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CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys

April 2016 / Volume 45 / Number 4

Foundation level examinations Survey of trainee patent attorneys

The Chartered Institute of Patent Attorneys

US: information disclosure statements Finnegan

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Thomas Paine: revolutionary inventor Julian Asquith

Can you meet the trade marks challenge? Alasdair Poore

Leaving the EU is likely to have a negative effect on IP in the UK

Inventor meetings: six things we love Gwilym Roberts

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CIPA JOURNAL

CIPA CONTACTS

Editor Editorial Panel

Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.uk) Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

Andrea Brewster President

Tony Rollins Vice-President

Catriona Hammer Immediate PastPresident

Chris Mercer Honorary Secretary

Committee Chairs Academic Liaison Tony Rollins; Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Jim Boff; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Head of Education Georgina Sear Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt Policy Officer Rebecca Gulbul Executive Assistant Gary McFly Communications Officer Isabelle Wilton Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Shannon McNeil-Smith; Charlotte Russell. Education team: Rebecca Moody; Angelina Smith; Ruth Matthews. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 2 18-28

34-45 UP FRONT

ARTICLES

EDUCATION

Editor’s comment

Trade marks matter! Alasdair Poore

Inventor meetings

Six things we love Gwilym Roberts 34

US: Access to Global Dossier

Lee Davies 5

Council Minutes

Lee Davies Partial Priority Amicus curiae brief in case G 1/15

Privilege

29 30

CIPA's response to WIPO GROUP B+ Questionnaire Foundation level examinations Informals Committee’s comments EU and IP in the UK CIPA position on the UK leaving the EU EQE tutorials Ben Charig Trunki suitcase ruling

Commercialisation of research

Webinar report Steven Charlton

Revolutionary Inventor

Thomas Paine’s patent of 1788 Julian Asquith

Initial Public Offerings

Webinar report Dr Janice Denoncourt

US: Information Disclosure Statements

Finnegan team 46

IPO Business Support

Webinar report Steven Charlton

US: Post-grant proceedings

Finnegan team Chief Executive’s report

Seminar report Asawari Churi

Finnegan team

NEWS

Patentable subject-matter

Institute events

DECISIONS

PERSONAL

Patents

Beck Greener 55 56

Isabelle Wilton

IPO decisions

Barker Brettell LLP EPO decisions

Do you have a client with a great technological invention?

73 73

Letters to the Editor Announcements

Bristows 58

Trade marks and other IP

Bird & Bird LLP

THE PINKS

CIPA press release 31

Overseas report

Amanda R. Gladwin 31

IPO news

Manual of Patent Practice changes Volume 45, number 4

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75 77 92 94

International Recruitment Courses and training Support APRIL 2016

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Trade marks matter!

here is a big change in trade mark law in the EU – this is a (further) reminder when talking to clients, that as from the end of March 2016, it is now the European Union Intellectual Property Office (with some potential for confusion over whether it also has responsibility for patents, especially as the European Unitary Patent is about to enter the stage1); and the European Union Trade Mark. In addition the changes in European Union trade mark law which came into force last month2 include one major provision which directly reflects CIPA’s engagement with EU trade mark law in the IP Translator case. It is not often that CIPA’s involvement, frequently active, has had such a direct effect on the law – in the academic world this would be seen as “Impact” – something referred to in more detail in the report on the 24 February webinar on “Commercialisation of research – the role of IP in technology transfer and start-ups”. [See page 71.] There were times when Richard Ashmead and Michael Edenborough QC3, who were the principal architects behind seeking a mechanism to clarify the law, and who both provided invaluable support to CIPA on a pro bono basis, might well have regretted that they ever started it, not least as the whole issue of the impact of IP Translator seemed to develop deep political ramifications. However, we should acknowledge that Richard and Michael’s desire to see the law clarified was entirely justified. It ensures that those who examine the trade mark register will be able to rely on words in the register: that the goods and services specified in the trade mark registration are actually those covered by 2

