News

A recent decision from the European Patent Office (T 0154/04, Duns Licensing Associates) concerning how to assess patentability of business methods has strongly criticised the UK Court of Appeal’s 2006 decision Macrossan & Aerotel Ltd – [2006] EWCA Civ 1371(see our note here) as being “irreconcilable with the European Patent Convention”.

In theory, the UK Intellectual Property Office and the UK Courts are applying the same law as the European Patent Office, so should be reaching the same results on patentability, but patent practitioners are increasingly finding a big disparity between theory and practice.

The UK Macrossan decision set out a four step approach for assessing whether an invention should be excluded from patentability:

1) properly construe the claim;

2) identify the actual contribution;

3) ask whether it falls solely within the excluded subject matter;

4) check whether the actual or alleged contribution is actually technical in nature.

In T 0154/04, the EPO’s Technical Board of Appeal have dismissed that approach as being inconsistent with a good-faith interpretation of the European Patent Convention. In the EPO’s decision, the Technical Board established that there are four requirements for patentability: an invention, novelty, inventive step and industrial applicability. These are separate and independent criteria of patentability. In particular, novelty is not a requisite of an invention (as might be understood by the lay meaning of “invention”).

In assessing whether there is an invention, there must be some technical character. That is, there must be at least one technical term in the claimed invention, i.e. one which does not lie solely within an excluded field (e.g. that of business methods). A mix of technical and non-technical features is permitted.

In assessing novelty and inventive step, non-technical features to the extent that they do not interact with the technical features of the claim to solve the technical problem, should not be taken into account. Non-technical features “as such” i.e. those which do not even interact with technical features to provide the technical contribution, should be ignored. When considering inventive step, the problem solved by the invention must be a technical problem (although the problem may be formulated using an aim to be achieved in a non-technical field). Putting it another way, “the innovation must be on the technical side”.

This teaching is generally consistent with previous teaching of the EPO, but we have not previously seen such strong and direct criticism of the UK approach from the EPO. They seem to believe that the four step approach proposed in Macrossan presupposes that “novel and inventive purely excluded matter does not count as a “technical contribution”” (presumably it would fall at step 3) of the four step test?), whereas the EPO’s view is that a non-technical feature may, in fact, interact with technical elements so as to produce a technical effect. There are a number of other points of disagreement.

So, the result so far seems to be EPO 1: UK 0 and who can say when the matter will be resolved? In the meantime, we would certainly be agreeing with most patent practitioners that, rightly or wrongly, obtaining a patent for a method of doing business, or indeed for software, is currently considerably easier at the EPO than before the UK Intellectual Property Office. But, we await the next instalment in the debate.

What is Happening ?

On 1 October 2007, the UK Trade Marks Registry (now known as the UK-IPO) will cease refusing trade mark applications on the basis of conflicting earlier marks unless the owner of the earlier mark files opposition.

Notification – The New Procedure

From 1 October 2007, the UK-IPO will continue to search for conflicting rights when examining a trade mark application but, rather than objecting to the application on the basis of marks located in the search, will simply supply the applicant with a provisional list of such earlier marks. The applicant will have an opportunity to respond by limiting the range of goods and/or services covered by the application and/or arguing that there is in fact no likelihood of confusion. The UK-IPO may, as a result be persuaded to remove earlier marks from the provisional list before the list is finalised.

Once the search procedure is completed, the application will be published even if there are still earlier marks on the list. There is then a three month period for third parties to oppose the application.

In parallel with the publication of the application, the UK-IPO will notify the proprietors of any UK earlier national mark on the final list of conflicting rights that the application has been published and is open to opposition. Proprietors of European Community marks on the list will also be notified, but only if they have taken positive steps to opt-in to the system by paying the notification fee.

Why is the Change Important ?

Effective protection of your trade mark rights against dilution will require you to take a more active approach as the UK-IPO reduces its policing of the Register.

What should you be considering ?

Do you want to apply for registration of a UK trade mark ? - It should now be easier to register trade marks in the UK. Marks which previously would have been refused during examination due to conflict with earlier rights will now only be refused if there is a formal opposition by the holder of the earlier right.

• Have you had a trade mark refused by the Registry during examination or have you been unable to register it as broadly as you wished because of a conflict with an earlier right ? - You should consider filing a new application as it may now be successful.

• Do you own European Community applications and/or registrations ? – Should you "opt-in" to receive UK-IPO notifications ? The initial "opt-in" period is 3 years and the cost of this if we organise it for you will be around £115+VAT per mark for 3 years.

• Should I set up a trade mark watch for my more important marks ? – if you have trade marks outside the UK, it may be more cost-effective to set up a world-wide watch to keep you advised of attempts to register conflicting third party marks than to take steps to monitor the UK position alone.
  

What should you do next ?
This note only outlines the changes and cannot deal with more detailed considerations. Trade mark owners will need to establish a strategy for dealing with the new system which best fits their commercial needs and matches their attitude to risk. We would be happy to advise on an appropriate strategy for your business. Please contact your usual Reddie & Grose professional for further advice.

