In this ealier posting on the America Invents Act we reported on the new Covered Business Methods Review (faq, info) which allows to challenge any business method patent before the Patent Trial and Appeal Board (PTAB) as soon as it is enforced against an accused infringer.
From a European perspective, this new proceedings seems particularly interesting as the question as to whether or not a claim falls under the CBM review is answered by 37 CFR § 42.301 as follows:
(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.
This definition is surprisingly similar to what European case law (and German case law) has developed to define “methods for [...] doing business [...] and programs for computers as such” according to Art. 52 (2), (3) EPC (and § 1 (3), (4) PatG). Even further, the requirement of a “technological feature that is novel and unobvious” seems to correspond to the well-established Comvik approach (cf. T 641/00, 2002) of the EPO Boards of Appeal, according to which non-technical features cannot contribute to novelty and inventive step.
Yesterday, the much awaited website of the UPC Preparatory Committee went live under the domain www.unified-patent-court.org. A main purpose of this website is to inform the public about the Committee’s work and the UPC as such (see e.g. Q&A section). One of the most important tasks of the Committee is the preparation of the Rules of Procedure of the future Unified Patent Court.
public consultation until 1 October 2013.
Written comments are to be submitted to email@example.com. So, please, colleagues, readers, and fellow bloggers, study the official draft and make submissions to the Preparatory Committee if necessary.
The further procedure after closure of the public consultation is explained as well:
[...] the Committee shall after closure of the written phase of the public consultation ask the Drafting Committee to evaluate the contributions received and to make proposals and comments ensuing from the public consultation. Further, the Committee intends to organise a public hearing on the draft rules of procedure in early 2014. The European Commission shall be asked to advise on the compatibility of the Rules of Procedure with European Union law. This will form the basis for the Committee’s Legal Framework Working Group to prepare the draft Rules of Procedure for approval by the Committee. As with all of the Committee’s preparatory work, also the Rules of Procedure will need to be adopted by the UPC’s Administrative Committee once it has been established.
The official version of the 15th draft differs form the inofficial version in a number of ways. One significant difference relates to Rule 286 governing, inter alia, the conditions under which non-lawyers (i.e. professionals that are not attorneys-at-law) may independently represent cases before the UPC. This rule has previously been criticised on this blog because of its striking lack of clarity (see here for the inofficial 15th draft version and here for the 14th draft version), as the 14th draft contained the unclear term “jurist” and the inofficial 15th draft contained an even more unclear recursive definition of the term “lawyer”.
Clarified Rule 286 (1) of the 15th draft RoP now reads as follows, with the crucial sentence highlighted:
A representative pursuant to Article 48(1) of the Agreement shall lodge at the Registry a certificate that he is a lawyer authorised to practise before a court of a Contracting Member State. Lawyers within the meaning of Article 48(1) of the Agreement are also persons possessing a law degree (jurist) who are authorised by the Swedish Patent Attorneys Board or equivalent body in a Contracting Member State. They shall lodge a certificate evidencing such authorisation. In subsequent actions the representative may refer to the certificate previously lodged.
One of our most successful presentations on business trips to Asia in recent years was the one about “Dos and Don’ts in European Filings” covering many practical hints that should be observed – possibly already at the drafting stage – upon filing direct EP applications with the EPO or entering the EP regional phase via the PCT route.
At KSNH we are very happy to announce that an article by my colleagues Jochen Höhfeld and Shino Tanaka summarising this lecture has been recently accepted for publication by major IP journals in Japan, China, and Korea:
(see also here, No. 162 제810호, 2013.05.20)
Basically, the articles cover the following topics:
- Limitation of number of claims
- One independent claim per category
- Unity of the invention
- Reference numnerals
- Multiple independent claims
- Functional claim features
- Clarity of the claim language
- Claims in two-part-form (Jepson-type claims)
- Claim amendments
- Number of pages
- Basis for claim amendments
- Discussion of prior art
- Incorporation by reference
- Format of pages
- Entering the regional phase before the EPO (Euro-PCT)
- Regional pahse entry with the EPO acting as International Search Authority
- Designation of the inventor
- Divisional applications before the EPO
In this earlier posting on the transitional scheme and opt-out options we explained that the future European patent system will provide two different routes for patent protection, (i.) the classical EP bundle patent and (ii.) the new European Patent with unitary effect but, in the long run, only one judicial system namely the Unified Patent Court as established by the Unified Patent Court Agreement (UPCA).
During an at least seven-years long transitional period, however, proprietors/applicants of EP patents/applications can opt-out from the UPC system and ensure responsibility of the present European post-grant system with infringement and invalidity suits before national courts separately for each single nationalised EP patent, this circumventing the unitary effect of UPC proceedings (Art 83 UPCA).
We also pointed to the fact that there is a certain risk for EP patent proprietors to get stuck with the new UPC system and its unitary effect if, e.g, an invalidity suit is filed by a competitor before the proprietor can file an opt-out request for his patent(s).
