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Monday, 22 February 2010

Watch out for the patent that never was!

The IPKat's friend Jenny Sunderland (Wragge & Co LLP) has written to him with a truly amazing proposition: "Question: When does a patent that does not exist exist? Answer: when the European Patent Office says it does". She explains:

"I have a client with a distinctly fishy problem. It has been sued in the UK with respect to a EP (UK) patent that shouldn't exist. The facts are quite interesting and have far-reaching consequences.

The patentee filed a Request for Grant that did not designate GB and which also contained express wording that GB should not be designated. At some point during prosecution the applicant and the EPO began working on the assumption that GB was in fact designated and an EP (UK) patent was duly granted.

This GB designation issue has been raised with both the EPO Examining Division and the Opposition Division (as part of ongoing opposition proceedings). The Opposition Division acknowledged that a mistake had been made and said that "they regretted any adverse effect that might result for our client or more generally for the public". They passed the issue on to the Examining Division.

The Examining Division were less willing to admit the mistake. They said first that the mistake should have been clarified with the applicant: as it wasn't, there was no explicit withdrawal of designation. Secondly, they said that even if there was an explicit withdrawal of designation, the EPO would be bound by a principle of good faith and cannot correct the decision to grant to the disadvantage of the patentee.
Under the current law and guidelines of the EPO the lack of GB designation means (a) that there is no need for future withdrawal because (b) the UK patent never came into existence and (c) it cannot be revived whether by principle of good faith or otherwise. The EPO also claims that the actions to rectify this mistake are inadmissible; the matter is between the EPO and the patentee. So then how is a party to UK litigation and opposition proceedings to correct a clerical error made in the EPO during prosecution that will potentially cost it many millions of pounds?

I would be grateful for your view and the views of the IPKat readers on this one".
The IPKat wonders whether a British court would grant the equitable remedy of injunctive relief to restrain the doing of an act which is unlawful only on the basis of an error which the alleged infringer had no locus standi to seek to correct. Merpel notes that sometimes kittens are created accidentally and when their owners don't intend to have them, but that doesn't help here ...

21 comments:

Anonymous said...

“At some point during prosecution the applicant and the EPO began working on the assumption that GB was in fact designated and an EP (UK) patent was duly granted.”

and

“It has been sued in the UK with respect to a EP (UK) patent that shouldn't exist.”

Could that be a typical case of “a change of mind” since “The patentee filed a Request for Grant that did not designate GB and which also contained express wording that GB should not be designated.”

Should the resultant “patent” be allowed to be enforced, despite the “patent” owner’s initial intention to not designate UK?

What if the other party knew of the EP patent but proceeded in UK on the basis of their finding of “EP(UK) not designated”.

Even for raising an issue of “prior use rights” by the other party, there, at least, has to be a validly granted patent in the first place.

And what would be the basis for “correcting” the situation at the EPO please?

“Inadvertent error”, “immediately evident that nothing else would have been intended than what is offered as the correction”?

Charanjit said...

INFACT IF THE PATENT IS EP DESIGNATED AND DESIGNATED IN GB NOR VALIDATED AFTER THE GRANT OF EP THEN IT SHOULD NOT BE ENFORCEABLE IN GB AND AT ANY OTHER EP MEMBER COUNTRY WHERE IT HAS NOT BEEN VALIDATED

Kevin Cordina said...

It seems grossly unfair that this patent should be allowed to be enforced, but I see how the situation has propogated and why it is difficult to escape from.

Re: anonymous, the test you mention would not be applicable as any error would not be in the description, claims or drawings, the correction would have to be in some document filed by the Applicant noting the GB designation.

I would have thought this was a prime candidate for correction under Rule 140 EPC, but as noted above it is likely difficult for a non-applicant to obtain action under this section, even though it is silent on who can request correction.

It is interesting to note that Rule 139 and UK Seciton 117(1) do not place any restrictions on who can apply for correction. It therefore seems possible that anyone could request correction. I'm not sure what you'd request correction of in this case, but it may be route in.

Could the patent be attacked under Section 72(1)(d) as extending beyond the scope of the application as filed? At the date of filing the EP application did not designate the UK and hence at the filing date could be argued to have no scope here. The patent clearly does have scope, and hence should be revoked?

Anonymous said...

At least let's have the EP number so we can look at the file history.

Anonymous said...

One option might be to apply to UK Courts for rectification of the UK register to remove the EP(UK) under s. 34?

patently said...

"The patentee filed a Request for Grant that did not designate GB and which also contained express wording that GB should not be designated."

compared to:

"The Examining Division [said] there was no explicit withdrawal of designation."

Ask for an appealable decision from the ED?