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the registration (and obviously similar goods and services). That is, that the words “mean what they say”, rather than have a meaning determined by an arcane rule which depended on when the trade mark application was filed. And incidentally IP Translator allowed the Office practice to become compliant with the EU’s international obligations under the Trade Mark Law Treaty. The effect of the case and the consequential amendment to the law is of course that now trade mark proprietors have some work to do, and in a limited period of time until 24 September 2016. They have until then to correct their specification of goods and services, if they had actually intended the special formula which caused all the trouble, to have applied to their application and that they had used the class heading to include all the goods and services in the alphabetical list of goods and services. If the trade mark application cites all the goods and services in the class heading, then, even if there are additional goods and services listed, proprietors may “correct” this, by adding specific goods and services from the contemporary Nice Classification, to their existing specification. Trade marks also feature in our regular report from the team at Bird & Bird on trade marks, for which many thanks to that team too. For those attorneys who like an intellectual challenge, we have included a self administered quiz at the end of this editorial: Can you work out which trade marks were similar? The definitive answers (given by the General Court and in UK proceedings) can be found in the Bird & Bird report on pages 58-66. The Bird & Bird report also shows just why litigation skills, and therefore

Alasdair Poore

the Litigation Certificate, are important. The report again reveals something that features with extraordinary regularity: how trade mark cases before the Boards of Appeal and the General Court fail because of lack of properly prepared evidence. In Benelli v OHIM (T170/13, T171/13), the General Court observed that: “Most of the documents produced by Benelli were devoid of evidential value in so far as they were undated or bore a date before or after the relevant period, or did not refer to the marks at issue, or were undated photographs which could not be cross-referenced with other documents (such as product catalogues or lists of references)”; and in Benelli v OHIM T169/13 that “the mere fact that Benelli submitted more than 40 documents did not, of itself, establish that the earlier marks were well known. The value of the evidence depended on the quality and relevance of the documents rather than the volume. Furthermore, evidence drafted in a language other than the language of the proceedings could not be taken into account”. Litigation skills matter – something which will also be very relevant to the Unitary Patent Court.

The challenge So can you meet the trade marks challenge? Patents are not the only area in intellectual property law where “claims” matter. In the Trunki4 case, in the Supreme Court, Lord Neuberger drew attention to Dr Schlötelburg’s observations in relation to registered designs: “As Dr Martin Schlötelburg, www.cipa.org.uk

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EDITORIAL

Opposed / challenged mark

TRADE MARKS MATTER

Opposing / challenger’s mark

(Spanish mark)

LEHAN. C

Notes

In relation to the first pair of marks, readers will recall the new guidance on black and white marks (see August / September [2015] CIPA 9). The answer to the quiz should give readers some comfort that colour marks may at least protect against black and white use.

LEMA (Spanish mark) STONE

This raises the question that has always puzzled me: if Mark B is similar to Mark A, does it necessarily follow that Mark A is similar to Mark B? Answers (after reflecting on the “Glee” case (page 63 of this issue)), in letters to the Editor please.

CASTILLO DE LIRIA (for wines)

MINI WINI

KICKTIPP

KICKERS

Glee (as the name of a musical comedy TV drama series)

Class 41: “Live comedy services; night club and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings” It seems to be a bad 12 months for car 3D trade marks (see also Jaguar Land Rover v OHIM (Evoque 3D mark), Case T-629/14 (25 November 2015) reported at March [2016] CIPA 60, although the appeal was allowed for vehicles for locomotion by air and water! A window was possibly left open for registration of photographic examples of the vehicle, based on evidence of distinctiveness see also: http://tinyurl.com/zalo9bw for a further interesting discussion)

Volume 45, number 4

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INFORMALS

EXAMINATIONS

Foundation level examinations Readers may remember that IPReg launched a “Consultation on simplifying and modernising the examination system for qualifying as a patent attorney” in late 2013. Part of that consultation was a proposal to: “[r]equire all trainee patent attorneys to pass an accredited examined Foundation level course and no longer accredit Foundation level examinations which are provided independently of corresponding accredited courses” [emphasis added]. IPReg received lots of responses to its consultation, including a detailed response from the Informals (see Yellow Sheet blog entry posted on 5 March 2014). The IPReg Board then commissioned a report to inform IPReg’s thinking about next steps. IPReg received the report in summer 2015 and shared a paper copy of the report with the Informals Committee in November 2015. IPReg also gave the Committee a briefing note providing profession-focused context for the report (see Yellow Sheet post of 8 January 2016 for more information). IPReg invited the Informals Committee to comment on the report. Set out below are the comments the Committee sent IPReg after conducting a survey of trainee patent attorneys. The results of the survey (which are reproduced on page 21) were also sent to IPReg.

