Tag:  “patents”  | (10) posts

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

 

New decision on Utility Models from the Danish Supreme Court

The Danish Supreme Court has on 16 May 2012 pronounced an interesting decision regarding utility models. Case no 331/2010 – RASN A/S’ utility model no. DK 2007 00003, concerns a device for loading and unloading cargo items into and out of aero planes. Previously, the DKPTO Board of Appeal for Patents upheld the utility model as registered following annihilation proceedings, and the Maritime and Commercial Court confirmed the upholding.

The decision concerns whether the claims of DK 2007 00003 fulfill the criterion of creational step, which applies to Danish utility models and serves the same purpose as inventive step does for patents.

The Supreme Court states in the reasons that the criterion of creational step is less strict than that of inventive step. This is a generally accepted fact, as the preparational works of the Danish Utility Models Act state that the act aims at providing a possibility of protecting technical creations falling below the level of obviousness required for patentability. However, the Supreme Court admits, no clear case law exists revealing the actual difference in strictness between creational and inventive step.

In the preceding decision T 6-08, the Maritime and Commercial Court stated that the consequence of the said lesser strictness is that in the assessment of creational step, the skilled person’s knowledge is restricted to a smaller technical field as compared to that of the skilled person used when assessing inventive step in the field of patents. However, the Supreme Court did not address this point.

Furthermore, the Supreme Court has, in line with previous case law, stated that firm ground must be provided for the court to set aside a decision made by the DKPTO Board of Appeal for Patents regarding creational step.

The Supreme Court confirmed the previous decisions that the claims fulfill the creational step criterion, and therefore that the utility model in suit is upheld.

The decision of the Supreme Court is available (in Danish) here, the decision of the Maritime and Commercial Court is available (in Danish) here, and the decision of the DKPTO Board of Appeal for Patents is available (in Danish) here.

Troels Peter Rørdam, European Patent Attorney

Utility models are not what they used to be, at least not in Germany

The German Supreme Court (Bundesgerichtshof) has ruled that there cannot be any difference between patents and utility models in the requirement for inventive step. Consequently, it will in most cases no longer make any sense to branch off a German utility model from a patent application if the latter is rejected because of lack of inventive step.

In both Danish and German practice, utility models are normally perceived as small patents that may provide protection for inventions, which do not quite have the inventive step necessary for patenting them, i.e. do not differ essentially from the prior art. In order to distinguish the two related forms of protection, the legislator has decided to term the subject of a utility model a creation, and not an invention. Inventive step as such is not a concept defined by the legislation. Instead the difference is expressed in the requirement that in order to obtain a patent the invention must differ essentially from the prior art, whereas a utility model merely has to differ distinctly from the prior art. In German legislation, which served as a model for the Danish utility models act, a similar distinction exists. More specifically, there is a requirement for “erfinderische Tätigkeit” for patents and “erfinderischer Schritt” for utility models.

Irrespective of this intention in the German legislation, the German Supreme Court has in the decision X ZB 27/05 arrived at the conclusion that the requirements for the distinction from the prior art is the same for utility models as for patents, because it is immaterial whether it is a question of “erfinderische Tätigkeit” or ”erfinderischer Schritt”. The real question is whether the invention is obvious for the person skilled in the art, the way “erfinderische Tätigkeit” is defined in Art. 56 of the European Patent Convention (EPC). Since this is, according to the German Supreme Court, the lowest threshold for inventive step, it does not make sense to distinguish between the two kinds of rights, and consequently, the same threshold must apply for both utility models and patents. 

The German Supreme Court bases its interpretation of the utility model law and the patent law on a third German law, namely ”Gesetz über internationale Patentübereinkommen”. Denmark has a comparable law. However, Article 5 of that law clearly opens up the possibility of having different requirements for different kinds of protection. Therefore, it cannot be assumed that the situation for utility models in Denmark has changed. In Danish practice, it must still be assumed that lower requirements to inventive step apply to utility models, as compared to patents.

Even though German utility models and patents are now assessed using the same standard, good reasons for applying for a utility model in Germany may still exist, e.g. because of the fast establishment of a right without examination. Furthermore there may on rare occasions be a difference in what constitutes prior art for a utility model and a patent, because prior public use of an invention outside Germany is not valid prior art for a German utility model. In that case the branching off of a utility model may still make sense.