(I like the Section 72(1)(d) argument, though)

Anonymous said...

"how is a party to UK litigation and opposition proceedings to correct a clerical error made in the EPO during prosecution"

I wonder if the answer is just that the patentee isn't supposed to be able to? The grounds on which you can oppose/revoke a patent are set out explicitly in the EPC and UK Act, and form an exhaustive list. (Presumably this is to avoid people applying to revoke a patent because of a trivial matter such as the drawings straying too far into the margins, amongst other things.) "Clerical errors during prosecution" isn't on the list, so you can't attack a patent that way. Is it as simple as that? (Feel free to say "no"!)

Anonymous said...

EP1495908

It's the Virgin Atlantic case.

http://www.bailii.org/ew/cases/EWCA/Civ/2009/1513.html

http://ipkitten.blogspot.com/2009/10/comfy-chair-court-says-skilled-reader.html

Jason Rice said...

There seems to be some parallel here with an issue in the EP divisional patent No. 1495908 which underpinned the UK Court of Appeal decision late last year for the “flat-bed seat” of Virgin Atlantic (http://ipkitten.blogspot.com/2009/10/comfy-chair-court-says-skilled-reader.html).

When preparing a short synopsis of this case for internal current awareness, I noted that there are two Board of Appeal hearings scheduled for April, one for the actual Opposition and another concerning a request to the EPO by one of the opponents for removal (correction) of the GB designation, on the basis that this designation was never validly made by Virgin. The BoA’s preliminary view in the Summons is that the opponent has no right to request correction of the GB designation (not a party to the (ex-parte) pre-grant procedure) and that this designation is valid anyway. This might be of some use to your correspondent.

Anonymous said...

All the fuss in the US about relief from infringement being equitable makes me wonder whether there is room for the English court in its discretion somehow simply to decline to give the patent owner any relief. But I'm not a lawyer or a litigator.

In the long run, cases like this will be useful, to the extent that they remind the EPO of the consequences of being too Applicant-friendly. There was a time when the Boards of Appeal would uphold all sorts of old rubbish claims, till it was pointed out to them how much mischief the owner of such claims can make, in infringement proceedings.

Chris H said...

I find the EPO's reasoning extraordinary.

First they say 'there was no explicit withdrawal of designation'.

However the letter of filing specficially states that the UK should not be designated.

Secondly they say that they cannot correct the error because they 'would be bound by a principle of good faith and cannot correct the decision to grant to the disadvantage of the patentee'.

However, when the UK is specifically not designated it is usually due to a co-pending UK application that could be revoked under s73 if an EP(UK) is granted. Therefore by acting as they have (which in my opinion is not 'in good faith' as it goes against their instructions) the EPO has actually potentially acted to the disadvantage of the patentee (the opposite of what they claim!).

I agree with some of the other commentors in that the way of dealing with this now lies with the UK Act, either s34 or failing that s72(1d).

Anonymous said...

@Anon of 10:18AM: Yes!

Art. 138 EPC is pretty clear: the applicant never having designated a state is not a ground for revocation in national proceedings.

Similarly, there is no way to fight the patent on this ground before the OP in opposition (Art. 100 EPC), while a third party simply does not have any other legal means before the EPO.

One might argue that the EPO should apply R. 140 EPC on its own motion, but it seems pretty clear to me that the decision to grant expresses the manifest (albeit erroneous) intention of the Examining Division. See G 1/97, r. 2(c): "Here, it should be noted that a legal error, no matter whether it concerns substantive or procedural aspects, cannot be corrected under the Rule cited." If the applicant had been unhappy with the erroneous designation, he should (and could) have appealed. This is not something that can be corrected under R. 140 EPC.

(Btw, I'm pretty sure that a third party can't request a correction under R. 140 EPC and certainly such a (non-)party could not appeal a refusal to correct (Art. 108 EPC), but in any case this does not matter here for the above reasons.)

It is not different for other procedural deficiencies, unless the deficiency can somehow be related to one of the grounds mentioned in Art. 100 and 138 EPC.

For example, a third party can't directly contest a decision on a request for re-establishment of rights in favour of the applicant, even if the decision was utterly wrong and the applicant should have lost all its rights in the application. However, if this request for re-establishment was in respect of the priority period and relevant intermediate documents are available, it might be possible for a third party to indirectly contest the decision on the request for re-establishment (through an attack on novelty and/or inventive step based on the intermediate documents).

The alleged infringer might consider suing the EPO in a German or Dutch civil court (Art. 9(4)(b) EPC). The immunity granted by Art. 3 of the Protocol on Privileges and Immunities will be a problem, though. The argument that immunity should not be granted if there is no other legal means as in this case will most likely fail.

