if neither Morocco nor Tunisia is an EPC contracting state. Also, European patents validated in these countries will be subject to Moroccan and Tunisian patent legislation. Morocco and Tunisia will thus become States recognizing European patents upon request or, in terms of the EPC, Extension States.

However, the Moroccan and Tunisian governments will first have to ratify the agreements before they enter into force. To do so it is also possible that the Tunisian and Moroccan legislation must first be amended.

Furthermore, it is not yet established what documents will be required for validation, what the official fees applicable will be and what the translation requirements will be.

Until, and by all likelihood also after, ratification of these agreements patent protection in Morocco and Tunisia may be obtained by filing national patent applications and/or PCT national phase applications.

Furthermore, in light of the above, it is worth noting that patent protection in Morocco extends to Tangier and Western Sahara.

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

Link to the EPO press release

Wider scope of protection for Swedish patents?

Last week the Swedish government referred an amendment of the Swedish patent law to the Council on Legislation for reconsideration. According to the suggested amendment, patent applications filed in English need not be translated into Swedish. Instead, they can be granted in English.

For applicants filing a Swedish patent application in English and wishing to obtain a Swedish patent, this ought to be a major cost saver. However, many of my clients use the Swedish patent system for receiving a quick and not so expensive search and examination and then, after receiving the first Office Action, they abandon the patent application. The patent protection in Sweden is instead obtained by validating a European patent in Sweden. With the new legislation though, there can be benefits in keeping the Swedish application alive.

There will be occasions when the applicant might have to file a translation of the claims, e.g., when publishing the patent application in order to obtain provisional protection and upon receiving an intention to grant. Further, during opposition or litigation, the patentee can be requested to file a translation of the description and the abstract. It is however the claims in English that determine the scope of the patent.

When validating a European patent in Sweden, the scope is instead determined by what is present in both the claims of the European patent and the claims of the Swedish translation. This can be a problem if the translator chooses a narrower wording than the wording in the original application. Hence, one advantage with letting the Swedish patent application become a patent might be a wider scope of protection.

To sum up, the suggested amendment provides both cost savings and supposedly a wider scope of protection. Whether it will lead to an increase in filing rates, we can only guess.

If the amendment is passed, it will become effective 1 July 2014.

Update: The Council on Legislation have now reviewed the amendment and have no objections. The next step is that the Swedish government presents a parliamentary bill to the Riksdag. (25 Nov 2013)

Julia Mannesson, European Patent Attorney 

Link to more information (in Swedish)

Cooperative Patent Classification – a new patent classification system

Everybody who ever conducted patent litterature searches knows the problems arising from the very different criteria for classifying patents in the respective patent classification systems used in Europe by the EPO, ECLA (European CLAssification), and in the USA by the USPTO, USPC (US Patent Classification. Fortunately the solution is nearby!

The EPO and the USPTO have very recently announced a cooperation to harmonize their patent classification systems. Cooperative Patent Classification (in short CPC) is the name, and the game is an effort of harmonization to bring the best practices from the EPO and the USPTO together to form a common classification scheme.

According to the CPC website, http://www.cooperativepatentclassification.org/index.html, the CPC will be developed based for a large part on the ECLA and will be modified to ensure compliance with the International Patent Classification system (IPC) standards administered by the World Intellectual Property Organization (WIPO).

The CPC is intended launched on 1 January 2013, and the Awapatent IP Blog will monitor the development with interest to keep our readers updated.

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

Software inventions: The BGH confirms examination approach

Software inventions: The BGH confirms examination approach

 

By its judgment in X ZR 121/09 (Webseitenanzeige), the German Federal Court of Justice (BGH) recently nullified one of Siemens AG’s German patents (English-language version) for lacking technical character. The judgment can be said to belong to the same lineage as Xa ZB 20/08 (Dynamische Dokumentengenerierung), which was reported in AWA IP Review 2/2010, and X ZB 22/07 (Steurungseinrichtung für Untersuchungsmodalitäten), on which Xa ZB 20/08 relied heavily.

