Kluwer Patent Blog is a publication of Kluwer Law International providing information and news on European patent law. We have gathered together experts from leading IP firms, to report on the latest developments. They in turn have enlisted professional colleagues from diverse backgrounds to offer both established and new voices into the mix.
The United Kingdom wants to stay in the Unitary Patent system post-Brexit. This has been confirmed in the UK’s Brexit White Paper, which was published today.
According to article 151 of the paper, ‘The UK has ratified the Unified Patent Court Agreement and intends to explore staying in the Court and unitary patent system after the UK leaves the EU. The Unified Patent Court has a unique structure as an international court that is a dispute forum for the EU’s unitary patent and for European patents, both of which will be administered by the European Patent Office. The UK will therefore work with other contracting states to make sure the Unified Patent Court Agreement can continue on a firm legal basis.’
A spokesman for UK IPO said: ‘This will need to reflect the change in the UK’s status as we cease to be an EU Member State, which will require negotiations with our European partners. We look forward to beginning those negotiations with our European partners so as to ensure the continuing success of this new system.’
He also said: ‘The UPC and Unitary Patent project are an important means of simplifying the protection of innovative products throughout Europe’ and ‘UK participation in the UPC and Unitary Patent will extend the benefits of these systems to businesses operating in the UK.’
Still, the Brexit of 29 March 2019 is seen as a potential stumbling block for the UP system, as participation is only open to EU member states and by the time the system launches, the UK might not be an EU member any more. The system was expected to enter into force this year, which would mean the UK, as an EU member, could participate and some provisions would have to be adapted post-Brexit.
But this scenario has become unlikely due to the constitutional complaint against ratification of the UPCA in Germany (one of the obligatory signatories before the UP system can enter into force). The final decision in this case could come somewhere this year – if the Federal Constitutional Court doesn’t admit the case, but otherwise it could take up to a couple of years. In that case, the UK is not an EU member anymore and its membership of the Unitary Patent system would require complicated renegotiations and likely lead to the postponement of the implementation of the system, possibly for several years.
On 12 July 2017, the UK Supreme Court handed down a ruling which caused a shockwave to resound across the UK patent community. For more than a decade, when addressing the issue of the construction and infringement of a patent, every practitioner would have focussed on the question prescribed by Lord Hoffmann in Kirin Amgen: “what would the skilled person have understood the patentee to have used the language of the claim to mean?”. They would also have said that there is no doctrine of equivalents in the UK. In Actavis, we were told that this approach was wrong in principle and that instead the issue of infringement should be addressed first by considering the “normal interpretation” of a claim and secondly whether a variant differed only in immaterial ways. In addressing the second issue, the Supreme Court instructed us to use three questions which were by and large based on the old Improver questions dating from 1989 but with the second question being slightly adjusted. For ease of reference, the Actavis questions are reproduced at the end of this commentary.*
Time is a great healer, so the saying goes. But one year on, has the UK patent community adjusted to the new rules and have we concluded that the Supreme Court was, on reflection, right to reset the rules as it did?
The second half of 2017 and the first half of 2018 did not provide the Patents Judges in the High Court or the Court of Appeal with a real opportunity to reflect on Actavis. There have been half a dozen rulings which touch on the issues and one or two helpful summaries of the new approach. However there has not been a case where an allegedly infringing product or process was clearly outside the claims as a matter of “normal interpretation” (which appears according to subsequent rulings to mean “purposive construction”) but was an immaterial variant. Even if such a case were to come along, the rules of precedent which apply to English jurisprudence do not permit for more than a little tinkering at the edges of the ratio of a ruling from the UK’s highest Court.
In autumn 2017, a seminar took place at University College London at which the decision was evaluated. The panel included two of the Supreme Court Judges who had decided Actavis – Lord Neuberger and Lord Sumption as well as leading patents judges from Germany, the Netherlands and the US and attracted an audience of over 600 people. It seemed that just about every patent specialist in London was present with one notable exception. At the end of the evening, a show of hands indicated that the profession was split on whether Actavis had adopted the right approach or not.
The notable absentee from the UCL event was Lord Hoffmann himself, due to a pre-existing personal commitment. However, at subsequent public events, Lord Hoffmann has been quite clear that he himself is not in any doubt about the correctness of Actavis. He believes it to have been wrongly decided and that he would have followed the approach taken by the Court of Appeal.
