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Wednesday, 17 June 2009

Two new Patents Court judgments

The IPKat has been notified of two recent judgments coming out of the Patents Court of the High Court for England and Wales. The first of these, Edwards Lifesciences AG v Cook Biotech Incorporated, issued last Friday by the Honourable Mr Justice Kitchin, is a rather more weighty one than the second, Kapur v Comptroller General of Patents, which issued a while ago but has only just appeared on BAILII.

The case in Edwards v Cook related to EP(UK) patent 1255510 granted to Cook Biotech. Edwards applied to have the patent revoked, and Cook counterclaimed for infringement. Attentive readers may recall that Edwards have recently been on the other end of a claim for revocation, in Corevalve v Edwards Lifesciences (reported by the IPKat here). The issues this time round also involved implantable valves in the form of collapsible stents for delivery via a catheter (pictured above right). The issues for the judge to decide were (apart from a couple of minor feeble arguments about insufficiency and added matter) whether the patent was novel and inventive over a succession of cited documents.

Kitchin J arrived at the conclusion that the patent as a whole was obvious in light of one of these documents, which had been published before the priority date of the patent. The matter need not have then gone any further, but for good measure the judge also considered the effect of another document in the form of a scientific paper published between the claimed priority date and the application date of the patent. The paper was therefore only relevant if the priority claim was invalid. The priority application, a US provisional, was filed in the names of three inventors, only one of which was employed by Cook Biotech at the time. A PCT application was then filed one year later, in the name of Cook Biotech. Crucially, the other two inventors' rights were not assigned to Cook until much later, and not until after the application entered the European regional phase. Edwards' argument was that Cook had not derived the right to claim priority because, at the time the application was made, the right had not been assigned and they were only successor in title for one inventor, via a contract of employment.

Referring to sections 5 and 7 of the UK Patents Act, Article 8 of the PCT and, most importantly, Article 4 of the Paris Convention (which section 5 is intended to put into effect in the UK), Kitchin J came to the logical conclusion that the effect was clear:

"A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application. If he is neither the person who filed the earlier application nor his successor in title then he is denied the privilege. Moreover, his position is not improved if he subsequently acquires title to the invention. It remains the case that he was not entitled to the privilege when he filed the later application and made his claim. Any other interpretation would introduce uncertainty and the risk of unfairness to third parties. In reaching this conclusion I derive a measure of comfort from the fact that the Board of Appeal of the EPO has adopted the same approach to the interpretation of Article 87 EPC in two cases: J 0019/87 and T 0062/05."(paragraph 95)
The scientific paper was therefore prior art, and had the effect of some of the claims being found invalid for lacking an inventive step over this document. too Although the patent was found invalid anyway, this case does raise the issue that priority claims do need to be carefully considered. It is not enough just to have a connection with the priority application; a common applicant or a definite chain of title is really needed, which must be sorted out in advance of the claim being made.

The other judgment published recently involves the familiar name of Rajesh Kapur, an applicant for several patents that have already been considered in a previous judgment (see IPKat commentary here). Not to be put off, Mr Kapur decided to have another go at the UK-IPO, having been given a glimmer of hope by Mr Justice Floyd, who remitted the applications due to a failure to properly consider the mental act exclusion under section 1(2). Unfortunately, the principles of estoppel and res judicata prevented Mr Kapur from running with the same claims and similar arguments the second time round at the UK-IPO. His Honour Judge Fysh QC agree with the UK-IPO hearing officer, and dismissed the appeal.


Anonymous said...

BAILII has been very active recently. There is also an appeal court decision:

Also, a further patents court case:

which among other grounds for invalidity inclued that of being a mere discovery.


Anonymous said...

"A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application."

Presumably there is something in US law which gets round this stipulation? For example if inventor A works (to invent etc.) for company B in the UK and company B files a patent application in the UK in its name, how does the US filing claim priority when it needs to be filed in the name of inventor A? In fact, if you read a typical declaration filed after filing a US application it is the inventor who claim priority, but are they entitled to do so?