This new judgment once more demonstrates the German two-step approach to determining whether an invention has technical character. The two-step approach is in contrast to current practice under the EPC, which regards technical character as a monolithic – and usually rather easy – requirement to satisfy. The new judgment (see point 15) stresses that the invention both

(i) should possess technicality (“Technizität”, referring to the wording of § 1(1) PatG, “Erfindungen auf allen Gebieten der Technik”), and
(ii) has to provide instructions for solving a concrete technical problem.

An invention failing condition (ii) will not escape the exception in § 1(3), point 3 PatG (“Pläne, Regeln und Verfahren für gedankliche Tätigkeiten, für Spiele oder für geschäftliche Tätigkeiten sowie Programme für Datenverarbeitungsanlagen”).

It is intriguing to note that these provisions, which proved fatal to the patent-in-suit, are word by word identical to Art. 52(1) and Art. 52(2)(c) EPC. What makes such differing interpretations possible – and what their impact may be – is discussed in more detail in the article in AWA IP Review 2/2010.

Siemens’ patent was about a method for organizing browsing history. This is a computer-implemented invention fulfilling the “Technizität” requirement (see point 16) but does not, in the Court’s view, go beyond the normal interactions between hardware and software in a computer to such an extent that it fulfils condition (ii) (see points 22–27). Indirect advantages – e.g., that a server executing the claimed method can allow computers with simpler hardware to connect (point 25) or that the total load on the Internet may decrease a trifle (point 30) – are not accepted as evidence of a concrete technical problem being solved. Indeed, they relate to devices outside the claimed subject-matter and do not form part of its results from an objective point of view.

Between the lines, the BGH points out the weaknesses that made the Court pass this judgment. Apparently, the application leaves the skilled person with little more than conceptual ideas for carrying out the claimed steps (point 27). Also, the method relies on user data being entered by the user him- or herself and not on measured – hence potentially technical – environment variables (point 28).

Considering, as we do, someone else’s patent in retrospect, these points can certainly be seen as “room for improvement”. Done right, they would have offered fallback positions that might have saved the patent. These points also reminds us that Siemens’ application was drafted in 2001, in the days before a stable European software practice had emerged. Today, I believe few patent attorneys in this field would feel comfortable filing an application that discloses the invention only on a conceptual level.

Since the European application EP02006122 in the family is still pending, the judgment offers an interesting opportunity to compare European practice with the patenting standards of Europe’s largest economy. While the BGH judgment makes explicit reference to the German law, the EPO may reach a similar conclusion, be it by other arguments.

Anders Hansson, Patent Attorney, Awapatent

A Favourite in Trademark Law: Repackaging – now gassy

Danish courts are traditionally reluctant to ask preliminary questions on the interpretation of EU-legislation. Recently, the Supreme Court has done so, and quite comprehensively. During the 1990’s there were countless cases all over Europe regarding repackaging of products, especially medicines and printer toner cartridges, after parallel imports from one state to another. This case is a new product area: composite gas bottles and it does not contain aspects of parallel imports.

Put shortly, company A sold gas in composite bottles with a distinct shape. These bottles were trademark registered but A was not the proprietor of the registration, only the exclusive licensee.

The bottles with contents were sold to the consumers. Upon refilling the empty bottle the consumer would return the bottle to A and receive a new, full one or the bottle would be refilled. Competitor B was in the same line of business and refilled bottles as well. The bottles from A were also refilled by B and a sticker was affixed which indicated that it had been refilled by B.

The Central Court (formerly the European Court of Justice, ECJ) is yet to pass its ruling but the Advocate General has given her opinion. Traditionally, the Court will most likely follow this opinion.

The suggested ruling is that A, as proprietor of the trademarked bottle cannot prevent B from refilling their bottle provided that it is clearly stated that the refilled bottle does not contain gas from A (the affixed sticker) and provided that the bottle has been put on the market legally by A. So in this case A is not going to get the backing of the Central Court, nor the Danish Supreme Court; B has most likely not infringed A’s registered trademarks.

