Samoa Joining 3 International IP Treaties
On the 2nd October 2019 Samoa deposited its instruments of accession for the Patent Cooperation Treaty, the Geneva Act of the Hague Agreement and the Geneva Act of the Lisbon Agreement.
The PCT and the Geneva Act (1999) of the Hague Agreement for the International Registration of Industrial Designs enter into force in Samoa on 2nd January 2020.
However, the Geneva Act (2015) of the Lisbon Agreement on Appellations of Origin and Geographical Indications is not yet in force, as it will enter into force three-months after the 5th state has ratified it. On 2nd January 2020 Samoa will qualify as the 4th state to ratify it. Samoa chose not to deposit its instrument of accession to the in force Stockholm Act (1967) of the Lisbon Agreement.
The Geneva Act is promoted as being more flexible than the Stockholm Act. The Stockholm Act applies only to appellations of origin, which are a particularly strong form of geographical indication as they require that the raw materials be sourced in the place of origin and that the processing of the product also take place there. This is not necessarily the case with geographical indications under the Stockholm Act, which only requires that the given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. The Geneva Act also recognises that a geographical origin for a particular product can span an area that extends across more than one country. It also takes into account that a country may implement the provisions within their trade marks legislation or within stand-alone geographical indications or appellations of origin legislation. Both Acts allow protection to be obtained in all member states from a single application.
While both Australia and New Zealand have legislation giving protection to geographical indications, neither is a contracting party to any version of the Lisbon Agreement. Rather, both countries legislation is more geared to being compliant with the relevant Paris Convention, TRIPs Agreement and CPTPP provisions as well as particular bilateral agreements.
IPONZ Loosens GPPH Practice
IPONZ has announced some applicant friendly changes to its practice in respect of Global Patent Prosecution Highway (GPPH) program, which allows accelerated examination of qualifying applications that have already had at least one claim found to be allowable by an IPO of a GPPH member.
As previously noted IPONZ joined the GPPH network in July 2017, and requires that the application from the Office of Earlier Examination (OEE) and the application for which IPONZ has been requested to examine under the terms of the GPPH have the same earliest date. Further, all claims presented for examination under the GPPH must sufficiently correspond to one or more of the claims found allowable by the OEE.
IPONZ is now exercising more leniency in its application of the ‘sufficiently correspond’ criterion. In particular, IPONZ will now consider Swiss-style claims to correspond to other formats of second medical use claims allowed overseas.
Further, if a submitted GPPH accelerated examination request does not meet mandatory filing requirements IPONZ will now seek clarification or request further documents, instead of declining the request outright. The requestor will then have 10 working days within which to provide an acceptable response, failing which the request for accelerated examination under the GPPH will be declined.
In addition to the previously noted 22 IPOs (including one intergovernmental organisation) that were members of the GPPH when New Zealand joined, the GPPH has since been supplemented by the IPOs of Columbia, Peru and the Visegrad Patent Institute. The latter is an intergovernmental organization for cooperation in the field of patents established by the four Visegrad countries: the Czech Republic, Hungary, Poland and the Slovak Republic, which can be selected as an ISA and IPEA for PCT International Phase applications from those countries as well as Lithuania.
UK Court of Appeal Further Clarifies Test for Sufficiency
In Anan Kasei Co Ltd v Neo Chemicals and Oxides Ltd the Court of Appeal gave further guidance on the test for insufficiency.
The patent relates to ceric oxide, a method for its preparation and its use as a catalyst for purifying exhaust gas. Exhaust gas purification devices require the oxide material to have and maintain a high specific surface area at both low and high temperatures in order to function effectively. Previously ceric oxide had only proved useful in such devices when used with a co-catalyst. Claim 1, being the representative claim in contention, claimed a ceric oxide consisting essentially of a ceric oxide, and wherein said ceric oxide has a specific surface area of not smaller than 30.0 m2/g when subjected to calcination (high temperature heating) at 900°C for 5 hours. It is alleged that the claim is insufficient as it extends to ceric oxide products that are not made according to the uncontested method claims.
Before considering insufficiency the lead judgment first noted how the phrase “consisting essentially of” is to be construed. It was noted that its meaning is somewhere between “consisting” and “comprising”. Whereas “consisting” requires all and only those elements specified, “comprising” only requires all the elements specified and can include others. However for “consisting essentially of” additional elements are only allowed to be present if they have no material effect on the essential characteristics of the claimed product.
Neo first argued that the skilled person would not be able to establish whether a sample infringes the consisting essentially of criterion on the basis that the additional elements would be ‘baked in’ and so would not be able to be extracted in order to create a comparator for the purpose of the material effect test. However, the trial judge rejected that argument on the basis that insufficiency requires more than some fuzziness at the edge of a claim.
