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, 25 May 2015

The purpose of appeal in the patent system: dissenting opinions, oversight and law-making

This article is mostly about appeal procedures at the European Patent Office (EPO). For those readers who are not familiar with how the EPO organises itself, here is a simplified structure:

First Instance: Examining Divisions and Opposition Divisions.

Second Instance: Boards of Appeal which deal with appeals from the First Instance.


Something terrible needs to have happened
for a Petition for Review to succeed
The Enlarged Board of the EPO decides on referrals from the Boards of Appeal on important points of law. The Enlarged Board also deals with Petitions for Review as discussed below.

Petition for Review is not a third instance

This Kat recently read decision R 5/14 which concerns a Petition for Review. A Petition for Review is a relatively new procedure at the (EPO) in which a party can ask the Enlarged Board to review a decision of a Board of Appeal. However for a Petition to succeed there normally needs to be a fundamental procedural defect, and this happens rarely. In the case of R 5/14 the Petitioner had a long list of complaints against a Board of Appeal, but no real chance of success. In its decision the Enlarged Board said:
'The review procedure is an exceptional means of redress created by the legislator in the amended EPC 2000 with a view to rectifying intolerable procedural violations. It was never intended to operate as a third instance. These principles were established in the first decisions taken on petitions for review (see e.g. R 0001/08 of 15 July 2008, Reasons 2 and 3). The right to be heard does not mean that the Board must accept argumentation; it must merely consider it. Equally, it does not mean that the Board has to allow requests; it simply has to give reasons when refusing them. If the Board's response does not satisfy a party, that is not a procedural violation; it simply means that the Board took a different view of the facts. And that is not a matter for the Enlarged Board.'
This statement is a comment both on the function of Petition for Review and also on the extent to which a Board of Appeal needs to ‘indulge’ a party. It made this Kat wonder about the different functions that the appeal process serves within the patent system.

Different types of appeal procedure

There are two types of appeal procedures. Appeals ‘on the record’ or ‘de novo’. Appeals which are ‘on the record’ consider whether something went wrong in the original decision-making process, and this is what happens in a Petition for Review. In ‘de novo’ appeal there is essentially a re-hearing of a case, and to an extent this is what the Boards of Appeal do.

The way the EPO Boards of Appeal work

In this Kat’s experience EPO Appeal Boards have a better understanding of the case law and the principles behind it compared to Examining and Opposition Divisions. That means Appeal Boards can be flexible in applying case law, going beyond a formulaic approach, presumably due to their years of experience compared to the First Instance.

Having the correct perspective
lets you see the bigger picture
An Appeal Board has before it the decision made at First Instance, and is in essence going to look at the correctness of that decision. Appeal Boards are becoming more reluctant to allow new evidence or claims requests to be filed during the appeal proceedings. Whilst this makes it more difficult for the parties in appeal one can see the logic behind it. Within these constraints Appeal Boards do essentially re-hear a case and will often make decisions on the relevant issues which are different from the First Instance decisions.

As an aside it is interesting to note that whilst Appeal Boards are becoming increasingly strict in allowing new claim requests, the introduction of the Central Limitation Procedure at the EPO has created a means for the claims be amended between First Instance and Second Instance in national court proceedings (here).

What are Boards of Appeal correcting?

Many patent decisions can go either way. There will be reasonable arguments for and against, but a decision has to be taken for or against the parties. The concept of the ‘Dissenting Opinion’ (though it does not happen at the EPO) reflects this reality of legal decision-making and allows an alternative version of what could have been decided to be recorded in the decision so that it may benefit the development of case law in some way.

Given that patent decisions are often close to the borderline and made on the basis of complex facts and arguments the means to review them thoroughly needs to be available. Inevitably a proportion will be incorrect. Many decisions are improved simply by having a second set of eyes look at them.

In this Kat’s experience a Board that has in front of them a First Instance decision together with the views of the parties about the decision is well placed to focus on the most relevant issues and arrive at the best perspectives. Thankfully, Boards of Appeal are normally prepared to reconsider any issue that needs to be looked at again, and will do so as is needed to arrive at the most correct outcome. This Kat has found the Boards of Appeal to be more probing in their analysis, more appreciative of the subtleties of a case and better able to match the contribution with the appropriate claim scope in comparison with the First Instance.

