ODDFELLOW DECEMBER 2023
J.A. McStea Teemacs GmbH
Bubendorf 1 December 2023
…and they’re off and running…
So finally, the long-awaited UPC is under way. It’s been a long journey – consider that the initial impetus was back in the dim, distant past. I checked my Oddfellow archive – my first mention of the possibility was in 2011, and the European Parliament approval of the proposed legislation was reported in December 2012. Since then, there have been numerous attempted roadblocks, first by the Spanish and later by cases at the German Federal Constitutional Court. And of course there was that monumental act of self-harm called Brexit.
It seemed for a while that the UK profession, having been locked out of the European trade marks profession, would also be locked out of the European patent profession, courtesy of the CPTPP and its grace period requirement, but Westminster actually listened to wise advice for a change and negotiated a suitable position, so that UK attorneys can represent clients at the UPC. They are naturally banging this particular drum as hard as they can go. With good reason – the proportion of European patent applications with English as the official EPO language is somewhere north of 60%. I can’t find a figure, but given that the USA, Japan, China and Korea made up 51.3% of the 2022 European applications, I think 60%+ is a safe bet. Germany contributed 12.8%, France 5.6% and the UK a mere 2.9% (less than Switzerland at 4.7%). (Australia? 0.5%).
However, at the moment, German appears to be equally common as a language of the UPC, courtesy of the fact that the German branches of the UPC are the busiest, especially those in Munich, Hamburg and Düsseldorf. The ready German adoption of the UPC may be because the Germans have always filed many cases in their national courts, plus they are used to the UPC’s bifurcation practice (the splitting of validity and infringement questions into two separate proceedings) from their own national proceedings.
I think the extent of UPC activity has taken everyone by surprise – people were really expecting a cautious approach from people in important fields, such as pharmaceuticals, with major patents being opted out of the UPC system, but there is a lot of activity in these fields. Over 100 cases have now been filed. There has even a first Court of Appeal case. This one is in German, but the oral proceedings were conducted in English. I guess the fun will really begin when different divisions come to different conclusions on the same or similar facts, and need the UPC’s equivalent of the EPO’s Enlarged Board of Appeal to sort them out.
Every now and then, the vexed business of priority surfaces at the EPO. Not being a country, the EPO is not a signatory of the Paris Convention, and it has long held that Articles 87-89 constitute a complete, self- contained code of rules for claiming priority (J15/80). However, recently there surfaced a couple of cases both of which were referred to the Enlarged Board of Appeal. Both cases originated from the same US applicant, Alexion Pharmaceuticals. Alexion had filed a US provisional application in the name of the three inventors. However, the subsequent PCT applications (which gave rise to the EP applications) named the inventors as applicants for the US only, but Alexion and a Canadian university as applicants for all of the other countries. And only one of the inventors had assigned their priority right to Alexion and the university prior to the PCT filings. The right to priority was challenged in opposition proceedings, and in both cases it was rejected. Alexion appealed in both cases, and both were referred to the Enlarged Board of Appeal. These were consolidated as G 1/22 and G 2/22. The EBA decided:
- The European Patent Office is competent to assess whether a party is entitled to claim priority under Article 87(1) EPC.
There is a rebuttable presumption under the autonomous law of the EPC that the applicant claiming priority in accordance with Article 88(1) EPC and the corresponding Implementing Regulations is entitled to claim priority.
- The rebuttable presumption also applies in situations where the European patent application derives from a PCT application and/or where the priority applicant(s) are not identical with the subsequent applicant(s).
In a situation where a PCT application is jointly filed by parties A and B,
(i) designating party A for one or more designated States and party B for one or more other designated States, and (ii) claiming priority from an earlier patent application designating party A as the applicant, the joint filing implies an agreement between parties A and B allowing party B to rely on the priority, unless there are substantial factual indications to the contrary.
This “rebuttable presumption” business is a newbie – it also represents a change of direction for the EPO, in that, previously, the EPO had expected the level of proof for an assignment of priority right to be that of Article 72:
An assignment of a European patent application shall be made in writing and shall require the signature of the parties to the contract.
Moreover, previous case law had gone so far as to say the standard was “beyond reasonable doubt”, rather than “balance of probabilities”. So, it would seem that, from now on, only the most tenuous claims to priority can be attacked. The profession has welcomed this more pragmatic approach to the assessment of entitlement to priority.
A recent referral to the EBA concerns the extent to which products that are commercially available before a patent application was filed must be analysable and reproducible by the skilled person. The problem here was that the alleged prior art was a polymer, known only by the trade name ENGAGE 8400. Could the skilled person identify it and then accurately reproduce it without undue burden, as required by G1/92? The proprietor of the patent argued that doing so would require a major research programme that was beyond the ordinary skill of the art and that this could not be considered prior art. We await further developments.
Another aspect that might be destined for the EBA is the vexed question of bringing the application into conformity with the claims as allowed. This has been standard practice at the EPO for ages. However, the recent T1989/18 has placed a question mark against this. Moreover, the patent proprietor involved, Roche, just down the road from me, appears to be preparing to take the argument against description conformity further. More to come on this one, but in the meantime, we’re stuck with conformity.
