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The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys (also known as patent agents) in the UK. The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 1800 registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 3000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
Ensuring that your trainee patent attorney receives the training that they need can be a valuable but time-consuming task. Base your training programme on the newly-updated CIPA Training Manual, and you have a structured framework of study already prepared.
The Patents Training Manual
Features include: Authoritative chapters written by fellow patent attorneys based on their practice experience Encouragement to the trainee to play an active role in the their learning and tie in their studies with practice in the workplace A training log allowing the both the trainer and the trainee to chart and monitor progress in both study and work experience Suggestions as to further study and links to examination syllabi Real-life scenarios to challenge the trainee Volume 1 covers core patenting tasks, Volume 2 will explore post-grant procedures and Volume 3 will consider international patents.
The Patents Training Manual
The Patents Training Manual
Price ÂŁ75.00
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All rights reserved.
No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without prior written permission, except for permitted fair dealing under the Copyright, Designs and Patents Act 1988, or in accordance with the terms of a licence issued by the Copyright Licensing Agency in respect of photocopying and/or reprographic reproduction. Application for permission for other use of copyright material, including permission to reproduce extracts in other published works, shall be made to the Chartered Institute of Patent Attorneys. Full acknowledgement of author, publisher and source must be given. Š 2008. This Manual is produced and published by the Chartered Institute of Patent Attorneys under licence from the individual authors as copyright owners each of whom has asserted his or her individual moral rights. First printed in 2008, reprinted with updates in 2010. Published and placed on sale by: The Chartered Institute of Patent Attorneys 95 Chancery Lane London WC2A 1DT United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-33-2 Printed and bound by Intype Libra Ltd., Wimbledon Cover design by Stealth Communications, Manchester
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Contents Editor’s Note......................................................................................................... 5 Introduction .......................................................................................................... 7 1. History of patents and the patent profession ............................................... 13 2. The role of the trainee .................................................................................... 19 3. Business practice........................................................................................... 31 4. Legislative structure....................................................................................... 69 5. Sources of information .................................................................................. 89 6. Patentability: General issues ....................................................................... 105 7. Patentability: Specific issues....................................................................... 123 8. Other requirements for grant ....................................................................... 139 9. Inventorship: Ownership of inventions and disputes about ownership ........ 153 10. Infringement and claim interpretation ....................................................... 171 11. Structure of a patent application............................................................... 191 12. Drafting a patent ........................................................................................ 203 13. Filing strategies: an Introduction............................................................... 215 14. Filing strategies (UK).................................................................................. 229 15. Filing strategies (EP) .................................................................................. 245 16. Filing strategies (PCT)................................................................................ 267 17. Prosecution through to grant .................................................................... 291 18. Preview of main features of next volume.................................................. 315 Index ................................................................................................................. 319 Training log ....................................................................................................... 326
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History of patents and the patent profession
Outline This chapter deals with the history of patents and the profession associated with it, patent attorneys (or as they were first known patent agents). It is intended to help you to explain to clients the origins of the system of patents for invention and to help them to gain confidence in patent attorneys as their source of professional guidance, when seeking protection for their inventions. It will also help you to gain an insight into the basic tenets of patents and how the law developed.
Learning plan Prerequisites: There are no prerequisites for this chapter. Legal documents: Please look at the Acts that are mentioned in the text. Trainer’s input: Discuss the company’s own history in relation to the development of the patent profession. Syllabus link: None. Time allocated: Two or three hours.
Learning outcomes By the end of this chapter you will have knowledge of the background of our profession; skills which will allow you to appreciate just what a great job it is.
1.1 Historic origin of letters patent Literae Patentes or ‘open letters’ were originally grants by the monarch of rights and privileges to individuals, who had been selected by the monarch to perform certain tasks and duties. They were referred to as open letters because they were not sealed up with a wax seal, as a common letter would be, but had a seal (the Great Seal) attached to the document to confirm its authenticity as a grant of monopoly by the Crown. Thus, the document could be read without breaking the seal and such documents are still provided by the monarch to those performing major services to the monarch such as the Governors of Crown Colonies. There is little room for digression in this book, but a brief look at how one of history’s great diarists found the system is worthwhile. Samuel Pepys’ Diary for 1660 is much concerned with this latter type of letters patent and obtaining his patent to become ‘Clerk of the Acts’ to the Navy Board takes up much of his time and effort between 28 June and 13 July 1660. For example, on 29 June Pepys writes:
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patents obtained through the IPO, it is also possible to file patent applications under the EPC and the PCT. The Institute of Patent Agents, founded in 1882, became the Chartered Institute of Patent Agents in 1891 and changed its name to the Chartered Institute of Patent Attorneys in 2007.
Further study Information on the history of the Chartered Institute can be found at www.cipa.org.uk as can details of the Charter and By-Laws. The CIPA Journal is also a useful source of information on patents, trade marks, designs and copyright law and practice. The EPC and the PCT will be mentioned frequently in the training manual and will be covered in greater detail in later volumes. The ‘Black Book’, The CIPA Guide to the Patents Act (Sweet & Maxwell), also contains further information on the history of the patents acts.
