CIPA Patents Training Manual by CIPA Journal

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 3,000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters.

The Patents Training Manual

The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK.

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.

2022 Edition

Features include: • Authoritative chapters written by fellow IP professionals 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

The Patents Training Manual

Price: £75 I S B N 978-0-903932-72-1

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Editors: Gwilym Roberts and Debbie Slater

2022 Edition

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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. © 2022. 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 and 2022 Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20 – 23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-72-1 Printed and bound by Hobbs the Printers Ltd – www.hobbs.uk.com Cover design by Jonathan Briggs Contact the editors at editor@cipa.org.uk

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The Patents Training Manual Contents

Introduction........................................................................................................................................v Guidance for trainers......................................................................................................................ix 1. History of patents and the patent profession...................................................................... 1 2. The role of the trainee............................................................................................................... 9 3. Business practice......................................................................................................................19 4. Legislative structure.................................................................................................................61 5. Sources of information............................................................................................................81 6. Patentability: general issues.................................................................................................99 7. Patentability: specific issues................................................................................................ 119 8. Other requirements for grant.............................................................................................. 145 9. Inventorship: ownership of inventions… ......................................................................... 163 10. Infringement and claim interpretation.............................................................................183 11. Structure of a patent application..................................................................................... 209 12. Drafting a patent application..............................................................................................217 13. Filing strategies: an introduction......................................................................................233 14. Filing strategies (UK)...........................................................................................................249 15. Filing strategies (EP).............................................................................................................271 16. Filing strategies (PCT)......................................................................................................... 291 17. Prosecution through to grant.............................................................................................321 18. Commercialisation of intellectual property................................................................... 347 19. Introduction to additional topics......................................................................................363 Index................................................................................................................................................. 371 Training log..................................................................................................................................... 377

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INTRODUCTION Purpose and structure of The Patents Training Manual By Debbie Slater (CPA, Prevayl Ltd) and Gwilym Roberts (CPA, EPA, Kilburn & Strode)

his manual has been devised to act, primarily, as the focus for dialogue between the trainee patent attorney and those responsible for their training and development. It may, for example, form part of the organisation’s training plan for the employee. Whilst we hope that this manual be seen as a useful primer and source of information, trainees should ensure that they read and consult with other books and sources of information available. There are many excellent books on the market and some of these are referenced in this manual. It is hoped that, in providing an overview of the main areas of practice for patent attorneys, it approaches this in a practical and pragmatic way with a focus on the real world of the patent attorney profession. Although mention is made of relevant qualifying examinations of the Patent Examination Board and the European Qualifying Examination (EQE), this manual should not be used as the only source of information in preparation for sitting these papers. For more information about these examinations, please refer to https://www.cipa.org.uk/patent-examination-board and https://www.epo.org/learning/eqerespectively. The manual is split into a number of chapters, each one dealing with a different topic. The chapters do not necessarily have to be read in the order that they are presented but we would suggest that the first five chapters be read first.

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Each chapter outlines the material to be covered, the trainee’s learning plan including any pre-reading and the input required by the trainer, and the learning outcomes that are expected. There is also a link to the relevant examination papers and to the IPReg Competency Framework (see https://ipreg.org.uk/sites/ default/files/IPReg-Skill-Set-Table-Patent_FINAL1.pdf). Each author then explores the chapter topic. At the end of the chapter, review questions and scenarios (where appropriate) are given along with an indication of how the trainee can further extend their knowledge in this particular area. An additional feature is the training log, which has been included to allow you to chart your progress and provide suggestions as to further activities to extend your knowledge and experience. If appropriate to your place of work, this can be used to prompt further dialogue between the trainer and the trainee. Various Acts and Conventions are named according to personal taste in the different chapters, for example the UK Patents Act can be called by its bare name or be dated 1977 or 2004. To make things clear, we use the abbreviation ‘UKPA’ to indicate that we are referring to the most recent version. The EPC 1973/2000/ Revision Act is similarly abbreviated ‘EPC’ to refer to the latest version. Similarly, referencesto the PCT and the UK Patents Rules mean the latest version. IPO means the UK Intellectual Patent Office. There is a constant churn of change of laws and procedures and the Training Manual is as up to date as publication deadlines permit and takes into account

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HISTORY OF PATENTS AND THE PATENT PROFESSION By Debbie Slater (CPA), Prevayl Ltd *

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. Guidance for the trainer: If you are in private practice, discuss the company’s own history in relation to the development of the patent profession. If you are in industry, discuss how patents have featured in the history of your company. Syllabus link: None. IPReg Competency Framework link: None. Time allocated: Two or three hours.

Learning outcomes By the end of this chapter you will be able to outline the background of our profession; these skills will allow you to appreciate just what a great job it is.

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THE ROLE OF THE TRAINEE By Debbie Slater (CPA), Prevayl Ltd *

Outline This chapter prepares the trainee in the basics of dealing with their new working environment. It outlines the roles of the trainee and trainer and some of the key considerations in making sure the trainee role is productive and fulfilling and of mutual benefit for both trainee and trainer.

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 IPReg Rules of Professional Conduct and the Practice Development Guidance.1 If you work in private practice, make sure you know your firm’s standard terms of business and any HR policies. If you work in an industry environment, become familiar with your corporate structure, reporting lines and internal processes. Legal documents: There are no legal documents required to study this chapter. Guidance for the trainer: 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 them to quickly grasp the essential context within which we all work. For those of you working in industry, whilst there will not be a client in the traditional meaning, the term client should be construed to mean those with whom you work and to whom you provide services. Involve your trainee 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 organisation (especially accounts and formalities departments) to see the way your systems operate and how the various functions interact. Stress from the outset the need to produce, as soon as possible after induction, work which reflects a real contribution to your organisation and which is produced in a way that generates goodwill inside and outside the business. If you have local or regional groups of trainees such as the Informals or know of similar self-help units encourage your trainee to make contact with them.

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Work-based example (continued)

ONE WAY

AN ALTERNATIVE

We refer now to your trade mark VERBOSITY and confirm that we have put in hand a search through such official records as are currently made available to the public at the Trade Marks Registry to ascertain whether or not this is available for use and/or registration within the UK. We cannot of course give any commitment as to the length of such searches nor as to their reliability and nor can we accept any express or implied guarantee of such. We shall report to you in this respect in due course and hopefully at an early date.

