Archive for September, 2010
Following my post on the supply of Search Results to the EPO, I thought it would be useful to clarify the procedure for the supply of related search reports at the UKIPO. This may be of particular use to US patent attorneys or agents.
The procedure at the UKIPO is not immediately apparent and requires a little investigation. I will summarise the procedure then provide links to the relevant legal basis.
The bottom-line is that all related search reports available at the time of replying to the first examination report should be supplied to the UKIPO.
The procedure is as follows:
- The UK IPO issues a search report. The search report contains a standard paragraph requesting official search reports produced by other patent offices on corresponding applications (“related search reports”).
- The request can be met by filing a copy of the related search report(s) or by emailing the UKIPO the details of the citations in the search report(s) (see the issued search report for an email address). It is not necessary to supply the citations themselves.
- The request is time-limited and is active up to the time of responding to the first examination report. This means that you need to provide related search reports that have been issued up to the time of responding to the first examination report. As a guide the first examination report is typically issued 2 to 3 years from the effective (priority or filing) date of the application (if proceedings are not accelerated).
In practice, any related search reports available at the time should be filed together with the request for substantive examination (due six months after publication). This allows them to be taken into account during substantive examination. Any search reports issued after the request for substantive examination (if it is likely examination has already started) should be filed with the reply to the first examination report.
If the first examination report is a notice of allowance (issued under s.18(4)), search reports should still be filed. The cut-off date is two-months from the issue of the s.18(4) report.
The following search reports need not be filed:
- search reports that show a nil response (i.e. no cited documents – it is not clear whether an “A” citation would be considered a “nil response”);
- search reports that have been published by WIPO or EPO (i.e. in an International or European Search Report – the UK Examiner can obtain these via the EPO’s Online File Inspection System); and
- search reports that have been provided on a parent application (i.e. a parent UK patent application if the present application is a divisional application).
No sanction for failing to supply search reports on related applications is discussed. However, failing to supply search reports may be held against the proprietor of a patent in subsequent infringement proceedings in the UK (e.g. may limit damages available or prevent amendment – s.63(2) and s.75).
Basis for Requirement
The procedure was set out in a UKIPO Practice Notice first published in Patents and Designs Journal No.5993 on 31 March 2004. Helpfully, this Notice is not available in the Practice Notices section of the UKIPO website but can be found on page 30 of the Appendix to the Manual of Patent Practice. Paragraphs were added to search communications from 1 July 2004.
The legal basis for the request is given as:
82.—(1) Except where the Act or these Rules otherwise provide, the comptroller may give such directions as to the management of the proceedings as he thinks fit, and in particular he may
—(a) require a document, information or evidence to be filed;
As always if anyone has any comments or spots any inaccuracies please let me know using the form below.
Fletcher Moulton LJ explained in British United Shoe Machinery Company Ltd, v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650 how claims came to be incorporated into a patent specification and their purpose:
“As it is the duty of the inventor to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process, quantities and times which are the best he knows.
But it would be very cruel to hold him to the invention when carried out only with those best quantities and times, because a person could then take his invention in substance if he did not take it in quite the best way, and the value of the grant would be practically nothing. Hence inventors, in their own protection, took to introducing into their specifications language intended to distinguish between that which was there for the practical information of the public, and that which was there for delimitation of the invention.
Correct delimitation was of the greatest possible importance to the inventor, because if his Patent covered something which was old the Patent was wholly bad. At the same time there was the danger of confining himself to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it in its best and therefore in a very special form.
Out of that has arisen the practice, which originally was perfectly optional, of having a separate part of the specification primarily designed for delimitation. That is what we call the Claim.”
On 1 October 2010 the 53rd Update to the Civil Procedure Rules comes into force.
The Rules relating to Intellectual Property Claims (Part 63) are updated to introduce reforms to the Patents County Court system; in particular, a number of caps on costs are being introduced for low value claims. It is hoped this will reduce the cost and risk for small to medium sized businesses.