So which is the better approach – the approach taken by Lord Neuberger and Lord Sumption in Actavis or that taken by Lord Hoffmann in Kirin Amgen? Having listened to seminars given by several judges and other experienced figures in the field post-Actavis, this author considers that there are pros and cons in both positions. Like many others, he had perhaps come to apply the Kirin Amgen principles somewhat literally whereas Lord Hoffmann had probably intended for more flexibility. The key to unlocking the true meaning of Kirin Amgen is context – Lord Hoffmann was telling us that the skilled person needed to view the claims with the context of the specification and the common general knowledge in mind. This can be illustrated by an example given by Lord Hoffmann himself after the Kirin Amgen decision: imagine a person approaches a gate to a field and on the gate is a sign saying “FOUR WHEELS NOT PERMITTED”. What can pass into the field: A bicycle? A car? A baby stroller with four wheels? A tank with tracks but no wheels? Clearly the context is likely to permit the bike and the stroller but not the car and the tank even though the strict language of the sign would permit the tank but not the stroller. Turning to Actavis, the second of the modified Improver questions does not sit well with the author. Why should the skilled person be taken to know that the variant achieves substantially the same result as the invention? Doesn’t this mean that the answer to this question will always be yes? The author has wondered from time to time if this adjustment was made so that the Supreme Court could find infringement in light of the findings from the trial judge, particularly the finding that the skilled person would not know that potassium salt behaved in the same way as the sodium salt without testing it (assuming, of course, that it could be made).
What should the correct approach be? Those practitioners who have studied the development of the law of patent construction in the UK, or who have been in the field for a long time, will recall that pre-Improver (decided in 1989), in Catnic (decided in 1982), and in several House of Lords cases pre-Catnic, the Courts decided that the first question should be to identify what the patentee had described as the essential features of the invention. In relation to those features, variation would not be permitted. However in relation to non-essential features, variation was permitted provided the variant did not have a material effect on the way the invention worked and that this was obvious to the skilled person. The author considers that this approach – essentially putting the third Improver/Actavis question first, might be easier to apply and lead to fairer results.
A further important issue which remains to be considered is the extent to which the Actavis decision impacts on validity. Validity was not in issue in Actavis and so the topic was not addressed. Arguably, the ideal case to consider equivalents would have involved both issues. Since Actavis, no judge has formally ruled on the point though informal observations from first instance suggest that there is no clear consensus at this time on the extent to which Actavis impacts on validity.
At the time of writing, a further decision from the Supreme Court on several fundamental issues of patent law is imminently expected. The Warner-Lambert v Actavis case concerning the drug pregabalin was heard by the Supreme Court in mid-February 2018 and considered, among other things, plausibility, infringement of second medical use patents and abuse of process. Decisions from the Supreme Court from hearings in January and early February 2018 have been handed down which causes practitioners to sense that the pregablin ruling could be handed down this side of the summer vacation. There are a number of rumours circulating in the patent community that the Supreme Court is once again going to re-set the law in at least one of the areas it was asked to consider. Looking forward, the Supreme Court has also accepted an appeal in the tadalafil case concerning dosage regimen patents and the law on inventive step.
Despite all of the above, in what was clearly a most welcome development for all IP professionals, on 27 June 2018 it was announced that Lord Justice Kitchin will be promoted to the Supreme Court this October. Whilst the newly promoted Lord Kitchin will not be able to form part of the panel hearing the tadalafil case, it is inevitable that he will play a major role in patent and other IP cases in the Supreme Court going forward. Having already established himself as a Judge of exceptional talent in the lower courts, there is every reason to think that Lord Kitchin’s influence in the highest court will be extremely beneficial to the entire IP community.
*The Actavis questions:
i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
The federal district court in San Juan, Puerto Rico, erred in dismissing copyright infringement, trademark infringement, and state law claims brought by a music contestant against pop recording artist Enrique Martin-Morales (aka Ricky Martin) on the ground that the contest rules compelled arbitration of the claims, the U.S. Court of Appeals in Boston has ruled. Unlike the contest sponsors, Martin was not a party to the contest rules. He also failed to show that he was an intended third-party beneficiary entitled to invoke the arbitration provision (Cortes-Ramos v. Martin-Morales, June 27, 2018, Barron, D.).
The influential Barcelona Court of Appeal corrected a finding of the Barcelona Patents Court, which – to great surprise – had lifted an injunction on finding that Swiss-type claims were affected by the Spanish Reservation to the European Patent Convention, and thereby ineffective in Spain. Although this decision arrived only after SPC expiry and thus much too late for this particular case, which concerned a top-selling blockbuster, it is nevertheless a welcome relief for Spanish patentees in similar situations.
The applicant, Teva, sought an order for the revocation of the Irish designation of European Patent No. (IE) 1379220 entitled “Inhalation Capsules” (the “220 Patent”) on the grounds of (i) obviousness, (ii) an “AgrEvo” challenge and (iii) insufficiency. The Court ruled in Boehringer’s favour by upholding the validity of the 220 Patent and rejecting all of Teva’s grounds of challenge.
The decision is noteworthy as the High Court, in upholding the validity of the 220 Patent, departed from the decision handed down in the UK proceedings and the proceedings in a number of other European jurisdictions.
The Federal Court of Justice held that the correct assessment of the involvement of an inventive activity requires that the problem is first identified without knowledge of the invention. This is necessary for localising the appropriate starting point for the skilled person’s desire to provide a contribution to the arts. It is not admissible to consider elements of the claimed invention when formulating the objective technical problem.