On the branding front, as agreed, Terry is searching to see whether your word VERBOSITY – or anything dangerously close to it in your field – is already registered or about to be registered as a UK trade mark. He tells me he expects to complete this no later than Friday of next week and he will write to you then. You already accept that no search can give you a cast-iron guarantee, but the databases we access have proved pretty reliable in the past and we are going ahead on that agreed assumption.

We cannot of course discount and must draw to your attention the very real possibility that further and even more damaging prior art might be revealed by international searches of wider scope and we accept no responsibility for your stated decision (which we record here specifically for this purpose) not to proceed in this context despite our strong advice that you should instruct us to do so.

An international search, of course, is a different matter. But you said you would tackle that as and when your business extends abroad. At the moment, and with that obvious risk, I think you can sensibly limit yourself to this UK-only clearance search from everything that I know of your business to date

Finally, with reference to British Patent No 1 234 567B of which you handed us a copy and in respect of which we have caused a search of the Register of Patents to be made to ascertain the status thereof, we write to inform you, firstly, that we have ascertained from said records that the renewal fee due in respect of the 12th year of the patent failed to be paid by the last due date – including any extension thereof – and, further, that it has come to our attention via a third party that the proprietor of the above-numbered patent is now deceased.

As far as the Jones’ ‘Autodidact’ UK patent is concerned, you can ignore it. It was not renewed; and he apparently died last week.

The writer will revert to these matters in due course and when full and final particulars are to hand. At that stage it is suggested that a further meeting between the writer and yourselves would be appropriate to discuss matters arising therefrom. To ensure attention any further communication must be addressed to this firm in writing and not to any named individual. Assuring you of our best attentions at all times.

Terry and I will write to you, as I said, by the end of next week. We shall then need to get together with you again and I shall contact you to arrange that appointment after you have had a chance to read the results of our work. In the meantime, ring or email Terry with any queries on all normal occasions but if he is not here, ask specifically for me. Both of us are fully briefed on this particular project which is certainly an interesting one. I am glad we have been able to advance it successfully for you so far.

CHAPTER 2: THE ROLE OF THE TRAINEE

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BUSINESS PRACTICE By Debbie Slater (CPA), Prevayl Ltd *

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; and attributes of a high-quality service.

The chapter also provides guidelines for conducting client meetings explores business development.

Learning plan Prerequisites: Before reading this chapter, you should have studied the IPReg Rules of Conduct for patent and trade mark attorneys and IPReg’s Competency Framework (both to be found on IPReg’s website at www.ipreg.org.uk), the EPI Code of Professional Conduct (available at https://patentepi.org/en/the-institute/rules-and-regulations.html) 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.

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Suggested chapter 3 answers and comments Most of the questions raised under ‘Test your Knowledge’ do not have definite answers. Indeed, the answers may well depend on who you work for and vary from client to client or even from task to task. The questions are intended for discussion with your trainer and with other colleagues, as a way of exploring further possibilities whilst reinforcing the key concepts that are likely to apply throughout the profession. That said, your answers to questions 2 to 4 should include at least the following key points. 2. The risk of conflict will depend primarily on which business areas you work in for A, for example which types of drug and how they are formulated. It will depend on whether A regards B as a competitor, or perhaps as a potential business partner or a candidate for acquisition, and whether the two companies have been involved in past disputes. A’s consent must be sought before accepting B as a client. B must also be told that A is an existing client. You should agree with both parties what is to happen should a conflict situation arise in the future. Take care, during such consultations, not to divulge to either party any confidential information about the other’s specific business interests. 3. Sections 62(3) and 63(2) of the UK Patents Act 1977 (UKPA) provide that the question of whether a patent specification was drafted ‘in good faith and with reasonable skill and knowledge’ can affect the financial compensation available to the patentee if their patent is amended either before or during infringement proceedings. See 3.3.5. 4. The distributor should not be sent a copy of the new application without the client’s consent, and the client should be advised about the pros and cons of doing so.

CHAPTER 3: BUSINESS PRACTICE

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LEGISLATIVE STRUCTURE By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*

Outline This chapter is intended to 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, the legal professions in the UK are 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 further sources of information, please refer to chapter 5.

Learning plan Prerequisites: None. Legal documents: Patents Act 1977 (as amended), European Patent Convention (1973 as amended), Patent Co-operation Treaty 1970, Community Patent Convention 1975, Regulations (EU) No. 1257/2012 and 1260/20122 implementing enhanced cooperation in the area of the creation of unitary patent protection and Unified Patent Court Agreement 2013. Trainer’s input: To provide a general background on the legislative structure in the UK and to provide information on the patent system in the UK. Syllabus link: UK Exams: FC2, FD1 EQEs: Paper D IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); Technical (Skill Sets: Analysis and Advice; Infringement). Time allocated: Less than a day.

Learning outcomes By the end of this chapter, you will have knowledge of the legal system in the UK and the patent system in the UK and for European patents (UK).

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Suggested answers and comments for chapter 4 1. See 4.1.2 – UK legislation – Bills. 2. Solicitors and barristers – see 4.1.3 for further information. 3. County Court, High Court, Court of Appeal, The Supreme Court (formerly the House of Lords) – see 4.2.1 for further information. 4. See 4.2.2 and 4.4.2. 5. See 4.4.1 6. A patent owner has the exclusive right to exploit his invention for 20 years from the date of filing. He may take action for patent infringement against a person doing an infringing act – see 4.5.2 on infringement and the nature of an infringing act. 7. See 4.5.2 on patentability. 8. See 4.5.2 on exclusions to patentability. 9. Proceedings for invalidity of a patent are usually sought as a counterclaim by a person being sued for patent infringement. For the grounds of invalidity see 4.5.2 on validity. 10.A European patent is a bundle of national patents granted by the European Patent Office upon a single application. A Unitary patent, if its implementation is completed, will be a single unitary patent for 25 of the 28 EU states granted by the European Patent Office. 11.A European patent may be opposed for a period of nine months from the date of its grant. If the opposition is successful then the European patent will be revoked in all its designated countries across Europe. If the validity of a European patent is challenged nationally the decision will only have effect in the country in which the action is being taken.

CHAPTER 4: LEGISLATIVE STRUCTURE

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SOURCES OF INFORMATION By Debbie Slater (CPA), Prevayl Ltd *

Outline This chapter provides a guide to sources of information, including for legal research, for prior art identification, for patent status information, IP analytics and competitor information. 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 sources of information from patent offices, 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 understand 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: UK Patents Act 1977 (UKPA), European Patent Convention (EPC), Patent Cooperation Treaty (PCT) to look through; EPO decisions G2/88, T1385/15, 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. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice;) and Technical (Skill Sets: Analysis and Advice) Time allocated: One to two days.