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Chapter 1: History of patents and the patent profession
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The role of the trainee
2 Outline
This chapter prepares the trainee in the basics of dealing with his or her new working environment. It outlines the way in which all fee-earning work is handled, who contributes their various skills to the process, and how to manage the concurrent pressures of time, legal deadlines, and personal interactions both within and without the working unit to produce the practical usable work that our clients want from us. In this chapter the following key concepts are introduced: 2.1 2.2 2.3 2.4 2.5 2.6 2.7 2.8 2.9 2.10
Your new environment The need to contribute Outearning your costs Mastering office procedures The trainer-trainee team Acquiring the essential analytical skills Producing practical, usable work Time management Dealing with colleagues and clients Coping with professional exams
Learning plan Prerequisites: Begin by consulting any office manual or induction training documentation your employer has given you and/or you discover is available generally. Then study the CIPA/IPReg Rules of Professional Conduct and the guidelines published with them. Make sure you know your firm’s standard terms of business. Legal documents: There are no legal documents required to study this chapter. Trainer’s input: Enlist your trainee’s help whenever possible in dealing with clients, assisting you in meetings, sending reminder correspondence and so on in order to encourage the trainee to grasp quickly the essential business context against which we all work. Involve him or her in drafting as wide a range of different documents, for different purposes and to different types of addressee as you can. Discuss why you handle clients and their files in the way you do. If feasible, encourage the trainee to spend time with all divisions of your unit (especially accounts and formalities departments) to see the way your systems operate and how they interact with fee-earning staff. Stress from the outset the need to produce, as soon as possible after induction, work which reflects a real contribution to the unit’s output and which is produced in a way that generates goodwill inside and outside the unit. If you have local or regional groups of trainees such as the Informals, or know of similar self-help units operating outside yours, encourage your trainee to make contact with them. Patents Training Manual: Volume 1
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Business practice
Outline This chapter puts the work of the patent attorney into its business context, discussing the obligations owed to clients and employers, and the business practices which help in fulfilling those obligations. It outlines the systems and procedures which patent attorneys use in their work, sets out ‘best practice’ standards for interactions with clients, and explores how quality of service can be monitored and assured. The following key concepts are introduced: • • • • • • • • • • •
patent attorneys’ responsibilities to their clients; the need to establish exactly who the ‘client’ is; the concept of conflict of interest; the importance of continuing professional development (CPD); what happens in the event of a mistake or complaint; confidentiality safeguards; proper charging procedures; file maintenance practices; techniques for dealing with deadlines and time pressures; effective client communications; attributes of a high-quality service.
The chapter also provides guidelines for conducting client meetings.
Learning plan Prerequisites: Before reading this chapter, you should have studied the IPReg Rules of Conduct for patent and trade mark attorneys (to be found on IPReg’s website at www.ipreg.org.uk) and – if you work in private practice – your own firm’s business terms. Knowledge of the basics of the patent system is assumed, as is familiarity with common patent terminology. You should study chapter 2 of this manual, on the role of the trainee, before tackling the present chapter, as sections there are further explored in this chapter. Trainer’s input: Allow the trainee to ‘shadow’ your work as much as possible, in particular to listen in on phone conversations with clients and to accompany you to client meetings. Discuss why you handle clients and their files in the way you do, drawing distinctions between different clients’ needs and expectations. Enlist the trainee’s help in tasks such as preparing cost estimates and invoices, writing file notes of meetings and sending deadline reminders. Involve him or her in drafting a wide range of different documents, for different purposes and to different types of client. If feasible, encourage the trainee to spend time with colleagues in the records/formalities and accounts departments, to see the systems they operate and the way they interact with fee-earning staff. Syllabus link: This chapter is not directly linked to any of the qualifying exams, but should impact on your ability to do a good job in a real-life context. Time allocated: Five half-days. Patents Training Manual: Volume 1
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You also have a duty, as a patent attorney, to maintain your professional competence and to keep up to date with developments in patent law, by engaging in continuing professional development or ‘CPD’. Good client care also requires you to communicate effectively; to be courteous, honest, responsive and helpful at all times; to manage the clients’ expectations appropriately; to monitor your own standards of service; and to deal promptly and professionally with complaints and disputes. The in-house attorney does not face quite the same business practice issues as the private practice attorney. Nevertheless, there is much common ground: the in-house attorney – whose ‘client’ is usually his or her employer – still needs to maintain professional competence, to safeguard client confidentiality, to communicate effectively, to keep proper files and records, to work to deadlines and to conduct him or herself with professionalism and respect for colleagues.
Further study Learning more about business practice simply takes time, and plenty of experience of real life client interactions. For the time being, find out as much as you can about your own firm’s systems, procedures and policies; try to understand why they’ve been adopted; and think about whether there might be equally appropriate alternatives. If there’s an internal ‘practice manual’ or ‘quality manual’, codifying the firm’s practices and controls, take the time to read it. CIPA’s Business Practice Guidance, which your trainer will be able to access via the Members’ area of the Institute website, provides more detailed guidance on business practice issues (at the time of writing, this guidance note is being updated). For the trainee, the sections of particular relevance are those on terms of business, client relations, charging, quality considerations and complaints handling. The IPReg website (www.ipreg.org.uk) is also a good source of information about professional practice and CPD requirements. It does no harm to turn now and again to textbooks outside of the field of patent law – guides, for example, on communication skills, time management, decision making or quality assurance. Some of these texts are a little woolly, but many contain common sense pointers which can be usefully adapted to suit your work as a patent attorney. The CIPA Journal is an occasional source of articles on business practice issues, and the Institute also runs seminars on such matters from time to time. The International Federation of Intellectual Property Attorneys (FICPI/www.ficpi.org) organises an afternoon seminar, in February of each year, focusing on business practice issues for private practice attorneys – this is open to non-FICPI members, but it does tend to be directed towards more experienced attorneys. Your firm may also provide in-house training on business skills such as communication, client care and time management.
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Legislative structure
4 Outline
This chapter is intended be an introduction to the legislative structure in the UK and the European Union. It is a general guide and should not be relied upon as a substitute for specific legal advice. The chapter is divided into two parts: the first part is a general section on the institutions, legislation and different courts in the UK and European Union, the legal profession in the UK is also covered (4.1 to 4.3); the second part concerns the patent courts and the patent system in the UK and for European patents (4.4 onwards). In general, references to the UK include only England and Wales. For sources of information, please refer to chapter 5. 4.1
UK Law 4.1.1 UK institutions 4.1.2 UK legislation 4.1.3 Legal profession in the UK
4.2
The Courts in England and Wales 4.2.1 The civil court system 4.2.2 Where to start a case 4.2.3 The case management tracking system 4.2.4 Appeals
4.3
European Law 4.3.1 European institutions 4.3.2 European legislation
4.4
Patenting in the UK – Legal Bodies 4.4.1 The Intellectual Property Office (IPO) 4.4.2 The Patents County Court 4.4.3 The Patents Court 4.4.4 Allocation to the multi-track system 4.4.5 Appeals from the IPO, Patents County Court and Patents Court 4.4.6 The streamlined procedure
4.5
The Patent System in the UK 4.5.1 Historical development of the patent system 4.5.2 The Patents Act 1977
4.6
The European Patent Convention 4.6.1 European Patents
4.7
The Patent Co-operation Treaty 1970
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Sources of information
Outline This chapter provides a guide to sources of information, mainly for legal research, but also briefly addressing other sources of information such as prior art databases and sources of status information for patent applications and patents. Legislation is introduced as the primary source of legal information with case law and guidance from relevant patent offices filling in the gaps and providing interpretations. In this context, a brief review is given of the various forms of legislations and their creation, how the courts generate the case law and Patent Office sources of information, such as practice guides and official journals. Practical application of these concepts is demonstrated in the suggested chapter answers and comments at the end of this chapter.
