ODDFELLOW DECEMBER 2024
09/12/24
J.A. McStea Teemacs GmbH
Bubendorf 5 December 2024
What, again?
My much more notorious countryman Gerry Adams once observed that, if airlines selected passengers at random for the full security search, why was he randomly selected every single time he flew? I feel a bit the same way. When flying to the USA in days gone by, I was regularly selected for the works (explosives testing, that sort of thing). In one case, I’d just gone through this at Cincinnati Airport, but when I looked at my ticket en route to the gate, I found I was John Smith flying to Tulsa, Oklahoma. So, back to check-in and a new ticket – and a new full search. “You’re very good at this, Sir,” said the checker, “have you done it before?” “Oh, about 40 minutes ago…” Never found out why – perhaps having multiple nationalities caused it.
In my most recent case, it was not an airline but the TTIPAB, who audited me for the second time in as many years. Perhaps they’re trying to dispose of dead wood? Now I confess that my case is marginal – after all, I no longer live in Australia or New Zealand, and I work more in the European and US fields, so my various CPE activities tend to be more related to those jurisdictions. However, I do a lot of international stuff (PCT, Madrid, Hague), which, I argued, is relevant to Australia as Australia is party to those international arrangements, and I’m always careful to make sure that the ethical condition is fulfilled.
I have a sentimental attachment to my first patent qualification (it took me long enough to get it – when I finally qualified, then-President Trevor Beadle rang me and said they’d been considering establishing a prize for the most persistent candidate), and I’d hate to lose it. Was I going to have to retitle this column to The Loudmouth formerly known as Oddfellow? Anyway, the Designated Manager has now contacted me to say that I’ll be let off – this time – but that I was going to be audited again in 2025, so I’d just better pull up my Trans-Tasman socks.
It does, however, bring up the question as to how long I want to keep doing this. I personally like what I do, and Givaudan seems to like what I do (Givaudan Shanghai seems particularly fond of me, as they keep sending me jobs – I’m currently juggling four). But, as I renew a trade mark in my private business, I wonder whether I’ll still be here in 10 years for the next renewal when, if I’m spared, I’ll be 87.
Will I need to be exhumed? (I could say that this would be a grave mistake, but of course I won’t). And, let’s face it, most of the people I knew in the profession Downunder have retired from the scene, so perhaps this oddest of Fellows would disappear with nary a ripple.
One of the features of EPO practice is the requirement that, for allowance, the description must be brought into conformity with the claims. Now it says this nowhere in the EPC or Rules, but the practice has evolved over the years. However, Roche took exception to this and challenged it, as I mentioned this time last year. The result has now come out as T56/21, and the finding is that it isn’t necessary. The decision goes on (and on, and on, and on…) for 86 pages, but the basis is, quite simply that, that it is nowhere specifically required. Moreover, it takes into account recent developments of the Court of Appeal of the UPC, and it views EPO case law as evolving. As a result, the Board thought it unnecessary to refer the question to the Enlarged Board of Appeal. As the Board put it:
In view of these developments, a requirement to adapt the description to amended claims disregards the choices made by the legislators and encroaches on the competence of the national courts. therefore,
a referral does not seem to be appropriate.
However, this means that it is just another one of the decisions in the two diverging streams of cases, which, in normal circumstances, needs the Enlarged Board of Appeal to sort out. I suspect that the language of T56/21 is red rag to bull, and that a referral by the President to the Enlarged Board can be expected.
2025 sees the introduction of the revamped European Qualifying Examination. The first part, Foundation Paper F, will take place on 21 March 2025. The old pre-examination will disappear and the old-format papers A (drafting), B (responding to an office action), C (opposition), and D (legal) will be held for the second-last time, disappearing completely after 2026. The gory details for anyone interested are here.
The object is to make the whole thing more related to real life practice, as opposed to a legal quiz. It looks promising, but we’ll see how it works out. As the elder von Moltke (he of the Franco-Prussian war fame) said, no plan survives first contact with the enemy.
There was an interesting webinar last year on Australian cultural knowledge (See? I don’t ignore my Trans-Tasman obligations completely!). The subject of TK surfaced in a recent EPO Board of Appeal case, the French language T2510/18. It concerned the use of simalikalactone as a medicament for the treatment of malaria. Simalikalactone is obtained from the leaves of Quassia amara, native to Central and South America. It was acknowledged that the plant had been used in traditional medicine against fevers and malaria. The appellants argued that the commercial exploitation of the invention was contrary to good morals and public policy within the meaning of Article 53(a) EPC. Specifically, the appellant argued that the protection of the invention was not in accordance with European culture and standards governing research with indigenous communities and use of their traditional knowledge, and that the patentee had engaged in biopiracy.
