Patent Baristas

Here comes the Patent Reform Act of 2010 in the form of an Amendment in the Nature of a Substitute to S. 515 (“Amendment to S. 515”).  I know, you’ve heard all this before with the Patent Reform Act of 2009, the Patent Reform Act of 2008, the Patent Reform Act of 2007, the Patent Reform Act of 2006, and so on.  It’s like Apple’s Get-a-Mac ad that talks about all the promises of previous versions of Windows®.

The Amendment to S. 515 seems to meet the goal of establishing a simpler, objectively-based, transparent patent system that can eliminate patents that should not have issued and speed the processing of patents that should be issued.

The new patent law would includes a number of improvements to the patent laws such as provisions to update and improve the patent marking statute. S. 515 now includes:

First-Inventor-to-File

Adoption of a first-inventor-to-file system by the United States will promote the growth of American jobs. By eliminating the arcane and subjective rules associated with the current first-to-invent system, the Amendment to S. 515 will make it easier and less costly to obtain patent protection in the United States which will stimulate investment in new technologies. Today, when two inventors seek a patent on the same invention, the patent is awarded to the inventor who can prove that he or she was the first to make the invention and had not “abandoned, suppressed, or concealed” the invention. Other concepts such as “conception,” “reduction to practice” and “reasonable diligence” can also come into play. These concepts are not only expensive to prove, they make the results of such contests unpredictable. These contests are especially harmful for independent inventors. Studies show that independent inventors lose rights to patents under the existing first-to-invent system of priority that they would have won in a first-inventor-to-file system of priority.

Moreover, while all inventors will continue to benefit from a one-year grace period in which to file a U.S. patent application after publicly disclosing their inventions, the incentive of the first-inventor-to-file system to file applications promptly will redound to their benefit in obtaining patents in our major trading partners. Inventors who delay filing their U.S. applications (on the tenuous assumption that they will be able to obtain a U.S. patent by proving that they were first to make the invention) run the risk of being second-to-file in the rest of the world where patents are awarded to the first inventor to file. Facilitating patent protection outside the United States for American technology will stimulate the export of American products produced by American workers.

Enhanced Patent Quality

The Amendment to S. 515 will strengthen patents granted in the United States by allowing the public to participate in the patent granting process and by strengthening the administrative procedures in the USPTO for reviewing patents after grant.

Pre-grant submission of prior art

The bill will expand the opportunity for the public to submit information to patent examiners working on individual patent applications, together with concise descriptions of its relevance. This will help ensure that all relevant information will be considered during the examination process, allowing the USPTO to conduct a quality examination before a patent is granted, reducing the need to rely on post-grant clean-up procedures. The public and patent applicants alike will benefit from the grant of more reliable patents that are based on more thorough and complete examination that this procedure will offer.

Administrative post-grant review of patents

The Amendment to S. 515 will provide a robust, new post-grant review that must be requested within 9 months after patent grant and, if initiated, be completed within one year. In the new post-grant review procedure, patents could be challenged on all issues of patentability.

After the initial 9-month period from patent grant, all patents (including those granted prior to 1999) would be subject to inter partes reexamination, but only for patentability issues based upon prior patents and printed publications, taking into account certain written admissions of the patentee. As with post-grant review, inter partes proceedings will also be required to be completed within one year.

Ex parte reexamination will continue to be available as an inexpensive procedure to both patent owners and third partes to review patents on the basis of patents and printed publications, also taking into account certain written admissions of the patentee.

While both the initial post-grant review and the revised inter partes reexamination proceedings will contribute to ensuring that only valid patents will survive, both procedures also contain safeguards to prevent harassment of patent owners. For example, third parties will be required to present a stronger case to initiate a post-grant review or an inter partes reexamination proceeding than they are currently required to under the existing inter partes reexamination threshold of “substantial new question of patentability.