The UK patent being valid, the IPKat's suggestion seems to be the only thing left. I can't judge its merits from a UK law point of view. I do see a problem with Art. 64(1) EPC, but maybe this can be argued around.

Btw, I agree with Anon of 11:19AM that cases like these show that it is important that the EPO strictly applies the rules. (Note that the EPO can be blamed for making the mistake, but not for not correcting it. It's the EPC and the rule of law that prevents correction.)

Meldrew said...

The application was filed in 2004 and granted prior to EPC 2000, hence EPC 1973 applies to status of designations.

EPC 1973 Article 3

The grant of a European patent may be requested for one or more of the Contracting States.


EPC 1973 Article 79(1)

The request for the grant of a European patent shall contain the designation of the Contracting State or States in which protection for the invention is desired.

EPC 1973 Rule 26(2)(h)

The request shall contain:……

(h) designation of the Contracting State or States in which protection of the invention is desired;


Request form stated [emphasis in original]:-

“GB is expressly NOT designated in this application. Apart from GB, all other EPC contracting states which were designated in EP02751416.5 are designated in this application”


This unequivocal statement that GB was not protected can be seen as more than equivalent to a withdrawal of protection for GB – see for example J10/87. This is an ab initio total surrender of all rights for GB.

Accordingly, even though the EPO published the application showing GB as a designation, and granted the patent showing a GB application, a patent was never granted in respect of GB because the application did not contain an effective designation of GB. The EPO cannot grant a patent in respect of a country which is not designated – that is outside its competence. [Just as I can never win the lottery because I never enter it].

On correction under Rule 140, in the Summons to Oral Proceedings, the Board of Appeal seems to be confusing issues of entitlement to appeal with entitlement to request a correction. It is clear that the opponent is not entitled to appeal what happened during the grant procedure, but they can appeal what happened in the opposition procedure.

Rule 140 contains no restriction as to whom may request the correction of a decision. There is no requirement for the request to be by a party, but in any case, during the opposition proceedings the opponent is a party and so entitled to make a request.

The Decision in G8/95 partitioned proceedings between the Technical and Legal Boards of Appeal in the matter of a refusal by an Examining Division for correction of the decision to grant under Rule 89 EPC 1973. Internal partitioning is not relevant to the fact that it is the EPO that is the responsible party – if they make a mess they should clear it up.

In the present case there was a request made during the Opposition Procedure, to correct the decision to grant. The refusal to allow such a request is an appealable decision.

To refuse the correction would place the EPO on a par with the laws of the Medes and Persians – an error made could never be corrected.

The EPO should reach a grown up decision – they screwed up – they should fix the screw-up.

Anonymous said...

Anon of 1:16AM here.

@Meldrew:
"On correction under Rule 140, in the Summons to Oral Proceedings, the Board of Appeal seems to be confusing issues of entitlement to appeal with entitlement to request a correction. It is clear that the opponent is not entitled to appeal what happened during the grant procedure, but they can appeal what happened in the opposition procedure."

IMO the Board is actually quite clearly correct in its view that any correction of the grant decision is not part of the opposition procedure (G 8/95, etc.). However, it does not matter since Rule 140 EPC cannot be used to correct this type of mistake anyway (G 1/97, etc.). (The reasons given by the ED seem to fully miss the point though!)

"The EPO should reach a grown up decision – they screwed up – they should fix the screw-up."

Sure, but the EPO simply does not have the power to clear up this mess. That's it, game over. The EPO can't ignore the EPC, not even in a case like we have here... See again G 1/97, actually: if the EPC does not expressly provide a remedy, there is none.

Opposition and revocation are possible only on the grounds listed in Art. 100 and 138 EPC. The EPO or a national court can't undo a granted patent when it turns out that the applicant never paid the filing fee. This was clearly a conscious decision by the legislator.

"In a codified legal system such as the EPC, the judge cannot simply decide, as the need arises, to substitute himself for the legislator, who remains the primary source of law." (G 1/97)

Anonymous said...

Is the request in fact (or should that be in law) as unequivocal as it appears?

The EPO's base position appears to be that the applicant's initial position is ambiguous.

Without wading through every document, I can only suggest it is finding this on the grounds that the express entry in box 16-1 and the default check mark at 6-5 are inherently contradictory.

Of course, we can all guess from this what we think the applicant meant. We may not think the intent is in any real sense unclear. But in the narrow legal sense, perhaps it is. Hence no express, unambiguous withdrawal.

Anonymous said...

"Is the request in fact (or should that be in law) as unequivocal as it appears?"

Now that you mention it, it's not 100% clear to me either that the EPO made a mistake.