Before this background, the recently published 15th Draft of the Code of Procedure (mark up version) provides a new Rule 5 (8) RoP implementing a sunrise period giving EP proprietors/applicants the option to opt-out before the UPC Agreement actually enters into force, thus preventing third parties to file legal suits by which a patent gets stuck with the UPC system:
An Application to opt out may be lodged with the European Patent Office after a date to be announced by the European Patent Office and before the coming into effect of the Agreement. [...]
At the time being, the length of the sunrise period is unknown.
Also new in comparison to the 14th draft of the Rules of Procedure are Rules 5 (3) and (6) RoP requiring fees for opt-out and withdrawal of opt-out (cf. also Rule 370 (2) RoP). The amount to be payed is not yet known, however, there are speculations that it will lie in the range of 200 to 400 EUR, which may sum up to a considerable amount of money if large portfolios are involved.
In this earlier posting we speculated about the representation rights of national German and UK patent attorneys before the new Unified Patent Court, based on the wording of Art 48 UPCA and the somewhat odd formulation of Rule 286 of the 14th Draft of the Rules of Procedure:
[...] Lawyers within the meaning of Article 48(1) of the Agreement are also jurists authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation. [...].
We preliminarily concluded that the definition of the term “jurists” may extend the group of lawyers according to Art. 48 (1) UPCA by certain other legal professionals with a specific expertise, such as national patent attorneys that are allowed to represent their clients in national civil proceedings, e.g. German patent attorneys who are authorised to present invalidity cases before the German Federal Patent Court (BPatG) and the Federal Court of Justice (BGH).
Now the 15th Draft of the Code of Procedure (mark up version) has found the daylight – not on an official server of the Preparation Committee, but in a somewhat obscure way via the private US-based mailchimp service.
Besides other interesting amendments in comparison to the the 14th draft (see e.g. here), Rule 286 CoP has been amended by replacing the term “jurist” by the term “lawyer”. The new passage thus reads:
Lawyers within the meaning of Article 48(1) of the Agreement are also lawyers authorised to practice in patent related matters before a court in a Contracting Member State and they shall lodge a certificate evidencing such authorisation.
What is the sense of this – mathematically speaking - recursive definition?
Article 48 (1) UPCA generally covers “lawyers authorised to practise before a court of a Contracting Member State”, i.e. all attorneys-at-law of the Contracting member states. We thus have two definitions, whereas the second defines is a genuine subset of the first:
- lawyers authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice in patent related matters before a court in a Contracting Member State.
What is the sense in clarifying that a genuine subset of the group of entitled lawyers is entitled as well?
The most probable answer is that this recursive – and thus unclear – definition is nothing more than a drafting error caused by a quick-and-dirty approach to end speculations like the above ones about representation rights of some national patent attorneys. In the present form, Rule 286 (1) 15th Draft CoP might then just be useless and needs to be cancelled in the 16th draft.
On the other hand, one may also argue that the existence of Rule 286 (1) changes (downgrades) the scope of the term “lawyer” in Art 48 (1) UPCA to “person practicing law” or simply “legal counsel”, which would immediately render the two definitions meaningful again, as they would read
- legal counsels [generally] authorised to practise before a court of a Contracting Member State, and
- lawyers authorised to practice [only] in patent related matters before a court in a Contracting Member State.
The first definition would then cover attorneys-at-law and the second, again, such national patent attorneys that are authorised to represent certain patent cases before national civil courts. In this case, however, the amendmet would be useless as well as it does not change anything as compared to the 14th draft version.
Regardless of the way Rule 286 (1) may be interpreted in the present form or amended in future, it certainly is not an indication of the utmost care the Preparation Committee should pay to the Rules of Procedure as the backbone of the new court system.
The k/s/n/h::law blog
Some of the patent attorneys of the KSNH law firm have joined their efforts to research what is going on in the various branches of IP law and practice in order to keep themselves, their clients as well as interested circles of the public up to date. This blog is intended to present results of such efforts to a wider public.
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- kelle on Germany: Copyright Protection More Easily Available For Works Of “Applied Arts”
- Time Limits & Deadlines in Draft UPCA RoP: Counting The Days - KSNH Law - Intangible.Me on Wiki Edition of Agreement on Unified Patent Court Agreement (UPCA)
- Time Limits & Deadlines in Draft UPCA RoP: Counting The Days | ksnh::law on Wiki Edition of Agreement on Unified Patent Court Agreement (UPCA)
- Wiki Edition of Agreement on Unified Patent Cou... on Wiki Edition of Agreement on Unified Patent Court Agreement (UPCA)
- European Commission Takes Next Step Towards Legalising Software Patents in Europe | Techrights on EU Commission publishes Proposal of amendend Brussels I Regulation for ensuring Enforcement of UPC Judgements
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