Learning plan Prerequisites: None, but it will be helpful to have basic concepts of the legislative structure in the UK, as explored in the previous chapter, and patentability criteria, which are discussed in chapters 6 and 7. Legal documents: UKPA, EPC, PCT to look through; EPO decision G2/88, Adhesive Dry Mounting v Trapp (1310) 27 RPC 341 and Merrel Dow Pharmaceuticals v Norton [1996] 3 RPC 76 for the chapter questions Trainer’s input: Provide legal research tasks to apply learned material Syllabus link: The knowledge gained here will assist you throughout your UK and EQE examinations. Time allocated: One to two days.
Learning outcomes By the end of this chapter, you will have an understanding of the various sources of information available for (mainly legal) research and how to make use of them to address legal questions. Prior art searching databases and legal status information sources are also briefly addressed and the chapter provides a selection of web link and other references.
5.1 Legislation We need to start with the hierarchy of authoritativeness when looking for sources of legal information. In other words, we start with the law as embodied in the statutes. When addressing legal questions (for example: What forms part of the state of the art? What are the provisions on claiming priority or entitlement to own an application or a patent?) the information should, thus, always be sourced starting from the actual legislation. Depending on the context, this may be:
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Patentability: general issues
Outline This module aims to introduce you to the three key criteria of patentability, with particular reference to novelty and inventive step. These criteria are common to most worldwide patent systems, but, in this chapter, particular emphasis is paid to the requirements of the UK Patents Act (UKPA), the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT), with reference to the situation in the US where appropriate contrasts can be made.
Learning plan Prerequisites: To complete this module you will need to have read: • Sections 1 to 4 of the UKPA and the associated commentary from the CIPA Guide to the Patents Act. • EPC Articles 52-57 and commentary from the Guidelines for Examination in the European Patent Office (EPO), particularly Part C.IV and the annex to C.IV. Legal documents: • Windsurfing v Tabur Marine [1985] R.P.C. 59 • The General Tire & Rubber Co v The Firestone Tyre & Rubber Co & Ors [1970] RPC 457 • Asahi’s Application [1991] RPC 485 (CA) • Eli Lilly and Company v Human Genome Sciences Inc [2010] EWCA Civ 33 • G1/92 • G 2/99 Trainer’s input: As part of this module, the trainer is expected to provide examples of the initial documents provided by prospective inventors to describe the inventions that they wish to protect. It is important to discuss what issues the trainee should be considering as they consider the proposed invention. Consider discussing other considerations that may be used to support inventive step arguments. Further experience that is likely to be useful is exposure to prosecution of applications on a day to day basis. In particular analysis of search reports – Are the documents disclosed relevant for novelty or inventive step? Are they co-pending applications? – and analysis of examination reports (How has the examiner structured the novelty and inventive step attacks? Is their assessment correct? What features are available to try and distinguish the invention from the prior art?). UK Exams: P1 and P5 EQEs: Papers A, B, C and D Time allocated: One to two days. Syllabus link:
Learning outcomes By the end of this chapter you will have knowledge of the main criteria required for a patentable invention and you will have developed skills which will allow you to question whether an invention fulfils these requirements. Patents Training Manual: Volume 1
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Patentability: specific issues
Outline In order for an invention to be patentable, there are four requirements that it needs to fulfil. As discussed in chapter 6, it must be novel, involve an inventive step and be susceptible of industrial application. However, it must also not be otherwise barred from patent protection. This chapter discusses the exclusions to patentability, i.e. those things that are not considered to be inventions, and the exceptions to patentability, i.e. those inventions that are not allowed patent protection. These exclusions and exceptions are discussed mainly from the IPO and EPO perspective, but contrasts with the situation in the US will be made as appropriate.
Learning plan Prerequisites: The trainee must have first read: • •
Sections 1, 4A and 76A and Schedule A2 of the UK Patents Act (UKPA) and the accompanying commentary in the ‘Black Book’ Articles 52 and 53 and Rules 23b-e of the European Patent Convention and the associated sections from the Guidelines for Examination in the EPO (Part C.IV-2 to 3).
Legal documents: • • • •
Practice notes from the IPO related to methods of doing business and patentable subject-matter Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan’s Application [2006] EWCA Civ 1371 T0315/03 (Oncomouse®) G 1/83 (which provides the basis for the ‘Swiss-type’ second medical use claims).
Trainer’s input: As this can be a highly subjective area, it would be useful for the trainer to discuss with the trainee any cases that they have dealt with where the examiner has raised any objections relating to exclusions or exceptions from patentability. Additionally, more specific discussions on the software / biotechnology aspects of this section may be appropriate, depending on the field of the trainee.
Syllabus link:
UK Exams: P1 and P5 EQEs: Papers A, C and D
Time allocated: One day.
Learning outcomes By the end of this chapter you will have knowledge of the exceptions and exclusions to patentability. You will have learnt how to identify inventions that may fall into these areas and considered alternatives and solutions to objections that might be raised under these provisions.
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case. In addition, it is worth reading the corresponding case T0154/04 from the Technical Boards of Appeal as this will allow you to appreciate the difference in approach from the UK courts and the EPO. There are several recent decisions and pending decisions from the Enlarged Board of Appeal at the EPO that are of interest to the material covered in this chapter, in particular: • G01/04 – a decision relating to methods of treatment by therapy • G02/06 – the WARF/Stem cells case • G01/07 – methods of treatment of the human or animal body by surgery In addition to the practice in the UK and before the EPO, developments in the law of other applicable territories, in particular the US and other European countries, should be borne in mind. For example, with particular reference to biotechnological inventions, the patchy implementation of the Biotech Directive means that although claims may be obtained via the EPO, these may not be upheld in national courts. In view of the overlap between the provisions of this section and those of inventive step and industrial application (covered in chapter 6) and those of sufficiency (covered in chapter 8), these chapters and the material cited in these chapters are also of relevance.