To initiate a post-grant review, the Director must determine that the information presented, if not rebutted, demonstrates that it is more likely than not that at least one claim is unpatentable. The new threshold for initiating an inter partes reexamination will be a “reasonable likelihood” that, in light of the information submitted by a third party and the response from the patentee, the third party “will prevail with respect to a claim” of the patent. These higher thresholds will serve to minimize the initiation of unwarranted proceedings.

Both procedures will be handled by a panel of Administrative Law Judges. Currently, inter partes reexaminations are handled by patent examiners who do not have the experience and expertise of APJs in promptly and efficiently conducting contested cases.

In addition, the estoppel effects of final decisions in post-grant review proceedings and in inter partes reexamination proceedings will protect patentees against successive, harassing attacks by the same challenger. The challenger in a post-grant review proceeding is estopped from requesting or maintaining a subsequent inter partes reexamination proceeding with respect to a claim on any ground that the challenger “raised or reasonably could have raised” during the post-grant review. In later civil actions or ITC proceedings, the challenger is estopped from asserting the invalidity of a claim on any ground that was “raised” during the post-grant review.

The challenger in an inter partes reexamination proceeding is estopped from requesting or maintaining a subsequent inter partes reexamination proceeding, or from asserting invalidity in a later civil action or ITC proceeding, with respect to a claim on any ground that the challenger “raised or reasonably could have raised” during the earlier inter partes review.

Importantly, patent owners who promptly file suit after patent grant will be assured that the court will not automatically stay its consideration of the patent owner’s motion for a preliminary injunction on the basis that a petition requesting a post-grant review has been filed or that such a proceeding has been instituted.

Litigation Reforms

The Amendment to S. 515 would address a number of litigation reforms, some initially recommended by the NAS, and others, some quite controversial, urged by various special interests. With the further development of the law by the Federal Circuit and the accommodation of these developments by the Senate Judiciary Committee, the bill offers a number of desirable litigation reforms.

Best Mode

The Amendment to S. 515 addresses the recommendation of the NAS to modify or remove the subjective elements of patent infringement litigation that depend on the assessment of a party’s state of mind and increase the cost and decrease the predictability of such litigation. Current patent law requires that a patent application “set forth the best mode contemplated by the inventor of carrying out his invention” and failure to comply can result in a patent being held invalid. Under the bill, “failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”

Since the patent law already requires a “written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use” the invention, the added requirement for disclosing the “best mode” serves only as a costly weapon for defendants to use in attacking patents, requiring time-consuming, expensive, and ultimately subjective pretrial discovery. The public is fully informed of the patented technology by the requirement for a complete written description and enabling details to permit the complete scope of the claimed invention to be used. The added requirement to also disclose the “best mode” is both unnecessary and provides no benefits to the public.

Inequitable Conduct

Another of the subjective elements of patent infringement litigation that unnecessarily increases the costs for both obtaining patents and litigating them is the doctrine of “inequitable conduct” – whether an inventor or patent attorney intentionally misled the USPTO in prosecuting the original patent. Because the sanction for inequitable conduct is unenforceability, “[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague.” (Burlington Industries, v. Dayco Corp., 849 F.2d 1418 at 1422 (Fed. Cir. 1988)

While the Amendment to S. 515 does not go as far as modifying or removing the doctrine as recommended by the NAS, it does provide a remedial avenue for patent owners to bring to the attention of the Office information which might affect the scope of their patents. The bill allows patent owners to request, prior to the institution of litigation, “supplemental examination” to consider any information believed to be relevant to the patent. Any patent surviving such reexamination will not be held unenforceable on the basis that such information had not been considered or was incorrect in the initial examination process.

Importantly, supplemental reexamination would not allow a patent owner to avoid sanctions based upon violations of criminal or antitrust laws nor would it allow those responsible for any misconduct in proceedings before the Office to avoid disciplinary sanctions.