In the past, I’ve mentioned the proposal for a modular EQE that would better assess whether a candidate was fit to practise before the EPO. This is now nearing completion and transition is planned to begin in January 2025. The aim of this system is to help trainees build their skills and knowledge over a three-year time frame.
The current EQE has a pre-exam taken before the main exam, and then a main exam of 4 parts, A (drafting), B (responding to an official action), C (Opposition) and D (Legal), D being in two parts, short questions (D1) in the morning and legal situation (D2) in the afternoon.
The proposed new modules are F (Foundation, equivalent to the pre-exam), M1 (assessment of information and client instructions, containing elements of A and B), M2 (mastering procedural law, comparable to D1 and the legal aspects of the pre-exam), M3 (drafting patent documentation and reasoning – the biggest departure from the present system, made of three separate parts and combining elements of A, B and C, with other aspects, such as preparing an appeal) and M4 (advising the client, comparable to D2).
One big change is the end of compensable fails (the ability to compensate fail marks between 45 and 49 by higher marks in other papers) – one of our Givaudan trainees did this, by getting 45 in D but 60 in C, thus passing the EQE. Part of the reason is that the fixed pass mark of 50% is also going. The pass mark will be set each year.
The chap(esse)s are unhappy again. And I can understand why. There is a proposal by the European Patent Institute that a technical qualification of at least 4 years is needed to be a patent attorney – preferably a master’s or PhD of at east 5 years. This is in line with the EPO’s proposal to make a master’s-level education compulsory for EPO Examiners, the alleged purpose being to maintain the quality of European patents. CIPA has argued forcefully against this nonsense.
I personally find this baffling (but then, as a humble possessor of a four-year honours degree, I would, wouldn’t I?). The three-year bachelor’s degree so typical in the UK and Australia doesn’t exist in Europe, four years being the norm. And in some technical fields in Germany, e.g. chemistry, you are expected to go on to a doctorate, and if you don’t, people will wonder (hopefully not out loud) why you failed.
However, from practical experience, I find it ridiculous that the ability to do the job should be based on a particular level of tertiary qualification. Naturally, you should have a tertiary qualification in science or technology, but to say that it has to be so long or so high for you to do the job is absurd. I know of some very distinguished Fellows of the Institute (indeed some who became President) who would have been disqualified from the profession by such a ruling. (I also know of some PhDs who weren’t much good at it). Thinking back to my Dulux days, the R&D labs of Mother, ICI Paints Division in Slough, were full of masters and PhDs – and headed by a guy with a three-year BSc. And when you think of it, the technical qualification of most US patent attorneys is a college degree, which, as I understand it, is at best is equivalent to first-year university level in Australia. (Of course, they also have to acquire a law degree in order to be called a patent attorney).
Over the 30-odd (very) years we’ve been here, we have been gradually shedding bits of Australiana. Various electrical items died, and with them the necessity to have our various extension leads with an angled-pin Australian female plug on one end and a Swiss hexagonal or German/French Schuko male plug on the other. A recent casualty was the expired Simpson tumble drier (replaced by a UK one – they still have wall-mounted ones there).
And finally the biggest bit of all, what might have been the only Hills hoist in the northern hemisphere. We put a brand-new one in our container when we came, and installed it in the lower garden, where it twirled for many a year. However, as the garden trees grew, obstructing it, and we found less and less use for it, especially when the younger ladies departed, we removed it and it hung for years from the garage roof. Sue (Mrs. Oddfellow) was reluctant to part with it, for purely sentimental reasons.
And then came the electrical inspection. Elektra Baselland requires that all houses be inspected for electrical safety every 20 years. This started the Missus on a major cleaning and reorganising binge, which led to the realisation that there was a lot of stuff that we simply didn’t use any more. (I confess to being the world’s worst when it comes to keeping things just in case they might be useful). And so, the Hills hoist made its last ride to the local metal collection.
The good news is that the flying schedules of the younger ladies are clear on Christmas Day, so they can both be with us. The bad news is that I now have to go out and buy a Christmas tree. For years. Part of our Australian imports was a foldable artificial tree, which we dragged out every Christmas and then put away again. Eventually the younger ladies moaned so much about this increasingly pathetic relic that we dumped it and started getting real ones when they both could come to us. I must admit that the real McCoy does look so much better. We’ve learned to buy the Nordmann (fir) type because they are slow to drop their needles.
Christmas also brings around renewal of contract time, and each time I wonder whether this is the time when a bean counter will look at the Givaudan Patents Department and say, “Why, exactly, is this old git still here?” However, it hasn’t happened (yet), and I’ve been renewed for another year. I’m a sort of repository of ancient history. In addition, I’m the only one who knows anything about trade marks. European patent attorneys are only patent people, so many of them wouldn’t know a trade mark if they fell over one. Now we are not allowed to do trade mark work (this falls under the auspices of the Legal Department in Vernier, and they have refused to part with it, even though I think we could do it cheaper and better), but it helps to know something about it, and I do a section on the latest cases in our monthly case law meetings.
And with that I wish you and yours a merry Christmas and a happy, healthy, prosperous and hopefully more peaceful (and saner) 2024.