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Other requirements for grant
Outline This chapter aims to introduce the additional requirements that must be fulfilled in order to obtain a patent. These are requirements that the patent disclosure, as opposed to the invention, needs to satisfy in order to enable the inventor to obtain the 20-year monopoly to the invention. In brief, these are the requirements that: (a) the invention is sufficiently described to allow a person of skill in the art to reproduce the invention across the full scope of the claims. (b) the claims: (i) are clear and concise; (ii) are supported by the description; (iii) relate to only one invention or a group of inventions related to one invention. (c) the application or patent contains no matter added after the filing date. Some of these requirements need to be fulfilled at filing, others during the lifetime of the application.
Learning plan Prerequisites: The trainee must first have read: • Section 14 of the UK Patents Act 1977 (UKPA) (used throughout this chapter) and accompanying discussion from the ‘Black Book’ • Section 14 from the UK Manual of Patent Practice • Articles 82, 83, 84 and 123 EPC and accompanying discussion from the Guidelines for Examination in the EPO (see in particular Part C.III). For more detail see the case law relating to these areas in the Case Law of the Boards of Appeal published by the EPO. Legal documents: There have been a few key decisions from the Enlarged Board of Appeal related to added subject-matter, in particular G1/03 (disclaimers) and G1/93 (the ‘inescapable trap’). Trainer’s input: In this section, it is useful for the trainee to have practical experience of situations where these issues might be raised. For issues such as sufficiency this may be best addressed by looking at opposition files rather than examination reports, if suitable examples are available. Alternatively, directing them towards interesting cases available from the EPO website or the UK courts may be appropriate, depending on the field in which they are focused. Additionally, providing some experience in amending claims and becoming more familiar with identifying appropriate support in the application to avoid Art 123(2) issues would also be good practice at this stage. Syllabus link:
UK Exams: P1 and P5 EQEs: Papers A, B and C
Time allocated: One day. Patents Training Manual: Volume 1
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Further study Further chapters in this volume that should be read to accompany this area include the chapter on drafting (chapter 12). Inevitably the best way to become more familiar with these additional requirements is via practical experience. Therefore, the more amendments and drafting to which you have the have the opportunity to contribute, the more your understanding of each of these requirements will develop.
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Inventorship: Ownership of inventions and disputes about ownership
Outline This chapter deals with (1) the concept of invention and inventor, (2) the right to apply for a patent and the right to be mentioned as inventor; (3) ownership and co-ownership of inventions and patents; (4) the law and procedure of determining disputes about these matters; (5) remedies; and (6) the special position of employees’ rights.
Learning plan Prerequisites: For this chapter you will need to familiarise yourself with sections 7-13, 36-43, 72(1)(b), 82 and 125 of the Patents Act 1977 (UKPA) and Article 60 of the European Patent Convention. Special warning: Many of the original provisions of the 1977 Act relevant to this Chapter were amended by the Patents Act 2004 and the 1995 Rules replaced by the Patents Rules 2007. Rule numbers in this chapter have been revised to the 2007 Rules. Students must therefore make sure that they study fully updated versions of the Act and the Rules. Legal documents: Patents Act 1977 (as amended) Patents Rules 2007; Patents (Fees) Rules 2007 European Patent Convention, Arts. 60-61 EPC Implementing Regulations, Rules 14-15. Selected leading cases: Generally Viziball’s Application [1988] RPC 213 Henry Bros v Ministry of Defence [1999] RPC 442 (C.A.) Decision 3/92 (EPO), LATCHWAYS/Unlawful Applicant [1995] EPOR 141 Kakkar v Szelke [1989] FSR 225 Yeda Research v Rhône-Poulenc Rorer [2007] UKHL 43 (H.L.) Markem Corp. v Zipher Ltd [2005] RPC 31 p761 (C.A.) University of Southampton’s Applications [2005] RPC 11 p.220 and [2006] RPC 21 at p. 567 (C.A.) Transfer of jurisdiction Luxim Corporation v Ceravision Ltd [2007] RPC 33 p.797 Co-ownership Hughes v Paxman [2007] RPC 2 at page 34 Employees’ rights Harris’ Patent [1985] RPC 19 Patents Training Manual: Volume 1
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Infringement and claim interpretation
Outline Whether a patent has been infringed involves two questions. First is (1) whether the object or process alleged to infringe is actually what is covered by the claim and second is (2) whether what is being done with it is an act that the law reserves to the patent holder. Answering the first question itself has two parts: (1a) determining the true meaning of the claims, which is often termed ‘interpreting a claim’ or ‘determining the scope [or breadth] of a claim’, and then (1b) checking whether the alleged infringement falls within that meaning. Determining the meaning of a claim is a core skill of a patent attorney; while this obviously needs to be done if a client asks whether they infringe a patent, the question also, and more frequently, arises when considering the issues of novelty and inventive step because those questions are answered using the same definition of the invention, namely that provided by the claims. The second question is often straightforward since patents regulate most kinds of economic activity, for example, sale. However, there are exceptions for activities that are not really economic activity or are activities to be encouraged, or at least not discouraged by a patent, for economic or other policy reasons.