Informals Committee’s comments on report commissioned by IPReg Throughout these comments, the term “Foundation qualification” means the qualification achieved by an individual who passes either (i) all of the Foundation Certificate examinations run by the Patent Examination Board (PEB) or (ii) one of the postgraduate IP courses provided by Bournemouth, Brunel and Queen Mary universities. Introduction The Informals Committee is pleased to have been invited to comment on the UCL/Institute of Education (UCL/IoE) report that IPReg commissioned following the “Consultation on simplifying and modernising the examination system for qualifying as a patent attorney”. The Committee hopes that IPReg will involve the Committee in further discussions about the Foundation qualification, so that the views of trainee patent attorneys, as principal users of the qualification system, can be represented in such discussions. The Committee welcomes a review by IPReg of the Foundation qualification 18

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for patent attorneys. In particular, the Committee welcomes a review which might lead to improvements in the standards of the Foundation qualification. The Committee hopes that any such improvements would give patent attorneys and the clients they serve even greater faith in the attorneys’ abilities to do their jobs effectively. Whether or not improvements are made to the Foundation qualification, the Committee firmly believes that the Foundation Certificate examinations run by the PEB should be retained, as set out in detail in the Committee’s response dated 5 March 2014 to IPReg’s consultation. The following comments on

the UCL/IoE report are intended to be consistent with that belief. The comments are also intended to be constructive. The comments are not intended to be exhaustive, as the report is 35 pages long.

The report and the briefing note In the Committee’s opinion, the report provides a useful insight into academics’ current thinking about learning practices. The report describes how approaches to learning have changed in recent years, which helps the reader imagine how one might change the Foundation qualification to be more consistent with modern practices. www.cipa.org.uk

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INFORMALS

What the report is lacking, from the Committee’s perspective, is a clear statement about exactly what (if anything) is wrong with the Foundation qualification (in particular the Foundation Certificate examinations) and a corresponding recommendation for what should be done about it. The Committee also has the following observations on some statements made in the report and the accompanying briefing note.

Briefing note On page 1 of the briefing note, it is stated that: “IPReg can be assured about the teaching and assessment processes in HE (including the PEB) as these are assessed independently by the national Qualification Assurance Agency (QAA). The exam-only route does not at present have any such QAA monitoring of what training the trainees may receive or what is taught.” The Committee finds these two sentences confusing. The first appears to state that the teaching and assessment processes of the PEB are assessed by the QAA, while the second sentence appears to state that they are not (the “exam-only route” referred to is provided by the PEB). The Committee would be grateful for clarification of what was meant. On page 1 of the briefing note, it is also stated that: “Further, the exam-only system for patent attorneys is an outlier compared to other legal professions.” The existence of an outlier can sometimes suggest that a review might be appropriate. However, it is not on its own an indication that change is required. An objective and comprehensive comparison of the outcomes of the different assessment systems would need to be conducted before anything conclusive could be said about the “outlier” nature of the exam-only system for patent attorneys.

Report On page 4 of the report, it is stated that: “The majority of trainee patent attorneys (80%) undertake an accredited course Volume 45, number 4

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at either Queen Mary’s, Brunel or Bournemouth universities. The remaining participants (N=25) sit the exam-only route. The provision at Bournemouth is delivered online.” The Committee understands from IPReg’s letter of 18 November 2015 to the Informals Honorary Secretary that the quoted number “N=25” of candidates sitting Foundation Certificate examinations is based on the 2012 data from the IPReg consultation document. However, there has been a significant increase since then in the number of candidates taking the Foundation Certificate examinations, with, on average, 36 candidates for each of the 2013 Foundation examinations, 38 for the 2014 Foundation examinations, and 52 for the 2015 examinations. This increase suggests that some firms are moving towards the Foundation Certificate examinations as a route to part-qualification, and perhaps valuing them more than the university courses. Indeed, the Committee notes that over 40% of those who responded to the Informals Committee’s survey discussed below had taken or planned to take the Foundation Certificate examinations. In view of the larger, and increasing, number of candidates taking the Foundation Certificate examinations since 2012, it is hard to consider it a “minority route”. Furthermore, for trainees who are not based in or within commuting distance of the South East, the Foundation Certificate examinations represent the only sensible option for achieving the Foundation qualification (the Bournemouth course is not delivered entirely online. It requires attendance at Bournemouth University on three weekends and for the examination, with additional support through distance learning1. It is therefore not a practical option for all trainees). Removing the Foundation Certificate examinations option would therefore, as noted in the Committee’s response dated 5 March 2014, make the patent attorney profession increasingly London-centric – to the detriment not only of would-be attorneys who are forced to move to London or nearby 1. https://www1.bournemouth.ac.uk/study/ courses/pg-cert-intellectual-property

to get a trainee position but also of people seeking patent attorneys’ services in the rest of the country.