On 24 July 2007 the European Commission adopted two Regulations required to give effect to the European Community’s accession to the Geneva Act of the Hague Agreement concerning the International Registration of Industrial Designs.

The Hague Agreement is a system that enables applicants to obtain protection for industrial designs in a number of designated States by means of a single international application filed with the World Intellectual Property Organization WIPO) in Geneva, instead of a whole series of applications filed with different national or regional offices. International registrations have the same effect in each designated State as a national or regional registration in that designated State.

To be entitled to file an international application under the Hague Agreement, an applicant must be a national of, or have a domicile or a real and effective industrial or commercial establishment in, the territory of a State party to one or more of the three independent Acts of the Agreement (the London Act, the Hague Act and the Geneva Act). Protection can only be obtained in those States party to the same Act of the Agreement as the State through which the applicant has the necessary entitlement to file the international application.

The Community Design system, which is administered by the Office for Harmonisation in the Internal Market (OHIM) in Alicante, enables applicants to obtain protection for designs in all member states of the European Union (EU) by means of a single application. Unlike with international applications under the Hague Agreement, there are no entitlement requirements for filing Community Design applications and Community Design registrations have unitary effect throughout the EU.

On 18 December 2006 the Council of the EU approved accession of the European Community to the Geneva Act of the Hague Agreement. Assuming the instrument of accession is deposited with WIPO at the end of September 2007 as scheduled, the two recently adopted Regulations and the Geneva Act of the Hague Agreement are expected to enter into force in respect of the European Community at the beginning of January 2008.

Companies and individuals who are nationals of, or who have a domicile or real and effective industrial or commercial establishment in, the territory of the EU will then be able to protect designs not only throughout the EU, but also in other non-EU States party to the Geneva Act of the Hague Agreement, by means of a single international application. Non-EU States currently party to the Geneva Act of the Hague Agreement include Iceland, Singapore, Switzerland, Turkey and Ukraine. A list of the 23 States currently party to the Geneva Act of the Hague Agreement can be found by clicking here.

Following accession of the European Community, applicants who are nationals of, or who have a domicile, real and effective industrial or commercial establishment in, the territory of non-EU States party to the Geneva Act of the Hague Agreement will also be able to obtain protection for designs in all member states of the EU by means of a single international application. It remains to be seen whether accession of the European Community will encourage other countries, such as Australia, the USA, Canada, China and Japan to become party to the Geneva Act of the Hague Agreement.

Further information on the Community design system can be found on the OHIM website by clicking here.

Further information on the Hague Agreement can be found on the WIPO website by clicking here.

Patent Prosecution Highway between the UK and US to Open Soon

UK and Japan Patent Prosecution Highway

The Patent Prosecution Highway (PPH) pilot procedure between the UK and Japan was launched on 2 July 2007 for an initial period of one year. The procedure allows an applicant for a UK patent to request accelerated examination of a corresponding Japanese patent application, providing an examination report has issued on the UK application indicating that some of the claims are allowable. The applicant of a Japanese patent application can similarly request accelerated examination in the UK.

The intention of the PPH is to enable national Patent Offices to avoid repeating work carried out by another Patent Office and to reduce the time applications are pending before grant. According to the UK Intellectual Property Office (UK-IPO), “Making use of [work from other patent offices] should greatly improve our efficiency and also improve the quality of the patents that we issue. The procedure provides you with a granted patent for your invention much sooner than would normally be possible.”

In order to validly request accelerated examination under the PPH in the UK or Japan, an examination report must have issued for the equivalent application in the other country, and must give an indication that one or more claims are patentable. All the claims of the equivalent patent application must then correspond sufficiently to those indicated as allowable in the other jurisdiction.

The initial (either Japanese or UK) examination report is not considered as binding on the other jurisdiction, but should be considered persuasive. Differences in patent law between the jurisdictions for example may mean that claims deemed allowable in one country are not deemed allowable in the other.

There are currently delays in examining patent applications at the Japanese Patent Office due to a back log of cases. Examination is generally relatively quick at the UK-IPO. PPH is therefore likely to be of most use where there is an initial UK patent application and prompt examination is required on a corresponding application in Japan.

Further information can be found on the UK-Japan PPH on the UK-IPO website by clicking here.

UK and US Patent Prosecution Highway

According to Alastair Kelly, the PPH Administrator for the UK-IPO, the PPH pilot scheme between the UK-IPO and the US Patent and Trademark Office (USPTO) is due to launch around 4 September 2007, although the exact launch date has yet to be decided.

Other Patent Prosecution Highways

Pilot PPH programs already exist between the Korean Intellectual Property Office and the Japanese Patent Office, and between the USPTO and the Japanese Patent Office (JPO). The USPTO – JPO pilot program has been continued for a further six months after the expiry of the initial one year trial on 3 July 2007.

Reddie & Grose

July 2007