Learning plan Legal documents: • Patents Act 1977 (UKPA) • European Patent Convention (EPC) (1973 and 2000) & Protocol on the Interpretation of Article 69 EPC • CIPA Guide to the Patents Acts • Kirin-Amgen Inc v Hoechst Marion Roussel Limited [2004] UKHL 46 (www.publications.parliament.uk/pa/ld200304/ldjudgmt/jd041021/kirin-1.htm) • Catnic v Hill and Smith [1982] RPC 183 (HL) • Improver v Remington [1990] FSR 181 • PLG Research v Ardon [1995] RPC 287 (CA) • Mayne Pharma Pty Ltd, Mayne Pharma Plc v Pharmacia Italia SpA [2004] EWHC 4258 • Mayne Pharma Limited, Mayne Parma plc v Debiopharm SA, Sanofi-Sythelabo [2006] EWHC 1123 • Mertz Pharma GmbH & Co K GaA v Allergan Inc [2006] EWHC 2686 • Journal of the German Association for the Protection of Intellectual Property at [2006] GRUR, Heft 9, 720 Trainer’s input: The trainer needs to discuss claim construction when reviewing the trainee’s case work. These discussions should try to develop the trainee’s sensitivity to ambiguity in the claim and judgement as to which interpretation points are important and as to how they are reasonably resolved. The trainee should be encouraged to prepare for review of work by highlighting passages in the description of the patent, or application, that shed light on claim interpretation points, ready for discussion with the trainer. Examination and infringement and validity work provides the fullest examples, but drafting also provides an opportunity to develop sensitivity to claim ambiguities. Syllabus link: UK Exams: P2 and P6 EQEs: Paper C Patents Training Manual: Volume 1
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Suggested chapter answers and comments Please refer to the sections given below to check your answers: 1. 10.1.1 2. 10.1.5 3. 10.3.3 4. 10.3.3 5. 10.5.10 6. 10.4.7 7. 10.4.6 8. 10.5.5 9. 10.3.3 10. 10.6.1 and 10.6.2
Chapter review This chapter has looked at the basic law of infringement, which divides into two questions, namely, what objects and processes do the claims protect, and what acts in relation to those does the infringer have to perform in order to infringe? The latter question is mostly the matter of bookwork, but claim interpretation is a skill that needs to be developed through practical experience. All claims are ambiguous, and you will need to develop a sensitivity to that in order to find the possible meanings of a claim. Having found the possibilities, you then have to decide which is the best interpretation. Various rules on how to do that have been discussed, which in the main involve applying the information in the description part of the patent, as is mandated by statute. The case law sets out procedures for dealing with difficult cases, namely those involving ‘equivalents’.
Further study Development of your skills in claim interpretation requires, of course, putting the principles noted above into practice in your day-to-day work. While formal infringement opinions may only be requested occasionally, these issues do occur frequently when answering examiners’ reports. Also, when drafting claims it is also essential to check your work by interpreting what you have written (trying to put to one side what you meant to say). So, part of the skill of drafting is avoiding ambiguities (or leaving only ambiguities that are certain to be resolved as you wish). Paul Cole’s book Fundamentals of Patent Drafting, which is well worth reading for its own purpose, contains a section on claim interpretation. Steven Pinker’s book The Language Instinct provides an interesting background to the whole business of language and the extraction of meaning, and should provide a cure for those, if there are any left, who think that interpretation (or drafting) can be done without context.
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Structure of a patent application
Outline The structure of a patent application is well defined and, before you turn to drafting a patent in the next chapter, it is useful to understand how it is basically put together and the underlying logic behind the structure. This chapter examines in principle the legal requirements underlying the construction of a patent application, the main components of the patent application and also explains some of the information that you will find in published patent applications.
Learning plan Prerequisites: The trainee must first have read: • Section 1, 2, 3, 14, 60, 61, 72, 125 UKPA. • Articles 52, 54, 56, 83, 84, 85, 100, Protocol on the Interpretation of Article 69 EPC. • Articles 5, 6, 33 PCT Legal documents: Not applicable. Trainer’s input: The trainer should provide plenty of drafting practice. Also it may be worth discussing how the trainer likes to draft – in particular their preferred mode of extracting information from the inventor, the order in which they prepare the patent application, and how they structure it. UK Exams: P3 EQEs: Paper A Time allocated: Two half days. Syllabus link:
Learning outcomes By the end of this chapter you will be able to analyse a patent specification quickly, moving efficiently to the part you need to understand. You will be able to tailor your discussions with the inventor to make sure you get the relevant information for each part of the specification.
11.1 Legal context 11.1.1 Summary of legal background The legal issues surrounding patenting are covered in other parts of this manual and so here they are briefly summarised, specifically in the context of drafting patent applications. Our role is to balance two main aspects: legal and commercial. The patent offices are largely concerned with the legal aspects and these form part of the responsibility of the courts as well. The legal issues include topics such as patentability (especially novelty and inventive step), sufficiency, support and clarity. Also, although the question of ‘added matter’ does not arise during the drafting of a patent Patents Training Manual: Volume 1
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Drafting a patent
Outline Drafting a patent application may be the most difficult skill for a patent attorney to learn and could well be the most important skill to posses. This chapter examines not only the mechanics of writing a patent application but also practical issues, such as extracting the invention from the inventor and dealing with the inventor generally. Whilst the previous chapter has focused on the ‘theory’ behind the various parts of a patent application or a patent, we will now look at some practical aspects, conceptually divided into three stages: getting the information from the inventors, drafting the application and reporting it.
Learning plan Prerequisites: Must have read at least chapter 11 first and be familiar with 6, 7 and 8. Trainer’s input: Ask your trainer to give you plenty of drafting practice. Also it may be worth asking your trainer how they like to draft, their preferred mode of extracting information from the inventor and the order in which they prepare the patent application. Syllabus link:
UK Exams: P3 EQEs: Paper A
Time allocated: Two days.
Learning outcomes By the end of this chapter you will have an initial idea of how to approach a patent draft. The discussed skills will allow you to approach drafting a patent application in a structured manner.
12.1 Obtaining the information In practice, there are many ways in which you will acquire information from the inventors or your contact within the client company, such as an initial write-up (for example, a technical report), a letter with a brief summary or simply a phone call. In most cases, it will be necessary to follow this up with the inventor in an e-mail conversation, telephone call or face-to-face meeting (often a face-to-face meeting will represent the most efficient way of transferring information from the inventor to you). Whichever form the interaction with the inventor takes, it is important to be as prepared as possible to ensure that the right questions can be asked and to maximise information transfer itself. It will be more efficient in terms of the client’s time, as well as your time (and, therefore, the client’s costs), if all information can be obtained in one single go, although, in practice, some follow-up questions will occur when reporting the draft application. Patents Training Manual: Volume 1
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elongated extension shaft of Fig 5C (which can be used with two pulley prior art sewing machines). Invention (2) can be protected as a dependent claim, dependent on a claim for invention (1) and both are unified by the inventive concept of using a one-way clutch to drive a sewing machine. Invention (3) is a separate invention and would eventually have to be protected in a separate application. Since the client operates service centres for upgrading sewing machines, the Examiner’s comments state that a method claim directed to upgrading existing treadle machines should be included. Do you think this reasoning is complete? Can you think of more detailed reasons? Discuss with your trainer. Take a look at the Examiner’s preferred solution for an independent apparatus claim. How does yours compare? Discuss this with your trainer, if possible together with your other answers, in particular to question 1.