Survey, January 2016 The Committee inferred from the references in the report and the briefing note to “formative feedback” (e.g. on report page 1), “formative assessment” (e.g. on report page 2) and “exam-only route” (e.g. on report page 1) that the absence of formalised “formative assessment” from the Foundation Certificate examinations is a cause of concern for the authors of the report and IPReg. The Committee therefore decided to ask Informals members what they thought of the idea of introducing formative assessment into the Foundation Certificate examinations. The Committee devised a short survey on the topic and invited Informals members to reply. The survey questions and the responses the Committee received are summarised in the attached annexe [see page 21]. Since neither the report nor the briefing note included a definition of “formative assessment”, the Committee included the following words in the instructions to survey respondents: “‘Formative’ or ‘continuous’ assessment is assessment which gives the learner feedback during the learning process. Essays, presentations, group discussions and modular written or oral tests can be used for formative assessment.” That wording is based on the Committee’s understanding of “formative assessment”. The Committee would, however, welcome a definition from IPReg. The survey results [page 21] come with the usual caveats about anything statistical and anything opinion related. Although over 200 people began filling in the survey, not all of them answered all of the questions. Furthermore, although the survey was sent to all “student” and “associate” members of CIPA via email and advertised several times on the Committee’s blog, the Committee cannot guarantee that the respondents constitute a representative sample of all trainee patent attorneys in the UK. The survey questions were also, inevitably, imperfect. The results of the survey should APRIL 2016

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Post-grant proceedings The US Court of Appeals for the Federal Circuit begins to weigh in on post-grant proceedings. By the Finnegan team.

ince June 2015, the Federal Circuit has issued 19 new opinions in appeals from the US Patent Trial and Appeal Board (Board) in inter partes review (IPR) and covered business method patent review (CBM) proceedings. These opinions, which provide guidance on procedural as well as substantive issues, may come as a welcome change to practitioners in view of the Federal Circuit’s early trend of affirming the Board under “Rule 36” without writing a detailed opinion. The Federal Circuit continues to affirm the Board at relatively high rates, often deferring to the Board’s interpretation of its regulations, prior art at issue before the Board, and grounds of unpatentability being asserted. However, in several more recent opinions, the Federal Circuit has started to weigh in on several key issues surrounding the new AIA patent trials, including appellate review of institution decisions, the constitutionality of IPR proceedings, and the burdens of proof for petitioners and patent owners.

Appellate review of institution decisions In Achates Reference Publ’g, Inc. v Apple Inc., the Federal Circuit reemphasized that under 35 U.S.C. §314(d), it lacks jurisdiction to review the Board’s decision to institute IPR proceedings, even if that institution decision is based on the Board’s assessment of the petitioner’s time-bar under 35 U.S.C. §315(b), and “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.”1 In Achates, the Board instituted IPRs against two patents and held all instituted claims unpatentable.2 On appeal, Achates argued that the Board’s decisions were outside its statutory authority because Apple’s petitions were time-barred under §315(b).3 In response, Apple argued that the Federal Circuit 36 CIPA JOURNAL

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lacked jurisdiction over the appeal under §314(d) because the issue of whether the petitions were time-barred went to the propriety of the Board’s institution decisions, which are not appealable.4 In reaching its holding, the Federal Circuit first addressed the relevant statutes.5 The Federal Circuit explained that §315(b) provides that: “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The Federal Circuit also noted that §314(d) provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable” while 35 U.S.C. §141 provides that the Board’s “final written decision” may be appealed to the Federal Circuit. The Federal Circuit then addressed its own precedent regarding its interpretation of §314(d).6 In St. Jude Med., Cardiology Div., Inc. v Volcano Corp., the Federal Circuit held

Editor’s summary Inter partes review proceedings are being shown to be a powerful tool in weeding out invalid claims in US patents, with the result that patentees are intent on seeking ways around the decision to institute review proceedings (permit the proceedings to progress to a full review). The Finnegan team review the almost entirely unsuccessful, but imaginative attempts by patent owners to have procedural aspects of IPR decisions reviewed.

