“Puzzling questions” - Claim practice in the EPO that is too favourable to the patentee?

1. Tim Roberts “Puzzling questions” - Claim practice in the EPO that is too favourable to the patentee?

2. IPI TRIPs Article 7 Objectives 'The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.‏'

3. IPI Balance • Between patentee and public • Interpreting claims – Protocol to Art 69 – • “...a position ... which combines a fair protection for the patentee with a reasonable degree of certainty for third parties. • Same principle should apply to allowing claims • Article 84 • “The claims ... shall be clear and concise and be supported by the description.”

4. IPI Biogen v Medeva • “Whenever anything inventive is done for the first time it is the result of the addition of a new idea to the existing stock of knowledge. Sometimes it is the idea of using established techniques to do something which no one had previously thought of doing. In that case, the inventive idea will be doing the new thing. Sometimes, it is a way of doing something which people had wanted to do but could not think how. The inventive idea would be the way of achieving the goal. In yet other cases, many people have a general idea of how they might achieve a goal but not know how to solve a particular problem which stands in their way. If someone devises a way of solving the problem, his inventive step will be that solution, but not the goal itself or the general method of achieving it.”

5. IPI Contrary view • “The first to achieve a goal is entitled to claim the goal and all ways of reaching it” • Chemical practice - • Essential to be able to claim compounds per se • But they are claimed by structure, not function • No clear authority for proposition? • Lord Hoffmann to the contrary.

6. IPI European Patent Office • Guidelines (CIII.4.10)‏ • As a general rule, claims which attempt to define the invention by a result to be achieved should not be allowed, in particular if they only amount to claiming the underlying technical problem. • However, they may be allowed if the invention either can only be defined in such terms or cannot otherwise be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests ... which do not require undue experimentation.. • Proper balance? • Or perverse incentive for inadequate teaching?

7. IPI Distinguishing by function • If the sole distinction from the prior art is the achievement of a recognised objective, can that give a proper balance? • Not enough simply to recite success (even if you are the first to achieve it)‏ • Functional limitation useful to ensure utility – not as primary means of defining invention • Aliter, if the inventor provides a new and crucial step on the way to the known goal, it may be proper for him to claim all ways of achieving the new step.

8. IPI European Patent Office (cont.)‏ • Guidelines (CIII.6.10)‏ • “A claim may broadly define a feature in terms of its function, i.e. as a functional feature, even where only one example of the feature has been given in the description, if the skilled reader would appreciate that other means could be used for the same function..” • But if the function has not previously been achieved, presumably the skilled reader will not so appreciate. • A reasonable balance...

9. IPI Summary • The end achieved justifies (claiming) the new means • The first successful means doesn't justify a claim to all ways of reaching an end.

10. IPI Failures of EPO to apply (1)‏ • EP 301749 • Claim 17: “A soybean seed which will yield upon cultivation a soybean plant comprising in its genome a foreign gene effective to cause the expression of a foreign gene product in the cells of the soybean plant.” • Claims all GM soya • Revoked after 13 years in opposition • But not because of unreasonably broad claiming...

11. IPI GM sugar beet • EP 517883 B1 • Claims all GM sugar beet • Opposed and upheld on appeal

12. IPI A broader issue.. • Claim 15: (specific detailed method for producing GM sugar-beet)‏ • Claim 19: “Transgenic plants belonging to the beta vulgaris species and capable of being produced by claim 15” • How do you tell? • Now routine for EPO to grant claims in this form • Should it be?

13. IPI UK “product-by-process” • Not acceptable in continental Europe because “new process doesn't necessarily give rise to new product” • But sometimes the product is difficult to define except by its method of manufacture • Then EPO allows claims to product 'capable of being made by' process

14. IPI EPO view • Guideline CIII.4.12:“Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive. A product is not rendered novel merely by the fact that it is produced by means of a new process (..). A claim defining a product in terms of a process is to be construed as a claim to the product as such. ... Irrespective of whether the term "obtainable", "obtained", "directly obtained" or an equivalent wording is used in the product-by-process claim, it is still directed to the product per se and confers absolute protection upon the product.” • Fine – but what is the product that is protected?

