From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 2 June 2014

Monday miscellany

Photo by Mo LI
The OHIM IP Mediation conference in Alicante last week received a fair bit of attention on this blog (see posts here, here, here, here and here), as well as on Twitter (under the hashtags #ohim and #ipmediation).  One aspect of this event that received little attention on the blogosphere but which was a source of some keen interest at the time was the technique employed by this Kat for keeping his session on track.  A two-hour session in which seven speakers are asked in turn to give their presentations, leaving time for debate, is always in danger of running late so this Kat, who was moderating the session, turned to his friend Biffo for support. Biffo, portrayed together with this Kat in the illustration on the right, is usually an amicable soul but, when troubled by prospects of delay and unpunctuality, he is apt to growl a little.  The mere threat of his intervention was fortunately sufficient to have all seven of the speakers casting anxious glances at their watches and finishing with seconds to spare. Biffo thoroughly enjoyed the conference and hopes to be able to attend future events if his busy diary permits.

Can you help?  The IPKat has a friend who is an Italian-qualified avvocato with over six years' IP experience; his particular focus is on patent law and patent litigation. Naturally he is a person of considerable talent and upstanding character.  Right now he is looking for a position with a law firm or in-house legal team in Milan.  For the avoidance of doubt, that's Milan, Italy and not Milan, Quebec, Milan, Colombia or Milan, Iran. If you are one of our Italian readers and need a patent-y person, email the IPKat here and your request for further particulars will be passed on.

The Unitary Patent Court: more on this morning's post.  Following the publication this morning of an Allen & Overy survey, this Kat posted this piece in which, among other things, he asked about its methodology. A&O has now made available this link to a pdf that summarises the survey in much greater detail and which explains:
YouGov find the coolest people to interview
This survey consists of 152 interviews completed with individuals who have responsibility for, or oversight of, their company’s European patent portfolio and decisions regarding the Unified Patent Court. Interviews were completed by YouGov online and by telephone between 1 April 2014 and 16 May 2014. Respondents are all drawn from the European headquarters of large and medium-sized, patent-owning enterprises (predominantly in the UK, Germany, France and the Netherlands), of which 81% have their global headquarters in Europe, while 19% are headquartered outside Europe. 88% of respondents are drawn from the life sciences, pharmaceutical, telecoms, media and technology, and industrial/manufacturing sectors. 
This Kat has since received even more information from Rebecca Hooper (A & O), who helpfully explains:
For further information on the sample, all companies had to be a medium or large enterprise, with medium defined at 50-249 employees and large defined as 250+ employees (this definition of number of employees is the one used by the European Commission).

By turnover the split is as follows (all with 50+ employees): Less than £50m – 32%; £50m-£500m – 38%; +£500m – 29%; No answer – 1%

It is worth noting that 59% of respondents had a portfolio of fewer than 50 patents.

The sector breakdown is as follows: Life sciences / pharma: 32%; TMT: 30%; Industrial / manufacturing: 26%; Other 13%
The estimation that costs of patent litigation in Europe  at least five time lower than in the United States is stated by Rebecca to be "an opinion from Allen & Overy resulting from our litigation experience across both the U.S. and Europe". So now you know!

This Kat has never made a secret of his enthusiasm for non-binding opinions which the UK Intellectual Property Office makes available for a modest price to anyone wondering about whether a patent is really valid or what the scope of its infringement might be.  Well, there have been developments.  According to a smart-looking document called "Amendment of the Patents Rules 2007: Expansion of the Patent Opinions Service and Renewal fees for restored European patents (UK)" it appears that
Section 16(1) of the IP Act allows for the matters upon which an opinion can be requested under section 74A of the Patents Act 1977 to be prescribed in rules. As explained in the Government’s response document to the 2012 consultation on the expansion of the IPO Patent Opinions Service, this new power will be used to prescribe wider grounds on which an opinion can be sought. Responses to the 2012 consultation gave overwhelming support for extending the Patent Opinions Service to the following matters: 
• whether the invention in question is not capable of industrial application;
• whether the invention in question relates to matter excluded by section
1(1)(d) of the Patents Act 1977;
• whether the specification of the patent does not disclose the invention
clearly and completely enough for it to be performed by a person skilled in
the art;
• whether the matter disclosed in the specification of the patent extends
beyond that disclosed in the application for the patent as filed;
• whether the protection conferred by the patent has been extended by an
amendment which should not have been allowed;
• whether a particular act constitutes or (if done) would constitute an
infringement of a Supplementary Protection Certificate (SPC); and
• whether an SPC is valid [The bullet-points here show how far the UK government is happy to push non-binding opinions. This Kat wonders whether, when they are available for so many more things than they are at present, people will make proportionately more use of them, as a preliminary to ADR as well as when contemplating litigation].
The IP Act also introduces a power which will allow the Comptroller to start the
process of revoking a patent if an opinion has been issued indicating that the
patent is not novel or lacks an inventive step. 
The Government does not propose to introduce any secondary legislation in
respect of this new power to initiate revocation proceedings. The following
safeguards will exist:
• The patent holder will have the opportunity to apply for a review of the
opinion under section 74B of the Patents Act 1977 before any revocation
action is commenced (section 73(1B), as inserted by the IP Act).
• Section 73(1C), as inserted by the IP Act, specifies that the patent holder
will have the opportunity to make observations or amend his patent before
any revocation takes place.
• If the patent is revoked, the patent holder will be able to appeal this
decision to the courts (section 97 of the Patents Act 1977).
In addition, the IPO will only exercise this power in clear-cut cases where the
patented invention clearly lacks novelty or an inventive step.

Italy and Ireland have more in common than their proximity in the alphabet: they share a forthcoming event.  On 20 June, in Dublin's fair city, fellow Kat Eleonora Rosati participates in the Copyright Association of Ireland's update seminar together with evergreen Irish IP expert and enthusiast Bob Clark. Details of the seminar can be found here, and Eleonora's post about it is here.

1 comment:

Anonymous said...

Does anyone know the stats on how many patents are found invalid in IPO opinions? Is it comparable to EPO opposition revocation rates?

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':