www.cipa.org.uk

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US UPDATE

that it lacked jurisdiction to review the Board’s decision denying institution, reasoning that its appellate review was statutorily limited to final written decisions under §141 and that §314(d) specifically precludes appeals of institution decisions.7 In In re Dominion Dealer Solutions, LLC, the Federal Circuit also held that mandamus is not available to take an interlocutory appeal of a non-institution decision primarily because §314(d) precludes appeals of institution decisions.8 And in In re Cuozzo Speed Techs., LLC, the Federal Circuit held that even after a final written decision, the Board’s institution decision is not reviewable.9 In Versata Dev. Grp., Inc. v SAP America, Inc., however, the Federal Circuit held that it did have jurisdiction to review the Board’s determination of whether a patent was a covered business method patent – a determination the Board makes at institution.10 The Federal Circuit reasoned in Versata that this determination was uniquely and fundamentally related to the Board’s ultimate jurisdictional authority to invalidate only covered business method patents in CBM proceedings and therefore reviewable.11 After reviewing its precedent, the Federal Circuit in Achates then considered the present issues.12 The Federal Circuit reasoned that the time-bar of §315(d) does not impact the Board’s authority to invalidate patent claims.13 Rather, it merely bars certain petitioners from challenging claims.14 The Federal Circuit then found this case more similar to Cuozzo, where a proper petition could have been drafted, and dissimilar to Versata, where no petition could have brought the patent within the Board’s jurisdiction.15 The Federal Circuit explained that the time-bar of §315(d) was not a “defining characteristic” of the Board’s “authority to invalidate” because compliance with §315(d) does not itself give the Board the authority to invalidate a patent.16 The Federal Circuit also rejected Achates’ argument that the Board’s reaffirmance of its time-bar assessment in the final written decision indicated that it was part of the final written decision and thus appealable.17 The Federal Circuit reasoned that “the Board is always entitled to reconsider its own decisions” and that “reconsideration of the time-bar is still fairly characterized as part of the decision to institute.”18 With this legal reasoning, the Federal Circuit dismissed the appeal.19

Constitutionality of IPR proceedings MCM Portfolio LLC v Hewlett-Packard Co: IPR proceedings do not violate Article III or the Seventh Amendment In MCM Portfolio LLC v Hewlett-Packard Co., the Federal Circuit held that IPR proceedings do not violate Article III or the Seventh Amendment of the US Constitution.20 The Board instituted an IPR of four challenged claims, ultimately holding all instituted claims unpatentable.21 On appeal, MCM argued that the Board improperly instituted the IPR proceeding because more than one year before Hewlett-Packard’s petition, MCM filed a complaint alleging infringement of the challenged patent Volume 45, number 4

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by a third party, which it argued was in privity with HewlettPackard.22 Citing Achates, the Federal Circuit rejected MCM’s argument, holding that review of whether the Board properly instituted an IPR proceeding was precluded by §314(d).23 More interestingly, MCM also argued that IPR proceedings are unconstitutional because any action revoking a patent (and the property rights that it provides) must be tried in a US federal court with the protections of US due process.24 In support of its argument, MCM relied on the US Supreme Court’s holding in McCormick Harvesting Mach. Co. v C. Aultman & Co.25 In McCormick, a patent owner asserted infringement of several patent claims that the USPTO rejected as unpatentable in a separate reissue application filed by the patent owner.26 As a result of that rejection, the patent owner withdrew the reissue application (leaving the original patent as is), but the district court nonetheless held that there was no infringement because the Patent Office considered the claims unpatentable.27 The Supreme Court overruled the district court, holding the original patent claims were not invalid and that the rejection of the claims was a nullity after the patent owner withdrew the reissue application. The Supreme Court relied on the thencurrent reissue statute stating that “surrender [of the original patent] shall take effect upon the issue of the amended patent,” and that “until the amended patent shall have been issued the original stand[s] precisely as if a reissue had never been applied for.”28 According to the Supreme Court, without statutory authorization, a mere “attempt to cancel a patent upon an application for reissue… would be to deprive the applicant of his property without due process of law, and would be in fact an invasion of the judicial branch of the government by the executive [branch through the Patent Office].”29 Rejecting MCM’s argument, the Federal Circuit held that McCormick did not forbid Congress from otherwise granting the Patent Office explicit authority to correct or cancel an issued patent, which Congress did by creating reexamination and postgrant proceedings.30 The Federal Circuit reasoned that: “Congress, acting for a valid legislative purpose to its constitutional powers under Article I, may create a seemingly ‘private’ right that is so closely integrated into a public regulatory scheme as to be a matter appropriate for agency resolution with limited involvement by the [US federal] judiciary.”31 MCM also argued that it had a right to a trial by jury as provided for in the Seventh Amendment of the US Constitution, which was not satisfied by IPR proceedings.32 Rejecting this argument, the Federal Circuit reasoned that the Supreme Court has separately upheld: “congressional power to entrust enforcement of statutory rights to an administrative process or specialized court of equity free from the structures of the Seventh Amendment.”33 APRIL 2016