This case shows that you have to be diligent in all links of the sales chain; a trademark registration does not necessarily give the owner complete control over the entire retail chain. However, if the packaging had been well known, say, a Coca Cola bottle or a distinct and well known perfume bottle, would the outcome then have been the same? Probably not. This would give raise to consumer confusion and you cannot avoid this provided the container that your competitor sells his products in is well known. The shape in itself is decoded by the consumer as being e.g. Coca Cola – long before any stickers are read.

The gas seller A would probably be in the clear had he not sold the bottles to the consumers but instead licensed the use to the consumers. Then the bottles would still be A’s property and out of bounds for B.

Even though repackaging has been debated and ruled on endlessly over the last twenty years this shows that the area still can stir emotions. I will report back here on the blog once this gassy drama comes to an end.

Thorbjørn Swanstrøm, Attorney at Law, Awapatent

EU survey now open for participation

EU survey now open for participation

Every two years the European Commission conducts a survey in order to identify the most important obstacles met by EU citizens applying for and enforcing intellectual property rights in countries outside the EU.

The 2010 survey is now open and anyone may participate using the online questionnaire found here.

The results of the survey together with data from other sources, such as customs authorities, will be compiled into a report identifying the countries where the problems encountered have reached “worrying proportions and are seriously harming EU right holders”. This will help The Directorate-General for Trade to prioritize its efforts and to identify countries with which the cooperation on IP should be strengthened.

In the last report published in 2009, which was based on the 2008 survey, China once again came out as the highest priority country regarding IPR enforcement, not least because 54% of all suspect goods detained at EU borders at that time originated from China. This was not much of a surprise. But western countries such as Israel, Canada and the U.S.A. were also to be found on the list. Israel and Canada amongst other due to deficiencies regarding pharmaceutical-related IPR issues and the U.S.A. i.a. for disrespecting WTO dispute settlement decisions.

It shall be particularly interesting to see whether the efforts of the Chinese government, which include the enactment of a new patent law and a new trademark law as well as a reform of the court system in IPR related matters, have had enough of an impact for them to hand over the top of the list to somebody else. The fact that in 2009 China’s share of goods seized at EU borders rose to 64% does not promise well.

The survey is open until 31 October and the report may be expected in the fall of 2011.

Vibeke Warberg Rohde, European Patent Attorney, Awapatent

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BRCA patents in Europe

An ongoing lawsuit in the US has attracted a lot of attention worldwide. The American Civil Liberties Union has, together with other parties, sued the US Patent and Trademark Office, Myriad Genetics and others. On Monday 29 March 2010, a judge in a federal District Court in New York ruled that the “Myriad patents” in the USA are invalid, and that patents on isolated genes are not lawful. The verdict is likely to be appealed to the Court of Appeals for the Federal Circuit.

The controversy centers on patents on breast cancer genes BRCA1 and BRCA2. In 2009, when a decision was reached about the BRCA1 patents in Europe, Niklas Mattsson had the following to say about the European situation. The article has been previously published in Swedish in the magazines Pharma Industry and Onkologi i Sverige.

Patents on genes, especially human genes, have been a focus of fierce debate over the past ten years or so. The debate has been profoundly influenced by the controversy surrounding the “Myriad patents”, a number of patents covering the BRCA1 and BRCA2 genes, and the use of the genes in the diagnosis of cancer. The patents were initially held by Myriad Genetics Inc and a number of research institutes and US government agencies. Through two decisions in November 2008 the European Patent Office (EPO) decided the proper scope of the patents for the BRCA1 gene in Europe. See also our previous blog post.

Different views on gene patents
According to established jurisprudence in Europe, patents on isolated genes and their use are permissible, as long as the general requirements on novelty and inventive step are fulfilled. Detractors of the patenting of gene inventions often refer to the Myriad case, claiming that it illustrates the undesirable consequences of the current situation. These detractors argue that the system should be changed so that gene inventions can no longer be patented, or at least so that the possibilities are strictly limited. Proponents, on the other hand, have argued that the current patent system works well. According to the proponents, the problems arising in the Myriad controversy have more to do with business ethics and licensing policies than with a perceived but non-existent problem in the patent system.