Damages

The Amendment to S. 515 maintains the compromise reached in the Senate Judiciary Committee that fully responds to the allegations of inconsistency and unfairness in awards of reasonable royalty patent damages. It rejects the proposals calculated to reduce inventors’ recoveries by narrowing claimed inventions through the use of definitional devices Ð such as by limiting the claimed invention for damages purposes to “its inventive contribution,” its “patentable features,” or “the patent’s specific contribution over the prior art.”

Instead, the bill sets forth a “gatekeeper” approach which ensures that courts or juries consider only those damages contentions that are cognizable at law and supported by substantial evidence. The provision reinforces the message from the Federal Circuit Court of Appeals in a series of recent cases (Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008) and Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009); see also Cornell University v. Hewlett- Packard Company, 609 F. Supp. 2d 279 (N.D.N.Y. 2009). This approach ensures that patentees will receive appropriate compensatory damages for the unauthorized use of their patented inventions, while at the same time fully responding to the allegations of runaway jury awards.

Willful Infringement

The third subjective element in patent litigation addressed by the NAS is “willful infringement” under which a court may increase damages up to three times if the court or jury determines that the accused infringer willfully infringed a patent. During the period when the NAS reviewed this doctrine, there was no effective threshold test for alleging willful infringement, therefore the required level of pre-filing investigation by the plaintiff was relatively modest and willfulness was asserted in most cases.

NAS found that the doctrine of enhancing damages against defendants, who knew of patents that they were later found to infringe and who were found to not have complied with the Federal Circuit’s judicially created doctrine to exercise “duty of care” to avoid such patents, resulted in unforeseen and wasteful consequences. The fact that a defense to a claim of willful infringement was good-faith reliance on an opinion by counsel that the patent was invalid or not infringed resulted in a cottage industry of lawyers providing such opinions at cost reaching $100,000 or more. Worse, NAS found that in some business sectors, exposure to claims of willful infringement led to a practice of deliberately avoiding learning about issued patents, thereby undermining the Framers’ desire that patents promote the sciences and useful arts. NAS recommended the doctrine of willful infringement be eliminated.

During the Congressional consideration of how to respond to the NAS recommendation, however, the issue was overtaken by the Federal Circuit’s en banc decision in In re Seagate Tech., LLC, 497 F.3d 1360 (2007). In Seagate, the Court found the “duty of care” rule which it created in 1983 was inconsistent with the Supreme Court’s view that, to be willful, some level of “objective recklessness” must be involved.

The Amendment to S. 515 adopts Seagate’s “objective recklessness” standard. While not as far-reaching as the NAS’s recommendation to eliminate willfulness entirely, the Seagate standard has been widely viewed as an important step toward curtailing unfounded charges of willful infringement.

Venue

In response to a growing number of patent infringement cases filed by patentees in perceived pro-plaintiff venues with little or no connection to the parties in the case or the locations of their operations, witnesses or documents, proposals were made to essentially restrict patent suits to the jurisdiction where the infringer had its principal operation. This draconian rule would have denied manufacturing patentees the opportunity of bringing suit against infringers in the district where the patentee was located and had its witnesses and evidence.

However, in 2009, the Fifth Circuit issued a writ of mandamus in a personal injury case directing the transfer of a case because the trial court, in denying a motion to transfer venue, “gave undue weight to plaintiffs’ choice of venue, ignored [] precedents, misapplied the law, and misapprehended the relevant facts” In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008). The Federal Circuit followed suit in a patent case, In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) granting a writ of mandamus and holding that same court clearly abused its discretion in denying a motion to transfer venue.

The Amendment to S. 515 incorporates the Volkswagen/TS Tech Corp approach and provides a very measured and salutary approach to reigning-in undesirable forum shopping. It requires the court to transfer a patent infringement action “upon a showing that the transferee venue is clearly more convenient than the venue in which the civil action is pending.”

Pilot Program for District Courts

The Amendment to S. 515 would create a 10-year pilot program in certain district courts to hone judicial expertise in patent protection cases. The bill would provide for the professional development of district judges and the hiring of law clerks with expertise in such cases. The pilot should lead to a reduction in the reversal rate of claim construction determinations in patent cases and improve the efficiency of courts in their handling of such cases.