When the appeal process creates new law and new directions

This Kat is fascinated by the power that the highest courts have in making new law, and really changing things. There are numerous examples of the EPO Enlarged Board doing this, but equally the US Supreme Court (here) and the UK Supreme Court (previously the Law Lords of the House of Lords) have the ability to make substantial changes to case law or to create new principles. The Court of Justice of the European Union (CJEU) also has this role and for example has recently been interpreting what an ‘embryo’ is (here).

It's not always easy to see the
reasoning behind a decision
This Kat believes the UK Supreme Court’s first patent decision was an interesting one in this respect. In Human Genome Sciences Inc. v Eli Lilly and Company [2011] UKSC 51 the Supreme Court reversed the findings of the High Court and Court of Appeal. These lower courts had viewed the invention to be at the level of a ‘research project’ and not yet at the point of being a patentable product. However the Supreme Court felt a much more lenient view was needed, and I believe introduced a more balanced and nuanced view of how a ‘contribution’ gives rise to patentable claim scope. Similarly in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc. [2008] UKHL 49 the House of Lords tried to change inventive step case law in the UK to be more in line with EPO thinking.

The correcting guidance of oversight

The US Committee on Oversight and Government Reform (here) keeps an eye on the activities of the US government. Its existence shows that every structure with the power to make decisions needs overseeing. At the EPO the Boards of Appeal have the function of keeping Examining and Opposition Divisions in line, and the Enlarged Board in turn oversees the work of the Appeal Boards. The existence of oversight will in itself improve the performance of the First and Second Instances as they bear in mind the possibility of review of their decisions.

The need for ‘good’ reasoned decisions

As mentioned above the existence of a First Instance decision will help an Appeal Board in its work to possibly come to a more correct view. However I believe a Board is helped if the First Instance decision explains its reasoning as fully as possible. Clearly a decision is most helpful when it can be seen how the relevant Instance came to that view and which principles were followed or developed. In this respect this Kat has pondered whether Mr Justice Arnold’s decision Warner -Lambert Company, LLC v Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat) is a good one in respect of the interpretation of Swiss style claims (Katpost here). It may have been the correct decision but Mr Justice Arnold does not explain why Swiss style claims are directed to an actual manufacture of a product, rather than representing a legal fiction. Swiss style claims are complex (Katpost here) and ignoring that complexity means the decision has arguably not tackled what it should have done. Had Mr Justice Arnold put his reasoning down on paper it would have allowed a more complex debate to happen than has been the case. Perhaps, though he felt it was always for the Court of Appeal to tackle the crucial issue of what a Swiss style claim really means. However this Kat believes that had Mr Justice Arnold provided more reasoning it would have assisted the appeal process for this case.

37 comments:

MaxDrei said...

At the EPO, an Examining or Opposition Division will take the issues in sequence and will stop as soon as it finds an issue on which it can refuse the application or revoke the patent. When an Appeal Board sets that decision aside, the cae goes back down to the first instance, to hear the next issue in the sequence.

And in this way, the ping pong can continue, eating up much of the 20 year term of any entrained patent.

Does this matter? Why doesn't the first instance at the EPO behave like in England, and go on to look at novelty, and then at obviousness, even after it has found that matter has been added or that the disclosure isn't enabling? If it were to do so, the case could be concluded on just one visit to the Appeals Directorate of the EPO.

Interstingly, only about 1 in 3 of all English High Court patent cases are heard in the English Court of Appeal. And when the appeal instance is worked through, it's done in less than 2 years. Now that's what I call efficiency.

Suleman Ali said...

Thank you MaxDrei. I had been wondering whether to include that point in my post. Yes it is very unsatisfactory that cases go up and down like that. However I don't think there is an easy fix because proceedings at the EPO are based on the notion that amendment of the claims can be used to fix problems, and I think it can be impractical to examine a claim for novelty for example knowing that it still needs to be fixed for added matter. And until novelty is sorted out there is little point in looking at inventive step. I suppose we could have the system where if the claims are refused/revoked at an early stage the party chooses a claim request to proceed with for examination of other grounds. However that would be complicated in respect of whether further amendments would then be allowed.