The blurb from the Ministry of Justice is as follows:
Part 63 Intellectual Property Claims and PD63 Intellectual Property Claims
The rules and Practice Direction are amended to provide a simpler route for lower value claims including scale costs for each stage of the process with a total cap on costs of £50,000.00 for a claim relating to liability and £25,000 for an inquiry as to damages or account of profits. Consequential amendments are made to PD30, Part 45 and the Costs Practice Direction.
More details concerning the draft amendments can be found in the implementing SI.
On 1st January 2011 new Rules 141 and 70b EPC come into force. They stipulate new requirements for supplying search results on priority applications. The rule changes apply to European patent applications filed on or after 1 January 2011 (including divisional and international applications).
While the current version of the EPC (European Patent Convention), in the form of Article 124 EPC, allows for the European Patent Office (EPO) to invite the applicant to provide information on prior art cited on related applications, it has generally only been used in rare occasions on individual cases. However, following a successful pilot program, the EPO has added more teeth to the provision; worryingly appearing to head in the direction of the onerous (and somewhat confusing) US Information Disclosure Statement (IDS).
Amended Rule 141 EPC
Amended Rule 141(1) EPC requires that the applicant provide a copy of the results of any search that was carried out on a priority application when filing a convention European application or when entering the regional phase in Europe. (If the results are unavailable they must be filed “without delay after such results have been made available”.)
Now, I expect most of you are saying: “what if I do not provide these results?”
- If the priority application is a GB patent application (with existing search results), you do not need to worry: the kind gentlepeople of the UKIPO will (they promise) provide a copy of the search results to the EPO. This should be a relief to UK based EPAs whose UK clients file GB priority applications with a view to obtaining search results within the priority year. However, I would keep an eye on the exact implementation of this exchange.
- Amended Rule 141(2) EPC provides for other automatic exchanges to relieve the burden on the applicant. Keep your eyes open for details of such exchanges in the coming months.
- If no automatic exchange exists, Amended Rule 141(3) EPC enables the EPO to issue an invitation with a 2-month time limit requesting the search results.
- It is not entirely clear what happens if you fail to reply to the invitation. The likely answer is nothing. As amended R.141(3) EPC explicitly mentions Article 124(1) EPC, it is assumed the “invitation” of amended R.141(3) EPC implements the “invitation” present in Article 124(1) EPC. Article 124(2) EPC states that the sanction for failing to supply search results is the application is deemed to be withdrawn; however, it is not clear whether Article 124(2) EPC will apply directly to this invitation (i.e. deemed withdrawn if you do not reply) or whether R.70b (discussed below) will implement the sanction of Article 124(2)EPC. The latter interpretation looks the most likely.
Amended Rule 70b EPC
Assuming that nothing happens if you fail to supply search results when requested under R.141(3) EPC, the case will proceed happily along to examination. At this point amended Rule 70b(1) EPC gives the Examining Division the power to spot your evasion and issue (another) invitation to provide search results.
If no reply is provided the application is deemed withdrawn (amended R.70b(2) EPC). However, amended R.70b EPC does give you the option to file a statement saying that the search results are unavailable. It is unclear what would happen if you provided this statement with knowledge that it was incorrect.
As amended R.70b EPC only kicks in at the start of examination, there will likely be no ongoing duty to disclose search reports (cf. US) – the European Examiners simply wish to check other prior art searches before starting substantive examination (although this is not confirmed).
On receipt of new cases, EPAs should check for a priority claim. If at least one priority application exists they should ask the instructing party for a copy of any search results issued on the priority application(s).
As a matter of practice, EPAs should begin requesting that search results are supplied for convention EP and ex-PCT cases. If the priority applications are accessible via online patent inspection sites this should be noted as search results may be supplied without requiring lengthy communication chains.
IPKat Post: http://ipkitten.blogspot.com/2010/08/rule-141-and-further-epo-obstructions.html (interesting discussion in the comments on possible variation between the different languages).