Learning outcomes By the end of this chapter, you will be able to identify sources of information available for research and use them to address legal questions. You will also be able to identify relevant prior art searching, IP analytics databases and legal status information as sources of information.

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PATENTABILITY: GENERAL ISSUES By Martin Bell (CPA, EPA), Marks & Clerk*

Outline This chapter provides an overview of three fundamental criteria that must be met for an invention to be patentable, namely that it is new, involves an inventive step, and is capable of industrial application. Particular emphasis is paid to the requirements of the UK Patents Act (UKPA) and the European Patent Convention (EPC), although a brief discussion of certain issues that are relevant in the US is also given. Another requirement, that the invention is not something that is specifically excluded or exempted from patentability, is discussed in detail in chapter 7, while other important considerations, such as sufficiency and clarity, are discussed in chapter 8, as well as chapter 17.

Learning plan Useful references for this chapter: • • • • •

Sections 1 to 4 UKPA and Articles 52-57 EPC. Sections 2 to 4 of the Manual of Patent Practice (MOPP). The Guidelines for Examination in the European Patent Office (EPO), Parts G, I, III to VII. Study guide to the Patents Act, Doug Ealey (CIPA). The C-Book – How to write a successful opposition and pass paper C of the European Qualifying Examination, Chandler/Meinders (CEIPI, Heymanns Intellectual Property)

Case law: • • • • • • • • •

Windsurfing International Inc v Tabur Marine (Great Britain) Limited [1985] R.P.C. 59 Pozzoli Spa v BDMO SA & Another [2007] EWCA Civ 588 Dr Reddy’s Laboratories (UK) Limited v Eli Lilly and Company Limited [2009] EWCA Civ 1362 Synthon v SmithKline Beecham [2005] UKHL 59 [2006] RPC 10 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd [1995] UKHL 14 (26 October 1995) 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 (Availability to the public)

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Suggested chapter 6 answers and comments 1. In order for it to be novelty destroying, the written disclosure must be: i. published prior to the priority date; ii. disclose the invention, or a species falling within the scope of the invention; iii. be an enabling disclosure. 2. The application must have been either published prior to the priority or filing date (in which case it is normal prior art) and in which case the answer is the same as for (1); or (a) For a UK application filed prior to the priority or filing date but published later it is prior art under section 2(3). Under these circumstances ii) and iii) as described for question 1 above must still be fulfilled but the invention must have been disclosed and enabled in the application and in the application as published. (b) For a PCT application, the answer mirrors that for (a) above with the additional requirement that the application must have entered the UK national phase (via UK direct or EP(UK). (c) For a US application (assuming no related UK/EP counterparts), if it is unpublished at the priority/filing date it does not form part of the state of the art. 3. See section 6.3 above. 4. (a) 1 June 2007

(b) 1 June 2007

5. See section 6.3 above.

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PATENTABILITY: SPECIFIC ISSUES By Ben Hoyle (EPA, CPA), Hoyle IP Services*

Outline Certain forms of invention are barred from patent protection. This chapter discusses exclusions to patentability, i.e. things that are not considered to be inventions, and exceptions to patentability, i.e. inventions that are not allowed patent protection. These exclusions and exceptions differ between jurisdictions. Companies often need to be advised on whether the exclusions and exceptions apply to their ideas. This chapter provides useful information for review of inventions in the fields of software, medicine, and biotechnology.

Learning plan It helps if the trainee has first read: Core areas of the law: • Sections 1, 4A and 76A and Schedule A2 of the UK Patents Act (UKPA) and the accompanying sections of the Manual of Patent Practice; • Articles 52 and 53 and Rules 26 to 29 of the European Patent Convention and the associated sections from the Guidelines for Examination in the EPO (Part B-VIII, 2; Part G-I and II, G-VII 5.4).1 Core legal cases: • UK: Aerotel Ltd v Telco Holdings Ltd (and others) [2006] EWCA Civ 1371,2 HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451,3 AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat)4 and Macrossan’s Application [2006] EWCA Civ 1371 • Europe: T 0208/84 (VICOM),5 T 641/00 (COMVIK), T 0315/03 (Oncomouse®), G 1/83 (which provides the basis for the ‘Swiss-type’ second medical use claims) and G 3/08 (programs for computers) • US: Alice Corp. v CLS Bank Int’l, 573 U.S. 208 (2014),6 Mayo Collaborative Services v Prometheus Laboratories, Inc., 566 U.S. 66 (2012)7 and the USPTO Guidelines on Subject Matter Eligibility.8

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2015 USPTO examples that related to dynamically relocating textual information within a window was said to be patent eligible: the claimed method is necessarily rooted in computer technology to overcome a problem specifically arising in graphical user interfaces.

In many cases, there is no ‘right’ answer as to whether a refusal or objection is to be expected. Trainees should adopt a risk perspective and be clear about likelihoods of the exclusions or exceptions applying based on cited case law examples.

* This chapter was first written in 2008 by Maria Nichol (Galapagos NV). It was revised and updated by Ben Hoyle (Hoyle IP Services) in 2021.

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OTHER REQUIREMENTS FOR GRANT By Alexandra Orrin (CPA, EPA), Withers & Rogers*

Outline This chapter introduces additional requirements that must be fulfilled in order to obtain a patent. In brief, these requirements can be summarised as follows: 1. Sufficiency: the invention must be sufficiently described to allow a person skilled in the art to reproduce the invention across the full scope of the claims. 2. Clarity, support and unity ‑ the claims must be: • clear and concise; • supported by the description; • relate to only one invention or to a group of inventions linked to form a single inventive concept. 3. Added matter: The application must not contain matter added after the filing date. Some of these requirements need to be considered at filing, others during the lifetime of the patent application.

Learning plan Key reading: • The European Patent Convention (EPC) Articles 82, 83, 84 and 123. • The UK Patents Act 1977 (‘UKPA’) section 14 (making of an application), and section 76 (added matter). Additional reading: • The EPO Guidelines for Examination, sections corresponding to Articles 82, 83, 84 and 123. • EPO decisions from the Enlarged Board of Appeal (‘G-decisions’) related to added subject matter, in particular G1/03 and G1/16 (disclaimers) and G1/93 (the ‘inescapable trap’). • The UK Manual of Patent Practice, passages corresponding to sections 14 and 76 of the UKPA. • Articles and EPO decisions on ‘plausibility’ as applied to sufficiency.

