Archive for October, 2011

Just a quick post for anyone looking for information relating to document formatting for UK specifications. In the words of the UK Intellectual Property Office’s Code of Practice:

“a. The presentation of the application (including drawings) should meet the requirements of rule 14 of the Patents Rules 2007 (see 14.26 – 14.57). For example, documents must be legible and capable of reproduction, and the margins should be kept clear and free from headers or footers denoting references or other matter (see 14.28).” [Section 5. – page 9 of the PDF.]

Rule 14 then makes reference to Schedule 2 of the Patent Rules 2007. I will not repeat it, it is not that exciting.

The important points from Schedule 2 for an online filing are:

  • Frames (lines surrounding matter) must not be used.
  • The pages of the description and claims must be numbered consecutively in a single series.
  • Page numbers must be located at the top or bottom of the page (but not in the margin) in the centre.
  • The minimum margins in any document must be 20mm.
  • Each of the following: the request for the grant, the description, the claims, and the abstract, must begin on a new sheet of paper.
  • The abstract, description and claims must use at least 1.5 line spacing, except where they form part of a translation or a sequence listing.
  • The capital letters in any typeface or font used must be more than 2mm high.

For the drawings:

  • Margins must be at least: 20mm top and left, 15mm right and 10mm bottom.
  • No shading.
  • Should still be clear if reduced in size to 66% of its original size.
  • The capital letters in any typeface or font used in any drawing must be more than 3mm high.

Often, when discussing my job in public, I receive a number of pontifications on the various merits, or more usually demerits, of “the patent system”.  It is said that “the patent system” is “broken” and that there are far too many “dubious patents”. Oft cited is Amazon’s “1-Click” patent, typically described as a monopoly on anything “1-Click” related.

In reply, I politely ask which “patent system” is being discussed, explaining the system of national territorial rights. The eyes then glaze over as I launch my defence.

Helpfully for me the European Patent Office has recently published Board of Appeal decision T 1244/07. This case relates to a divisional European patent application within the “1-Click” family. It is worth a read, especially for those with negative views of “the patent system”, as it rather nicely shows the European Patent system operating smoothly with not a breakage in sight.

Firstly,  the claimed invention does not consist of the words “1-Click”. Instead, all of the following features are required:

         “A method for ordering an item using a client system, the method comprising:

receiving from a server system a client identifier of the client system when the client system first interacts with a server system;

persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;

storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;

storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;

connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:

sending from the client system a request for information describing an item to be ordered along with the client identifier;

determining at the server system whether single-action ordering is enabled for that purchaser at the client system;

if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;

displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,

performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and

completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.”

Secondly, even with this long list of features the Board of Appeal found the claim to lack an inventive step over previously published documents. In particular a journal article called “Implementing a Web Shopping Cart” by Baron C. et al was cited.

Thirdly, I enjoyed the thinly-veiled dig at US and Canadian law:

         27. It is interesting to observe the outcome of this application in other jurisdictions.

In the US, where there is no specific exclusion for business methods, the validity of the equivalent claims was never decided in court, but a decision by the Court of Appeal of the Federal Circuit (D6) lifted an injunction on the basis that the alleged infringer had “raised substantial questions as to the validity of the … patent”. The patent was also re-examined and allowed in essentially the same form albeit limited with additional features of a shopping cart. The office action in the re-examination did not discuss D1, or go into details of cookie technology and the skilled person’s appreciation of it.

In Canada, the examiner had considered equivalent claims to be obvious over D5 and cookie technology. The review (D7) by the Commissioner of Patents found that the use of a cookie to retrieve purchaser-specific information was obvious (point 87), and the single-action ordering aspect not obvious (point 102), but an unallowable business method (point 181) and not technical (point 186). On appeal, the Federal Court overturned the latter findings for having no basis under Canadian law for such exclusions. D1 was not discussed in either of these decisions.

Some tips from the case law on general internal procedures. T 1764/08 deals with a case in where the grounds of appeal were filed electronically. The only problem was this was on 13 August 2008 and electronic filing of appeal documents was only permitted from 5 March 2009. So far, so “oops”.

What is interesting is the refusal of the request for re-establishment under Article 122(1) EPC. According to Article 122(1) EPC an appellant can only have his rights re-established if he was unable to observe the time limit for filing the statement of grounds of appeal in spite of all due care required by the circumstances having been taken. In this case it appears the internal procedures didn’t convince the Board:

17. Taking into account the submissions and evidence on file, the board has difficulty in acknowledging that, at the relevant time in question, the representative’s firm had an established system of checks to ensure that mistakes such as happened in the present case were avoided. It appears to the board that, although the assistants were generally instructed to use fax or regular mail for filing documents in appeal proceedings, there was no check or monitoring foreseen in the organisation of the firm as to whether these instructions were followed. It is clear from the representative’s submissions that the assistant relied merely on the representative’s instructions and, if the assistant did not receive any instruction, she “did what she was used to do, viz. send the letter to the EPO through epoline” (see the appellant’s letter dated 6 March 2009, page 2). This, however, speaks against a normally satisfactory system for monitoring the filing of appeals.

18. It is also the board’s view that filing an admissible appeal is not a routine task, but rather a complicated task which needs clear instructions from the professional representative to his assistant. In the present case, however, there is no evidence on file whether the assistant received instructions from the appellant’s representative for sending the statement of grounds of appeal to the EPO, and if so, what instructions. In particular a copy of the email allegedly sent together with the draft statement could not be provided to the board.

19. The board also considers that the assistant’s work should have been monitored as far as filing documents in appeal proceedings was concerned since at the relevant time the legal situation differed from that for filing documents in other proceedings before the EPO and the legal consequences for any failure were severe. In the board’s view the professional representative whose electronic signature was on the cover sheet should have checked whether the attached document could have validly been sent via epoline and should have instructed the assistant accordingly, in particular in view of the exceptional personal circumstances of the appellant’s representative, which were known within his office.

I guess the moral of this story is that it is essential to have documented internal procedures with suitable checks and balances (that are followed) to allow the emergency safety net of re-establishment to be of any use. Attorneys also cannot get away with blaming their assistants.