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US UPDATE

POST-GRANT PROCEEDINGS

held that the USPTO has not abused its discretion in choosing adjudication over rulemaking.102 The Federal Circuit also held that the Board’s interpretation of §42.20(c) as requiring a patent owner to show that a proposed substitute claim is patentable over the prior art of record in the proceeding was not erroneous or inconsistent with the regulation or governing statute.103 The Federal Circuit reasoned that nothing in the regulations or governing statute precludes the Board from rejecting a substitute claim on the basis of prior art that is made of record but not cited against the original claim in the institution decision.104 The Federal Circuit also reasoned that once the Board grants a patent owner’s motion to amend, the substitute claims are not subject to further examination and are directly added to the patent. The Federal Circuit considered this to weigh in favour of the Board considering new prior art raised for the first time by a petitioner in response to a patent owner’s motion to amend.105 Notably, however, the Federal Circuit declined to embrace the entirety of the Board’s holding in Idle Free.106 In Idle Free, the Board required the patent owner to prove that its proposed substitute claims were patentable over the prior art of record, and over prior art not of record but known to the patent owner.107 The Federal Circuit explained that Microsoft did not “call on [it] to decide whether every requirement announced by the Board in Idle Free constitutes a permissible interpretation of the [Patent Office’s] regulations” and expressly noted that its opinion did not address “Idle Free’s requirement that the patentee to show patentable distinction over all ‘prior art known to the patent owner.’”108

time and effort in preparing robust petitions and preliminary responses before the Board makes its institution decision – because there may be little, if any, review available on appeal for adverse decisions. Petitioners involved in co-pending district court litigations should file petitions as soon as practical after being served with a complaint because subsequent petitions, if a first petition is completely or partially denied, may be barred under §315(b). Patent owners are also at significant risk because approximately 75% of the claims the Board institutes review of are ultimately held unpatentable.111 Moreover, the still relatively new IPR and CBM proceedings are likely to continue without action by Congress, as the Federal Circuit upheld the constitutionality of these proceedings. Judge Newman’s dissent, however, echoes practitioners’ due process concerns about the propriety of putting administrative patent judges “in the position of defending their prior decisions to institute the trial.” While patent owners may generally be more concerned about the same panel of judges assessing the patentability of the claims after that panel already determined that at least one of the claims is “more likely than not unpatentable”, petitioners also share due process concerns. In particular, once the Board issues a final written decision upholding the patentability of a claim, a petitioner is estopped from asserting in any civil or administrative proceeding that:

Conclusions

Thus, if the Board declines to institute review of certain grounds because, for example, it considers them redundant of the instituted grounds, a petitioner may be estopped from ever raising those grounds again. And because non-instituted grounds are never fully evaluated and are not subject to judicial review, such an application of estoppel can raise concerns about the denial of due process where a petitioner may never have its day in court with respect to the non-instituted grounds. Such concerns, however, could be resolved when the courts interpret “raised or reasonably could have raised.” The Federal Circuit has also afforded the USPTO wide latitude in interpreting its regulations, even declining to disturb the Board’s practice of interpreting its regulations through adjudication, rather than rulemaking. Accordingly, petitioners and patent owners should watch closely all Board decisions interpreting these regulations, whether precedential, informative, or otherwise. Stay tuned as we continue to report on this dynamic area of US patent law.

Recently, the US Supreme Court has been actively reviewing patent cases. For example, the Supreme Court has revisited subject-matter eligibility under 35 U.S.C. §101 four times since 2010.109 And in January, the Supreme Court granted Cuozzo’s petition for writ of certiorari in Cuozzo Speed Techs., LLC v Lee, to consider the Board’s use of the broadest reasonable interpretation standard for construing claims in the new AIA trials as well as the Federal Circuit’s jurisdiction to review institution decisions.110 Thus, although the Federal Circuit has started to weigh in on some of the issues arising in the new AIA trials, threshold issues such as a patent owner’s burden to prove patentability of proposed amended claims may not be finally resolved until they are decided by the US Supreme Court. Until then, however, institution decisions are largely immune from judicial review, IPR proceedings are constitutional, and a patent owner bears the burden of showing patentability of proposed amended claims over the prior art of record in a proceeding. Indeed, the Federal Circuit has repeatedly held that Board institution decisions are shielded from judicial review. Only in rare cases where the Board lacks the ultimate authority to invalidate a patent does the Federal Circuit consider it has jurisdiction to review an institution decision. This trend warrants petitioners and patent owners spending the requisite 42 CIPA JOURNAL

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“the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”112

Composed on this occasion by Anthony C. Tridico, Timothy P. McAnulty, and Kassandra M. Officer. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice. www.cipa.org.uk

13/04/2016 09:08:10

Information Disclosure Statements USPTO proposes new framework for Information Disclosure Statements. By the Finnegan team.