Chapter review This chapter has looked into the practical aspects of drafting a patent application, once the theoretical underpinning knowledge, covered in previous chapters has been assimilated. Before the drafting process can begin, the information must be obtained from the inventor. One approach to then preparing a draft has been discussed but it must be emphasised that everybody is likely to develop their own approach based on experience. This chapter should have provided practical pointers to arrive at a set of claims covering the invention and a description to support it.
Further study Since a large part of mastering the art of drafting requires practice over and over again, the best further study is to actually draft patent applications under your trainer’s supervision. However, you may want to look into the following for further reading: • Roberts, Gwilym, (2006), A Practical Guide to Drafting Patents, EIPR Practice Series. Andover: Sweet & Maxwell • Cole, Paul, (2006). Fundamentals of Patent Drafting. London: CIPA
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Drafting a Patent
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Filing strategies: an introduction
Outline This chapter deals with systems for obtaining patent protection in multiple jurisdictions and looks at how to protect an invention to which improvements are being made during the patenting process. In particular, the chapter explores regional and international systems for keeping patenting options open for as long, and widely, as possible within budgeting constraints, how to identify countries for which patent protection is desired, how, broadly, to pursue protection in those countries, and use of the ‘priority’ system. The following key concepts are introduced: • The Paris Convention governing the priority system. • The Patent Cooperation Treaty (PCT) or International Patent Application System. • The European Patent (EP) and other regional patent grant systems.
Learning plan Prerequisites: The trainee should have read: • • • •
Sections 2, 3, 5, 6, 77-79, 89, 89A, 89B UKPA Articles 75, 87-89, 150 EPC Articles 3, 4, 8, 22, 39 PCT The Paris Convention.
Trainer’s input: Discuss with your trainer some examples of filing scenarios that they have encountered, and how they dealt with them. These should include filing strategies covering a large number of countries or covering a small well-defined set of countries and instances where the first filing has been made overseas and the reasoning behind it. Also discuss approaches adopted when an inventor or a team of inventors have continued to work on related inventions after a first patent filing such that further patent protection was required both within and subsequent to the priority year. Syllabus link:
UK Exams: P2 EQEs: Paper D
Time allocated: Two days.
Learning outcomes This chapter will enable you to advise the client/business on filing strategies including where to file a first patent application, how to defer the costs and keep the options open for patent protection in multiple countries, how to select in which countries to seek granted patents and how to protect a string of related inventions which develop over time.
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Suggested chapter answers and comments 1. See 13.5 2. See 13.6 3. See 13.6 4. See 13.5 5. See 13.5 6. See 13.5 7. See 13.6 8. See 13.5 9. See 13.5 10. See 13.5
Chapter review The filing strategy you adopt is basically built around preserving novelty for the countries of interest to your client. It is typically done using the priority system and PCT system in conjunction, often, with regional filing systems, such as the European patent system. At the outset, your client may be happy to keep their options open for as many countries as possible, but this can be a costly exercise and so selection can be made later, obtaining patent protection in countries where there are large markets where manufacture might take place or where competitors operate, amongst other considerations. Where the client or business is developing a string of inventions based around a core technology, then the filing strategy may be developed with a core patent and later follow-on patents effectively prolonging the life of patent for the concept and providing multiple lines of attack should any one of the cases be found invalid.
Further study Talk to your trainer and colleagues about different approaches they have adopted and the requirements that drove them.
Notes and references 1. 2.
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Practice is developing on this in Europe following the recent rule changes – see chapter 15. Again recent rule changes have curtailed this slightly at the EPO – see chapter 15.
Chapter 13: Filing strategies: an introduction
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Filing strategies (UK)
Outline This chapter will deal with the life of a UK patent application from initial filing through to grant, in terms of the procedural steps involved and the timing of each of the main events. Substantive issues that you may encounter during this time are addressed in chapters 6 to 8. Where forms are referred to we omit the /77 suffix which is given on older versions. As a UK application may be filed for different reasons, the various issues to take into account for each scenario are also addressed, as well as the strategic rationale involved. The different types of UK application discussed in this chapter are a direct UK application that will go through to grant, a UK application that claims priority from an earlier application, a UK application that is filed merely to obtain a priority date for subsequent foreign filings, a PCT application that enters the UK national phase, a divisional application and an application converted from a European application. Although many issues relevant for each of these types of applications are the same, there are important differences between them that must be considered. The following key concepts are introduced: • •
Main events in the life of a patent application. Timings of events and situations when these timings may change other pre-grant procedures.
Learning plan Prerequisites: Read sections 5, 13 to 21, 24, 74A, 74B, 89A, 117 and 125A of Patents Act 1977 (UKPA) and corresponding commentary in CIPA Guide to the Patents Act (5th Edition + 5th cumulative supplement) and Patents Rules 2007 Legal documents: Patents forms Trainer’s input: Discuss with your trainer how to go about filing a UK application and which forms and fees are required. Discuss why some of the timings differ when filing, for example, a divisional application, or an ex-PCT application. Ask your trainer about other pre-grant procedures, such as hearings. Has your trainer been to a hearing at the IPO? If so, what was the reason? Look through some UK files together. You will probably notice that some of the timings do not correspond with those set out in this chapter. Discuss with your trainer why this might be – perhaps because quick progress though the pre-grant stage was required – or perhaps the application was abandoned after 12 months. Syllabus link:
UK Exams: P1 and P2 EQEs: Paper D
Time allocated: One day.