Myriad and the BRCA patents
Myriad was established in 1991 as a spin-off from the University of Utah. The founder, Mark Skolnick, was a researcher at the university, and member of an international consortium that sought to find genetic links to breast cancer. Through extensive research, scientists from Myriad, the University of Utah and other institutions succeeded in identifying and sequencing the two genes BRCA1 (in 1994) and BRCA2 (in 1995). In addition, they identified links between certain mutations in the genes and an increased risk of breast and ovarian cancer.

Based on this genetic information, Myriad was able to develop diagnostic tests and start commercializing them. Naturally, the company had an interest in protecting its investment with the aid of patents.

Consequently, Myriad and its partners filed a number of patent applications in the USA, following these up with applications in other countries. In Europe, they made use of the EPC, filing the applications with the EPO. The scope of protection in the patent applications was directed to the genes as such, as well as the use of different gene variants to determine the risk of breast and ovarian cancer. In 2001 after what, in the circumstances, may be regarded as a more or less normal prosecution time, the EPO granted the patents with some amendments.

Broad BRCA1 patents granted in Europe
Through three different BRCA1 patents, Myriad was awarded exclusive rights to the isolated BRCA1 gene (European patent, EP, 705 902 B1), to use of the gene in cancer diagnosis in general (EP 699 754 B1), and to some 30 different mutations in the gene that are associated with an increased risk of cancer (EP 705 903 B1). Regarding BRCA2, there is one patent (EP 785 216 B1) covering detection of one specific BRCA2 mutation in a particular population, and a pending application (EP 1 260 520 A1). The present article is concerned only with the BRCA1 patents.

Having obtained these patents, Myriad contacted healthcare providers throughout Europe and offered licenses for the patents. Many people felt, however, that the prices that Myriad asked for using the technology were excessive: fees of up to 3,000 USD per sample were reported. Also, the licensing terms did not allow licensees to perform tests themselves, but mandated sending samples to Myriad for analysis. Myriad, on the other hand, has pointed out that its analysis is very accurate, and that the company provides a level of confidence that cannot be equaled in a general hospital or clinical laboratory that does not specialize in the analysis.

 In addition to the controversies surrounding Myriad’s demands, some commentators held that the situation illustrated a more general problem; namely, the negative consequences of granting this type of patent in the first place. Interestingly, very few other gene patents have attracted the same amount of attention, despite the fact that thousands of such patents have been granted in Europe, both before and after Myriad’s patent applications (see for example Caulfield et al, Nature Biotechnology 24(9):1091-1094 (2006)).

Opposition against the patents
Embodied in the EPC is a possibility to question the decision of the EPO to grant a patent through the filing of a notice of opposition within nine months from grant. The opposition is examined in a form similar to a lawsuit, and the EPO determines whether the patent owner or the opponent is right. The possible outcomes are that the patent is revoked in its entirety, limited in some way, or upheld in unchanged form.

In the light of the conflicts surrounding Myriad’s licensing policy and the general debate on gene patents, it is hardly surprising that the EPO received an uncommonly large number of oppositions against the BRCA1 patents granted in 2001. Also unusual was the fact that most of the opponents were not direct competitors of the patent owner, but organizations and institutes that were eager to question the existing system.

Oppositions were filed by, among others, Greenpeace, the Minister for Public Health in the Netherlands, and the Social Democratic party in Switzerland. Oppositions were also filed by the French research institutes (including Institut Curie) that had once been involved in the breast cancer consortium together with Skolnick and the University of Utah.

 
EPO decisions limit the patents
The opposition procedure concerning the first patent – that covering the BRCA1 gene as such – was concluded in 2007, following an appeal procedure (Board of Appeal decision T1213/05). After the dust had settled, it became clear that Myriad had lost patent protection for the gene as such in Europe. It is important to note, however, that the outcome was not the result of a decision that genes cannot be patented, but a consequence of Myriad’s failure to satisfy the traditional criteria for obtaining a patent. The patent applications originally filed described a DNA sequence that contained errors. After the filing of these applications, the correct DNA sequence was published before Myriad had filed a patent application disclosing this sequence. Thus, the correct DNA sequence was already known before a patent application containing this sequence was filed: it was, therefore, not novel. No novelty, no patent.

