Tag:  “USA”  | (10) posts

Design just as important as technical issues in Apple vs. Samsung verdict

The dispute between Apple and Samsung on smartphones and tablets has received much public attention. Recently, a landmark verdict was reached when a California based court decided in Apple’s favour. Samsung now has to pay at least one billion US dollars to Apple, who also has sought a sales ban in the USA on a number of the Samsung products involved.  A preliminary injunction hearing is scheduled on September 20, 2012.

The court held that Samsung had infringed several of Apple’s utility patents for user interface related functions in both smartphones and tablets, including one utility patent relating to the now well known “bounce-back feature”. However, what is more interesting; the court considered that Samsung had infringed a number of design patents, for example relating to the appearance of the physical device as well as the design of its graphical user interface. This kind of intellectual property dispute normally tends to be dominated by technical patent issues, thus it’s an interesting and exciting development to see that protection of design has had such a great impact on the court’s decision.

Evidence in the court proceedings included an email from Google to Samsung, pointing towards that Samsung’s “P1” and “P3” tablets (Galaxy Tab and Galaxy Tab 10.1) were “too similar” to the iPad and demanding “distinguishable design vis-à-vis the iPad for the P3”. Additionally, Apple presented an internal Samsung technical development report where Samsung’s team of engineers compared the Samsung prototype with an iPhone.

So, is this the end for Samsung’s Android based smartphones? Most likely not. It should be fairly easy for Samsung’s engineers to design around Apple’s patents and design protection, however at the cost of losing some of the features nowadays generally expected when buying a Samsung smartphone. In any case, we may see a shift from Android based smartphones towards the use of the Windows Phone operating system. This is most likely well received by Microsoft, having a planned release of Windows Phone 8 later this year.

Magnus Nilsson, European Patent Attorney

Breast cancer gene patents once again found valid by US appeals court

In the “Myriad case” an ongoing legal battle with many twists and turns, the Court of Appeals for the Federal Circuit, CAFC, has decided to once again uphold patent claims covering isolated human genes BRCA1 and BRCA2, owned at least partly by Myriad Genetics Inc in Utah, USA. The patent claims were initially invalidated in March 2010 by a federal district court in New York, after a complaint had been filed by a group of parties including the American Civil Liberties Union and the Association for Molecular Pathology. After appeal, the CAFC overturned this decision in a first judgment in July 2011. The plaintiffs then sought leave to appeal to the US Supreme Court.

Here is where the story gets a little complicated. One of the claims at issue in the Myriad patents related to genetic diagnosis of breast cancer predisposition. As such, the claim is analogous to claims that were at issue in another Supreme Court case, a patent dispute between Mayo and Prometheus. Because of the analogy between the claims at issue, and because the Supreme Court came to its decision the “Prometheus case” while still considering the Myriad case, the Supreme Court wanted the CAFC to take a new look at the Myriad case in the light of their judgment in the Prometheus case. So, the Supreme Court granted the request to appeal, vacated the July 2011 judgment by the CAFC, and ordered the case back to the CAFC for a new determination.

After an oral hearing in July, the second decision from the CAFC issued on 16 August 2012. In the new decision, available here, the CAFC concludes that the Prometheus decision does not alter their previous outcome, and has now stated twice that isolated genes are, per se, considered eligible for patent protection if all other requirements are met.

Perhaps this is not so surprising – after all, the CAFC decisions follow the established legal practice and reasoning that has been valid for at least twenty years, and maintain the status quo in the biotech industry. The really interesting question in this case has still not received an answer: What will happen if and when the question is brought up for final judgment by the Supreme Court?

Niklas Mattsson, European Patent Attorney

The Patent Prosecution Highway expands

I have previously written about the PPH MOTTAINAI agreement, which aims at easing the requirements for requesting patent examinations. The latest news is that the EPO (European Patent Office) entered the PPH MOTTAINAI agreement at the beginning of the year (29 January) and thus the PPH MOTTAINAI agreement has now been signed by a total of nine countries.

With the PPH MOTTAINAI program, two previously strict requirements have been removed: Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

The Intellectual Property Office of the Philippines entering the PPH-network
Furthermore, a number of new PPH agreements with the JPO as one participant have been launched, namely with the Intellectual Property Offices of Taiwan, Portugal and the Philippines; the latter two relating both to the use of national and PCT work products for requesting accelerated prosecution under the PPH.

With these agreements, the PPH-system can be said to have reached a small landmark, as the Intellectual Property Office of the Philippines is the 25th office to join the PPH-system.

Read more about the Patent Prosecution Highway.

Troels Peter Rørdam, European Patent Attorney

At the time, it seemed like a really good idea…

The subject of our latest annual trademark and marketing conference, Årets Mærkedag, was Brand Grooming. The skill of maintaining your brand and still be able to evolve it without losing your customers or built-up goodwill.

We heard how especially established brands have to tread carefully when keeping a brand and its identity up-to-date and how newly established brands have to get things right from the beginning.

One thing is theory, another practice.