S patent applicants are all too familiar with the duty to disclose and those pesky information disclosure statements (IDSs) that go along with it. In the early stages of prosecution, it is fairly easy and relatively inexpensive to file IDSs. As prosecution proceeds, however, and the submission of references has the potential to prolong examination, the US Patent and Trademark Office (USPTO) requires the applicant to pay fees or, in some cases, make certifications about the information being submitted. For example, if an applicant, late in prosecution, receives an office action in a related foreign application that cites new, never-before-cited references, the applicant can make a certification that such new information was previously unknown to the applicant and submit those references without a fee. This regulatory framework encourages prompt filing of information. Certifications, however, are not without risk and may raise inequitable conduct red flags down the road in litigation. Applicants may soon have the option to trade making any certifications by paying higher fees. The USPTO recently announced that it is considering eliminating certification requirements when submitting certain IDSs.1 Under the current system, applicants are allowed to submit a statement with a certification that complies with 37 C.F.R. §1.97(e) instead of paying the required fee during the relatively early stages of prosecution.2 Applicants are required to make a certification and pay a fee at later stages of prosecution.3 And the QPIDS program that allows an IDS to be submitted after prosecution has ended and the issue fee is paid has even further requirements.4 Volume 45, number 4

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An overview of the current IDS framework, as it applies to national applications, is provided in Figure 1. Under 37 C.F.R. §1.97(e), the applicant must certify: 1. each item of information contained in the IDS was first cited in a communication from a non-US patent office in a counterpart non-US application no more than three months prior to the filing of the IDS; or 2. no item of information contained in the IDS was cited in a communication from a non-US patent office in a counterpart non-US application, and, to the knowledge of the person signing the certification after making a reasonable inquiry, no item of information contained in the IDS was known to any individual with a duty of disclosure more than three months prior to the filing of the IDS.10

Editor’s summary Attorneys are familiar with the requirements for Information Disclosure Statements in the US – and complain about the onerous requirements. The Finnegan team outlines the proposed simplification, meaning that fees will be payable for any IDS after the first official action or three months, but that there will be no requirement for a certificate confirming that the relevant prior art was not known until three months prior to the IDS being filed. A welcome change, they say.

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13/04/2016 08:18:55

Revolutionary Inventor Thomas Paine was a political activist, philosopher, political theorist, revolutionary and an inventor. Julian Asquith looks at his patent for an iron bridge and makes some observations on current patent law.

homas Paine was the most widely read writer of his age on both sides of the Atlantic. Having inspired the rebels in America to declare independence from Britain in 1776, Paine returned to Europe in 1787 to seek funding for his idea of an iron bridge. Bridges of this era were still largely constructed in stone and wood. He expected to be gone from America for about a year, but one year was to turn into 15 years. His efforts to exploit his invention took 15 times longer than expected, lead him to the French Revolution, and almost cost him his life. Let that be a lesson for budding inventors! Paine is also credited with making the world’s first smokeless candle and developing steam engines, but his iron bridge appears to be his best-known invention, and the only one patented. Before discussing the patent, I will note a few more historical points of interest. In the offices of my own firm, Marks & Clerk, there hangs a photograph of Thomas Edison which was given by Edison to Lord Marks in 1905. Lord Marks was the founder of Marks & Clerk and was also a friend and colleague of Thomas Edison, a prolific American inventor who held 1,093 patents in his own name, and of course developed the electric light bulb. Thomas Edison was a huge admirer of Thomas Paine, and wrote: “I have always regarded Paine as one of the greatest of all Americans… It was my good fortune to encounter Thomas Paine’s works in my boyhood… Paine educated me, then, about many matters of which I had never before thought. I remember, very vividly, the flash of enlightenment that shone from Paine’s writings… My interest in Paine was not satisfied by my first reading of his works. I went back to them time and again, just as I have done since my boyhood days.”

