Posts Tagged: "epo"

European Patent Filings Reached Record Number in 2021; Huawei Largest Applicant

There were 188,600 European patent applications filed last year, an annual increase of 4.5%, according to figures published by the European Patent Office (EPO) on April 5. Despite the impact of the pandemic, applications increased to a record level following a slight decline in 2020. The United States was once again the top country for applicants, accounting for a total of 46,533 applications in 2021 (an increase of 5.2%) or 25% of all filings. It was followed by Germany and Japan, with China ranking fourth. Applications from China increased by 24% to 16,665 in 2021; they have quadrupled in the past decade. Other notable increases were from Sweden (up 12% to 4,954), Canada (up 18.4% to 2,083) and India (up 16.5% to 817).

IP in the Crosshairs: Government Agencies Terminate Relationships with Russian IP Entities as Kremlin Sanctions IP Theft

The United States Patent and Trademark Office (USPTO) announced last week that it will terminate engagement with the Russian IP Office (Rospatent) as well as the Eurasian Patent Organization (EAPO) and the IP Office of Belarus, which has been cooperating with Russia in the lead-up to and during the Russian invasion of Ukraine. The USPTO also said on Wednesday that, effective March 11, it is no longer granting requests to participate in the Global Patent Prosecution Highway (GPPH) at the USPTO when those requests are based on work performed by Rospatent as an Office of Earlier Examination. And, in pending cases where the Office granted special status under the GPPH to applications based on work performed by Rospatent, “the USPTO will remove that status and return those applications to the regular processing and examination queue, meaning that they will no longer be treated as GPPH applications at the USPTO,” said a USPTO statement. “Like so many, we are deeply saddened by the events unfolding in Ukraine,” said the USPTO. “We hope for the restoration of peace and human dignity.”

Exploring the 2022 EPO Guidelines for Examination

The European Patent Office (EPO) recently published its Guidelines for Examination 2022, which come into force on March 1. Compared to previous years, the volume of changes is much smaller, and this witnesses the effort by the EPO in past years to arrive at a more stable text of the Guidelines, particularly concerning the software patentability and biotech sections. Yet some changes have been made, mainly to software patentability guidelines, as well as to other important sections, such as partial priorities and amendments to the description. Continuing the trend of past years, the Guidelines continue to be enriched with helpful examples.

Could Description Amendments Made During Prosecution at the European Patent Office Affect U.S. Litigation?

Earlier this year, the European Patent Office (EPO) updated some of its Guidelines for Examination in a way that potentially could affect U.S. patent litigation. These Guidelines instruct European patent examiners (and the public) on how the patent prosecution process works—much like the United States Patent and Trademark Office’s (USPTO’s) Manual of Patent Examining Procedure. For example, the Guidelines detail what form a patent application must be in, what happens during a prior art search, and perhaps most importantly, what should be included in an application. Guideline F-IV 4.3 particularly focuses on the form, contents, and clarity of the claims.

Hindsight Bias: An Ovine Survey

The arrival of a U.S. Patent and Trademark Office (USPTO) office action citing no less than six earlier patents directed to various sub-combinations in the features of the main independent claim in an application which I was handling prompted the present note. Readers may recall the decision of Judge Rich In re Winslow 365 F.2d 1017 (C.C.P.A. 1966): “We think the proper way to apply the 103-obviousness test to a case like this is to first picture the inventor as working in his shop with the prior art references — which he is presumed to know — hanging on the walls around him.” However, Boltzmann’s entropy formula S = k log W where S represents entropy, a concept associated with a state of disorder, randomness, or uncertainty, and W represents the number of possible states in the relevant system, leaves an unforgettable impression on those who have studied it. Even if the fields from which the earlier patents might be selected are restricted to relevant general classifications, the number of combinations of six references which might have been collected together from the body of prior art in the relevant technical field randomly and without knowledge of the invention is mind-boggling.

Building High-Quality Patent Portfolios in the United States and Europe: Part III – Examiner Interviews

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

Building High-Quality Patent Portfolios in the United States and Europe: Part II – Software Patents

In Part I of this series, we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we will focus on software patents with U.S. and EP family members. The number of software related patent applications that are filed at the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) continues to increase despite heightened scrutiny during examination. Further, U.S. courts and national courts in Europe continue to critically analyze the eligibility of software patents.

Building High-Quality Patent Portfolios in the United States and Europe: Part I – Intervening Prior Art

One ingredient that distinguishes a good patent portfolio from a great patent portfolio can be the synergistic strength of its U.S. and European patent family members. To develop this strength, it is not enough to have a U.S. attorney and a European attorney simply coordinate the procedural strategy for filing an application; rather, the drafter and manager of the application should analyze important issues upfront and prepare a patent application that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.

In First Half of 2021, 63% of U.S. Patents, 48.9% at EPO and 40.1% in China Were Software-Related

As an update to my posts from 2017, 2019, 2020, and March 2021, it has now been 86 months since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 73 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.). Further, it has been 10 years since famed venture capitalist Marc Andreessen wrote the influential and often-quoted op-ed piece in the Wall Street Journal titled “Why Software Is Eating the World.” Today, the digital transformation where software is “eating the world” is undeniable. Let’s look at some facts and figures from the USA, Europe and China.

