Patents and Designs Law Update – July 2019
July 31, 2019
Swindell & Pearson has a law committee that convenes on a monthly basis to review recent changes in legislation and case law. This article presents a summary of some of the items discussed by the committee in its July 2019 meeting.
UK - Patents
Changes to the Manual of Patent Practice
The UKIPO has updated its Manual of Patent Practice. The updates include: -
- an update in light of EPO Board of Appeal decision T 1218/14 (Dohler/DuPont Nutrition Biosciences), which provides an explanation of when an undisclosed disclaimer is allowable;
- a clarification of the extension regimes available when dealing with late filed divisionals;
- an update to a note that states doctrine of equivalents does not apply to novelty, in light of Regan Lab SA v Estar Medical Ltd & Ors  EWHC 63 (Pat).
UK High Court decision Conversant v Huawei
This UK High Court decision  EWHC 1687 (Pat) relates to the validity of Conversant's patent for 3G mobile phone technology, which is the subject of FRAND/SEP. The judge (Mr Justice Arnold) found the patent to be invalid for added matter introduced into an integer of claim 1 during prosecution. The integer in question was one for which Conversant had successfully argued equivalence in respect of infringement, and in respect of added matter Huawei had argued that Conversant’s equivalence argument diluted the new limitation in integer C. In respect of Huawei’s argument, the judge said that, “this argument is misconceived, since it [Conversant’s argument] is an argument about the scope of protection, and not about disclosure. Infringement by equivalence cannot give rise to an added matter objection.” However, he still found that the amendment did add matter. An IPKAT report of this decision may be found here.
UK High Court decision Pfizer v Roche
This UK High Court decision  EWHC 1520 (Pat) relates to a request for an Arrow Declaration. In this case, the judge (Mr Justice Birss) had to decide whether an Arrow Declaration would serve a useful purpose when there was no possibility of a UK patent right ever coming into existence. Roche had several European patent applications relating to a drug (bevacizumab) for the treatment of cancer and sold under the brand name “Avastin”, but it had withdrawn the UK designations of the applications shortly after the request for an Arrow declaration was filed. Although the judge thought that the withdrawal of UK designations was to shield the patent applications from an Arrow Declaration, he still decided that because UK rights were not at issue, a declaration could serve no useful purpose and so no declaration could be made. An IPKAT report of this decision may be found here.
UKIPO Patent Decision
A decision was made by the UKIPO, following a hearing, to allow a patent application made by Fisher-Rosemount Systems, Inc for a software-based invention. The invention relates to managing process control data. Among other things the decision says, “The present invention is about retrieving and displaying process data which is, as a matter of practical reality, about displaying events associated with a field device(s). This provides a visual indication of the internal operation of a process control system which is arguably quicker and more reliable than the prior art. Even though the manner of enabling data to be retrieved and displayed in a more reliable and quicker manner resides in a computer program – a claim directed to its use in the retrieval and display of events regarding field devices in a process control system does not reside in a computer program as such.” Brief details of this new case, including a link to the decision, may be found here.
Europe - Patents
Requirement to file a copy of search results
It is currently the case that applicants are exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority of either:
- an application on which the EPO drew up a certain type of search report, or
- a first filing made in: Austria, Denmark, Japan, the Republic of Korea, Spain, the United Kingdom or the United States of America.
As of 4th June, applicants are also exempted from filing a copy of the search results under Rule 141(1) EPC if they are claiming the priority from a first filing made in Switzerland.
Patent Prosecution Highway pilot programme between the European Patent Office (EPO) and IP Australia (IPA) based on PCT and national work products
With effect from 1 July 2019, the PPH pilot programme between the EPO and IPA (which started in 2015) is extended for a period of three years ending on 30 June 2022. The requirements laid forth below will apply to PPH requests filed with the EPO on or after 1 July 2019.
US - Patents
A pending petition in Ariosa v. Illumina focuses on the narrow issue of whether disclosures in a US published application that refer back to an earlier filed US provisional application are prior art as of the filing date of the provisional application.
The answer from the Federal Circuit is “sometimes.” - a provisional application will only count as “prior art” as of its filing date if the later published application (or issued patent) sufficiently supports all of the claims in the resulting non-provisional application as published (or issued patent).
There is clearly large disagreement on this and the Supreme Court called for the views of the Solicitor General. In their brief, the Solicitor General has argued that the Federal Circuit is totally wrong and has suggested that the Supreme Court vacates the Federal Circuits decision.
If you would like more information on any of these matters please contact Dominic Bosher by email at [email protected]. The team at Swindell & Pearson has experience in obtaining patent and registered design protection around the world and, in particular, of obtaining patents which enable UK corporations to reduce the Corporation Tax paid on profits earned from patented inventions to an effective 10% using Patent Box tax relief.
Swindell & Pearson is a UK based firm of patent and trade mark attorneys that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 135 years. Based in the East Midlands, the firm has offices in Derby, Stoke, Wolverhampton and Stafford as well as in Sheffield. To find out how Swindell & Pearson can help you and your business with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.