The final decision with regard to the oppositions against the two other patents on BRCA1-related inventions was reached in November 2008, also after appeals against the first instance decisions (Board of Appeal decisions T80/05 and T666/05). The written decisions were issued by the EPO on 7 March 2009. From the file histories it is clear that the broad protection sought by Myriad from the outset – and initially granted by the EPO to some extent – has been severely limited. What remains is patent coverage of one single specific cancer mutation, and of the detection of frame shift mutations in the gene.

The decisions state the exact reasons why the patent claims had to be limited, and in these two cases, too, this is due to failures to meet the “classic” existing rules, rather than any sign of a change in jurisprudence concerning gene inventions in general.

 It remains to be seen what future commercial effect these patents will have on the testing of BRCA1-related cancer risk. Whoever supplies tests for BRCA1 mutations for the purpose of diagnosis should study the patents as now finally decided, to ensure that there is freedom to operate.

A working system of checks and balances
The general debate on the patent system and gene inventions continues in Europe, despite the fact that the Myriad case is, to all intents and purposes, closed. At present, there is a discussion concerning whether the best way forward would be to introduce a limitation of the scope of protection, such that a patent owner should not be able to block all uses of a gene, even though it had never before been identified and isolated, but only obtain an exclusive right to the actual use described in the patent application. Some European countries have introduced such legislation, but it is too early to tell what the consequences will be.

To summarize, the European chapter in the Myriad Genetics patent saga is practically concluded. Despite widespread concern that European patent offices are over-generous in granting patents on gene inventions, it appears that the existing system and the conventional patentability criteria – including the possibility of opposition – have worked well in this case. The application of the criteria during EPO’s processing of the applications led to limitations on the patent protection that Myriad applied for, and what is left could be said to correspond to a reasonable compensation for the contribution to the art that Myriad and their collaborators provided.

 Niklas Mattsson, European Patent Attorney, Awapatent

IPR2 to strengthen the Europe-China IPR relationship

Last month, the EU-China IPR2 Project, focused on enhancing the enforcement of IP rights in China, was introduced to representatives of European industry, the national patent offices and European intellectual property experts by the European Commission and the European Patent Office (EPO). Few would question the importance of their agenda, but I would like to acknowledge the progress that Chinese IPR has already made in recent years.

Actually, of the IPR cases settled in Chinese court during 2007, no less than 3/4 had an outcome in favour of the IP owner, regardless of the nationality of the plaintiff. Implemented as late as 1985, patent law is still young in China but I think we should have faith in the country’s remarkable ability for change and development. Just consider the numbers: it took 15 years for SIPO to receive its first million patent applications but when they passed the four-million-mark late last year, the last million had been filed in just 18 months*.

The EU-China IPR2 Project is in itself quite interesting. In many aspects, Chinese IPR law is already shaped with Europe as a model. Now, for four years and with an investment of more than EUR 16 million, enforcement of IP rights in China will be improved through a project partly managed by EPO. The project does not address legislative changes but will provide technical support to, and building the capacity of, the different levels of the Chinese legislative, judicial and administrative authorities to help improve their effec-tiveness; as well as improving access to information for users and officials and reinforcing support to right holders. This all is very welcome and for us European-based IP Attorneys with an interest in China it is of extra interest to know that much of the expertise in this development is drawn from our region.

Of course, when it comes to China, changes are many and often dramatic and even more will happen during 2008, at least judging from China’s IPR Strategy Action Plan for IPR Protection for 2008 which was announced at the end of March. This plan contains 10 aspects including 280 concrete meas-ures relating i.a. to legislation, law enforcement, training and public awareness-raising activities. So keep your eyes open and stay updated.

* This number includes all three types of Chinese patent rights: inventions-creations (protecting any new technical solution relating to a product, a process or improvement), utility models (protecting any new technical solution relating to the shape, the structure or their combination of a product, which is suitable for practical use) and designs (protecting any new design of the shape, the pattern or their combination, or the combination of the colour with shape or pattern, of a product, which creates an aesthetic feeling and is suitable for industrial application).

Maria Stenbäck, European Patent Attorney