tag:blogger.com,1999:blog-5574479.post7409127489594147730..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: EPO revokes CRISPR patent – a clear cut case of invalid priority?Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger21125tag:blogger.com,1999:blog-5574479.post-55276336519379916122018-01-25T13:15:10.423+00:002018-01-25T13:15:10.423+00:00In my experience there is more than an element of ...In my experience there is more than an element of truth in Max Drei's view. When I was a UK patent examiner in the 1980's I often found that patent applications from large US electronics companies had to be abandoned or severely limited in scope because they had published details of their new inventions in such things as the International Solid State Conference Proceedings. I used to become aware of these via reports in the American electronics journals that we used to get circulated, and around 50% of my citations comprised such non-patent literature. They would probably have a better chance of getting away with it today: I understand that when the UKIPO moved to Wales, the non-patent literature files that examiners had carefully built up were binned, and most of the better US electronics journals have folded anyway. <br /><br />Likewise the presumed validity issue. When, in industrial practice, I was involved in a cross-licence activity, the US firm argued that one of its key patents had high validity because it had been subject of post-grant amendment. They presumably thought that the UK procedure was equivalent to the US "re-examination" procedure. I knew from personal experience that, in the UK, the examiner merely ensured that the amended claims were of narrower scope than the original claims, and we were able to dispel their belief by supplying an extract from the UK Patents Practice Manual that explicitly discussed the procedure. <br />ex-examinernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-45819745261939903102018-01-25T00:43:39.510+00:002018-01-25T00:43:39.510+00:00MaxDrei's thoughts about "deep in the USA...MaxDrei's thoughts about "deep in the USA" are - not surprisingly - way off from reality here.THE US anonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49410566586264961492018-01-24T15:13:34.575+00:002018-01-24T15:13:34.575+00:00More thoughts. Deep inside the USA, it is not just...More thoughts. Deep inside the USA, it is not just First to File and the importance of the Paris Convention that is less than fully understood.<br /><br />Investors in the USA suppose that litigation is a lottery but that their man will win provided that i) his pocket is deep enough and ii) the jury does not come to the idea that he is a Bad Guy. Quality at the patent drafting stage is seen as a secondary matter, less "sophisticated" than litigation, less valuable.<br /><br />Further, Americans always suppose that nothing is decided till everything is decided, namely at trial (ie Oral Proceedings).<br /><br />Yet further, Americans always suppose that once a patent issues, its validity is, in practice, unassailable.<br /><br />As to the pace of the proceedings on this European patent thus far, note that the B1 issued just 9 months after EPO national phase entry. <br /><br />More haste, less speed?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-82694359759621611412018-01-24T14:13:13.081+00:002018-01-24T14:13:13.081+00:00@Glad tp be out of the madhouse: yes, I noticed as...@Glad tp be out of the madhouse: yes, I noticed as well the huge number of representatives from various expensive firms. It appears though that they are representing the opponents. Broad is represented by a firm I do not know (I am not in the biotech sector though). The EPO file has now more than 42000 pages. That they claim priority from 11(!) prior applications is also somewhat unsual. What we maybe can learn from this: when the complexity becomes too high, the risks also increase. Keeep it as small and simple as possible. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-75012659346913234872018-01-24T13:04:56.249+00:002018-01-24T13:04:56.249+00:00I must also say that I love how US practitioners o...I must also say that I love how US practitioners often think that <b>everybody but them</b> misunderstands the Paris Convention. That often gets a few laughs in proceedings before the EPO...Glad to be out of the madhousenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-33935190262704049532018-01-24T13:01:44.753+00:002018-01-24T13:01:44.753+00:00What I find quite impressive in these Oral Proceed...What I find quite impressive in these Oral Proceedings is that the Broad was reportedly represented by 15 patent attorneys and lawyers from 9 different (and mostly expensive) firms. Those are quite a few billable hours...<br /><br />And <b>64</b> auxiliary requests? Seriously?!