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Suggested chapter 8 answers and comments 1. No. Where a lack of clarity is apparent in a granted patent, this could be used to an opponent’s advantage to interpret the claims a specific way to form an added matter, novelty, inventive step or insufficiency argument. 2. They may not contain any added matter. 3. Lack of unity of invention a priori is where lack of unity is apparent from examination of the claims, before relevant prior art is considered. Lack of unity a posteriori is when lack of unity is found after relevant prior art is considered.

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I NVENTORSHIP: OWNERSHIP OF INVENTIONS, RIGHTS TO APPLY FOR A PATENT, DISPUTES ABOUT OWNERSHIP AND EMPLOYEE RIGHTS By Sue Ratcliffe (CPA, EPA), Synthomer*

Outline This chapter deals with a number of issues which ultimately affect the exploitation and ultimately the value of a patent. These issues include: 1. 2. 3. 4. 5. 6.

the concept of invention and inventor, the right to apply for a patent and the right to be mentioned as inventor; ownership and co-ownership of inventions and patents; the law and procedure of determining disputes about these matters; remedies; and 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 with various amendments of the Rules being ongoing. Rule numbers in this chapter refer to the 2007 Rules. Students must therefore make sure that they study fully updated versions of the Act and the Rules. Another useful resource is the Intellectual Property Office Manual of Patent Practice (MoPP) and in particular sections 7, 8, 9 and 10. Legal documents: • UK Patents Act 1977 (as amended) – (UKPA) • Patents Rules 2007; Patents (Fees) Rules 2007 • European Patent Convention, Arts. 60-61 • EPC Implementing Regulations, Rules14-15 & 19 -21

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Suggested chapter 9 answers and comments As most inventions are owned by an employer (often the client) try to take a holistic view of the situation as you will often need to consider matters from the perspective of both sides to reach a conclusion or even better a resolution. This is what the IPO or courts would do anyway. An employer often does not want to lose a good employee that is contributing ideas to the business so a degree of tact and diplomacy is needed to avoid an acrimonious situation occurring. In addition, inventors often have a lot of know-how that is valuable to a business and if they take their knowhow with them this could be advantageous to the client’s competitors. Proving what is confidential material and what is general know-how can be a complicated and time-consuming exercise and once information has left a business is it difficult to retrieve it.

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INFRINGEMENT AND CLAIM INTERPRETATION By James St.Ville QC, Henry Edwards and Edmund Eustace, 8 New Square*

Outline Whether a patent has been infringed involves two questions. The first is whether the object or process alleged to infringe is actually what is covered by the claim? The second is 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: (a) determining the true meaning of the words of the claims, which is often termed ‘interpreting’ or ‘construing’ a claim from the point of view of the ordinarily person skilled in the art and assessing whether the alleged infringement falls within that meaning and (b) considering whether the alleged infringement falls within the scope of protection provided by the patent as a matter of equivalence. 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 issues of novelty and inventive step because those questions are answered using the same definition of the invention provided by the claims. The question of equivalence involves a new development in UK patent law arising from the decision of the UK Supreme Court in Actavis v Eli Lilly [2017] UKSC 48. Answering part (b) of the first question requires a technical appreciation for the way in which the invention described in the patent functions. The effect of Actavis is that products or processes can infringe patents where they achieve substantially the same result in substantially the same way as the invention disclosed by the patent, even though they would not fall within a normal interpretation of the claims of the patent. Infringement by equivalence is itself assessed against three Actavis questions. The debate about how the issue of equivalence should be taken into account in addressing the question of a patent’s novelty or inventive step is beyond the scope of this chapter (i.e. whether there would be infringement where an infringing equivalent was made available to the public before the priority date of the patent). So the issue of equivalence is dealt with in the context of how it arises when giving opinions on the issue of infringement. The second question is often straightforward since patents regulate most kinds of activities such as making, disposing of or offering to dispose of, importing, using or keeping a product. However, there are exceptions for activities that are not really economic activities or are activities to be encouraged, or at least not discouraged by a patent, for economic or other policy reasons.

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Suggested chapter 10 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. 10.6.4 and 10.6.5 11. 10.6.6

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STRUCTURE OF A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*

Outline This chapter examines the structure of a patent or patent application (drafting of patent applications is discussed in chapter 12). The contents of the main sections of a patent application are discussed along with strategies for reading patent or patent applications when considering a patent document (i) as a piece of prior art and (ii) for infringement.

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 Guidance for the trainer: The trainer should provide examples of differently structured patent applications and discuss how they like to structure a patent application. The trainer should also discuss how they read a patent document (i) as a piece of prior art and (ii) when considering freedom-to-operate (infringement). Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice; Communication Skills); Technical (Skill Sets: Analysis and Advice; Validity; Drafting; Prosecution). Time allocated: One half day.

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Suggested chapter 11 answers and comments 1. See 11.1 3. See 11.1 4. See 11.2.1 5. See 11.2.3

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CHAPTER 11: STRUCTURE OF A PATENT APPLICATION

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DRAFTING A PATENT APPLICATION By Emily Dodgson (CPA, EPA), Abel + Imray*

Outline Drafting a patent application is one of the most difficult skills for a patent attorney to learn but one of the most important skills to possess. This chapter looks at the process of writing a patent application and discusses some different approaches for drafting independent claims as well as practical aspects such as dealing with the inventor. The chapter is divided into three main sections: getting the information from the inventor, drafting the application and getting the inventor to review it.

Learning plan Prerequisites: Chapters 6, 7, 8 and 11. Guidance for the trainer: The trainer should provide the trainee with plenty of drafting practice and feedback. The trainer should discuss how they go about preparing a patent specification, whether they have particular preferences regarding the structure of the application and any aspects of drafting specific to the technology field in which they work. Syllabus link: U K Exams: FD2 EQEs: Paper A IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Drafting; Validity; Prosecution) Time allocated: Two days.

Learning outcomes By the end of this chapter, you will be able to approach drafting a patent application in a structured manner and to make a first attempt at a complete draft including a set of claims. It is to be expected that a substantial amount of practice will be required before you are able to draft a complete specification in a competent manner.