The EPO has added a number of exceptions which removes the bite somewhat. See post here.
If you want to understand how the UK Intellectual Property (i.e. Patent) Office exams patent applications relating to “software”*, a good place to start is the most recent Practice Notice:
Patents Act 1977: Patentability of computer programs (Recent= 8 December 2008).
The most recent Practice Notice builds on a previous Notice:
Patents Act 1977: Patentable subject matter (dated 2 November 2006).
This previous Notice was also updated by short Notice:
* By referring to software in inverted commas I am indicating that the term “software” patent is not often used within the profession, which prefers the terms “computer programs” or “computer-implemented inventions”.
With regard to protecting computer games at the UK IPO see the Practice Notice:
Patents Act 1977: Patentability of games (updated 2 November 2006).
Basically, games are not patentable. Paragraph 4 of the Notice is superseded by the Practice Notices above.
My good colleague David O’Connor has recently delved into the murky world of the EPO rule changes and has come up with some interesting findings.
Communications before Search Report
There are three new communications sparked by the recent change in the EPO rules:
- Form 1056A – this sets out an objection under new Rule 62a.
- It sets a two-month time limit (from the date of the form) in which to elect a single independent claim in each category (apparatus, method etc) for search.
- If no election is made the first independent claim in each category is searched.
- Beware: you will not be able to later limit the claims to unsearched subject-matter.
- Often seen: when US claim sets are filed without amendment.
- Form 1056B – this sets out an objection under new Rule 63.
- It sets a two-month time limit (from the date of the form) in which to indicate the subject-matter to be searched.
- If no indication is made the European Patent Office (EPO) may only partially search your claims (or give-up and say no search could be performed).
- Often seen: when business method / software claims are filed, or following the filing of poor translations.
- Form 1056C – a rarer beast, a chimera of both objections.
- Found following, for example, the filing of a poor translation of a Japanese business method.
The parasitic form 2906 may sometimes be found attached to any of the above, offering an explanation of the objections. A lack of unity objection can also be additionally raised.
Beware there is no extension available. Further processing is ruled out.
Communications following Search Report
Some new faces, old favourites and contemporary twists:
- Form 1081 – issued when an examination fee is due 6 months after publication of the search report (R.70(1) EPC).
- Form 1082 – issued when the examination fee has been paid, the applicant must indicate whether they wish to proceed with examination (R.70(2) EPC).
- Form 1224 – same as form 1082 for ex-PCT applications, where a supplementary Search Report is drawn up by the EPO.
- Form 1083 – issued when the examination fee has been paid and the applicant has waived their right to indicate under R.70(2)EPC. This is a plainer specimen simply providing publication details.
The addition of new rule 70a EPC spices things up a little. This rule requires a mandatory response to the Written Opinion of the Examiner that accompanied the Search Report. If a response is not filed the application is deemed to be withdrawn. The time limit is that set by R.70(1)/(2), which is now mostly six months.
Following all these changes, you will notice some extra plumage at the foot of the forms:
The form number is first visible on the left-hand-side. This is followed by a date (I am guessing month and year of last form revision). Then we have same strange codes:
- OFS/NFS – we believe these refer to Old Fee System and New Fee System, presumably indicating the fees that apply if any are due.
- RTB/non-RTB – through a process of Holmean deduction, it is pretty much assured this refers to the EPO’s beloved “Raising the Bar”, a phrase of almost political vacuity. Basically if you see “RTB” on a form it means the new rules apply; “non-RTB” means the old rules apply.
- ESOP01=Y/ESOP01=N – translates as European Search Opinion is positive (says “yay”) and European Search Opinion is Negative (says “nay”). Following a positive opinion one would assume that there are no deficiencies to address and thus that no response need be filed. Following a negative opinion there will be deficiencies to address and thus a response will be needed to avoid the application being deemed withdrawn.