On another matter, my post mentions the 'oversight' that happens at the EPO by the Boards of Appeal and Enlarged Board. Do you agree that it does and/or whether it is effective?

Anonymous said...

Petition for review is useful for those patentees that failed to ensure their applications were drafted and prosecuted to a high standard and, as a result, need to transfer responsibility away from themselves. The EPO is now to blame, the attorneys are seen by the client as the great defenders of their interests, the attorneys are richer, the client poorer but none the wiser.

Anonymous said...

It may have been the correct decision but Mr Justice Arnold does not explain why Swiss style claims are directed to an actual manufacture of a product, rather than representing a legal fiction.

I don't think you mean to say that the infringement of a Swiss-type claim may be fictitious. What in your view could be the alternative to such claims being directed to an "actual manufacture for a product"?

Since it was common grond that Actavis used pregabalin for the manufacture of Lecaent, the dispute centered on the words "for treating (neuropathic) pain".

Anonymous said...

Anonymous @ 11:55,

Do you have ANY evidence of your accusations? Or is this simply more anti-attorney tripe?

If you cannot say anything with merit or on point, please kindly do not say anything at all.

Suleman Ali said...

Anon of 12:22, the medical use claim (X for use in a method of treating Y) is the alternative way of protecting medical inventions. There is an argument that the Swiss style claim and the medical use claim should be the same for validity and infringement purposes, though recent EPO decisions have judged the medical use claim to be broader in scope. Treating the Swiss style claim as a claim to an actual manufacture ignores these complications, and is not consistent with how the novelty of the claims is analysed (i.e. to destroy novelty prior art only needs to mention the substance and the condition without explicit reference to manufacture). I'm saying that Arnold needed to go beyond what was in dispute between the parties if he was going to interpret the actual meaning of a Swiss style claim.

Anonymous said...

@Suleman:
The wording of a Swiss-type claim is quite different from that of a 54(4)-claim, so a priori there is no reason to suppose that for the purpose of infringement their scopes are identical. Closer analysis of the actual wording of the claims then confirms that their scopes are not identical.

In fact, G 5/83 seems to have looked for a way around the exclusion of "use of X for treating Y" rather than for a way around the lack of novelty of "X for use in a method of treating Y". G 5/83 came up with a formulation that avoided the exclusion but (by legal fiction) could benefit from novelty and inventive step of "use of X in a method of treating Y". I guess G 5/83 could alternatively have chosen to introduce the rule that is now laid down in Art. 54(4), but it did not.

So, if a claim says "use of X for the manufacture...", then there is no infringement if there is no use of X for any manufacture. I don't see that as ignoring complications.

But your argument is this:
is not consistent with how the novelty of the claims is analysed (i.e. to destroy novelty prior art only needs to mention the substance and the condition without explicit reference to manufacture)

If that is the EPO practice, then that seems wrong. According to G 5/83:
"23. For these reasons, the Enlarged Board considers that it is legitimate in principle to allow claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application, even in a case in which the process of manufacture as such does not differ from known processes using the same active ingredient."

So if the therapeutic application is known, then the Swiss-type claim would still be novel if the "process of manufacture" using the active ingredient of the claim is not known.

On the other hand, the idea behind the practice might be that the disclosure of the basic "use of X for the manufacture of a medicament for treating Y" is always implicit in the disclosure of a "use of X for treating Y". That way, it is always possible to amend the latter into the former without infringing Art. 123(2), possibly saving many applications drafted outside Europe (and the original applications leading up to G 5/83 and friends).

Anonymous said...

@Suleman:
In one of the blog posts you linked to, a commenter notes that the scope of a Swiss-type claim should be identical to the scope of the 54(5)-type claim, because the Swiss-type claim covers all methods of manufacture AND protects the product directly obtained (Art. 64(2)).

That is an interesting argument, and it is a way of getting to your position (if I may call it that) that Swiss-type and 54(5)-type claims should have the same scope without having to ignore the plain wording of the Swiss-type claim.