Patent Fee Setting Authority and Ending Diversion

One of the most critical problems facing the USPTO is the lack of resources to address its quality, pendency, and IT issues. With the recent economic downturn, the USPTO is experiencing a significant reduction in fee income and has no ability to adjust fees to offset this loss, resulting in its inability to fill the positions of examiners leaving the Office. The problem was recently exacerbated when, prior to passing the USPTO’s FY 2010 appropriation, Congress removed a provision that would have allowed the USPTO to retain and use up to $100 million in fee revenues above the level appropriated. The removal of this proviso guarantees that, as the economy recovers and greater fee revenues are received, all fee revenue in excess of the amount set by Congress will be deposited in the general Treasury and used for purposes other than those for which they were paid – the prompt and complete examination of patent applications and issuance of patents.

In its present form, the Amendment to S. 515 would address only half of this problem. It would authorize the Office to adjust its fees to recover the costs of examining and granting patents and registering trademarks, but it would not guarantee that all of the fee revenue collected would be used for these purposes.

An amendment is likely to be offered to allow the Office to retain all of the fees paid for the filing, examination, grant, and maintenance of patents and to use them for these purposes. Adoption of this amendment is critical to the success of the efforts of the Office to promptly issue quality patents and should be strongly supported.

Admittedly, patent reform is not a sexy topic. Those passionate about it are lab geeks, computer nerds, inventors, academics, attorneys and IP bloggers – not exactly the glitterati. But if it passes the hurdle of a full Senate vote, it will hurt – entrepreneurs, inventors and the economy.

Perhaps this lack of charisma is why the debate over patent reform has not been played out in the public arena. It’s a little esoteric for the layman, I’ll grant you that. Or has it been intentionally whisked along, fast-tracked as much as the legislative process can be, in the shadows of more popular issues such as health-care reform and climate change?

And where are the pundits? Do we take their silence as complicity? I hesitate to believe that Limbaugh, Stewart, Carville, Begala, Stephanopoulos – even Colbert – are of one mind on this issue. They’re banging on about health care and climate change – much sexier issues – much easier to find an eye-catching graphic to place strategically by the talking head – but where is the discussion around proposed legislation that will weaken the US Patent System irretrievably.

True, the tattered edge of a patent application isn’t as evocative as the image of a sick child or a baby seal stranded on a floating slab of melted polar ice cap. But still, the loud voices on the left and right should sally forth and mention this critical issue to heat up a little widespread debate before this critical piece of legislation passes gently one good night while no one is watching.

If the pundits aren’t interested – which they appear not to be – perhaps opponents to patent reform need a pop-culture spokesperson. Let’s start at the top – quick, someone call Brad and Angie – maybe they’ll adopt all of us and help us battle back S. 515. No? How about Clooney then? He got excited about Darfur when no one else was – maybe he’ll take pity on our cause too. Doubtful.

At this point, I might settle for the rambling musings of Lindsay Lohan or the dimming wattage of celebrity known as Jessica Simpson to drum up some attention to the cause. Perhaps PETA would loan us Pam Anderson to pose in the buff under a banner reading “I’d Rather Go Naked than Support Expanded Inter Partes Reexamination.”

Come on folks – this is America! We’ve got pundits willing to rant about anything, so what is it going to take to get them to crank up the volume about patent reform before it’s too late and our patent system is crippled even further and takes our marginally recovering economy with it?

Glenn Beck – you’re an idiot if you don’t talk about patent reform!

Are you there John Stewart? It’s me, patent reform.

FOX News – if you don’t report, we can’t decide.

Rachel Maddow – talk me down from this one.

Before we allow this special interest influenced, big-business slanted piece of ill-conceived legislation to waltz its way into law unchecked, can we at least talk about it? Otherwise, as patent attorney John Connors so aptly phrased it, it will “turn commercializing an invention into a sport of kings.”