The Court of Appeal noted that Neo’s argument that they would not know whether they were working the invention is generally referred to as insufficiency by ambiguity, as epitomised in the 2004 House of Lords decision Kirin Amgen Inc v Hoechst Marrion Roussel Ltd. However, the Court of Appeal held that it is better referred to as insufficiency by uncertainty, where the proper construction of the claim cannot be resolved by interpreting it from the perspective of the skilled addressee. Further, this type of insufficiency does not require that it is impossible to tell in any case whether a product falls within the claims, as there will be insufficiency if there is uncertainty in respect of a large region of a claim’s scope. The Court of Appeal held that the skilled person would recognise that it was impossible to determine from a sample whether additional elements had had a material effect after they had been ‘baked in’. Rather, they would determine from chemical analysis whether the additional ingredients were present in sufficient quantity to have a material effect. On this basis the Court of Appeal upheld the trial Judge’s finding that there was no more than some fuzziness at the edge of the claim.
Neo’s other insufficiency attack is that the claim extends beyond the contribution and that patent law does not permit an inventor who has come up with one method of achieving products with desirable characteristics to claim all products having those characteristics. The Court of Appeal agreed with the underlying rule that the patentee cannot claim more than they have enabled, but noted that whether the patentee has claimed more than they have enabled is a question of fact which falls for decision on the evidence in the case, with the onus being on the party making the insufficiency allegation. The Court of Appeal rejected this insufficiency attack as it held that there was a lack of any evidence that there are structures which fall within the claim but which could not be made using the body of teaching in the patent.
USPTO Updates its Subject Matter Eligibility Guidance
In response to public feedback to the USPTO's January 2019 subjects matter eligibility guidance, on its subject matter eligibility page the USPTO has provided an update that gives further explanation around five major themes, includes some new examples, an index of examples and lists and categorizes selected eligibility cases.
The five major themes are: (1) Evaluation of whether a claim recites a judicial exception; (2) the groupings of abstract ideas enumerated in the 2019 Patent Eligibility Guidance; (3) evaluation of whether a judicial exception is integrated into a practical application; (4) the prima facie case and the role of evidence with respect to eligibility rejections; and (5) the application of the 2019 Patent Eligibility Guidance in the patent examining corps. In the examples the first claim is considered patent ineligible, while the following claims are all eligible.
Regarding theme (1) it clarifies that ‘recites’ is synonymous with ‘sets forth’ or ‘describes’. Hence, in evaluating whether a claim recites a judicial exception, examiners need to determine whether it sets forth or describes an abstract idea, product of nature, or a law of nature or other natural phenomenon. If a single claim recites more than one abstract idea, then these are to be noted as such by the examiner, although the examiner can also consider whether their combination creates a limitation that is still an abstract idea.
Regarding theme (2) it clarifies that in raising an abstract idea objection the examiner should identify the claim as reciting at least one of the following groups of abstract ideas - mathematical concepts, certain methods of organizing human activities, and mental processes. If a claim limitation is merely based on or involves a mathematical concept, then this is not sufficient for it to be found to be reciting a mathematical concept unless the mathematical concept is recited in the claim. Whether a claim limitation falls within the ‘certain methods of organizing human activities’ grouping is not determined by the number of people involved. Rather, it is determined by whether the activity itself falls within either fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people – with each of these subgroupings being further explicated and exemplified. Whether a claim recites a mental process will depend upon whether it contains limitations that can practically be performed in the human mind – if they do then it does, if they do not then it doesn’t. As such, claims can recite a mental process even if they are claimed as being performed on a computer.
Regarding theme (3) it is noted from the January 2019 guidance that despite reciting a judicial exception a claim will not be found to be directed to a judicial exception if it integrates the recited judicial exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. It is emphasised that the determination of whether the judicial exception has been integrated into a practical application involves considering the claim as a whole, considering how all the claim limitations interact and impact upon each other. The requirement to consider the claim as a whole is further emphasised in regards to claims to improvements in the functioning of technology, where it is noted that it is not necessary that the claim limitations that provide the improvement are those that recite the judicial exception.
Regarding theme (4) it is noted from the MPEP that the initial burden is on the examiner to clearly explain why any particular claim has been issued with a subject matter eligibility rejection. It is further elaborated that such a rejection needs to identify the judicial exception by referring to what is recited in the claim and explain why it is considered to be such an exception. The examiner then needs to state that either there are no additional elements in the claim or that the additional elements do not integrate the recited judicial exception into a practical application. Finally, the examiner should explain why the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the exception.