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4. A client/your business has filed an application, but did not include any details of the inventors. What should be done and when, in order that the application is not deemed withdrawn? 5. The search report for an application was issued six months and two days ago; no further action has been taken since designating the inventors just over two months ago. What should have been done in the meantime, and what can be done today to rectify the situation?
Suggested chapter answers and comments 1. Indicate that a patent is sought, identify the applicant and give contact details, description of the invention. 2. Request for grant, a specification, an abstract, claims, and drawings 3. At the latest within six months of the date of publication of the search report, or within two years of the priority/filing date for a divisional application (or on filing if more than two years have passed). Use form 10 and pay fee. 4. The designation of inventor forms must be filed (form 7) – one for each inventor and one extra. This must be done within 16 months of the priority/filing date or within two months of filing a divisional, if 16 months has already passed. 5. Examination should have been requested two days ago. Since the deadline has been missed, it needs to be requested within two months, together with a request for an extension of time, made on form 52, and the payment of the extension fee and the examination fee. This must be done within eight months of the publication of the search report.
Chapter review Now you should understand the timing of the main events in the life of a UK patent application. You should be able to plan your diary accordingly and advise your client/business when they will need to pay certain fees, and/or make decisions about the future of their application. You will have learnt about the difference in the timing of these events when an application claims priority, or when you are filing a divisional application. You will also now have knowledge of other pre-grant procedures that could happen at any point during the life of the UK application.
Further study • • •
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IPO website PCT Applicant’s Guide – part II, UK chapter and appendix Manual of Patent Practice
Chapter 14: Filing strategies (UK)
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Filing strategies (EP)
Outline This chapter sets out the formal acts required to be completed in order to obtain a European Patent (EP); the acts are presented in the stages that an application passes through – namely filing, searching and publication, and examination – the procedure is sequential and the stages thus follow a largely chronological order. There are several types of EP applications: • direct-filed EP application, where the application originates as an EP application; • regional phase EP application, where the application originates as an international (PCT) application; and • divisional EP application, where the application originates from a pending, and thus existing, EP application.
Learning plan Prerequisites: Must have an understanding of what constitutes an invention and a patent, and the purposes of having a patent; must have an awareness of the existence of the European patent system, the states that are contractually bound by the European patent system, the European patent system as a means of enabling the patent applicant by means of a single procedure to obtain a patent in some or all of the contracting states, and the existence of the international patent system. Legal documents: Must have access to EPC2000, the Guidelines for Examination at the EPO, the Official Journal of the EPO, the Ancillary Regulations to the EPC, and the Case Law of the Boards of Appeal (fifth edition). Trainer’s input: Identification of cases that contain examples of the scenarios set out below. Syllabus link:
UK Exams: P2 EQEs: Papers C and D
Time allocated: Reading of the material in this chapter should take around three to four hours; set aside two days including reviewing existing EP files and discussing with your trainer. However, an appreciation and full understanding of the material can be expected to be an ongoing process, which is best approached in conjunction with case work in office.
Learning outcomes By the end of this chapter you will have knowledge of the different types of European patents and the different routes that an applicant can take when seeking patent protection in Europe. In particular, you will develop an appreciation of the various stages and timescales associated therewith, which will enable you to ask your client salient questions and allow you to advise your client as to the most appropriate route to take, based on an individual client’s set of circumstances. Patents Training Manual: Volume 1
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Suggested chapter answers and comments 1. The documents making up the application have to include an indication that a European patent is sought, applicant details, and a description or a reference to a previously filed application. 2. All EPO offices and national offices acknowledged by the EPO as being competent to receive European patent applications. 3. The Berlin, the Hague and the Munich offices of the EPO only 4. By fax, post, online. 5. It serves as a convenient ‘check list’, since it includes fields that provide information and details that are required for the application to be deemed a European patent application, and that you might otherwise forget to submit/complete. 6. Request re-establishment of rights in respect of the priority period and within two months of the expiry of the period, i.e. within two months from 12 months from the priority date. You will need to submit a written request for re-establishment, which needs to be accompanied by a statement of grounds setting out the facts you are relying on in support of your request. The request will need to be accompanied by the omitted act, which in this case is the filing of the EP application. 7. File the application in Italian; you will have to file a translation into a language of the proceedings within two months of the application filing date. 8. Publication of search report; remedy: further processing. 9. Day prior to publication of the mention of grant of the parent application. 10. EPO filing offices only. 11. Ex-parte observations in relation to novelty and inventive step of an application; the benefits of filing these observations is that it is relatively cheap and it can, at the very least, delay the grant of the patent in respect of which the observations have been submitted.
Chapter review You now have knowledge of the different types of European patents and the different routes that an applicant can take when seeking patent protection in Europe. You need to ask your trainer for access to files relating to each different type of European patent application, and, indeed, files relating to various stages of the various types of European Patent application, so you can see the routes taken by different clients when obtaining a European patent. You should particularly look out for practices governed by the law pre-EPC2000 and discuss how these differ from the EPC2000 practice with your trainer.
Further study
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•
Visser, Derk. The Annotated European Patent Convention: Veldhoven: H. Tel
•
Date of publication has not been given as legal texts are regularly updated. Please ensure that you use the most recent edition.
Chapter 15: Filing strategies (EP)
Filing Strategies (EP)
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Filing strategies (PCT)
Outline An introduction to the Patent Co-operation Treaty (PCT) system has been given in chapter 13. This chapter deals with details of the procedures and stages involved. This chapter covers the use of the international patent system in seeking protection for an invention across a large number of countries. The formal requirements for the applicant and the application are set out, along with details of the procedural timeline of events for the application. The chapter moves through each procedural stage in turn and includes details of options or routes that may be available at different stages in the life of the international patent application. Alongside the law, the practical considerations that may influence the particular route chosen by the applicant are discussed. Key concepts: • •
The PCT (International Patent Application system) – how and why it is used and by whom. The offices and agencies involved in operating various stages of the application process and the procedural steps required at each stage.