Today’s tongue-in-cheek post is by Guest Barista Rachel Stamper, Senior Writer/Editor, IPAdvocate.org.

Inventors Eye, a new electronic publication by the United States Patent and Trademark Office is a bimonthly publication for the independent inventor community.

According to the USPTO, Inventors Eye is for and about America’s independent and small entity inventor community. It is a community that has always been a vital and vibrant part of America’s invention heritage.

Inventors Eye will appear every other month. Each issue will feature information you can use, tips on working with the USPTO; events, organizations and meetings of interest to the community; issues that impact independent and small entity inventors; and stories about people like you who have become successful inventors.

The first issue offers a nice article about avoiding invention promotion scams.  In 1999, the U.S. Congress passed the American Inventors Protection Act, requiring an invention promoter to disclose the following information about its business practices:

1. The total number of inventions it evaluated for commercial potential in the past five years, as well as the number of those inventions that received positive evaluations and the number that received negative evaluations;
2. The total number of customers with whom it contracted in the past five years, not including customers who have purchased trade show services, research, advertising, or other non-marketing services from the invention promoter, or who have defaulted in their payment to the invention promoter;
3. The total number of customers known by it to have received a net financial profit as a direct result of the invention promotion services it provided;
4. The total number of customers it knows to have received license agreements for their inventions as a direct result of the invention promotion services it provided; and
5. The names and addresses of all previous invention promotion companies with which it or its officers have collectively or individually been affiliated in the previous ten years.

You have the unqualified right to receive this information in writing and before entering into a contract with the invention promoter.

The USPTO has additional information on scam prevention on their website, including a list of published complaints against invention promoters and a link to the Federal Trade Commission’s website where you can learn if a particular company has been investigated or fined.

The USPTO also wants to hear from you with your ideas for stories and features that will enable them to better serve you through this publication.

Click here to subscribe to Inventors Eye.

In my last post, I discussed the approaches taken by four commercial search systems with regard to their Japanese collections:   Minesoft PatBase, Questel’s QPAT and orbit.com platforms, Thomson Reuters Thomson Innovation , and LexisNexis TotalPatent.

This post contains a summary of the comparison information in table form.  The tables below reference “machine-assisted” and “machine-aided” translations; for an in-depth explanation of what these terms mean, please see my earlier post in this series. This post relates to searchable electronic text coverage; PDF image coverage is not presented here.

Before I get to the comparison, just a quick note: although I have created this post by summarizing publicly available information vendor system help files and, in some cases, statements made from vendor representatives, readers should verify coverage with providers before basing any purchasing decisions on this information.

Coverage for Japanese Published Applications

The next table presents a brief summary of other JP kind codes which are covered by the four databases in question.  TotalPatent currently offers a collection of granted patents, while QPAT and orbit.com offer full text machine translations of utility models.   Thomson Innovation offers full text collections for both granted patents and utility models.

Coverage for Japanese Granted Patents and Utility Models

Additional Notes from Vendors

In addition to the comparison table above, there are several other factors that could influence a decision about which service offers the best coverage to suit a user’s needs.   Below, I’ve compiled some of these additional statements, which have come from the system’s help documentation and in some cases, system representatives.

• Questel’s QPAT and orbit.com platforms: Currently, the time delay from when new JP documents are published to when they appear in the Questel database is as short as 1 week.  Questel representatives have stated that, thanks to the company’s exclusive relationship with the Patolis corp, they are able to provide Japanese F-I and F-term classifications in both their JP full text files, and FamPat family database.  It’s also worth noting that for an extra fee, Questel provides access to Japanese legal status information from Patolis, which will continue even as Patolis undergoes a bankruptcy and re-organization.  Patolis is a unique source of legal status information which goes beyond the EPO’s INPADOC legal status content.

