Oops #2! We’ve missed the Compliance Deadline (Rule 30)

There is a particular aspect of UK Patent Law that often confuses patent applicants and exam candidates: the compliance period.

Section 20(1) provides that there is a period within which a UK patent application must comply with the UK Patent Act (PA) and Rules (PR), and sets out the consequence of not doing so:

If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period…

Rule 30 PR sets this “prescribed period” as the “compliance period”, the last day of which is the “compliance date” . In most cases this “period” is 4.5 years from the priority/filing date or, if it occurs later, 1 year from the issue of the first examination report.

When an examination report is issued under Section 18(3) PA it sets a date by which to file a  response and/or amendments, typically 2 or 4 months. It is the practice of the UK Intellectual Property Office (UKIPO) not to refuse the application if a response is not filed, but instead to refuse the application at the end of the compliance period.

This practice has led to a few cases where requests have been filed for reinstatement after refusal at the end of the compliance period, for example, where the failure to reply to the examination report was caused by an error. The law was considered in the case of Anning’s Application, which led to a subsequent practice note being issued. The practice note stated that it was not possible to amend the application if a case was reinstated after the compliance period, as the compliance period was not extended. Only arguments supporting the fact that the application was in compliance with the Act could be filed. This position was arguably unfair to an applicant, they could successfully reinstate an application but have no way of putting it in order for grant.

I was thus pleased to see a new Practice Note issued by the UKIPO on 15 March 2011 on this issue, which clarifies practice and enables the compliance period to be extended as well as offering a period to response to any outstanding examination report following reinstatement. The Note results from the recent case of Ali et al’s Application, which is worth a read for the clear explanation of the law in this area.

Rule 161 EPC Period Extended to 6 Months from 1 May 2011

Just a quick reminder that the Rule 161 and 162 EPC periods are to be extended to 6 months from 1 May 2011.

Updated Rules 161 and 162 EPC shall apply to Euro-PCT applications in respect of which no communication
under existing Rules 161 and 162 EPC has been issued by 1 May 2011.

The EPO Notice setting this out can be found here: http://archive.epo.org/epo/pubs/oj010/12_10/12_6340.pdf .

This is a welcome change. Before, the time period was 1 month, which was rather onerous for applicants. The 6 month time limit will likely also help the EPO, as more care and consideration can be put into substantive responses to outstanding objections on applications.

(As a quick reminder the Rule 161 EPC period sets a time limit in which a response needs to be filed at the EPO addressing any deficiencies noted in the PCT Search Report Written Opinion or in the International Preliminary Examination Report. This may be comments in a letter and/or amendments. If this is not filed the European application is deemed to be withdrawn. Rule 162 EPC sets a period in which to pay excess claims fees. See previous post: here.)

Case Law Review – T 0004/08

Case:

T_0004/08

Claimed Subject Matter:

Method and system for refreshing browser pages

The salient difference lies in the preliminary use of a set of functions which can modify a DOM directly. The term directly is not entirely clear, but the Board understands it to refer to functions which are, in some sense, relatively simple. When considering the whole set of functions available for modifying a DOM, some will certainly be computationally more straightforward and faster to apply, than others. The Board interprets the term directly as stipulating that the functions in the delta renderer are those which are relatively simple in this sense.

Comments:

The Board’s view is that this would have been obvious. A function’s complexity is one of the things the skilled person, a computer programmer, considers daily. She is aware that some functions are simpler and faster to apply than others. She would expect that working entirely with such functions would generally be faster than working with more complicated functions. Thus she would formulate the idea of first trying some simple functions. It is inherent in the concept of trying, that the simple functions may be insufficient. A programmer knows quite well that the set of things that can be done with a small set of functions may be strictly smaller than the set of things which can be done with more functions. It would follow naturally, that the fact that the delta renderer is insufficient must be indicated. That is all that the flag does in the main request. (See section 2.10.)

How is your Investability?

On 29 March 2011 I braved the traffic on the Bristol bypass to attend Investability at HP Labs. Investability is a one-day event held by Bristol and Bath Enterprise Network (BEN) for entrepreneurs, investors and anyone else with an interest in the funding of early stage technology businesses.