<br /><br />Finally I cannot fathom what went through the mind of the person(s) who thought it a good idea to disclose the settlement between the Broad and Rockefeller University only after the first day of oral proceedings, and then to try to introduce it into the proceedings the next day. I'm sure the OD was very impressed... Glad to be out of the madhousenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39551494903683598962018-01-23T21:48:50.606+00:002018-01-23T21:48:50.606+00:00The discussion seems to shift away from the facts ...The discussion seems to shift away from the facts of the case decided by the Opposition Division. Even the proprietor does not allege that there was a consent by all the co-applicants of the provisional to file the internatial application claiming priority from the provisional. As to the form of transfer it seems to be meanwhile uncontested EP practice that it is governed by national law, i.e. in the case of a US provisional US civil law.The Convention watchdognoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20028594987430331462018-01-23T21:40:03.384+00:002018-01-23T21:40:03.384+00:00" Otherwise we end up in the situation where ..." Otherwise we end up in the situation where a joint applicant that has no entitlement to an invention is required to assign a right to priority in the invention he has no rights in in order that a subsequent application has a valid priority claim."<br /><br />No we don't. The joint applicant may have no right in the invention, but they do have rights in the priority right, which exists outside of the USA.<br /><br />This is little different than the UK-US position on invention ownership, whereby a UK employee inventor has rights in the US patent even though the UK Patents Act states all rights belong to the employer. Written assignment from the inventor to the employer then being standard practice to record the change of ownership. The UK Patents Act is not limited to rights in UK inventions, as supported by "all other purposes of S.39:<br /><br />"...shall, as between him and his employer, be taken to belong to his employer for the purposes of this Act and all other purposes"<br /><br />On the partial priority argument, this does not stand, because the priority right under Article 87 EPC resides with "Any person..who has duly filed an application..." The 'person' means the joint applicants, and the issue of partial rights in the invention is not relevant. The wording is identical to that used in the Paris Convention.<br /><br />It is great that attorneys look to find ways to solve these issues on behalf of their clients, but didn't someone once say that hindsight was a wonderful thing, but foresight is better? No? ok.Mr Blobby-Obviousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-9243619453338419802018-01-23T19:59:35.672+00:002018-01-23T19:59:35.672+00:00Has sufficient information been provided to identi...Has sufficient information been provided to identify the appellant? Residence = GaGa Land?<br /><br />Oral contracts are wholly binding on the EPO if they are binding in the country were made. Back-dated agreements are fine in my book also, provided you can file the evidence at the EPO on the day the contract is deemed to have entered into force. At the time of filing the priority-claiming application, full priority rights will be in the possession of the applicant. Fair?Mr Blobby-Obviousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-63891076701955010682018-01-23T14:44:28.609+00:002018-01-23T14:44:28.609+00:00Casual Observer:
Unless I am missing something, i...Casual Observer:<br /><br />Unless I am missing something, is not the submitted Notice of Appeal deficient on the basis the address of the appellant has not been provided?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57406580582581523052018-01-23T14:35:25.204+00:002018-01-23T14:35:25.204+00:00There does appear to be some validity to Broad'...There does appear to be some validity to Broad's submissions. Essentially, it appears that Broad are arguing what could be called a reverse partial priority. That is, the PCT application claims priority to only part of priority documents P1 and P2 and the proper applicants for the relevant parts of P1 and P2 were also the applicants for the PCT application. The applicant who is not an applicant for the PCT application was not entitled to the relevant parts of P1 and P2 and so shouldn't be an applicant for the PCT application and shouldn't be required to assign a right to priority for an invention he has no entitlement to.<br /><br />There could well be basis for this in the EPC. In particular, Article 87 EPC refers to an application "for the same invention". Broad are arguing that P1 and P2 contained several inventions and the PCT application only covered some of those inventions. If P1 and P2 do contain several inventions then, according to US law, different applicants can be entitled to different inventions. In that case it is at least arguable that, if the PCT application does not claim all of the inventions in P1 and P2, then only the applicants of P1 and P2 that are entitled to the relevant inventions of the PCT application need be applicants of the PCT application.<br /><br />I believe that this should be the correct interpretation. Otherwise we end up in the situation where a joint applicant that has no entitlement to an invention is required to assign a right to priority in the invention he has no rights in in order that a subsequent application has a valid priority claim. Of course, this goes against the current case law but an appeal to the Enlarged Board could well overturn this and I believe that such a decision wouldn't be against the EPC. <br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-68656796388429028962018-01-23T12:07:16.967+00:002018-01-23T12:07:16.967+00:00@Look at things:
Well, it is established and codi...@Look at things:<br /><br />Well, it is established and codified that there is priority and that it can be transfered. So the two applicants have a legal basis. On the other hand, I do not see any provision in the EPC that would prevent a transfer of priority by an oral contract or presecribe a specific form for that matter. It is a legal principle that contracts can be made in any form if there are no specific provision in the law that require a specific form. Even further, I think that it is illegal when the EPO in light of no formal requirements in the EPC now generartes arbitrary formal requirements for priority transfer. Notarized? Hand written? Text form? Depending on the mood of a particular BoA, every contract could be declared not satisfactory by the EPO while it is perfectly legal and binding from a national perspective. I can buy out Elon Musk from Tesla if we both agree by an oral contract. Why should there be a special requirement for priorities, in particular as the EPC does not prescribe any specific form? I would also like to draw your attention to T796/12 where national law was used to decide whether an appeal can be filed by an opponent, who is no longer on the national company register and therefore "defunct". It was found that this is admissible, as the national law and jurisprudence assume that the no longer registered company is still a (somewhat limited) legal person. Point being: If national law decides whether a legal person is a legal person, it should also decide the validity of a civil contract. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76136953019019298582018-01-23T11:10:26.764+00:002018-01-23T11:10:26.764+00:00@ Anonymous 08:46, 23.01.2018
I beg to disagree o...@ Anonymous 08:46, 23.01.2018<br /><br />I beg to disagree on this point. <br /><br />Do imagine the case of an opponent raising a novelty objection on the basis of a document published in the priority interval, while at the same time claiming that the priority has not been validly transferred. <br /><br />In such a situation the EPO has no choice than to establish whether the priority has been correctly transferred, especially before filing the subsequent application claiming priority. It cannot be left to the first and the second applicant to bring forward a declaration stating that they have agreed on the transfer of priority. Such a decision cannot be left at the whim of parties. And hence the EPO has to dig into the matter and cannot shift the ball to another court. Oral transfer? A bit too easy. <br /><br />What would otherwise be the legal basis for saying that the novelty objection raised by the opponent is moot? Just because two parties claim a valid transfer of priority? Let's remain serious. Look at thingsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70271803712139135282018-01-23T08:46:12.439+00:002018-01-23T08:46:12.439+00:00I am one who thinks that when both parties agree t...I am one who thinks that when both parties agree that the right of priority was validly transfered there should be no room for the EPO to challange that. Different countries have different rules on how a transfer of rights can be made and the EPO should not try to create their own standard that e.g. two parties in Japan have to observe when they file an EP patent application, potentially months after they have transfered the right of priority in a valid contract (eg orally) according to Japanese law. <br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7193488882661259582018-01-22T22:56:25.538+00:002018-01-22T22:56:25.538+00:00Lucky this wasn't a US IPR decision. My ears w...Lucky this wasn't a US IPR decision. My ears wouldn't have survived the sonic whine from the "IT'S NOT FAAAIIIIIIRRRRRRRR!!!!" brigade. Aeroplanes would have fallen from the sky and satellites knocked out of their orbits, and all because the spoiled brats are throwing their toys out of their prams.<br /><br /><br />It is NOT a point of law of fundamental importance. All points of law can have deleterious effects, but luckily I, and many others, have studied my subject. Foresight is a wonderful thing!Mr Blobby-Obviousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-30604632303567847222018-01-22T22:26:44.763+00:002018-01-22T22:26:44.763+00:00The Broad Institute proclaims themselves confident...<i>The Broad Institute proclaims themselves confident that “the EPO will, on appeal, harmonize the EPO procedures to be consistent with international treaties and compatible with the fundamental principles of the Paris Convention”.</i><br /><br />The EPO may follow the PCT rules and articles, but the PCT has so many "if national laws allow", "if not contravening national law", that it is obvious that the national law stands above the PCT.<br />And the EPO has not signed other international treaties, and will therefore not be bound by them, EVEN IF every single member state has signed and ratified that treaty.<br />As many articles about the EPO confirm, the EPOrg and the EPOff have little interest in international treaties, international standards, or complying with generally acknowledged principles of law, if there is no clear indication within the EPC to do so.<br /><br />I see this statement and the filing of the appeal as a try to keep at least something of the cake, and a try to tell imvestors that not everything is lost, and that they please do not sell the shares yet.CASE passed...noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76926054619051969762018-01-22T22:01:40.577+00:002018-01-22T22:01:40.577+00:00What a splendid rant from Blobby, in response to a...What a splendid rant from Blobby, in response to a provocative comment from LaT.