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Suggested chapter 12 answers and comments 1. Since these lists should be relevant to you, there is no single answer. Take another look at the relevant sections and discuss with your trainer. 2. At least A should be discussed, including its drawbacks which are overcome by the invention. It may be useful to discuss C to show how others have failed to address the drawbacks. B should not be discussed, as it would risk giving a misleading picture of the invention which resides in applying steam cleaner technology to steam irons – discussing B risks making the inventive step look smaller. 3. Using the EPO’s definition of an independent claim, a single independent claim related to the ironing shoe of the iron (there is a substantial market for the shoes themselves) and a dependent claim to a steam iron reciting and including the shoe as claimed would be appropriate. An important question to consider would be whether the invention can be defined in relation to the shoe only or whether other features found in the remainder of the iron are needed (in which case the above approach may become difficult). 4. Now take a look at the Examiner’s comments. You should have found that there are three inventions: (1) a one one-way clutch to prevent starting a treadle machine in the wrong direction; (2) two one-way clutches to enable the machine to be powered by either treadle or an electric motor; and (3) the 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.

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FILING STRATEGIES: AN INTRODUCTION By Gwilym Roberts (CPA, EPA), Kilburn & Strode

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.

Guidance for the trainer: Discuss with your trainee some examples of filing scenarios that you have encountered, and how you 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. Finally discuss cases where there are inventors from more than one country. Syllabus link: U K Exams: FC1, FC2, FC3, FD1, FD2 EQEs: Paper D

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Suggested chapter 13 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

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CHAPTER 13: FILING STRATEGIES: AN INTRODUCTION

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FILING STRATEGIES (UK) By Daniel Wolstenholme (EPA, CPA), Marks & Clerk*

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 . Since 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 (9th Edition + 2nd cumulative supplement) and Patents Rules 2007. Legal documents: Patents forms. Guidance for the trainer: Ask your trainee to prepare a timeline setting out all of the stages and deadlines of a direct UK patent application. Discuss with your trainee how alternative routes to protection in the UK interact with the UK process.

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Suggested chapter 14 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. Corrections are intended to rectify errors in the application, and are ex tunc i.e. having effect as if the corrected text was filed from the outset. Amendments are for making changes to the application, usually in response to examiner objections. Amendments are not retroactive. The criteria for corrections are stricter than for amendments. 5. 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. 6. 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.

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FILING STRATEGIES (EP) By Jonathan Hewett (CPA, EPA), Venner Shipley LLP*

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 chronological stages that an application passes through – filing, searching and publication, examination and grant. There are several types of EP applications: • direct-filed EP application, where the application originates as an EP application – it is either the first application filed in a particular family, or an application which claims priority from another family member; • 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: • an understanding of what constitutes and invention and a patent, and the purposes of having a patent; • an awareness of the existence of 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 its contracting states, and the existence of the international patent system. Legal documents: 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 (ninth edition). Guidance for the trainer: Identification of cases that contain examples of the scenarios set out below. Syllabus link: U K Exams: FD1 EQEs: Papers C and D

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Suggested chapter 15 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. A party who has neither residence nor principal place of business in a contracting state must be represented by a professional representative; the party must act through a professional representative in all proceedings, other than in filing the application. 3. The day prior to publication of the mention of grant of the parent application in the European Patent Bulletin. 4. 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. 5. File the application in Spanish; you will have to file a translation into an official language of the EPO (English, French or German) within two months of the application filing date. 6. The date of publication of the search report. 7. Before the expiry of 31 months from the priority date of the international application: supply, where applicable a translation into an official language of the EPO; specify the documents on which the European grant procedure is to be based; pay the filing and designation fees; where applicable, pay the search, examination and third year renewal fees.

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FILING STRATEGIES (PCT)

y Dr Catherine Bonner (CPA, EPA) and Martin Shaw (MSci) Murgitroyd, B and Debra Smith (EPA, CPA) Mayfin*

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.

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is particularly so now there are relatively few countries that continue to notify the IB of the non-applicability of the new 30-month time limit for entering into the national phase (see list in 16.7.2).

16.9.6 Article 39 PCT – Documents supporting the application

16.9.5 Article 39 PCT – Use and benefit

Entry into the national or regional phase after IPE will require the documentation listed above for entry under Art 22 PCT. The case file provided to the foreign attorney representative will, of course, reflect the IPE and the full IPRP generated by the examiner. Therefore, in addition to the items in the above list, the IPRP (with any amended pages annexed to the report) can be made available.

Earlier sections in this chapter have highlighted scenarios where applicants may still find requesting International Preliminary Examination (IPE) useful. The nature of the IPE procedure is such that dialogue with the examiner is possible. As mentioned in previous sections, an applicant concerned about a negative written opinion can address the examiner and hope to influence the IPRP and examination outcome and a positive IPRP can be persuasive before some smaller, national patent offices in countries such as Malaysia, New Zealand, and Thailand.

It is important to make note of whether the office for national phase entry is a designated or elected office as that may impact on the process. For example, the EPO on the Form 1200 require a different part of the form to be filled in depending upon whether the EPO is a designated or an elected office.

16.10 Corrections R. 92bis It is possible to make changes to details relating to the applicant such as recording a transfer of rights in the invention or to change inventor details, such as their names, addresses, the number of inventors, etc during the international phase of the application. R. 26bis It is also possible to make corrections such as reinstating or withdrawing a claim to priority in a PCT application. Obviously, the most desirable situation is one where the application and applicant details are correct on filing; making any changes later will incur significant, unforeseen costs for the applicant (your client) and potentially your firm. The PCT system does, however, allow for cases where mistakes have been made or circumstances have changed.

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.

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Further study • WIPO website, PCT part of the site and PCT resources section accessible at https://www.wipo.int/pct/en/index.html. In particular, sections; About the PCT, Legal documents, PCT offices and the ePCT procedure for electronic filing of applications. • 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.

R. 91 The PCT provisions for completing any correction and review during the international phase are useful as the changes are considered centrally by the IB or appropriate examining authority. This is cheaper and simpler than trying to make the correction at each national office once the application has entered the national phase. There is no PCT remedy for errors in paying fees once an application is considered to be withdrawn, or for other mistakes resulting in missing a PCT deadline and the failure of the application. Although note Rule 26bis.3. In such a situation Article 24 provides a review and excuse procedure, at a national level, R. 26bis 3 Art. 24(2), 25, allowing an application to proceed nationally, if the relevant national office is happy with the results of its review of the applicant’s case and circumstances. 26 & 48, R. 82bis & It is reiterated that your goal and aim should always be ‘right first time’. However, if you believe 82ter any errors or mistakes have been made in an application process these should be discussed immediately with your trainer. You will find that the proverb ‘A stitch in time saves nine’ is very true.