However, I think the argument overlooks that the Swiss-type claim plus Art. 64(2) only covers prepared medicaments, whereas "X for use in a method of treating Y" also covers X in raw forms (e.g. packaged with a label "for manufacturing for a medicament for the treatment of Y"). And then there is the possibility that nothing of X survives in the final medicament.

In addition, there is the question of how "for treating Y" limits the scope of both claims. Arnold's treatment of this question for Swiss-type claims seems reasonably convincing to me, but I've now read the comments pointing out that this leaves considerable gaps in the scope of protection. In particular, a company could obtain the manufactured medicament from a manufacturer not (provably) intending to treat Y and then repackage and sell it for treating Y. But in the other posts someone suggested that in such case the act of applying the label could be the "manufacturing".

Interesting...

Anonymous said...

Commenter argued that petitions are useful for a particular purpose. Whether they have been used in said way seems irrelevant as they are clearly capable of being used the way described. The basis for the aggression from the responder appears not to exist and is clearly inappropriate as disrespectful of the rights of others to hold and share their own views.

Anonymous said...

" In ‘de novo’ appeal there is essentially a re-hearing of a case, and to an extent this is what the Boards of Appeal do."

I disagree. It certainly used to be the case that Appeal Boards reheard the case, but in recent years they have moved towards the more accepted practice of determining whether the lower division made an error.

Anonymous said...

Further to my previous comment disagreeing with you, I do agree on the Arnold case. As Mr J.A. is rarely economical with his judgements, we are left to wonder why he passed over this issue so brusquely.

As for scope of a Swiss claim, the manufacturing aspect is only one of several processes involved in the manufacturing, marketing, labeling, distribution and sale of a pharmaceutical. Plenty of real processes to infringe as opposed to mere fictional ones.

Suleman Ali said...

Anon of 15:23, if a better, say cheaper, way of manufacturing aspirin is found, you cannot claim it within a Swiss style claim as follows assuming the prior art discloses use of aspiring for treating headaches:

Use of aspirin in the manufacture of a medicament for treating a headache wherein said manufacture comprises the following steps:...

Patent Offices do not allow new manufacturing processes to be claimed as Swiss style claims. And so despite the claim referring to a manufacture step its meaning (scope) cannot be the same as the literal wording. It is more complex.

Anon at 16:32, I also believe there are lots of complicated scenarios that arise if a Swiss style claim is interpreted literally.

Anon at 17:34, thank you for your comment. I fear that is the future.

MaxDrei said...

I am asked for my thoughts on the "oversight" issue.

At the EPO, the scary thing is that a Technical Board of Appeal can get it into its head to revoke, and then the patent is gone, in all 38 Member States and for 600 million consumers. If oversight were needed anywhere, it is in such cases.

But there aren't any such cases, are there? When this happens, it is never because the Board finds invalid a claim that is not invalid.

Mostly, it is because (as suggested by another commentator above) of inadequate performance by the attorneys representing the patent owner or applicant. They were bad drafters, or ran the wrong claim, or failed to support it with adequate evidence, or failed to expose the deficiencies of the attacks on validity.

True, there have been some notorious cases, where a patent of extraordinary value was revoked by a DG3 panel. That's what the bolt-on EPC 2000 EBA Review process is for. Justice must be seen to have been done. For every custodian there has to be a superior custodian. But you can't go on forever.

Me, I worry more about English Binding Precedent (EBP) than the free-wheeling, unconstrained DG3 way of deciding cases on their own merits. EBP is OK when the Supreme Court is top class and patent-savvy. But when it takes patent cases and then proceeds to muddle the law, it's not at all OK. Thank goodness Europe is spared the Binding Precedents of a well-meaning but bumbling Supreme Court responsible for interpreting the substantive patent law of the EPC.

Good drafting comes expensive. But are we entering a new era, in which patent drafters will again be given the credit that is due, for careful and intelligent drafting?

Anonymous said...

To 12:52,
yes I have real evidence. And guess what? I am a patent attorney. Sounds like you're feeling a little disgruntled because the EPO have rejected your quality work product.
Never mind.

Old Man said...