Learning plan Prerequisites: The trainee should read: • •
• • • • • •
Articles 3 to 30 (Chapter I) and 31 to 42 (Chapter II) of the PCT and Rules 3 to 78 of the Regulations under the PCT. PCT Applicant's guide (www.wipo.int/pct/guide/en) in particular the question and answer sections starting at Chapter 5 of Introduction to the International Phase and Chapter 2 of Introduction to the National Phase. UK Patents Acts 1977 to 2004 (UKPA), and the sections applicable to international applications; PA 89 Effect of international application for patent. PA 89A International and national phases of applications. PA 89B Adaptation of provisions in relation to international application. The Patents Rules 2007. EPC – Article 153(1) and Article 153(2), Rules 159 to 163 EPC – Requirements for regional phase entry. At least chapters 6, 13, 14 and 15 of this Manual.
Legal documents: Official sources: The PCT website contains links to, and details of, the PCT and Regulations (www.wipo.int/pct/en/texts). The website also has links to the PCT applicant's guide (as detailed above) for both the international phase and for the national phase and the annexes to the guide. Be guided by your trainer for sourcing paper copies of any of the official sources you may need, these may be available in your office. Take care to use the most up-to-date version of the official material that is in force and current as at Patents Training Manual: Volume 1
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The technical preparations for publication are completed 15 calendar days before the publication due date. In order to prevent publication, the application must be positively withdrawn before the application is prepared for publication. In order to effect withdrawal the IB must be notified of the withdrawal in writing, the withdrawal must be signed by the applicant or his representative and must reach the IB before the technical preparations for publication are complete (i.e. by 15 January 2008). If a request for withdrawal is filed close to the deadline, it is a good idea to mark the correspondence ‘REQUEST FOR WITHDRAWAL – PUBLICATION IMMINENT‘ in order to highlight the urgency of the request. The PCT Applicant’s guide (paragraphs 304-317) gives further details of the publication schedule. 5. As above, publication due 30 November 2007, therefore a request for withdrawal of the application must reach the IB by 15 November 2007. In certain circumstances an applicant may consider postponing publication by withdrawing the priority claim (thus re-computing any dates, such as publication, calculated from the priority date). In this example, withdrawing the priority claim would prevent publication on 30 November 2007. Publication would instead be due 18 months from the filing date i.e. 30 November 2008. Procedurally, the withdrawal of a priority claim is very similar to the process outlined above for question 4 and withdrawal of the application. The withdrawal of the priority claim must be in writing, be signed by or on behalf of the applicant and reach the IB by the same deadline of 15 days prior to the completion of the technical preparations for publication (i.e. by 15 November 2007). A decision to abandon a priority claim should not be taken lightly. The applicant will have to consider the affect on disclosure dates, possible self disclosure if a priority application has already published and any intervening prior art. 6. 20 months for Luxembourg, Uganda; 30 months for China, Japan, Israel (for example)
Chapter review In summary, the PCT provides a cost effective method of pursuing patent protection. While an international application is pending, decisions about where to go ahead and seek patent protection can be taken. In most cases where protection in multiple jurisdictions is required a PCT application is the cheapest option for the applicants. The cost benefits of a PCT application apply even if the intention is to pursue foreign protection in perhaps just two or three territories (e.g. China and Europe, or the US, Japan and the UK). You should now know and understand enough about the PCT to advise an applicant how to use the PCT system to best protect their inventions.
Further study •
• •
290
WIPO website, PCT part of the site and PCT resources section accessible at www.wipo.int/pct/en/index.html. In particular, sections; About the PCT, Legal documents, PCT offices and PCT-SAFE, procedures for electronic filing of applications. PCT Gazette Special Issue (published twice a year by the WIPO). Detailed information, in a concise format, relating to the receiving offices, ISAs, IPEAs and designated offices. Specific study of IPE (detailed provisions covering IPE procedures). Art. 31 to 42, R. 53 to 78 PCT and Part 6 – Administrative Instructions under PCT, PCT International Search and Preliminary Examination Guidelines.
Chapter 16: Filing strategies (PCT)
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Prosecution through to grant
Outline Once the patent application has been filed, in most jurisdictions it is necessary to persuade the patent office that it meets criteria including patentability such that a patent can be granted. Elsewhere in the training manual the legal and procedural requirements are looked at in detail. In this chapter, we review these requirements broadly and place them in the context of the purely practical task of dealing with and overcoming objections from the patent office. This is one of the key areas where advocacy skills – both written and oral – are required.
Learning plan Prerequisites: The main requirement here is to build up as much experience as possible of the day-today practice of dealing with examination reports. Legal documents: It is worth reviewing some IPO hearing decisions and EPO Technical Board of Appeal decisions to see how cases are argued and decided by the patent offices. Trainer’s input: At the outset it may be worth sitting down with your trainer and talking through how they like to structure their responses to examination reports, dealing with both UK and European instances. Syllabus link:
UK Exams: P4 EQEs: Paper B
Time allocated: One to two days.
Learning outcomes By the end of this chapter you should understand how to analyse an examination report, how to report it/discuss it with your client and how to formulate a persuasive response. Substantively, you will see how to deal with IPO and EPO examination reports and we touch on how to handle examination reports from other offices.
17.1 Legal background The legal requirements that the patent application must meet are discussed in detail in chapters 4, 6, 7 and 8, and, in particular, the issues of patentability, including novelty and inventive step and other requirements such as sufficiency, support, conciseness, clarity and unity are dealt with. However, it is useful to recap these and further discuss them, specifically, in the context of the form of objections that the patent attorney is likely to meet and have to overcome in the patent examination procedure.
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The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys (also known as patent agents) in the UK. The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 1800 registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 3000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.
Ensuring that your trainee patent attorney receives the training that they need can be a valuable but time-consuming task. Base your training programme on the newly-updated CIPA Training Manual, and you have a structured framework of study already prepared.
The Patents Training Manual
Features include: Authoritative chapters written by fellow patent attorneys based on their practice experience Encouragement to the trainee to play an active role in the their learning and tie in their studies with practice in the workplace A training log allowing the both the trainer and the trainee to chart and monitor progress in both study and work experience Suggestions as to further study and links to examination syllabi Real-life scenarios to challenge the trainee Volume 1 covers core patenting tasks, Volume 2 will explore post-grant procedures and Volume 3 will consider international patents.
The Patents Training Manual
The Patents Training Manual
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