16.11 Common filing strategies We expand here on the comments in chapter 13. As you become familiar with the PCT system and with filing PCT applications, you will see that there are some common filing techniques and strategies used by many of the applicants. A few, well-used, application routes are mentioned below. A UK applicant with significant interest in the UK (probably with UK based legal and IP advisors) is likely to file an initial UK application (GB01) and later a PCT application claiming priority from the initial UK case. The applicant may continue with the UK application (GB01) in parallel with their PCT application to obtain a granted patent (from GB01) first in the UK. Later, a UK national application (GB02) may arise from the PCT application or from the European regional phase of the PCT application. WWW.CIPA.ORG.UK

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Assuming that GB01 and GB02 relate to the same invention, the applicant would usually abandon the original GB01 in favour of the later GB02. By abandoning GB01 and retaining GB02 the applicant gains an additional year of patent protection (assuming the PCT application was filed at 12 months from the priority date). The term of protection for a granted patent runs from the filing date, not the priority date, hence the term for GB02 runs for 20 years from the PCT filing date, whereas the patent term for any patent granted from the priority application (GB01) will be 20 years from the priority filing date, hence expiring up to one year earlier. Of course, there may be compelling reasons why the applicant would wish to keep GB01 instead of GB02, if the patent granted from GB01 was already being used to pursue an alleged infringement, for example.

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filed directly with the IB. (Preferably using ePCT). Publication will be around 24 September 2022, so it may be possible to file Article 19 amendments up until the first week in September 2022. 10. When you file a PCT application using ePCT, once the newly filed PCT application is visible to you in ePCT, then a best practice to be followed, is proofreading the preview of the PCT publication to ensure that all the details are correct. If there are any problems or things to fix, then right now is the right time to do a 92bis change to correct it. It is good practice to check one last time to see whether there are any problems with the priority claims or whether an intended priority claim has somehow been forgotten. Once you have fixed any mistakes, it may be a good idea to send the preview page to the client with an invitation for the client to check too. Perhaps somehow one of the inventor names got misspelled early in the process and no one noticed it until now. In any event this is your chance to get any of a wide range of problems fixed before the 18-month publication happens.

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PROSECUTION THROUGH TO GRANT y Gwilym Roberts (CPA, EPA) and Marco Morbidini (CPA, EPA) B at Kilburn & Strode*

Outline Once the patent application has been filed, in most jurisdictions (all those which carry out examination of patent applications) it is necessary to persuade the patent office that it meets certain criteria, including those of novelty and inventive step, 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 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 dayto-day 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. The EPO Guidelines contain copious advice on what the EPO prefers to see; we advise referring to that when specific issues come up rather than trying to read the whole thing at once! Guidance for the trainer: At the outset it may be worth sitting down with your trainee and talking through how you like to structure your responses to examination reports, dealing with both UK and European instances. Syllabus link: U K Exams: FD3 EQEs: Paper B IPReg Competency Framework link: General Legal (Skill Sets: Communication Skills; Client Relations); Technical (Skill Sets: Analysis and Advice; Validity; Prosecution)

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Table 1 – A simple example for a case with independent claim 1, dependent claims 2 to 4 and prior art instances D1 to D5 Claim Feature

Independent claim 1 feature A

Yes page X line Y

Independent Claim 1 feature B

No, instead D1 has...

Independent Claim 1 feature C Dependent claim 2 feature D Dependent claim 3 feature E Dependent Claim 4 feature F

found in the prior art document what it has instead. It may also be worthwhile doing this for dependent claims for the purpose of finding where possible amendments may lie. A very simple example table for a case with independent claim 1, dependent claims 2 to 4 and prior art instances D1 to D5 is set out in the table above. It will be seen that, in addition to helping manage the information, this means that a quick reference is available for any further argument. It will also be noted that this does not leave much room for construing the various terms of the claim – in fact, in practice, this seems to happen very seldom. One of the reasons for this is that arguments with the patent office over the explicit meaning of a claim term seldom seem to win a case, especially for novelty – the feature is either there or it is not there. Indeed, submitting detailed semantic arguments about the meaning of a term can come back and haunt you in countries such as the United States where they will look to the file history of the case overseas to see what admissions you have made.

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17.1.3 Inventive step The case law before the English courts in relation to inventive step is frankly of little benefit in guiding the practitioner as to how to deal with inventive step objections before the UK Intellectual Property Office (IPO). The case law of the Technical Boards of Appeal and Enlarged Board of the European Patent Office is slightly more helpful but, in both cases, a review of the IPO’s Manual of Patent Practice and the EPO’s Guidelines for Examination are probably the best resource. The basic approach, when considering inventiveness required for either patent office and whether looking at a single or combined documents, is simple. Once you have shown novelty, you need to demonstrate why the novel feature(s) would not have been obvious over the prior art at the priority date. The way in which you do this can vary between the offices but usually comes down to the same thing – what advance or improvement does the additional feature give? If it is trivial, it is probably not inventive but if, (taking the EPO lexicon), it

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solves a problem, then it may well be inventive. The patent offices expect the practitioner to present their inventiveness arguments systematically and probably have a pretty good idea of what the practitioner is going to say most of the time. Half of the problems arise when, for example, the argument presented by the patent attorney relates to features not found in the claim, or inventive step arguments are presented in favour of features which have not been demonstrated as being novel. Although the requirements for inventive step are meant to be harmonised, there are, however, differences between the approaches before the IPO and the EPO, at least in terms of presentation of the argument, and it may be interesting to talk to your trainer about whether the inventive step levels required for grant differs between the offices in their experience. We look at the requirements before the respective offices separately below and at a very practical level. Starting with the IPO, from a review of the case law, it will be seen that the courts have sometimes been swayed on inventiveness by evidential issues such as commercial success/long felt need, and sometimes by expert opinions (this of course can go both ways). Little of this is relevant pre-grant. Evidence of commercial success is seldom used nor persuasive (and indeed is often unavailable because the product tends to be quite young). Expert reports and oral testimony are seldom used partly because of cost and partly because the evidential requirements differ such that statements on technical issues by the patent attorney, even though, strictly, hearsay are taken at face value. Typically, an obviousness attack by the IPO is either based on the invention being an obvious development of a disclosure set forth in a single document or an obvious combination of two disclosures set forth, for example, in two different prior art documents. In the former case, as explored in more detail below, one way to overcome the objection based on a single document is to point to technical incompatibilities or inconsistencies or teachings that would make the novel feature non-obvious. In the case of two documents, in a WWW.CIPA.ORG.UK