NetFlix is probably fairly unknown here in Europe. In North America it has been a fast rising star. Netflix’ product is the rental of DVD by post. You would also receive personalized recommendations. The business has developed into on-demand streaming too. The idea is that you pay a monthly flat fee as a subscription. You then receive the rental DVDs by mail and return them to Netflix or download the films. Netflix became hugely successful and beat out Blockbuster because it rode the technological wave of the Internet and DVDs successfully. It did this by building a business model around web-based browsing of selections, prompt delivery, on-line recommendation systems and exploitation of “the tail of the distribution” by stocking DVDs that appeal to a small percentage of the viewing population.

In last autumn NetFlix decided to split the business in two: the streaming service would continue as NetFlix and the rental service would be called Qwikster. It would still be the same company but customers would now have to subscribe to two different kinds of service. Probably nothing uncommon or even strange when we are talking business development, actually it seems quite a reasonable move. Netflix even had substantive research showing that the change made sense.

Before this, Netflix had raised the prices from $9.99 per month to $15.99. There was an outcry from the consumers and a mass exodus.

Within two months NetFlix lost almost a million customers and its shares plummeted. NetFlix quickly killed off Qwikster and went back to the good old ways, trying to reassure the market and their customers. To this day Netflix has regained neither costumers nor share value.

So, apart from the significant price hike, what went wrong? Consumers form strong bonds with brands and expect consistency from them.  Brands are promises built on a trusting relationship and if they abruptly veer in another direction you will risk goodwill and to lose you loyal customers.

For guidance, they could have looked to Coca-Cola who once made a monumental branding blunder that still haunts the company.  It is the case study of trying to change what works. In 1985, Coca-Cola announced the launch of New Coke. It flopped massively, evidenced by the company being flooded by calls and letters disapproving of the decision. The known Coca-Cola was then reintroduced as “Classic.” 

Last year, Gap attempted to refresh their logo doing away with the old blue box. In this case, the consumer outcry was not over price or distribution but over something as simple as the typeface of the new logo. After only one week of brand disparagement, the company rescinded the new and went back to the previous blue.

Maybe this shows that the predilections of your customers are not something you can measure or assess; you need to know it intuitively. This also emphasizes that the changes you make to your business and/or brand have to be made carefully; the more iconic your brand and the more loyal your customers, the more carefully you may have to tread. And not the least: be aware that decisions that were made under one set of circumstances may not be good under another – even if you have customer surveys to back things up.

Thorbjørn Swanstrøm, Attorney at Law at Awapatent

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

Patent Prosecution Highway – MOTTAINAI: Ease of requirements

During the summer of 2011 the first steps in the process of simplifying requesting accelerated prosecution of patent applications using the Patent Prosecution Highway (PPH) have been taken. Likewise, the number of PPH-agreements has increased, introducing new possibilities for accelerated prosecution, some of which are particularly relevant to our Scandinavian clients.

 New Patent Prosecution Highway MOTTAINAI-agreement

 Effective 15 July 2011 eight of the countries participating in the PPH concept agreed on easing the requirements for prosecution under the PPH when using any one of their mutual agreements. The new, simpler PPH-agreement is called the PPH MOTTAINAI, and has been signed by JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain).

 With the PPH MOTTAINAI program, two previously strict requirements have been removed. Firstly, the original priority application, from which a patent family stems, may now originate from any country. Secondly, within one patent family, it is now possible to use a decision to grant originating from any of the participating offices to request prosecution under the PPH at any other one of the participating offices, provided a mutual PPH-agreement actually exists and remaining requirements are met.

Troels Peter Rørdam, European Patent Attorney, Awapatent

Most comprehensive patent reform in almost 60 years approved by US senate

Most comprehensive patent reform in almost 60 years approved by US senate

Historic breakthrough as USA gets to grips with “first-to-invent”, the enormous backlog of patent applications and simplifying procedures for filing patents in the USA.

On Tuesday 8 March 2011, the US Senate voted to approve the nation’s most comprehensive patent reform since 1952, entitled the “America Invents Act of 2011”. Among many other changes, the reform adopts a “first-to-file” patent system that is more in line with patent practice throughout the rest of the world. The next step in the legislative process is a vote by the House of Representatives.

According to long-held principles of the existing patent law, patents in the US have been awarded according to the “first-to-invent” principle. One consequence of this regime has been that researchers and developers have been forced to keep careful logs of their inventions to be able to prove that they were the first to develop a particular product or technology. In Europe and in most of the rest of the world, there is instead the “first-to-file” principle, which simply means that a patent is awarded to the first of multiple independent inventors to apply for a patent.

Among many proposals in the new legislation package, the most significant change, at least as far as us Europeans are concerned, is the endorsement of the “first-to-file” system. Intended or not, this signals that the US patent laws are becoming more like the European model (or, more correctly, the model used by the rest of the world). Another important change is the introduction of more ways to question the validity of a pending or granted patent without having to engage in a full-blown court trial. Other measures are directed to dealing with the nation’s massive backlog of patent applications (more than 700 000 at the latest count).