I find it a pity that the discussion focused on Swiss type claims. As interesting as this discussion might be, it does not really contribute to explain the role of the Boards of Appeal. What I was missing in the article is a reference to the Rules of Procedure of the Boards of Appeal. They are in force for now over 10 years and it seems that still cases are lost because the rules are simply ignored, be it in the form of late filings of evidence by opponents, or of requests by proprietors.
Boards of appeal have made it clear that the appeal procedure is not the continuation of first instance procedure, but rather to verify whether the decision of first instance was correct in its form and in its reasoning.
In the first case, divisions may have committed a substantial procedural violation, in the second case, the board comes to a different conclusion, which is its right.
What is more worrying is to see that boards develop their own way of looking at things, and sometimes the result has more to do with a lottery, rather than reflection.
The Presidium of the Boards of Appeal should have a look at this, or the Enlarged Board should be able to decide himself to look into matters, and not wait until a Board or the President of the EPO decides to put a question to it. You see sometimes long developments why a question should not be brought to the EBA, even if a Board is blatantly contradicting existing case law.

Suleman Ali said...

Old Man, I completely agree the Boards of Appeal need to decide cases in accordance with accepted case law. However I remember Diane Wood arguing that several different sets of jurisprudence can benefit the development of law (http://studentorgs.kentlaw.iit.edu/ckjip/?attachment_id=1072). I know that is not going to happen at the EPO, but I thought I would mention it as one potential benefit of Boards of Appeal having their own views.

Old Man said...

That case law is to evolve is not at stake here. It has to move and evolve.
What is however difficult to follow is that it seems that some Boards are living apparently on a different planet, and merely ignore what has been done in similar cases by other Boards. If the result of an appeal looks like a lottery this is neither justice done nor seen. Sometimes one gets the feeling that some chairpersons are more interested in promoting themselves than case law.....

MaxDrei said...

I don't understand the comment of earlier today from "Old Man". He says that each TBA ignores the ratio decidendi of other TBA's. But that is their good and proper right, is it not? How else do we get the admirable 30+ year long gradual convergence/evolution/natural selection/survival of the fittest line of EPO caselaw, to what is robust and commonsense. See G3/14 on Art 84 EPC for a prime example.

Now of course if a TBA were to ride roughshod over something already decided, something in the caselaw of the Enlarged Board, something in the bedrock of the G decision jurisprudence on which the whole of the edifice is founded, that does damage credibility, integrity and legal certainty. But he isn't saying that though, is he?

Old Man?

Anonymous said...

Regarding petitions for review...

For those that don't mind a bit of German: R 16/13

Anonymous said...

@MaxDrei:
He says that each TBA ignores the ratio decidendi of other TBA's. But that is their good and proper right, is it not?

There is little to stop them from deviating from the ratio decidendi of other TBA's. However, they are supposed to explain why they deviate (Art. 20(1) RPBA). The RPBA being binding on the boards, strictly speaking they do not have the right to simply ignore contradicting decisions.

Btw, Old Man did not say "each" but "some". If Old Man could give some examples that might be interesting.

In principle the President of the EPO could identify such cases and refer questions to the EBA (Art. 112(1)(b) EPC).

MaxDrei said...

Grateful for that last reference to the RPBA. OK, they have to "explain" when they differ from another TBA.

Opinions might differ though, mightn't they, on what constitutes an adequate "explanation". If it is self-evident that you are right and the other fellow is plain wrong, and that you enjoy the right to differ, how much effort do you need to make, pray, to "explain" yourself?

Anonymous said...

With all the recent attacks on the EPO including the decisions of the Appeal Boards I would recommend to the Chairman of Boards who are publicly criticized, without good reason, to comment on the errors made by attorneys in the cases before them. If their decisions noted the problems that exist based on clearly poor drafting or prosecution, it will serve dual purpose of counteracting unwarranted criticism and possibly educating the poor quality attorneys out there. It may even result in a bit of natural selection with demise of the poor quality attorney to the benefit of the good quality attorney. I am very much of the opinion that since Darwin shared his theory of evolution, the application of the process to professionals has never been seen.

Freddie Noble said...

