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Saturday, 28 August 2010

Blogs and EP Oppositions

Once a patent has been granted by the European patent office, Article 99 EPC allows for a nine month period when anyone can oppose it. Oppositions are filed on only a small fraction of patents that are granted by the EPO. Most are granted unnoticed by everyone except the people concerned. Even for those who do pay attention, the cost of filing an opposition will act as a fairly strong deterrent to all who do not have deep pockets or a strong case (preferably both), together with the nerve to see the process through to its, often protracted, end. This should be borne in mind when reading the following.

European application 01309765.4, filed in 2001 by Open Business Exchange Limited (later changed to OB10 Limited), was granted as EP1220114B1 by the EPO on 29 October 2008. According to the EPO Register, this is the only patent that OB10 have had granted by the EPO, and is also the only application they have filed (and which has been published). The patent relates to a way of translating electronic invoices from one format to another, using software that translates an incoming invoice into a standard format and then translates the invoice from the standard format into another format for output. This allows businesses to issue invoices in their own format and ensure that whoever receives the invoices gets them in their own chosen format.

On May 30 2009, a blog post was written about the patent, claiming that the patent was invalid because it was an "attempt to patent an old pattern [sic] known from middleware products and VANs". As well as citing some prior art known to him, the author of the post, Mikkel Brun, mentioned that there was a 9 month period for opposition (helpfully providing a link to the appropriate form) and stated the following:

"I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard! I have been told that an opposition has to be made for each individual country covered by the patent [IPKat comment: this is wrong - one is enough], so it is not a trivial task lying in front of us."

Mr Brun then followed up with another post on 6 June 2009 detailing further references and comments about why in his view the patent was invalid.

A total of 19 notices of opposition were subsequently filed against the patent, between 10 July 2009 and the final date of 29 July 2010. Thirteen of these were filed in the last 3 days which, though slightly risky, is common practice for attorneys used to working towards tight deadlines. Except for one notice filed by Certipost NV, all were filed by European patent attorneys on behalf of their clients. Only one has since been withdrawn. Most, if not all, of the opponents must therefore have been willing to spend substantial sums of money (most likely thousands of Euros) in getting proper advice and having their notices filed for them, together with paying the official opposition fee in each case.

As a result, at the latest count, the prosecution file runs to 7833 pages. This is a lot of material to get through, and would make dealing with and defending the oppositions somewhat time-consuming. In their letter of reply to the oppositions, the proprietor's attorney stated:

"It is believed that the large number of oppositions is due to a blog created by one Mikkel Hippe Brun which can be seen at http://blog.schemaworks.com. For example, the blog has EPO Form 2300 available as a download to enable opponents to launch an opposition [IPKat comment: this is wrong - the blog only provides a link to Form 2300 hosted on the EPO's website, and provides no clues as to how it should be filled in].

Whilst it is accepted that any person may give notice of opposition under Art. 99 EPC, it is submitted that setting up a blog to inundate the proprietor with oppositions is an abusive process which puts the proprietor as a relatively small company at a significant disadvantage. The proprietor requests that the Opposition Division bears this in mind during the opposition procedure, particularly with regard to requests for extension of time and an award of costs, if deemed appropriate."

I can see how such a large number of oppositions being filed against a patent could make its proprietor a bit annoyed, but I fail to see how anyone could be held to blame for this merely as a result of publicising the fact that i) a patent has been granted and ii) an opposition could be filed, together with some ideas that might be useful in opposing the patent. If that was the case, then perhaps the IPKat himself should be worried, after he pointed out the possibility of an opposition in another case, after which several oppositions were filed.

The main function as far as I see it of the opposition procedure is to provide a way of getting patents that should not have been granted off the register before they become much harder to remove once they become purely national rights. The EPO examination procedure, thorough though it is, is not perfect, and cannot be expected to always pick up the sort of prior art that someone working in the field of technology in question would know of. This seems to be one of those cases, and I would not be surprised if the patent does not survive being opposed. It may be hard on the proprietor, but if you play the game you have to face the possibility of others playing it too.

5 comments:

Anonymous said...

Multiple oppositions are not unusual in other technical areas, in particular biotechnology, for example the Harvard Onco-mouse case had 17.

To my knowledge, there is no legal way of limiting the access of third parties to the opposition procedure other than by rejecting their oppositions either in the final decision on opposition (i.e. finding the opposition unfounded) or rejecting it as inadmissible (for failure to satisfy certain formal requirements or more particularly for failure to provide sufficient substantiation). The outcome of inadmissibility by reason of insufficient substantiation is more probable where opponents rely heavily on prior public use, since this allegation is harder to prove and requires more substantiation in the notice of opposition in order to satisfy the requirements of admissibility (T328/87).

That said, most such cases are settled at oral proceedings. This can become logistically awkward, since with so many parties, the hearing will take several days in order to give all parties the chance to comment as required by Art.113(1) EPC. However, the more parties there are, the harder it is to find a day, or in this case a series of days, where none of them has a legitimate reason for not attending.

Anonymous said...

"I urge suppliers of Middleware products and service providers to send an opposition to the patent. This could hit you hard!"

This is not merely making the existence of the patent known, but is in fact scaremongering.
(I'd be interested to know if Mr. Brun knows anything about patents - "hit you hard" suggests to me that he believes the patent will stop people continuing what they are already doing.)

"The proprietor requests that the Opposition Division bears this in mind during the opposition procedure, particularly with regard to requests for extension of time and an award of costs, if deemed appropriate."

This does not seem unreasonable. They arent asking for costs from Mr. Brun.

Anonymous said...

I wish more cats were poised to pounce when an unreasonable patent is accepted. Opposition is the self-control mechanism of the system.

I see no problem in organising this work by means of modern technology such as by blogging. The cost-saving for the opponents would have been to have organised the attacks to a few oppositions having several opponents merging their interests. They have 9 months to do that.

It is quite true that you are permitted to continue what you are doing if you were doing that at the time of application, but it does not help much if you are in a field that changes quickly, because you are restricted to precisely that, and the patent may be broader. And the burden of proof of this activity lies on you. If you were doing it publicly before the priority date, the patent becomes invalid, if you oppose or use the material in a court case.

The problem for the proprietor is the huge administration required in the defence. They have already structured the prior art into a document of about 100 references total.

Kind regards,


George Brock-Nannestad

Anonymous said...

It is quite true that you are permitted to continue what you are doing if you were doing that at the time of application, but it does not help much if you are in a field that changes quickly, because you are restricted to precisely that, and the patent may be broader.

Also, where there's a private prior use exception, you are permitted to continue doing what you were doing, but only in the country in which you were doing it. This, in Europe in particular, may be a big restriction.

Also, while you may be permitted to continue doing what you were doing, your (new) customers won't be permitted to start doing what you were doing. This, in particular in the business IT field, may be a big obstacle.

And, in any case, you'll be obliged to prove that you were already doing it at the time the patent application was filed, which in most cases will be a tall order.

Maybe a thorough revision of the private prior use exception is warranted, in view of developments in the IT field. What in any case should be improved are the working practices of the whole software branch when it comes to documentation and disclosure, so that prior art is better disseminated and in a more transparent manner. This would be to the benefit not only of the patent system, but also of the "useful art" of software development. There's something distinctly guildlike in the way software developers still work.

Update said...

Just wanted to post an update to the matter. It seems like the OB10 has been rejected by the European Patent Office in 2011.
Georg

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