• Minesoft PatBase: Machine translated abstracts for both Japanese applications and utility models are produced for documents which do not have any other English language family member available (e.g. newly published documents); these are replaced with hand translated abstracts if/when they become available.  PatBase also includes F-I and F-term Japanese classification marks in its database, and according to system help documentation, this classification data is updated every two weeks.  The PatBase Japanese collection includes both “clipped” (representative) drawings for each patent document, and embedded in-text images (such as chemical structure images, for example).  Finally,  it’s relevant to this discussion that PatBase’s WO/PCT  collection includes Japanese-language Patent Cooperation Treaty (WO/PCT) applications; this is rare, as most commercial vendors do not include PCT documents published in non-Latin character languages in their collections such as Chinese, Japanese, Russian, or Korean, even though they are designated official languages under the PCT. 

• Thomson Reuters Thomson Innovation: Thomson Reuters’ machine-assisted translation collections are updated monthly.   Representative images are included for the published applications collection back to 1980.  Thomson Reuters added Japanese F-I and F-term classifications in a July 2009 update to the system.

• LexisNexis TotalPatent: Full text English machine translations are not yet available for this collection; however, the TotalPatent coverage page lists machine translations present from 1975 for applications and 1996 for grants.  This may refer to machine translations of bibliographic records created to supplement the EPO’s DOCDB file (also sometimes called the INPADOC bibliographic file).  The coverage tables for TotalPatent are generated by algorithm rather than by hand, and their earliest dates of coverage are often quite early – however, their date ranges do not indicate comprehensive coverage over the specified time period; a 1913 start date could indicate data for a single document published in 1913.  This is true for all coverage tables, but is especially important to keep in mind with TotalPatent’s early start dates.

Thanks for bearing with me during this in-depth investigation into the Japanese patent collections offered by these major search providers.  Although the material may seem a bit dry, understanding differences in search system coverage can be critical to performing a thorough prior art search.  For further in-depth information on any of these systems, I hope you’ll stop by Intellogist.com to check out our detailed Search System Reports.  Comparisons of the major features of these systems can also be generated from our Quick Table Comparison feature (free registration is required).

Finally, many thanks to Patent Baristas for hosting this series!

Today’s post is by Guest Barista Kristin Whitman of Intellogist.com.

Patent searching is still a profession where there aren’t many formal educational opportunities, and learning generally comes with experience.  However, no matter how skilled the searcher, the quality of the search is only as good as the coverage of the resources queried.  Searchable full text patent collections are easy to come by if you’re interested in certain authorities, such as the US, EP, and WO/PCT publications (check FreePatentsOnline, esp@cenet, and Patent Lens just to name a few), but much more scarce when it comes to Asian collections.   In this post, I’ll be comparing four commercial search systems with regard to their searchable Japanese coverage: Minesoft PatBase, Questel’s QPAT and orbit.com platforms, Thomson Reuters Thomson Innovation , and LexisNexis TotalPatent.

Before I get to the comparison, just a quick note: although I have created this post by summarizing publicly available information vendor system help files and, in some cases, statements made from vendor representatives, readers should verify coverage with providers before basing any purchasing decisions on this information.

To start, it’s worth noting that all of these systems contain the EPO’s DOCDB bibliographic and family file (historically known as the INPADOC bibliographic file), which means that they all contain English language abstracts from the Patent Abstracts of Japan (PAJ) collection.  This collection extends back to 1976 for some technology areas (for more information about PAJ coverage, an excellent source is the 2006 work “Information Sources in Patents,” 2^nd edition, by Stephen R. Adams).   The delay from when a Japanese patent application is published to when its hand-translated English abstract appears in the PAJ collection is approximately four months.  Some search systems, including Questel’s QPAT/orbit.com platform, Minesoft’s PatBase, and the JP-NETe system, load machine translated English abstracts into their database soon after publication, to be replaced with hand translated abstracts from the PAJ collection as they become available.