MaxDrei, we have discussed before some Court of Appeal of England & Wales cases which you clearly disagree with, but which "Binding Precedents of a well-meaning but bumbling Supreme Court" (or previously House of Lords) are you referring to?

Anonymous said...

Not wanting to speak for Max, who is happy to speak for himself, I belief the answer to the noble question is referred to in the original post: Human Genome Sciences Inc. v Eli Lilly and Company

MaxDrei said...

Got me there, haven't you Freddie, with my choice of word "bumbling". I would not dare to suggest that any bumbling goes on in the UK Supreme Court. Actually, I was trying to express an inherent defect in "Binding Precedent", a no-more-than-hypothetical problem, that if the Supreme Court bumbles, that is a handicap for everybody, especially the lower courts.

Where did I get the idea that there might ever be such a problem? Why, in any ongoing tensions between the justices of SCOTUS and the judging panels of the CAFC. Some say they are having difficulties singing from the same song sheet and in getting their act well-together. Are they? What do you think?

Now what were the UK cases I disagree with? I have already forgotten.

But thanks for the comment.

MaxDrei said...

Thanks, that last anon. Was Frddie referring to Conor and to HGS? I wonder.

Did I write, back then, that I "clearly disagree" with one or both of those HL Decisions? I don't remember, but if so will Freddie provide a Link so we can see what I wrote, back then. Perhaps I will have to eat my words (but I hope not).

Freddie Noble said...

Max, the exchange I remembered (but I posted without re-reading it) was http://ipkitten.blogspot.co.uk/2014/11/lantanas-lament-no-technical.html.

Based on your comments on that post I made the assumption that you disagree with Aerotel / Macrossan [2006] EWCA Civ 1371, Lantana... [2014] EWCA Civ 1463 and other 'software' cases in EWCA.

Perhaps I went too far to say you "clearly disagree". I didn't mean to put words into your mouth.

Anyway, I understand now your point, and agree that a (hypothetical) "bumbling" supreme court would cause problems all over the place. However, on IP at least, I think they have done a reasonable job when given the chance.

Anonymous said...

Max, I merely suggested HGS Lilly, because that is clearly a poor decision. Whether or not it was "bumbling", however, I have not formed an opinion. I shall re-read.

MaxDrei said...

Thanks both. HGS I read as a well-meaning but misguided attempt to align with cases in DG3. Somebody needs to take English judges in hand and explain that individual T Decisions are not to be given any deference.

I'm doubtful that HGS strikes the optimal balance when it comes to setting how much data you need to accrue before you can file at the Patent Office. I think it not healthy to encourage speculative filings. The USA takes a dim view of "First to File" asserting that it inherently forces applicants to file prematurely, on little more than speculation, resulting in serious devaluing of the disclosure value of A publications and serious abuse of B publications. It doesn't, of course, but Decisions like HGS allow the Americans to crow that they were right all along.

I think that the experienced patents judges of the lower courts in England have a wiser and more experienced grasp of that balance and so should not have been reversed by a well-meaning interventional Supreme Court.

Freddie, on Software, the subject doesn't excite me much so if you don't mind I'll duck out of going back and reading it all again.

Freddie Noble said...

>>Freddie, on Software, the subject doesn't excite me much so if you don't mind I'll duck out of going back and reading it all again.

No problem... likewise me with biotechnology and so I will take your word for it that HGS is non-optimal.

Anonymous said...

In HGS, Lord Walker stated:

"168.I have to say that all my instincts, as an appellate judge, are for dismissing this appeal. The issue is one of multi-factorial evaluation of evidence, a task which has already been carried out twice, with the same result, by a very experienced patent judge, and a division of the Court of Appeal presided over by a Lord Justice with even more experience in the field of patents."

But then:

"171.Nevertheless the powerful and sustained analysis and reasoning in the judgments of Lord Hope and Lord Neuberger has persuaded me, against my inclination, that this appeal must be allowed. There is nothing that I can usefully add to their reasoning, except to repeat that there are two strong policy arguments for allowing the appeal."

Should have gone with his instinct and should never have considered the policy arguments. Patent laws are written (supposedly) to cover any policy arguments considered worthy, so there is no need for a judge to consider policy arguments, but should simply apply the law to the facts.