EPO’s Enlarged Board of Appeal Backs Videoconference Hearings

Oral proceedings before the EPO Boards of Appeal can be held by videoconference, even without the consent of the parties, during a general emergency, according to a July 16 decision by the EPO’s Enlarged Board of Appeal (G1/21). The question about videoconferencing was referred to the EBA in March by a Technical Board of Appeal in Case T-1807/15. The EPO introduced hearings by videoconference (generally held via Zoom) last year as a result of the pandemic and travel restrictions. Since January 2021, some oral proceedings have been conducted without the consent of the parties. The EBA, which comprises members of the Boards of Appeal and judges from EPC member states, was asked to rule on whether this was compatible with the right to oral proceedings as enshrined in Article 116(1) of the European Patent Convention. The EPO claims that videoconference hearings are necessary to manage the workload and ensure efficient delivery of justice during the pandemic. They also mean that parties throughout the EPC’s 38 member states can participate on equal terms, without having to travel to Munich or The Hague.

European Inventor Award 2021 Finalists Spotlight Diverse Group of U.S. Researchers

Last week, the European Patent Office (EPO) announced six U.S. researchers as finalists for the European Inventor Award 2021. The EPO began the prestigious European Inventor Award in 2006 to honor individual and teams of inventors in five categories, i.e. Industry, Research, SMEs, Non-EPO countries and Lifetime achievement. The finalists and winners are selected by an independent jury of experts in the fields of business, politics, science, academia and research. In addition, a Popular Prize is awarded based on a public vote wherein the public selects a winner from among 15 finalists through online voting. U.S. researcher Gordana Vunjak-Novakovic was nominated for a lifetime achievement award for devoting her career to “developing an ex vivo tissue engineering technique for more precise tissue cultivation.” The remaining U.S. finalists were nominated in the “Non-EPO countries” category. In particular, Kim Lewis and Slava S. Epstein were nominated for their development of a device for separating and incubating single strains of bacteria in nature, Sumita Mitra was nominated for pioneering use of nanotechnology in dentistry, and Bo Pi and Yi He were nominated for developing the first fingerprint sensor capable of detecting both a fingerprint’s pattern and the presence of blood flow.

EPO Opposition Division Upholds NuCana Patent on Gilead’s Sovaldi, Highlighting Potential Flaws of CAFC Ruling in Gilead/Idenix

On April 7, 2021, the European Patent Office (EPO) Opposition Division (OD) issued a comprehensive written decision in the Opposition by Gilead Sciences, Inc. against NuCana plc’s European Patent No. B-2 955 190, upholding amended compound claims that include Gilead’s blockbuster hepatitis C drug, Sovaldi (sofosbuvir). The claims were upheld over various arguments made by Gilead, including an assertion that the NuCana patent did not teach the skilled worker how to make the nucleoside component of Sovaldi (which is a nucleotide phosphoramidate). Gilead alleged, as it did in the myriad of global Idenix litigation cases, that a skilled person in 2003 who tried to make the nucleoside of Sovaldi “would be required to undertake extensive experimentation, if indeed he would be able to succeed at all. This represented an undue burden.”

Joint EPO-EUIPO Report Finds SMEs Stand to Benefit Most from IP Ownership

The latest in a series of reports by the European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO) studying IP-intensive industries and their contribution to economic performance and employment in the European Union has found that companies owning at least one patent, registered design or trademark generate higher revenues per employee than companies that do not own IP rights and pay higher wages on average than other companies. The EPO-EUIPO report is titled “Intellectual property rights and firm performance in the European Union” and builds on research conducted in 2013, 2016 and 2019 regarding the contribution of IP-intensive companies to the EU economy, as well as a 2015 EUIPO study based on data from 12 Member States. The latest report analyzes over 127,000 European firms and compares the economic performance of firms that own IPRs with those that do not.

EPO Study Examines Trends in Fourth Industrial Revolution Technologies

The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. As used in the study, 4IR denotes “the full integration of information and communication technologies (ICT) in the context of manufacturing and application areas such as personal, home, vehicle, enterprise and infrastructure,” and it marks a “radical step towards a fully data-driven economy.” The study examined international patent families (IPFs), i.e., inventions for which patent applications have been filed in two or more patent offices, related to 4IR worldwide between 2000 and 2018. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.

Strong Roots: Comparative Analysis of Patent Protection for Plants and Animals

Much has been written about the uncertainty in U.S. patent law concerning laws of nature, natural phenomena, and abstract ideas following the Supreme Court’s decisions in Mayo v. Prometheus and Alice Corp Pty Ltd v. CLS Bank Int’l. A recent decision from the Enlarged Board of Appeal at the European Patent Office (the Enlarged Board), however, demonstrates that the United States is not alone in grappling with issues surrounding patent eligibility. In the case of genetically modified plants and animals, questions arise on where to draw the line between human invention and biological processes. Earlier this year, the Enlarged Board reversed a 2015 decision that had held that product-by-process patents could be sought for genetically modified plants and animals despite a patent exclusion for “essentially biological processes.”