One of the most interesting elements of this comparison is that each of these systems has taken a different approach to providing Japanese data so that it can be searched by native English speakers.   Both Thomson Reuters and Questel have decided to approach this problem by creating full text collections of searchable English-language machine translations of these patent documents.   The benefit to this approach is that users can query the patent full text with English keywords; however, the obvious downside is that machine translation technology can produce wildly imperfect translations in most cases.   Both these collections are referred to as “machine-aided” or “machine-assisted” because of adjustments to the text that are made during pre and post-processing:

• Thomson Reuters has attempted to mitigate machine translation quality problems by employing a team of editors to review each translated document and provide hand corrections to un-translated terms.  In addition, they use in-house machine translation software which inserts multiple synonyms for the major document keywords, which has the effect of making the documents “broader targets” – by inserting keyword variants, it’s more likely that the document will come up in search results over a wide population of searchers.   As a real life example, a standard machine translation service might produce the sentence:

“The wing section which has the first transition section attached in the body.”

While the Thomson Reuters software would produce the following sentence, with multiple keyword options:

“The blade|wing|shuttlecock part which has the front-edge part attached to the main body.”

• Questel has attempted to mitigate machine translation quality problems by offering “machine-assisted” translations.  Where Thomson Reuters uses human editors, Questel is using a totally machine-based approach designed by longtime partner Lingway, a company that specializes in linguistic technologies.  According to Questel representatives, a number of approaches are used to ensure high-quality translations:
  • The translation software relies on “proprietary, manually built and domain-specific dictionaries that have been enhanced by Lingway’s linguistic technologies.”
  • A mix of different machine translation software is used, with the choice of specific software dependent on the type of text to be translated.
  • The software uses a hybrid machine translation (HMT) approach that “leverages the strengths of statistical and rule-based translation methodologies.”

Questel also states that it replaces machine translations with hand translated information when it becomes available from other sources; we can assume that this refers to the hand translated abstracts from the Patent Abstracts of Japan file.   In addition, Questel produces hand translated assignee names for its Japanese (and Korean) collections.   Finally, Questel representatives have stated that they plan to add a keyword-searchable original-language collection of Japanese full text records in the future.

Minesoft’s PatBase offers the full text of the patent documents in the original Japanese, alongside their English language bibliographic data and abstracts from the INPADOC file.   As the PatBase product also offers a Japanese language interface, it’s reasonable to assume that this decision was made in part to make their product more useful to Japanese consumers.   Although English translations can be produced from this full text “on-the-fly,” the Japanese full text is not keyword-searchable.    Another consideration is that due to the structure of the underlying PatBase data, it is quite easy to perform a search over all the full text collections available in the system, and limit the results to only those with Japanese family members.  Thus, a search through the full text of English-language family members can be used as a substitute for a full text search of Japanese documents, with the obvious drawback that the search will miss any Japanese documents of interest that do not yet have published full text English-language family equivalents.  In addition, because the INPADOC family structure is used, it’s also possible that the JP family member of an English document of interest may be only distantly related with regard to claimed content.

Finally, the LexisNexis TotalPatent product offered only bibliographic and abstract coverage of the Japanese collection until the end of 2009/beginning of 2010, when a full text original language collection was loaded.   Although the coverage page for the TotalPatent product states that some machine translated data is present for these documents, experimental queries show that keyword-searchable full text English machine translations are not yet available for this collection; a call to the LexisNexis Help Desk also confirmed that full text machine translations are not yet available.  In addition, TotalPatent does not yet appear to be able to handle Japanese-language keyword queries; only the English abstracts from the Patent Abstracts of Japan collection are searchable in TotalPatent at this time.

In the next post in this series, I’ll compare the Japanese collections offered by these systems by kind code, available text, language and earliest year of coverage.  If you’d like more information about any of these search products, you might be interested in the Search System Reports and Quick Table Comparisons available on Intellogist.com.

Today’s post is by Guest Barista Kristin Whitman of Intellogist.com.

The European Patent Office (“EPO”) recently announced that most of its fees will increase by between 5 and 8 per cent from April 1, 2010.  A summary of the new fees is shown here.

What does this all mean to you?

If you know that you want to enter the European regional phase of a PCT application, you should do so before April 1 to save around 5% on the official fees due.