Suleman Ali said...

HGS v Lilly and Conor v Angiotech are fascinating because one could ask what are the rules at the higher echelons? In the first case the the prior art did not know the existence of the gene. So the contribution was showing it existed, providing the sequence and some very good guesses about its function and utility. The Supreme Court said that was good enough. In the second case the House of Lords I think was trying to make the Courts more lenient on inventive step. In biotech/pharma many things are 'obvious to try' and so it is better to give a lot of weight to reasonable expectation of success and unexpected advantages (as the EPO does). That is helpful to the biotech/pharma industry. I think the highest courts have a responsibility to think like this and change the system as whole. In a sense they develop new principles or at least change the direction of case law a little. I think that is useful, and someone in the system needs to be thinking at that level.

MaxDrei said...

Well, yes, Suleman, I agree with you, that the Supreme Courts play a valuable role when they "re-set the clock" but I agree with you only up to a point.

I have a lot of time for the UK Supreme Court when it re-sets the compass of the lower courts on obviousness, to steer them towards the EPO's Problem and Solution Approach. Those familiar with EPO-PSA know how darned effective, efficient and fair it is, when all actors involved are convinced by it and from the outset ie drafting the application, have bought into it enthusiastically. relative to EPO-PSA, every other approach to obviousness is unfair, wet finger in the wind, poor unconvincing hind-sight tainted stuff. The Americans are wistful about the demise of TSM. With good reason! EPO-PSA is a species of TSM. I like to think that, one day, understanding of how EPO-PSA works might spread as far as the Justices of the Supreme Court of the USA. Trouble is, no EPO-PSA enthusiast is ever going to get the chance to explain it to them clearly, simply and accurately.

But regarding HGS, I do not see it as re-setting the clock to mainland European time. I'm with Robin Jacob, who observed that one's viewpoint on the ease of acquiring patents, and the potency of the granted right, does depend on whether you are the patent owner pulling the trigger of the injunction gun or the competitor, staring into the open end of the barrel of a gun. Jacob and his ilk have spend decades plotting victory those pulling the trigger, and decades plotting with those staring down the barrel. So they know something about balancing and fairness between those two groups. And so it comes to pass, that they know far more than the members of the Supreme Court about "public policy" in this area of the law.

Anonymous said...

"some very good guesses about its function and utility"

I think that says it all and it is not in any way convincing. I'm sure deep down (deep being just below the surface on my construction) Suleman is of the same view. I'm pretty sure even the patentee and its attorneys feel the same way, but are obviously pleased with the win.

MaxDrei said...

Thanks to that last poster for referring us back to "guesses".

As I said above, Americans are scornful of First to File, precisely because it is liable to force premature filings on the basis of nothing more than a guess. They have a good point, methinks.

The EPO looks in the application for disclosure that makes it "plausible" that the claimed subject matter delivers what it promises. To me, that seems OK.

But I forget now, with exactly the claim litigated to the House of Lords, did not HGS get past all inter partes hurdles in the EPO. Is that why the Lords Justices felt compelled to reverse the invalidity decision handed down by the lower courts in England?

Suleman Ali said...

MaxDrei, at the EPO the HGS patent was maintained in amended form in opposition with pretty broad claims. I think 'first to file' is much more complex in biotech because it is not clear exactly how much one must do to be sufficient, plausible, supported, solve the problem etc, particularly as the problem can change so much in an unpredictable way. In the HGS case there were so many potential uses of the invention (i.e. lots of problems being solved) and the lower UK Courts ended up imaginatively using (normally little-used) industrial applicability reasons to revoke the patent, that the Supreme Court needed to step in and reverse the decision.

maxdrei said...

Suleman Ali, we differ on whether the Supreme Ct. "needed' to step in. Me, I regret that it did. Above I was writing of resetting the clock. In HVS, the English patents court did just that. If the HL had endorsed the experienced judges,it would have helped DG3 to get a better grip on patentability.

Do you remember the case at EWCA where the two non specialist judges ganged up on the one patents judge,on the issue of full discovery for judging obviousness? The specialist judges know best. What an absurdity, that if you don't discover you might get obviousness wrong.

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