The highlight of the event for me was a keynote speech by Mike Southon who presented on what entrepreneurs could learn from arguably the most successful entrepreneurs in recent times: the Beatles (accompanying slides: here; Mike was arguably cheating though by being a professional speaker and motivator). Takeaway points included:

  • The five “p”s of a successful elevator pitch: Pain, Premise, People, Proof and Purpose;
  • The golf-club test: can your investor explain your idea to his mates at the golf club and get them to chip in?
  • Get a foil: i.e. find a team or partner who complements your skills and abilities, such as Paul and John. To paraphrase Mike, if have the technology brains but the thought of social functions leaves you dry, find a “talky, shouty” person to promote and sale your product or service.

Among those representing public support institutions, the atmosphere was bittersweet. The Regional Development Agencies (RDAs) and their associated programs were on their way out, as part of the political changes brought in by the new coalition government, but the new Bristol and Bath Science or S-Park was slowly taking form in what was a field in Emerson’s Green, Bristol. Excitement for the S-Park is gaining momentum, helped by the news that the UK’s National Composites Centre will also be housed on the site.

In the wake of the shutdown of a number of regional support agencies, many had the question: who would support business and innovation in the UK? One answer came from Dr. James Clipson of the Technology Strategy Board (TSB). The TSB are a Swindon-based organisation who offer a number of options for research and development funding in the UK. They offer three different R&D grants for single organisations:

  • Proof of market grant;
  • Proof of concept grant; and
  • Development of prototype grant.

These are available to pre start-ups, start-ups, and small and medium-sized businesses from all sectors across the UK. Applications are assessed throughout the year, but it is recommended to get application in as soon as possible: the vim and vigour (as well as the finance) instilled by the TSB’s new lease of life under the present government may suffer fatigue as the year passes. Plus funding is now awarded nationally (previously it was distributed through the RDAs), so you are in effect competing nationally. However, I was surprised to learn that up to 75% of applicants for low-level early (e.g. feasibility) grants receive funding and the competitions come with generous legal terms (e.g. any IP rights reside in the company receiving funding). This makes the TSB definitely worth a look for established SMEs who are looking to fund tentative market research projects.

Sean Smith of the University of Bath’s Technology Transfer unit also explained how Britain’s universities were available to help SMEs with innovation. Sean had a background in industry and so spoke with some understanding of the gulfs that sometimes exist between commerce and academia. He explained though that efforts on both sides to realistically understand the aims and goals of those involved in research projects could facilitate fruitful relationships.

I was pleasantly surprised by the number of angel and early stage investors who attended the event. In a session of three talks on the investment process the audience was roughly one third angel investors, one third entrepreneurs and one third others (e.g. me). Gonzalo Trujillo and Nathan Guest both delivered interesting overviews of the investment process, respectively from a finance and legal perspective. Takeaway points included:

  • An investor needs to be right for a company as much as the company needs to be right for the investor. Often at a long-term relationship will arise and it is important for the financial success of the company that this works.
  • As Gonzalo joked, an investment is much like a marriage: there is a lot of initial flirting and anxiety to work to a consummation (of a deal), but do not let this distract you from the real challenge: living together afterwards.
  • Nathan remarked on the need for initial legal paperwork, but warned not to get too bogged down in pages of text. An early situation is fluid – enough needs to be in place to allow a deal to proceed but exact terms can evolve and be added throughout the relationship.
  • Nathan also reminded attendees to carefully check the ownership for IP rights: conditions vary from right to right and depend on a person’s role, it is best to engage a professional to ensure that all valuable rights reside with the legal entity you are investing in.

The event ended with a look ahead to Venturefest on November 3 (a big event in the new S-Park) and the nascent Local Enterprise Partnership (more information: here, follow them on Twitter: @WofEnglandLEP).

Big thanks to BEN, including Martin Coulthard and Becky Smithson, and sponsors, including HP Labs, for a productive and informative event.