No doubt there is a simple answer to this, but please can someone enlighten me.

Anonymous said...

The answer to anonymous 2 is that the US application must be assigned, with the priority right, to the company during the priority year.

Darren Smyth

Anonymous said...

Sorry, I answered the reverse case of where the priority application is filed in the US in the name of the inventor. In the case that Anonymous 2 raises, the fact that the assignee of the US filing will be the UK company is apparently enough for a valid priority claim, even though it is filed in the name of the inventors initially. Priority is very rarely important in the USA in any case.
Darren Smyth

Anonymous said...

and basis for the above may be found in the following wordings

s5(3)... so disclosed in two earlier relevant applications filed by the same applicant (the corporate applicant in the present case)as in the case of the application in suit or a predecessor (the inventor of the invention in whose name the US application was filed) in title of his ...

is my understanding correct? Kindly confirm. Thank you.

Luke Ueda-Sarson said...

Any comments on how at para. 72-73 in Edwards Lifesciences, the judge says "formed with X" means "made from X"?

I can see multiple issues with this equation.

Regards, Luke

Anonymous said...

What Luke, like "This horseshoe was formed with a hammer" perhaps? But, in the context of the patent in suit, I can't see much to quibble about. If it is the collagen material that gives the "valve" its finished "form" then that valve must have been "made of" that material, no?

Luke Ueda-Sarson said...

'If it is the collagen material that gives the "valve" its finished "form" then that valve must have been "made of" that material, no?'.

Well, no, not to my mind.

"Made of" something to me means made (essentially) of that thing and not something else - "consists of", in other words. "Formed (or indeed, made, or fashioned, etc.) *with* something, ignoring the process issues you alluded to, seems to me to say "includes", not "consists of".

E.g. if I said "the excipient is made of gum arabic" I'd hope that would be understood as "consists essentially of gun arabic"; if I said, in a similar context "the excipient is formed/made with gum arabic" I'd hope that would be understood as "includes gum arabic" - to me the words "of" and "with" have rather different meanings.

Its the reason we write "consists of" and not, for example, "consists with".

Cheers, Luke

Anonymous said...

Well, yes, up to a point Luke. You're chem/bio, right? That's why I wrote "context". We are here thinking about a valve, and folks who design valves, and people who decide on the "form" of a valve. I don't think "made of" excludes a minor constituent of something other than collagen. Others?

Anonymous said...

Does Edwards v Cook change accepted practice more dramatically than meets the eye? According to parg 5.19 of the UK IPO Manual of Patent Practice:"

5.19 For priority to be claimed, the person making the application in suit must be the same person who made the earlier application or must be his successor in title.
Where there are several applicants on one or both applications it is sufficient if the two applications have an applicant in common... "

In this case, the later application does have a successor in title of the first application as an applicant... Thus, although the above text does not quite say it, one would have thought that it would have been sufficient for the later application to have an applicant who was successor in title of the first application.

Consider the simpler situation - Mr Obermiller had filed the original US application jointly with two others but had never assigned the invention and the PCT application had been filed by Mr Obermiller and noone else. Under 5.19 of the Manual of Patents Practice the PCT application would clearly have been entitled to priority... however, this judgement appears to indicate that that would no longer be the case...

Coach and horses...?

Anna Molony said...


When you say "fact that the assignee of the US filing will be the UK company is apparently enough for a valid priority claim", what is the basis for this? There is a US case (Boston Scientific Scimed v. Medtronic 497 F.3d 1293 (Fed. Cir. 2007)) that seems to say the opposite:
" a foreign application may only form the basis for priority under section 119(a) [35 USC] if that application was filed by either the US applicant himself, or by someone acting on his behalf at the time the foreign application was filed" - does anyone an employer filing a UK application from an employees invention count as someone acting on behalf of the inventor (employee)?

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