At least one statement of the ED in the letter of 17.04.2009 is really wrong, though. According to the ED, "designation is by payment, NOT by indication on 1001". That cannot be right, since it should be impossible to designate a state that at some earlier point was not designated. Furthermore, Art. 80 EPC 1973 makes clear that states must be designated already at the date of filing. Since there is no good reason not to designate all states at the date of filing, Form 1001 has a preprinted designation of all states, but that does not mean that one could not selectively designate states at filing. (It is not mandatory to use Form 1001 at the date of filing.)

I also don't think that the applicant's entry in box 16-1 in the present case is an attempted withdrawal of the designation (as the ED seems to think). It does not attempt to withdraw the GB designation; it attempts to not make the GB designation.

Whether it succeeds (or rather, should have succeeded) in not making the GB designation I'm not entirely sure about. This seems to be a question of interpretation. I'd say it does succeed (i.e. the EPO did make a mistake). The statement in box 16-1 is quite clear and is clearly intended to overrule box 6-1, and imho we don't need an explicit statement of "withdrawal" of a designation in the sense of Art. 79(3) EPC 1973.

However, if it were my task to argue that GB was validly designated, I would point at Rule 26(1) EPC 1973: the applicant must file Form 1001 at some point. While it is not mandatory to file this form together with the application, in the present case the applicant clearly chose to do so. One could argue that the applicant has no way to rearrange the items of Form 1001 (as the applicant tried to do in box 16-4), since if it were allowed to rearrange items in Form 1001, Rule 26(1) EPC 1973 would lose much of its purpose. In this line of the reasoning, the EPO should look only at box 6 to determine which states were designated.

If anyone knows case law on this...

Anonymous said...

It must be catching. I have a European application ex-PCT. No fees were paid to the USPTO for the PCT application. However, the USPTO ignored this for some considerable time and the PCT application although dead appeared to be "alive" when the EP regional phase was instigated. After EP regional phase entry the deficiency was spotted but too late. After much head scratching the EPO agreed that it had to proceed after the payment of a small fee. This Dead Parrot is no more it is alive and kicking in the EPO!

Anonymous said...

What a confusion!

The 'new' EPC is more clear:

Art. 76(2) EPC states that '...ALL contracting states designated in the earlier application at the time of filing of a EP divisional application shall be deemed to be designated in the divisional application".

Anonymous said...

Meldrew here

Anon of 1:16AM referred to G1/97.

Please explain why this is at all relevant to Rule 140 in the present circumstances? G1/97 was specific to the facts relating to requests to review decisions of Boards of Appeal. There was no indication as to the limitation of by whom and by when requests for correction can be made.

Review of decisions of Boards of Appeal now has its own specific procedures and so it is not clear what G1/97 woud bite on.

Anonymous said...

G 1/97 is relevant to this case in two ways.

Firstly, it follows from G 1/97 that, assuming the designation of GB in the granted patent is indeed erroneous, this cannot be corrected under Rule 140 EPC (corresponding to Rule 89 EPC 1973). This is so because this designation is a legal error. See reasons 2(c): "ETA has also claimed that a request for review was possible under Rule 89 EPC, on the basis that a violation of fundamental procedural principles constitutes an obvious mistake. Here, it should be noted that a legal error, no matter whether it concerns substantive or procedural aspects, cannot be corrected under the Rule cited."

Secondly, G 1/97 makes clear that the Boards cannot "create" a legal remedy that is not expressly provided by the EPC. In a case where the EPO has screwed up, the Boards can only fix the screw up if the EPC allows this. The "internal partitioning" defined by the EPC cannot be ignored, as you seem to suggest it should. G 8/95 cannot be put aside only because the EPO has made an error and this would allow fixing it (well, it wouldn't fix it because of the previous paragraph, but that's beside the point).

By the way, if this error was of a type that could be corrected under Rule 140 EPC (which it is not), I would agree that the EPO should gently and internally coerce the Examining Division into applying Rule 140 EPC of its own motion. So in that sense I can agree with you. But that doesn't mean a third party has a way of legally enforcing it. It would have to resort to diplomacy (i.e. in the hypothetical case that Rule 140 EPC had allowed correction).

Anonymous said...

No fees were paid to the USPTO for the PCT application. However, the USPTO ignored this for some considerable time and the PCT application although dead appeared to be "alive" when the EP regional phase was instigated. After EP regional phase entry the deficiency was spotted but too late.


The USPTO sometimes makes a real mess, there are horror cases where applications are misplaced for years, and then forwarded to the EPO for the Chapter I search, long after the delay for entering any national phase has expired. Since a search fee was paid, searched must the application be. The strange thing is that the applicants don't seem to notice that their previous IP has gone missing.

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