<br /><br />Americans are inclined to think that it's only a matter of time before the rest of the world comes round to their way of thinking. And who can say they're wrong. No wonder they advocate so zealously.<br /><br />As to Paris priority failures because of formal slip ups in the timeous assignment of the right of priority, despite LaT's point that 3rds can be burned, I have misgivings about 3rd parties butting in on "family" matters. Like in England where only the aggrieved deprived owner can dispute ownership of a patent, I think only those deprived of a Paris priority right should be able to dispute the misappropriation of it by somebody else.<br /><br />Bit like Ethicon vs USSC at the Federal Circuit, I might suggest. Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-76400576984865874502018-01-22T21:52:34.953+00:002018-01-22T21:52:34.953+00:00@ Mr Blobby-Obvious
There are no diverging decisi...@ Mr Blobby-Obvious<br /><br />There are no diverging decisions, but in spite of this, the point might be considered as “a point of law of fundamental importance”, as it can have deleterious effects. The number of cases at stake might however not warrant a referral.<br /><br />There is a very simply way to obviate such assignment problems. In case of doubt or should the time for priority assignment be too short to be finalised before the subsequent filing: file the priority claiming application with the same applicants/inventors as the original filing, and assign the application to the new owner afterwards. <br /><br />I do not see any reason not to proceed so, and all the recent decisions, in which the patent fell because of a document published in the priority interval, would not exist. <br /><br />Lord Neuberger’s decision was certainly not a decision which improved or clarified the situation, and one can indeed considered that it boils down to compensate for shoddy drafting. I would see the Altavis vs.Elli Lilly decision more as a way of compensation for the old “Improver” decision. I would therefore consider that this precise decision was not an “improvement”. It seems best to leave their Lordships alone, and let them rest in peace. One Lord does not (or better should not) make the law, exactly as one swallow doesn't make it spring.<br />Look at thingsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59155747667121412702018-01-22T19:43:08.968+00:002018-01-22T19:43:08.968+00:00Article 112(1)EPC. "In order to ensure unifor...Article 112(1)EPC. "In order to ensure uniform application of the law, or if a point of law of fundamental importance arises"...<br /><br />Where are the conflicting decisions? I know of none. How is a point of law of fundamental importance to be defined? By reference to the commercial value of the patent at stake? Based on the arrogance and volume of whining by the disaffected party? The noisy people are already on the lobbying train, taking the issue all the way to the top, wherever they seem to believe that is. "Lord Hoffman supports us", they rant. "Who cares!", I say.<br /><br />The UK Supreme Court has already twisted the law to compensate for incompetent patent drafting, and now some deluded people believe the Boards of Appeal will do the same at the EPO to compensate for blatant ignorance of international patent laws. Hire someone competent at the start and these problems will not arise. I may have had a little sympathy if these patents were drafted many moons ago, but they were drafted so recently at a time when the decisions were making loud, noisy waves.Mr Blobby-Obviousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-34708489483364409842018-01-22T17:48:32.819+00:002018-01-22T17:48:32.819+00:00It is interesting to note that the question of ass...It is interesting to note that the question of assignment of priority in procedures before the EPO has become rather acute in recent times. <br /><br />At least two recent decisions dealt with the topic: T 577/11, T 1201/14 (which was commented on this blog). <br /><br />To simply say that the EPO should either accept that when two parties who consent that the priority right was correctly transferred, or when the identity of the invention is not at stake, the EPO should turn a blind eye to the problem of priority assignment is too easy as rights of third parties might be touched. <br /><br />To say as well that such a decision should, in analogy to Art 60, be decided by a national court is not satisfactory either. <br /><br />One possibility would be a referral to the Enlarged Board. So, wait and see! <br /> Look at thingsnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-47343324890503218872018-01-22T14:43:18.576+00:002018-01-22T14:43:18.576+00:00The reason for the "early" end of the or...The reason for the "early" end of the oral proceedings was not that the priority question was not sufficiently discussed. On the contrary, the discussion covered all aspects brought forward by the parties and based on numerous legal expert opinions. Rather, a discussion on novelty and inventive step did not take place as expected, since the proprietor submitted new claim requests which the Opposition Division did not admit into the proceedings. As to the substance of the priority question, one may mention that the problem is not so much the general difference between US and EP law, but the difference between US law on internal priorities and the law of the Paris Convention on priorities.The Convention watchdognoreply@blogger.com