The Board rejected this argument, pointing out that 53(a) is intended to prevent protection of inventions whose commercial exploitation would be contrary to public policy of morality, so it’s not relevant in this case. More importantly, the EPO has no means to deal with biopiracy, so such an argument is outside its remit. In any case, the patentee had made an agreement with the Guiana authorities for a fair sharing of any royalties from a granted patent.
Switzerland is about to get a novelty and inventive step examination. For a long time, Switzerland had no patent law whatsoever (one of the reasons for my old employer Sandoz (now Novartis) setting up in Basel right on the French border (the car park is technically in France). It was more or less forced to get one by the irate Germans. For a long time, it examined substantively in only two fields, textiles and horology, but eventually even this disappeared, and it was a strictly formal examination.
The Swiss Office could be quite flexible. When I moved from Sandoz to spun-off construction chemicals business MBT, I inherited a load of Swiss national applications (big boss Brian Yorke didn’t like the EPO). Another of Brian’s idiosyncracies was to try to avoid outside attorneys, so all the translations were done in-house. The guy who did them was a whiz at languages, but not at the particular language of construction chemicals, so, when he was confronted by an application for Switzerland dealing with high-alumina cement (a high performance material used in particular applications,) he translated it literally into German as Hoch-Alumina-Zement, the idea that German could have a specialist term for it (Tonerdschmelzzement) apparently not occurring to him. So, when a Swiss examiner rang me and said, “What on earth is this?” I thought, “Omigosh, I’ve no basis whatsoever for an amendment:” “No problems,” said the Examiner, “I understand what you mean, I’ll change it”, and did.
The prior art was only considered when the applicants (or third-parties under certain circumstances) requested a report. As a result, it was straightforward to get a Swiss patent, but there was absolutely no idea as to whether it was enforceable. It was suggested that, under this system, one could patent the wheel (shades of the infamous Australian innovation patent 2001100012).
There was also the equally lax (well, non-existent really) regulation of patent attorneys – literally anyone could draft and file patents in Switzerland for money, so the drafting standard was sometimes appallingly bad. At Sandoz, I was sometimes required to put Humpty Dumpty back together again. Things started to improve with the arrival of the EPO, because, after the initial five-year “grandfather” phase, Swiss patent attorneys had to pass the EQE (most Swiss patents are via EPO validations – in 2023, there were 5934 national patents and 145,627 validations). Switzerland finally got its own patent attorney qualifying exams in 2011.
Switzerland consistently ranks at the top of the most innovative countries, so finally it decided to have a patent system in keeping with its stature. As a result, in March 2024, the Federal Parliament adopted a modification of the existing patent law, So, Switzerland is about to start searching and examining national applications. The system will be a flexible one – a full examination will be optional, not mandatory, and will be conducted on request from an applicant or a third-party. A full state of the art report will be prepared for all applications.
The revision allows for the submission of documents in English and publication and grant in English. This does not make English the language of the proceedings, which will still need to be conducted in a Swiss official language, but it recognises the reality of the widespread use of English (in which most of the Swiss Patent Office staff, as well as the court judges, are highly proficient). The previous opposition proceedings (which has never been used) will be abolished and replaced by an extended appeal option for third parties.
So, when will this all happen? No firm date has yet been set, but probably sometime in 2026.
The weather here has been a bit bananas. Autumn lasted a long time, and everything was still very green until early November. Then, out of nowhere, came a huge snowfall. I watched it build and build from the office window but decided to ride home as usual. It all went well, apart from having to stop to take off my glasses, because I could no longer see where I was going,. However, when I got to the village, the bike became totally uncontrollable, slipping and slithering all over the place, so, rather than end up on my ear, I decided to walk. Except that I couldn’t – the front wheel was so jammed with snow that it wouldn’t turn. Fortunately, a guy came along, and he forced the wheel to turn as I held up the front forks. He had to repeat this three more times until I got to a relatively snow-free car tyre track. The following day, the bike stayed in the garage and I took the train. And 2 days later it was 16° (C!!) and it had all gone.
And with that I wish you all a Merry Christmas and a not-too-traumatic New Year – although, given what has just taken place in the USA, all bets are off.