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similar manner, one looks for reasons why the two documents would not be combined. It is useful to note here that this is another point of distinction with the courts. Typically, the courts would not consider a combination of documents to be obvious simply because it would have been difficult for the skilled man to find both of them without being inventive straight away. The courts tend, instead, to treat obviousness as a combination of a single document with ‘common general knowledge’. One of the reasons this is less favoured or relied on before the IPO is because it is difficult to establish what the common general knowledge was without detailed expert input. Before the UK office, then, quite often the argument can be approached in two ways – why it would not have been obvious to arrive at the invention (for example a prior art document teaches against it or its two prior art documents are incompatible and, hence, uncombinable) and/or why, in any event, the invention is better than what went before, that is, why it is inventive. In the specific case of the EPO, the well-known ‘problem-solution’ approach is adopted. This approach is described at length in the Guidelines for Examination Part G Chapter VII 5 but in practical terms, the steps are fairly straightforward: Identify the closest prior art, for example the most sensible starting point for the problem addressed by the invention and/or document with the most features in common. • Identify the novel features over the closest prior art. • Identify the technical effect resulting from those features • Explain the ‘objective technical problem’ with the prior art solved by the technical effect. • Explain why it would not have been obvious to import those features from other prior art documents to solve the problem. A detailed discussion of how to use the problemsolution approach is presented later in this chapter. It PATENTS TRAINING MANUAL: 2022

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18.1 Introduction There is no standard definition of ‘commercialisation’ of intellectual property (‘IP’ or ‘IPR’), but as the term suggests, it envisages the process of putting intellectual property to profitable commercial effect – in short, making money out of it. WIPO in its Guide to IP Commercialisation2 adopts the same basic theme: ‘Commercialization of IP is making money out of one’s ideas. As such, an idea has no value until one makes it into a tangible object and its utility has been proven such that others would pay to use, see, read, recognize or listen (to) that product. We define the commercialization of IP as a continuum of activities and actions that provide for the protection, management, evaluation, development and value-creation of ideas, inventions and innovations to implement them in practice. Prototypes and implemented processes lead to the development of products and services by entrepreneurs, startups, existing companies as well as governments resulting in economic and societal benefits.’

That IP has to be converted into an asset capable of earning money is in turn a reflection of three features of IP: • First, IPRs are negative rights – rights to stop rather than rights to do. The existence and ownership of an IPR is no guarantee that the owner will earn an income from it. A pharmaceutical company can use its patent to stop a competitor infringing the patent thus preserving its right to manufacture and sell the product covered by the patent. But that is an example of use of the IPR as a defensive mechanism – stopping an infringing act. • Second, IP is a property right and like other property rights, can be put to good effect as a means of generating an income. Section 30(1) of the Patents Act 1977 classifies a patent or a patent application as personal property which can be assigned or mortgaged – section 30(2). A patent or patent application is subject to the usual rules on the disposition of personal property – section

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30(3). What the latter means is, for example, that an individual who owns a patent and dies has their property subject to the same rules on disposition of property as other property in the deceased’s estate. And like other property, IP can be licensed to others to use in the same way as the owner of a house (in this case real property) can let the house to a tenant and derive an income from it. • Third, many innovations, however they are protected, need to be brought from a basic or raw state to one which allows the product or process concerned to be exploited commercially. This is often the case with innovations devised by universities and the commercialisation process3 envisages bringing bench science to an economically realisable state.

18.2 Sale of IP – assignment If commercialisation of IP is realising its value, then one of the easiest ways to do this is simply to sell it. A company might, for example, own a patent portfolio part of which is no longer relevant to the Company’s product range, so that portion can be sold. Another relatively common example is the sale of an insolvent company’s assets by an insolvency practitioner (a receiver or liquidator) for the benefit of its creditors. This part of this chapter will consider three different situations in which IP is sold as part of the commercialisation process.

18.2.1 Simple assignment of a patent or patent application This will cover the kind of examples given above. An assignment of a patent or patent application must be in writing and signed by or on behalf of the assignor – section 30 (6) Patents Act 1977. So, for a limited company assigning a patent or application, a duly authorised person must sign the relevant document. Section 33 of the Act requires the assignment to be registered to protect the interests of the assignee. If foreign patents or applications are included in the process, any local rules relating to the form of assignment or recording of an assignment must be complied with.

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A sale is effected by an assignment (see above) of the property rights in the patent or patent application in question. The assignment can be made by simple contract (most assignments will be made this way) or by deed. An assignment can be a simple document recording the following essential information: • The names of the assignor and assignee. • Identification of the patent or application concerned which will be the relevant application or registered number. If a sale of a patent includes any accompanying know-how this will need to be carefully and precisely identified (this issue is further considered below). • The consideration for the contract, which will usually be the purchase price. Wright Hassall v Horton4 suggests that no consideration is necessary to assign a patent, but the vast majority of assignments will show some consideration, even if that is only nominal consideration of one pound. • Any warranties agreed between the parties. A warranty is a contractual promise that a state of affairs exists or will exist at some future date. A standard warranty in a simple patent assignment will be that the assignor owns the patent or application (and any accompanying know-how), has paid any renewal fee and is not aware of any infringement of or challenge to the validity of the patent or opposition to the application. • The right to sue for any infringement of a granted patent prior to the assignment; • A governing law and forum provision to deal with any disputes arising from the assignment. It is common to see an assignment using the term ‘with full title guarantee’. This is a reference to terms implied on a transfer of property by the Law of Property (Miscellaneous Provisions) Act 1994. The implied terms are that the assignor has the right to assign; that it will do anything reasonably necessary to vest title in the assignee (i.e., an implied further assurance provision)5 and that the assigned patent or application is free of charges or third-party rights. Where the phrase ‘with limited title guarantee’ is used, this implies the first two of these terms. The third term is that the assignor has not encumbered the patent or application and is not aware that any third party has done so. WWW.CIPA.ORG.UK

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The benefit of using a deed to transfer the IP is that it avoids any issue over the adequacy of any consideration which can be an issue when some foreign rights are concerned. A sale by deed may also be required when certain organisations including charities (e.g. a university or research institute) sells its property. An assignee’s advisors need to be aware to carry out due diligence in these circumstances. Assigning know-how related to a patent is not so straightforward. There is no uniform definition of ‘know-how’ but the definition used in the EU Technology Transfer Block Exemption Regulation6 conveniently identifies its features: ‘know-how’ means a package of practical information, resulting from experience and testing, which is: i. secret, that is to say, not generally known or easily accessible, ii. substantial, that is to say, significant and useful for the production of the contract products, and iii. identified, that is to say, described in a sufficiently comprehensive manner so as to make it possible to verify that it fulfils the criteria of secrecy and substantiality;

The difficulty is that ‘know-how’, however valuable, is not a property right.7 The protection of know-how in the UK is determined on the basis of a relationship of confidence rather than on property rights. So, it is possible to assign know-how? There is no satisfactory answer to this, but an assignment of a patent (or application) ‘… and any associated know-how…’ would be unlikely to be found ineffective and is the kind of transaction practitioners engage in regularly without difficulty. The key point to note is that definition of the know-how in question is the most important part of getting the assignment right.