Kim Garsdal Nielsen, European Patent Attorney

Recommended reading: The Patenting Paradox

Recommended reading: The Patenting Paradox

The number of filed applications breaks the record almost every year and seems to tell us it’s more and more attractive to patent for companies, research organisations, universities etc. On the other hand, surveys indicate that only 30 per cent of the patents owned by European companies are in use; the rest of them are more or less asleep. So in spite of the steady growth of patenting, it looks like little value is actually extracted from patents. This Patenting Paradox is the starting point of the eponymous book by Arnaud Gasnier, researcher and EPA.

Having identified the paradox and shown numerical evidence, Gasnier moves on to explaining its causes. A main idea is this one: although companies are generally aware of the importance of patents – admittedly, 160,000 PCT applications were filed in 2008 – they do not take the proper actions. However, given the amount of material on patent strategies, both for small businesses and for multinationals, don’t the companies know what actions to take? Sure, but that’s not the problem, Gasnier argues. In fact, the missing link between awareness and action is attention. (More precisely, Gasnier refers to “attention” in the sense economist Tom Davenport uses the word. It’s one of the scarce resources in our economy today, for no matter how easily information can be retrieved or sent to us from any other Internet user, we can only focus on it for a certain number of hours per day.)

Lack of attention is directly linked to the Patenting Paradox and may lead to poor coordination, misdirected investments, not-sustained strategy, short-sighted decisions and low commitment!

Fortunately, the book proposes remedies to this situation in the form of scheduled training sessions:

  Target group Duration Focus
“The light intervention” All staff 1 day Education
“The mild intervention” R&D staff 5 days Cooperation
“The heavy intervention” Executives 1 day Strategy

 

Each of the three interventions includes playing a new board game on patents, for which Gasnier has filed a European patent application (now apparently withdrawn). Reminiscent of the familiar Monopoly, the game puts its players face to face with simplified, semi-realistic situations involving development and manufacture of products, patent prosecution, negotiation and litigation. After a game, participants generally feel they have become aware of the Paradox, acquired knowledge and practical experience and, most importantly, improved their level of attention towards patenting issues.

This isn’t a review, but I must admit a slight frustration as I finish the book: wasn’t the Patenting Paradox harder than that? Maybe Gasnier has straightened things out too comfortably for the reader, but the supposedly enigmatic problem seems to reveal its solution just by being looked at.

Anders Hansson, Associate

Patents + football = Summer time at our offices

On Saturday, the opening game of the 2008 UEFA European Football Championship, commonly referred to as UEFA EURO 2008TM, will be played between the host Switzerland and the Czech Republic.

At an afterwork recently, I discussed with some patent attorney friends how many goals would be controversial this summer. We all remember the classic English goal in the 1966 FIFA World Cup Final. In the final between the host England and West Germany and with eleven minutes of extra time gone, Alan Ball put in a cross and Geoff Hurst shot from close range, hit the underside of the cross bar, bounced down – apparently on or just over the line – and was cleared. The referee was uncertain if Hurst had scored and consulted his linesman from the USSR, who indicated that he did. After some non-verbal communication (they had no common language…), the referee awarded the goal to the English team. Whether the ball crossed the goal line or not has been a matter of discussion ever since, and the controversial call has become part of World Cup history.

Historically, the referees of a football match decide from visual observation whether or not the ball has passed the goal line. However, as evidenced by the match in 1966 it may be very difficult to determine correctly in situations where the ball is returned quickly and has only just passed, or not passed, the goal line. Therefore, when returning to the office the next day I simply had to perform a ‘quick and dirty’ novelty search at www.espacenet.com to see if someone clever had thought about this problem. Not surprisingly, there are in fact quite some technical solutions (some better than others) out there to overcome situations like that in 1966. Just to list a few patents/patent applications in the field of “detecting with improved precision whether a football has passed a goal line or not”:

WO 2004/076003 A1 ”GOAL DETECTOR FOR DETECTION OF AN OBJECT PASSING A GOAL PLANE”

WO2006094508 A1 ”GOAL DETECTOR FOR DETECTION OF AN OBJECT PASSING A GOAL PLANE”

US2006/0135297 A1 “Goal detection equipment for football”

GB 2 342 050 A “Goal posts”

WO 95/32774 “GOAL-DETECTION DEVICE FOR BALL GAMES”

Neither of the above-listed ‘techniques’ will, however, be put into practice in this summer’s UEFA EURO 2008TM tournament, so the question remains: how many goals will be incorrectly awarded this summer?

Personally, I predict that 72 goals (2.32 goals per match) will be scored in total in Austria/Switzerland this summer and of the 72 goals, let’s say, 3 goals (0.1 goals per match) will be incorrectly awarded (if so, hopefully in favor of Sweden).

What do you think?

Christian Arkelius, Patent Attorney