15. IPI Functional claims • 'Capable of being made by' is also a functional definition • The skilled reader may appreciate that the method will produce materials other than those specifically described • But how does a competitor tell what those materials are? How can he tell whether his product (actually made by a different process) is or isn't capable of being made by the defined process?

16. IPI What does the claim mean to an English court? • Kirin-Amgen. Per Lord Hofmann: “The first requirement is that the product must be new and that a difference in the method of manufacturing an identical product does not make it new. It is only if the product is different but the difference cannot in practice be satisfactorily defined by reference to its composition etc that a definition by process of manufacture is allowed.” • Lord Hoffmann wants UK practice to conform to that of the EPO. But is the second sentence obiter?

17. IPI What does the claim mean to an English court? • It is quite logical (and now binding on the UK lower courts) that 'having been made' by a new process is not a feature that may be used to distinguish a new product from a similar product made by a known process. • But where 'having been made' does not distinguish, 'capable of having been made' does not distinguish either (logic not law)‏ • ... and vice versa!

18. IPI Circular argument • 'Capable of being made' claims allowable where product new • But what is the test for being new? • A claim is always to a class, never to a unique object • The class is defined by parameters (integers)‏ • Until the class is defined, you don't know if its members are new • So 'capable of being made' should never be the sole feature of novelty

19. IPI EPO errors 1. To assume that 'made by' and 'capable of being made by' mean the same - As a matter of English, they don't. 2. To assume too readily that a product made by a new process is necessarily new and inventive 3. To assume too readily that a product made by a new process cannot be defined in any other way.

20. IPI EPO errors (cont.)‏ 4. Not to realise that 'products made by' are a subset of 'products capable of being made by'. • If the former are not novel, then the latter cannot be either • If the latter are novel, the former must be too • No part of the EPO's job to insist that the claims are as broad as possible

21. IPI But what harm does it do? • The harm is done to competitors • They may not be able to tell whether they infringe • They may not be able to tell whether the claim is new or not. • So unless they are both rich and brave, they avoid the whole area. • ANTICOMPETITIVE – brings system into disrepute

22. IPI But what harm does it do? • The essential features of the product are not explicitly defined • These are left to be determined by the Court • To an infringer, the patentee says: “Your product is essentially the same as mine” (both have novel features a, b, etc, not found together in prior art)‏ • a, b, etc can be selected to suit the circumstances • Sometimes the process is vague (can produce a wide range of products)‏

23. IPI But what harm does it do? (3)‏ • To a novelty attack, the patentee says: • “The prior product is different from mine” (choosing features that support this)‏ • “You haven't proved that this similar process will necessarily produce my product” • (easier to do this because the exact nature of the product is undefined)‏

24. IPI What might be done? -1 • Change the practice! • 1.'Product-by-process' claims should be refused until the patentee shows: • that the process leads to a unique new product • that this can't be defined without reference to its method of production • that the claims include appropriate limitations not dependent on the method of production • 2. Allow the patentee UK-style product-by-process claims (where requested and appropriate)‏ • infringement a question of fact, not speculation

25. IPI What might be done? - 2 • Change the law! • Make Article 84 (clarity and fair basis) available after grant. • Fair scope of claim is vitally important, and ought to be reviewable • The Examiner is not infallible!

26. IPI Arguments against change • Difficult to decide 'fair basis' • also inventive step, but not a reason not to try • need to develop a robust jurisprudence • Would lead to captious objections and frivolous oppositions • more than at present? • Too difficult to legislate • counsel of despair

27. IPI “Puzzling questions..” • “What song the Syrens sang, or what name Achilles assumed when he hid himself among women, though puzzling questions, are not beyond all conjecture” • Sir Thomas Browne, Urn Burial • Likewise, scope of 'product-capable-of-...' claims Too low a standard *********