18.2.2 Sale as part of a wider corporate transaction (often referred to as an M & A deal)8 Many businesses are bought to obtain their intellectual property rights. The purchase can either be a purchase of the shares of the company owning the rights or of the assets themselves. PATENTS TRAINING MANUAL: 2022

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Notes and references 1

John Hull is a solicitor, a consultant to a firm of patent attorneys and a visiting lecturer at Queen Mary, University of London and also at King’s College London where he teaches a course on the Commercialisation of Intellectual Property.

WIPO Guide on IP Commercialisation (2015) by G.N. Keller

A useful summary is contained in J.P. McManus: From Creation to Commercialisation (Oak Tree Press 2012)

[2015] EWHC 3716 (QB)

The term ‘further assurance’ means the steps a contracting party is obliged to take to complete a transaction to make it fully effective. These steps may include, for example, providing assistance to register the appropriate documents with a registry.

The Technology Transfer Block Exemption (Commission Regulation 316/2014 on the application of Article 101(3) of the Treaty to categories of technology transfer agreement.

Neither the EU Trade Secrets Directive (EU 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) nor the UK implementing regulations – The Trade Secret (Enforcement, etc) Regulations 2018 SI 2018/597 defines a trade secret or know how to be a property right.

See: C. Demetriades Intellectual Property Issues in Commercial Transactions (Sweet & Maxwell 2008) at Ch 3; N. Coulson (Ed) IP Issues in Corporate Transactions (Globe Law and Business 2015) Section 39 Patents Act 1977

20. Unfair Contract Terms Act 1977 21. For guidance on the meaning and drafting of boilerplate clauses see: M.Anderson and V.Warner Drafting and Negotiating Commercial Contracts (Bloomsbury 2016) Ch 8 22. Or Scots law and the Scottish courts, Scotland having a different legal system 23. The term ‘Toll Manufacturing’ is a US term. Reference is made to toll manufacturing agreements in: Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch); Rotam Agrochemical Co v GAT Microencapsulation GMBH [2018] EWHC 2765 (Comm) and Turbo K Ltd v Turbo K International [2020] EWHC 2078 (Ch). 24. UK Research and Innovation is the umbrella organization which brings together the activities of seven separate research councils covering the range of scientific, medical, social science and artsbased research. See: www.ukri.org 25. EU grant monies have been a major source of research funding for UK universities in a series of ‘Framework Programmes’, the latest one of which is FP 9. Generally see: https://ec.europa.eu/info/ research-and-innovation_en 26. Generally see: www.gov.uk/government/ organisations/innovate-uk 27. For details see: https://catapult.org.uk 28. The R & D Block Exemption (Commission Regulation 1217/2010 on the application of Article 101(3) of the Treaty to certain categories of research and development agreements) 29. www.gov.uk/guidance/university-and-businesscollaboration-agreements-lambert-toolkit 30. www.ncub.co.uk/reports/lambert-review.html 31. Section 30(1) Patents Act 1977 32. Section 33(3) Patents Act 1977

10. Section 30 Patents Act 1977

33. Sections 30(7) and 37, Patents Act 1977

11. For an example which examines equitable ownership (in relation to copyright) see: Griggs v Evans [2003] EWHC 2914 (Ch)

34. Section 67(3) Patents Act 1977

12. See for example: Robin Ray v Classic FM [1998] FSR 622 13. See: www.gov.uk/guidance/licensingintellectual-property where a skeleton licence can be found

35. Section 67(3) Patents Act 1977. 36. M. Anderson: Technology Transfer (4th Ed Bloomsbury Professional 2020) Part C 37. Notice on agreements of minor importance which do not appreciably restrict competition under Article 101(1) of the Treat on the Functioning of the EU (De Minimis Notice) 2014/c 291/01

14. Allen & Hanbury v Generics [1986] RPC 203 HL 15. Contrast trade marks where a trade mark licence must be in writing: Section 28(2) Trade Marks Act 1994 16. Section 30(7) Patents Act 1977 17. Section 32(2) Patents Act 1977 18. Section 36 (3) Patents Act 1977 19. Under section 67 Patents Act 1977 – see above

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INTRODUCTION TO ADDITIONAL TOPICS By Gwilym Roberts (CPA, EPA, Kilburn & Strode)

Outline Throughout the training manual we have aimed to provide as much detail as we can about the key areas the trainee needs experience of in the early stages of their career. The world of patents is a complex one, however, and there are many other topics that we could go into. Rather that overloading the manual with everything that one could ever know, in this chapter we provide a very brief overview of some of the other topics that we have identified that are useful to know about but perhaps aren’t essential parts of early training. Here we look at topics such as oppositions at the EPO (a huge topic in itself), appeal procedures at the EPO, reinstatement of cases, third-party observations, post-grant amendment opportunities, patent office opinions and renewal/annuity fees, and the key points the trainees need to understand about each of these.

Learning plan Prerequisites: Useful references for this chapter: • Oppositions (EPO): Article 99-105 EPC, Rule 75-99 EPC • Appeals (EPO): Article 106-112a EPC, Rule 97-110 EPC • Third Party Observations: EPO Article 115, Rule 114, UKPA section 21, Rule 33 • Post Grant Amendments: EPO Article 105a-c EPC, Rule 90-96 EPC, UKPA sections 27, 75, 76, Rule 35 • Patent Office Opinions (UK): section 74A, B, Rules 92-100 • Renewals: Article 63 EPC, Article 86, Rule 51, UKPA section 25, Rules 36-41A Guidance for the trainer: One or more of these topics will probably come up at some point during training – when they do come up, please ask the trainee to read through the relevant legal provisions and the commentary there and apply them to the situation in hand. Necessarily, the training manual cannot carry all information about all areas and so there will be room for augmentation of the basic information provided here on a case-to-case basis! Syllabus link: UK exams: FC1, FC3, FD1; EQEs: Papers A, C and D. IPReg Competency Framework link: General Legal (Skill Sets: Practical Applications of Legal Practice); and Technical (Skill Sets: Analysis and Advice, Prosecution). Time allocated: One and a half days.

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