Effectiveness, international cooperation and staff relations are three main areas on which Antonio Campinos intends to focus as new president of the European Patent Office. Campinos, who started in office on 1 July 2018, wrote this in a message which was published today on the EPO website.
According to Campinos, it is ‘an immense honour to follow in the footsteps of some of the great characters who have shaped IP in Europe and beyond.’ He considers himself ‘privileged to lead an institution that is unquestionably a success story. 38 member states have been pulling in the same direction to create a strong international organisation. The EPO enjoys a reputation for being a leader in granting high quality patents. It also has nearly 7 000 highly qualified and experienced staff who have shown that they can increase the performance of the whole Office, particularly over the last few years.’
But ‘there is always room for improvement’, according to Campinos, who writes the EPO ‘has already shown itself to be a highly efficient organisation. (…) But I want to ask the question, can we be more effective by delivering services in the right way? That’s a question which we’re going to have to explore from a multitude of perspectives. Talent management, quality, automation, digital transformation, big data analytics and many others will play their role in facing challenges. (…)
Another area where we could assess the need for further action is in the field of co-operation. Part of our strength lies in the fact that we are an international organisation. We cannot therefore live in isolation, but instead form part of a rich IP ecosystem, with many different actors. That means we may have to assess the nature of that co-operation. For example, can we reinforce co-operation with our member states?’
Campinos also stresses the importance of ‘dialogue with staff. Earlier today, I sent a message to all our staff members in my capacity as their new President. I wanted to let them know immediately that staff engagement is among my top priorities, that I would welcome their ideas on any changes we might consider making to this Office.’
In June 2019 this should lead to the presentation to the Administrative Council of a ‘Strategic Plan that will present a multi-annual work programme for the EPO.’
Besides staff members, other EPO stakeholders, ‘including you’, can expect to be invited to consultations during the course of the next year ‘on how we tackle the strategic issues that face this organisation – whether you are a patent applicant, a national patent office or simply someone interested in following developments at the EPO through this blog.’
After only four days in office, it is hard to tell whether Campinos will bring change at the EPO after the controversial years of Benoit Battistelli’s leadership, which led to enormous social problems. But his announcement that ‘staff engagement is among my top priorities’, and his personal message to all staff members certainly seem positive steps. A first real test will likely be his handling of the cases of three SUEPO leaders, whose dismissals and downgrading were reversed last week by the Administrative Tribunal of the ILO, as well as the case of the Irish judge Patrick Corcoran.
Striking is Campinos’ focus on effectiveness, rather than efficiency, which could be a sign that the new EPO president is aware of complaints from users that the enormous increase in productivity under Battistelli has led to a decline of, or threatens patent quality at the EPO.
Remarkable, furthermore, is that his predecessor isn’t mentioned in Campinos’ message. And an almost revolutionary change is right at the top. Contrary to the blogposts of Benoit Battistelli and perhaps the most significant sign of change: Campinos has apparently decided that his contributions will be open for comments.
The Supreme Court concluded that it was appropriate for it to reformulate the so-called Improver (or ‘Protocol’) questions, which provide guidance as to whether a variant is immaterial where there is no literal infringement. The significant change is the introduction of hindsight into the determination of the second question: “Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?”
Historically, the Spanish Patents and Trademarks Office (“SPTO”) has rejected the correction of the registered term of supplementary protection certificates (“SPCs”), even in cases where such term has had to be recalculated due to the new case law emanating from the Court of Justice of the European Union (“CJEU”). As reported in our posts of January 2018, following the judgment of 20 December 2017 of the CJEU in case C-492/16 (“Incyte“), the SPTO modified its historical position. In particular, it published a “Notice to Applicants” informing that it would now allow the modification of entries registered in the SPTO so that the published term of protection may be recalculated, pursuant to the case law of the CJEU. So far, so good.
However, this did not help the owners of SPCs who had been denied the possibility of recalculating their term before the Incyte judgment was published. In some cases, such decisions were appealed by the owners of such SPCs before the so-called “contentious-administrative courts.” Although in those cases the SPTO initially filed a statement of defence requesting the dismissal of such appeals, after the Incyte judgment was published, the “state attorney” representing the SPTO filed a writ accepting the appeal. As a result, the High Court of Justice of Madrid (“Tribunal Superior de Justicia de Madrid”) issued two judgments on 3 April 2018 upholding the appeals and ordering the SPTO to recalculate the term of the SPCs, taking into account the date on which the SPC owner was notified of the decision granting the marketing authorisation (i.e. the criteria laid down by the CJEU in Incyte).
All in all, these judgments will further align Spain’s administrative and judicial decisions with the interpretations laid down by the CJEU.
In a case concerning two divisional patents derived from the same parent application, relating to ‘transcatheter heart valves’ or THVs, the Court of Appeal upheld the High Court’s decision that one patent was invalid for lack of inventive step and the second patent was valid. The Court of Appeal also provided guidance on cross-examination of expert witnesses, in particular best practice in the situation where a party chooses not to cross-examine a witness.