Case Law Review – T 0037/08

Case:

T_0037/08

Claimed Subject Matter:

Method for controlling subscriber accounts in connection with a pre-paid IN platform, and a pre-paid mediator

In the example of the invention set out from line 26 of page 6 to line 11 of page 7, the charging data are only generated once the service has started running. There is a distinction to be made between delivery of a service and, in this example, delivery of the SMS. Reception of a message at a mobile switching centre is part of the SMS service and an essential part of the delivery of that service. Nevertheless, the full SMS service is not delivered and it seems that claim 1 must be read such that the charging data are sent before the service is complete. (See section 3.4.)

According to D2, a running service is stopped once funds become insufficient, and this requires that charging data are sent before the service stops running. However, it is not quite clear that this is really the same thing as sending the data before service delivery, as stated in claim 1. The Board, then, tends to the view that this feature does provide novelty. (Section 3.5.)

Comments:

The effect of this feature, as argued by the appellant, is to prevent fraud, by which the Board understands that a user should not be allowed to use a service for which funds are not available. As it stands, this effect is not a technical one, and it is necessary to consider what the corresponding technical problem is. The Board notes that the sending of data before a particular time does not imply that the data is used by the recipient before that time; it is, however, a necessary condition for such use. The technical problem can, then, be formulated in this way: allow a check to be made, before service delivery, on whether sufficient funds are available. It would be obvious to the skilled person, faced with this problem, that she would have to provide for the charging data to be sent in time. The Board does not consider that this requires anything beyond the skilled person’s general technical knowledge. Nor, apparently, does the appellant, since the application does not provide more information on this feature than the statement that it is implemented (page 4, lines 19 – 22).

Case Law Review – T 0823/07

Case:

T 0823/07

Claimed Subject Matter:

Searching apparatus and a method of searching.

Novel Features:

(A) the images stored by the image storage means identify or are associated with commercial suppliers;

(B) the linking means links such images, i.e. images which identify or which are associated with commercial suppliers, with the corresponding text item to form listings (stored results entries) to display each text item and corresponding graphical image simultaneously;

(C) so that when the listings are displayed the user is enabled to readily identify a desired commercial supplier from the graphical image.

Comments:

The novel features, however, derive in a straightforward manner from an underlying concept which lacks technical character and does thus not provide a technical contribution to the prior art.

In fact, displaying logos of commercial suppliers in combination with information concerning products, services etc provided by such suppliers is a presentation of information which exclusively addresses the mental and cognitive activities of users. There is no direct causal relationship to the technical solution of a technical problem. Even if it is true that presenting information according to this concept enables the user to identify the desired supplier and the associated listings more easily and quickly than with the prior art system, this result would be entirely subjective depending on the mental furniture of the user.

As follows from decision T 1143/06, the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see 5.4 of the Reasons of the decision). Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352).

 There has been no proof of any such technical effect of the present concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept.

This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments (see X. above). In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a “new input device” conferring technical character (T 333/95). Neither one of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04 – Estimating sales activity/DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46.

In the present case, the only relevant technical aspects of the invention are standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea is obvious in the light of the prior art.

Case Law Review – T 1445/10

Case:

T_1445/10

Claimed Subject Matter:

Nappies with active elements.

Comments:

The Examining Division considered that there were two problems relating to the feature of the active graphic being placed in the interior of the article. The first problem related to the question of small amounts of urine being sufficient to activate the graphic. The second problem related to the necessity for the wearer to inspect the pants internally in order to see the signal. The first problem was considered to be linked to an unpredictable perception of the user and thus linked to a further feature which could not be controlled. The second problem was considered to be non-technical as it related to the use of the article.

The Board considers both problems to be linked to the general problem of improved assistance in toilet training. Although it may be unpredictable whether or not the individual wearer correctly uses the provided assistance, such use which is not claimed but rather an article which provides, by means of a technical feature (the active graphic disposed on an interior article surface) the possibility of such improved assistance. Hence, the application specifies an invention within the meaning of Article 52 EPC. Accordingly, it is not necessary to consider the further auxiliary requests. (See sections 2.4.1/2.4.2.)