Ever called "simply an unsatisfactory expert"? (Judge Pumfrey, UK)

Research in Motion UK Ltd v Inpro Licensing SARL Patents Court, Febr. 2, 2006.

An interesting case on anticipation and enablement, patentable subject matter and some comments on when to use the “streamlined procedure” before the Patents Court in the UK. Most notably also for Pumfrey J strong observations about Inpro's expert and his lack of objectivity, describing him as "simply an unsatisfactory expert".

Inpro is the proprietor of a patent relating to various ways in which web pages can be *pre-treated* before being downloaded to machines of modest processing capacity. Claimant is the UK subsidiary of the makers of the BlackBerry device (RIM) and seek revocation of the patent on the grounds of anticipation or obviousness. RIM also argues, inter alia, that the invention consists of a computer program and method of displaying information which subject matter is excluded from patentability pursuant to s 1(2) of the UK Patents Act 1977 (equivalent to art 52 (2) EPC, exemption for computer program “as such”). Inpro counterclaimed for infringement.

Inpro’s patent is declared invalid for anticipation (counterclaim dismissed). The judge holds that there are two aspects to an allegation of anticipation. For a prior documentary disclosure to anticipate, it has both to disclose the invention and enable the skilled man to perform it. In cases of anticipation by inevitable result, the prior art discloses those things which, if the skilled man did them, would fall within the claim. If the skilled person was given a target, in the shape of a disclosure of the invention, the law of enablement permitted reasonable experimentation and error correction while still holding that the prior disclosure was enabling. If the only target the skilled man was given was a course of action, then following that course of action would inevitably result in something within the claim, and there was no space for experimentation except in getting what was disclosed to work in accordance with the terms of the prior document.

The claim that the invention lays in excluded subject matter, failed. The right approach to determining whether material is excluded pursuant to s 1(2) of the 1977 Act was for the court to take the claims of the patent, correctly construed, and consider what the claimed invention contributed to the art outside the excluded subject matter. That test was to be applied on a case-by-case basis and little benefit was to be gained by drawing analogies with other cases decided on different facts in relation to different inventions.

Streamlined Procedure
In 2005, Laddie J had made an order for a trial according to the streamlined procedure. Pumfrey J disagrees with Laddie J's proposition that once a party to an action proposes the use of the streamlined procedure, that procedure will be used in the absence of a convincing objection from the other. "The decision to use the streamlined procedure is an objective one to be arrived at on all the material. There are no presumptions. It is not unusual in patent actions for one or (sometimes) both parties to consider that their case is both straightforward and easy to try. They are often wrong: and in any event, the dissentient must be allowed a proper opportunity proportionate to the matters at stake fairly to put its case, and that may preclude use of the streamlined procedure. Speed is highly desirable in all cases, but not at the expense of fairness. One relevant factor is the commercial importance of the patent."

Peter Hill, Simmons & Simmons

UK Patent Office launches Consultation on Inventiveness

On Feb. 6 the UK Patent Office launched a consultation on the inventive step requirement in UK patent law. Responses from interested innovators, scientists, engineers, businesses and legal professionals are requested by 31 May 2006.

What is the purpose of the consultation?

The overall context is to consider: how well the current legislation maximises innovation and competitiveness whether too many "trivial patents" are being granted or whether innovation and competitiveness is best served by easy patenting with low hurdles? In particular, respondents are being asked to consider:

How the inventive step requirement is used in the UK patent system and how its use compares to other countries. And whether its parameters in the UK are set appropriately with respect to:

** the objectives of the legislation
** the impact on the role of the patents system in the economy
** the effect on third parties
** consistency and harmonisation with other countries,
** patent quality
** whether any aspect of the inventive step requirement should be modified.

If the consultation results in any change to the UK regulatory framework, it is considered that the most feasible way to implement such a change would be by amending the Patent Rules.

Why is this consultation being launched now?

There has already been speculation on this point. The consultation paper itself states that a review is timely partly because it is now some time since the introduction of the Patents Act 1977 but also because the inventive step concept has recently been the subject of debate and investigation abroad which has raised serious issues of patent quality and concerns over the issue of so-called "trivial" patents. It mentions in particular two recent reports in the US which discussed, inter alia, the influence that patent policy and competition can have on innovation and the balance to be struck between these influences and also circumstantial evidence of a drop in patent quality in the US. (Para 2.2 of the consultation document)

One of the reports discussed in particular the difficulties of applying the intentive step requirement to technologies such as biotechnology and gene sequencing. One will remember that the Gowers Review was set up by the Chancellor's Pre-Budget Report in 2005 to review the IP framework in the UK. However, the Patent Office materials do not say that this consultation is part of the Gowers review. It also seems slightly odd to consider amending this aspect of patentability unless other jurisdictions are doing the same.

A couple of points to note

"Trivial" Patents and Patent "Thickets". In the press release, the Chief Executive of the Patent Office, Ron Marchant, talks about the need to strike a balance for all businesses and innovators:

"An inventive step requirement which is too difficult for applicants to achieve can result in inventions that might deserve a patent not receiving protection, thus hindering the applicant in research and investment. However, the danger of an inventive step which is too easy to meet is that patents could be obtained for small changes or improvements which hamper the legitimate activities of third parties."

Obviously, the balance struck between these two extremes is of interest to our pharmaceutical clients in particular. In para 4 of Appendix A, the consulation specifically refers to allegations of the granting of “trivial” patents, particularly in "areas where the patenting of small incremental improvements allows the creation of patent thickets and portfolios designed to exclude competition to an unfair extent. The adverse effects of such situations are not limited to the constriction of competition in the home market, but are also particularly felt in developing countries that need access to patented medicines."

International Comparisons

Although the consultation asks for information on approaches taken in other countries, it also observes that there appears to be a wide measure of international agreement that the test for the presence of inventive step in s3 Patents Act 1977 (whether the invention is obvious to a person skilled in the art) is the appropriate basic requirement.

However, it also notes that several possible texts have emerged in international discussions on harmonisation in this area. These would require that:

** The person skilled in the art, having regard to any item(s) of prior art or common general knowledge would have arrived at the claimed invention (the European proposal).

**Any item(s) of prior art or common general knowledge would have motivated a person skilled in the art to reach the claimed invention (the Japanese proposal).

** Any item(s) of prior art or common general knowledge would have motivated, with a reasonable expectation of success, a person skilled in the art to reach the claimed invention (the American proposal).

Peter Hill, London