Regarding theme (5) it is confirmed that examiner training in order to ensure their compliance with the relevant practice examination guides is ongoing and that applicants who consider an examiner is not correctly applying a practice examination guide have several options available in response to an examiner’s patentability rejection.
Eurasian Designs System Being Established
Eurasian countries are close to allowing for a regional Eurasian design right following the recent signing by five Eurasian states of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention.
The Protocol is based on the Eurasian Patent Convention model. Applications need to be filed in Russian and can be filed with either the Eurasian Patent Office or the national IP office of one of the member states. The initial term will be for five years, and will be renewable in five year increments up to a maximum term of 25 years from the application date. The Protocol shall enter into force, in respect of the first three States to ratify it or accede to it, three months after the third instrument of ratification or accession has been deposited with the Director General of WIPO.
Clarification Sought from CJEU Regarding Novelty and Existence for Unregistered Community Designs
In 2019 EWHC 2419 Beverly Hills Teddy Bear Company v PMS International Group PLC the Judge referred questions to the Court of Justice for the European Union (CJEU) regarding the correct determination of the novelty and existence dates for unregistered community designs (UCDs) under the Designs Regulation 2002-6.
In October 2017 the Californian company Beverly Hills Teddy Bear Company (BHTB) showed some of its products for the first time at a trade fair in Hong Kong, which both parties agreed meant the designs would have been known at that date by European businesses specialising in the sector concerned. They were subsequently first displayed within Europe at a German toy fair in January 2018.
Under Article 5 a UCD is considered to be new if no identical design (or a design differing only in immaterial details) has been made available to the public before the date on which the design for which protection is claimed has first been made available to the public. Article 7 provides that a design is made available to the public when the event of its disclosure could reasonably have been known by European businesses specialising in the sector concerned, unless it was disclosed to a third person under explicit or implicit conditions of confidentiality.
Under Article 11(1) the term of protection of a UCD is three years from when the design was first made available to the public within the Community. Article 11(2) deems that Article 11(1) is satisfied when the event of its disclosure could reasonably have been known by European businesses specialising in the sector concerned, unless it was disclosed to a third person under explicit or implicit conditions of confidentiality. In anticipation of various eastern European countries joining the EU Article 11 was subsequently supplemented by Article 110(a)(5), which provides that a design which has not been made public within the territory of the Community shall not enjoy protection as a UCD.
Although not clear or ruled upon, the particular wording of Article 5 implies that novelty cannot be assessed until the UCD is eligible for beginning its term and so relies upon Article 11. In regards to being available to the public the particular wording of Article 11 differs from Article 5 by including the phrase “within the territory”. This raised the question of whether Article 11 is not satisfied until the design is made available to the public within the European Union. The Judge noted some German cases had used that interpretation, finding that by the time some foreign disclosed designs satisfied the Article 11 criteria of being available for UCD term purposes, they had already satisfied the Article 5 criteria of being available for novelty purposes, and so prior published themselves. The Judge also noted that several textbook commentaries accepted the interpretation of the German Courts’, but that the 9th edition of Russell-Clarke and Howe on Industrial Designs stated that foreign disclosures that would reasonably be known by European businesses specialising in the sector concerned would equally satisfy both Articles 5 and 11.
While PMS favour the interpretation of the German Courts’, BHTB favour the interpretation in Russell-Clarke. BHTB further emphasise the point therein that Article 3 of the TRIPs agreement states that each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals, arguing that the approach of the German Courts favours disclosures that first occur within the EU. The Judge favours the approach taken by the German Courts and noted that the ‘fortress Europe’ approach of regional rather than international exhaustion of IP rights in respect of parallel importation is also not strictly compliant with Article 3 of TRIPs. Nonetheless, there was sufficient doubt for the Judge to refer the following questions to the CJEU:
- For the protection of an unregistered Community design to come into being under art.11 of Council Regulation (EC) No. 6/2002 of 12 December 2001 ('the Regulation'), by the design being made available to the public within the meaning of art.11(1), must an event of disclosure, within the meaning of art.11(2), take place within the geographical confines of the Community, or is it sufficient that the event, wherever it took place, was such that, in the normal course of business, the event could reasonably have become known to the circles specialised in the sector concerned, operating within the Community (assuming the design was not disclosed in confidence within the terms of the final sentence of art.11(2))?
- Is the date for assessing the novelty of a design for which unregistered Community design protection is claimed, within the meaning of art.5(1)(a) of the Regulation, the date on which the unregistered Community design protection for the design came into being according to art.11 of the Regulation, or alternatively the date on which the relevant event of disclosure of the design, within the meaning of art.7(1) of the Regulation, could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community (assuming that the design was not disclosed in confidence within the terms of the final sentence of art.7(1)), or alternatively some other, and if so, which date?