In my opinion, the new law (if passed) will eliminate some of the difficulties that small European companies and individual inventors have when filing for patent protection in the US, because of the differences in our respective systems. The shift to a first-to-file system will also, in time, make it easier to ascertain who is the rightful owner of a third-party patent. This should make life somewhat easier for small research companies and individual inventors. For example, the change removes one of the main reasons for having to write up detailed lab journals, and it will also make it cheaper and simpler to question the validity of blocking patents.

There are also minor amendments that aim to make the process as a whole less bureaucratic, such as a relaxation of the requirements for inventor signatures on filing. In my mind, foreign and US firms alike will benefit from the increased harmonisation and simplified rules, and the changes will make a big difference for everyone who applies for, prosecutes, trades in or litigates patents in the US.

Various efforts have been made over a number of years to push through this major overhaul of US patent law. As recently as in 2009 the proposal reached the House of Representatives without being enacted into law on that occasion. Now that the Senate has said yes to the proposal, the next stage is for the House of Representatives to vote on the issue. Spokespersons for the Senate Judiciary Committee say that a proposed bill is just around the corner.

In a comment from the White House, President Barack Obama says that he is pleased that the proposal has been approved, describing it as “the most significant patent reform in over half a century”, according to Reuters.

Niklas Mattsson, European Patent Attorney, Partner

The USPTO decides to abolish the US patent classification system

The USPTO decides to abolish the US patent classification system


A very important development of the IP5 initiative has now emerged. The US Patent and trademark Office has agreed to phase out its US patent classification system and adapt to the ECLA system used by the European Patent Office examiners. In this process it is envisaged that the ECLA system will be developed further in cooperation with the USPTO to include the best practices from the US system.

One of the ten foundation projects of the IP5 cooperation between the patent offices of EPO, USA, Japan (JPO), China (SIPO) and South Korea (KIPO), is the formation of a common hybrid classification system. With this major step forward such a global patent classification system is within reach, as the Japanese Patent Office seems to be the only office adhering to their national classification system.

The advantages and disadvantages of having several patent classification systems in parallel may be argued. On the positive side parallel systems, if skillfully used, may give different access points to the patent documentation thereby enhancing what information specialists call recall. On the negative side, concordance between the systems often being poor, they may generate a lot of noise thereby reducing the precision of your search. A hybrid classification is a welcomed compromise.

Also, patent classification systems need frequent revisions in order to adapt to rapid developments in some areas of technology and duplication of cumbersome work in this area will hopefully be avoided, thanks to the cooperation between the patent offices.

It is thus good news for patent applicants and all who use patent classification in their daily work that the IP5 offices are moving towards a truly global system. It should result in more efficient patent searching, more consistency in search results from the different patent authorities and thus cost savings for the users.

The International Patent Classification (IPC) in its current 8th reformed version, is the responsibility of the World Intellectual Property Organization (WIPO) and will remain the official classification system for all patent offices of the member states of this organization, including the IP5. Let us hope that harmonization between the new USPTO/EPO hybrid classification and the IPC will also be endeavored.

Link to EPO news flash

Marjolaine Thulin, Patent Information Specialist, Awapatent

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

The Bilski decision is here! State Street Bank is out.

Yesterday (October 30, 2008), United States Court of Appeals for the Federal Circuit (CAFC) closed the door on the State Street Bank decision from 1998, a decision stating that it would be enough in regards to patentability under 35 U.S.C. § 101 if an invention produces “useful, concrete, and tangible result”.

In the decision from yesterday, the CAFC instead made use of the so called machine-or-transformation test, where either a specific machine with specific ties to the claimed process or the specific transformation of a physical entity to another must be present for the invention to be patentable. Thus, an invention, such as the Bernie Bilski invention, which is not tied to any specific machine or apparatus for any of its process steps nor is limited to any particular transformation, is not patentable.

The machine-or-transformation test has been applied before, for example in relation to Gottschalk v. Benson (1972). However, in the Gottschalk v. Benson case, the claimed process was still held to be ineligible subject matter, even though it operated on a machine such as a digital computer, since the claim’s tie to the machine were not specific enough. Accordingly, an algorithm implemented on a general purpose computer, such as a PC, was in this case not enough for reaching patentability.

On the other hand, a case where the court ruled the machine to be specific enough when applying the machine-or-transformation test, was in relation to Diamond v. Diehr (1981), where the Arrhenius equation was used for deciding when a process for curing rubber in a mould was completed. In this case, the machine had means for both the curing of the rubber as well as the computation of the Arrhenius equation (i.e. means for installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the Arrhenius equation and a digital computer, and automatically opening the press at the proper time).

Accordingly, for not failing the machine-or-transformation test it seems that one has to be very specific when drafting an application in this area, such that the ties between a claimed process implemented on a machine are made obvious.

On the positive side the CAFC noted that there will be no implementation of the so-called “business method exception” (as well as in relation to software), which they rather state would be unlawful. Accordingly, business method and software claims are still in as long as they fulfil the machine-or-transformation test.

If you would like to read the whole decision it can be found here: http://www.cafc.uscourts.gov/opinions/07-1130.pdf.
Magnus Nilsson, European Patent Attorney