Such was his admiration of Paine, that when the construction of the Thomas Paine Memorial Building and Museum began in New York in 1925, Thomas Edison helped to turn the first shovel of earth for the building. 46 CIPA JOURNAL

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Another admirer of Thomas Paine was Bertrand Russell, who wrote the following account of Thomas Paine’s involvement with iron bridges (in which I have highlighted references to bridges): “He turned his attention from politics to engineering and demonstrated the possibility of iron bridges with longer spans than had previously been thought feasible. Iron bridges led him to England… He had a large model of his iron bridge set up at Paddington; he was praised by eminent engineers and seemed likely to spend his remaining years as an inventor. However, France as well as England was interested in iron bridges. In 1788, he paid a visit to Paris to discuss them with Lafayette and to submit his plans to the Académie des sciences, which,

Introduction & Editor’s summary Thomas Paine is well known for the roles he played in both the American and French revolutions. Napoleon himself claimed to sleep with a copy of Paine’s Rights of Man under his pillow. Less well known is that Paine was also an inventor, who obtained a patent in 1788 for his idea of a single span iron bridge. Julian Asquith explains a little of Paine’s background, and not just something about the patent, but also something of the effect of Paine’s invention on the French Revolution. Julian makes some observations on current patent law (although omitting to say that, had the patent been before the USPTO now, they might have had objections to it as being merely covering – not claiming, as there were not claims – an aspect of the laws of nature) and he provides some lighthearted advice on dealing with clarity objections.

www.cipa.org.uk

12/04/2016 19:01:29

ARTICLE

Paine’s effect on the French Revolution would not have been felt had it not been for his invention of an iron bridge.

after due delay, reported favourably. When the Bastille fell, Lafayette decided to present the key of the prison to Washington and entrusted to Paine the task of conveying it across the Atlantic. Paine, however, was kept in Europe by the affairs of his bridge. He wrote a long letter to Washington informing him that he would find someone to take his place in transporting ‘this early trophy of the spoils of despotism, and the first ripe fruits of American principles transplanted into Europe’. He goes on to say that ‘I have not the least doubt of the final and complete success of the French Revolution’, and that ‘I have manufactured a bridge (a single arch) of one hundred and ten feet span, and five feet high from the cord of the arch’. For a time, the bridge and the Revolution remained thus evenly balanced in his interests, but gradually the Revolution conquered. In the hope of rousing a responsive movement in England, he wrote his The Rights of Man on which his fame as a democrat chiefly rests.” Paine’s effect on the French Revolution would not have been felt had it not been for his invention of an iron bridge. Bertrand Russel notes that Paine “was kept in Europe by the affairs of his bridge.” As noted by Bertrand Russell, a large model of Paine’s iron bridge was built on land in Paddington, London to demonstrate the concept. In 1790, Paine told his friend George Washington – who was at the time the first President of the United States – that a site had been found in London: a field (actually a bowling green) on the Marylebone Road, a short distance from Paddington Station. By September 1790 it was finished. Unfortunately, Paine failed to obtain the investment needed to build a bridge over the Thames. However, using Paine’s ideas, the Wearmouth Bridge was built over the River Wear in Sunderland in 1796, which at the time was the longest bridge in the world at 240 feet. The Wearmouth Bridge was not the first iron bridge. It appears to have been the second, built after Volume 45, number 4

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the famous span at Ironbridge, but was over twice as long with a nominal span of 240 feet, and only three-quarters the weight. This was presumably as a result of Paine’s “spider web” concept described in his patent, and discussed below.

Thomas Paine’s patent of 1788 Although I have more than 25 years’ experience in patents, I am not accustomed to reading patents from the 1700s. The first thing that struck me on reading Thomas Paine’s Patent No 1667 dated 1788, was the total lack of any claims. Claims are a relatively recent innovation. Apparently patents in many European countries did not contain claims before the 1970s, whereas in the US claims have been required since 1836. In the UK, until 1852 patents were granted upon applications which specified only the title of the invention. No obligation to file a specification arose until after the patent was sealed, at which point a period was allowed for furnishing a description. This appears to have been the case for Thomas Paine’s patent. If the lack of claims in Thomas Paine’s patent was disconcerting, then the lack of any drawings was perhaps more disconcerting. At first I thought some error had been made in not providing drawings. I asked my firm’s information services department if they could help in tracking down some drawings. They diligently contacted the British Library, searched the Internet, and even contacted the Thomas Paine National Historical Association in America, but no drawings were found. The specification makes no reference to drawings, and it seems drawings never formed part of the specification. Of course, even today there is no requirement for a UK or EP application to contain drawings. Under section 15 of the Patents Act 1977 and EPC Rule 40, the minimum requirements to obtain a filing date do not include drawings. In contrast, current guidance from the USPTO states that, “The drawings must show every feature of the invention as specified in the claims”.

The heading of the original patent dated 1788.

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