For example, a typical PCT application might have 35 pages and 15 claims, with the USPTO as the International Searching Authority (ISA). If that PCT application enters the European regional phase on or after April 1, the total official fees will be US4192. If it enters the European regional phase before April 1, the total official fees will be US3975 (saving slightly more than 5% in the official fees).

Exactly the same principle applies to filing a new European patent application directly at the EPO. It particularly applies to new divisional applications, where the savings on accumulated renewal fees can be considerable.
Therefore, if possible, you should file new European patent applications (particularly divisionals), and enter the European regional phase of PCT applications, before April 1.

For the first time in a number of years, the EPO is not introducing a new payment structure. The changes in fees will not change day-to-day practice, save for the need to pay higher official fees. Therefore, our previous practice advice, for example concerning minimizing the number of claims, still applies.

The major practice changes will arise from the changes in the rules on the filing of divisional applications. Please refer to our note on the changes relating to divisional practice.  We expect that 1 October 2010 will be the deadline to file many divisional applications. We strongly recommend reviewing your portfolio of European patent applications now and filing as many divisional applications as possible before April 1 to save filing costs.

(via Forresters)

The therapeutic use of that substance cannot be patented because that use is a method of treatment of a human or animal body by surgery, therapy or diagnosis which is practiced on that human or animal body.

Methods of treatment are regarded in Europe as not being capable of industrial application and are consequently not patentable.  The Swiss Patent Office came up with the following solution in the early 1980’s:

“Use of compound X in the manufacture of a medicament for the treatment of disorder Y”.

Thus, the Swiss-type claim was born.

European patent application No. 94306847.8, “Nicotinic acid compositions for treating hyperlipidemi,” originally filed by Kos Life Sciences, Inc., now Abbott Respiratory LLC, was refused by a decision of the Examining Division on the grounds of lack of novelty under Articles 54(1) and (2) EPC 1973 and because it did not meet the requirements of Article 52(4) EPC 1973.

This decision was based on a Claim 1 which reads as follows:

“1. The use of nicotinic acid or a compound metabolized to nicotinic acid by the body selected from a group consisting of d-glucitol hexanicotinate, aluminium nicotinate, niceritrol, d,1-alpha-tocopheryl nicotinate and nicotinyl alcohol tartrate, for the manufacture of a sustained release medicament for use in the treatment by oral administration once per day prior to sleep, of hyperlipidaemia characterised in that the medicament does not comprise in admixture, 5-30% hydroxypropyl methylcellulose, 2-15% of a water soluble pharmaceutical binder, 2-20% of a hydrophobic component and 30-90% nicotinic acid.”

As set out in the decision under appeal, the Examining Division was of the opinion that the subject-matter of Claim 1 was anticipated by the disclosure in earlier documents, which contemplated the use of nicotinic acid for the manufacture of a sustained release medicament for use in the treatment of hyperlipidaemia by oral administration.

In that respect, the first instance, referring in particular to decisions T 317/95 and T 584/97, concluded that the feature of Claim 1 relating to a specific drug regime, i.e. once per day prior to sleep, reflected a medical activity excluded from patentability under Article 52(4) EPC 1973, which could not therefore be considered to represent a further medical indication from which novelty can be derived (points 27 and 28 of the Reasons).

The Board of Appeal held that the question whether medicaments for use in methods for treatment by therapy, where the only feature likely to confer novelty on the claim is a dosage regime, are patentable under Articles 53(c) and 54(5) EPC 2000 is an important point of law (decision T 1319/04, OJ EPO 2009, 36).

Under Article 53(c) EPC 2000 European patents may not be granted for methods for treatment by therapy or surgery of the human or animal body, neither may they be granted for diagnostic methods practiced on them. They may however be granted for medicinal products for use in such methods.

Already under the EPC 1973, to compensate for this exclusion, substances and compositions although already known in the art could nonetheless as such be patented for their first new and inventive use in one of these methods.

No express provision in the EPC 1973 allowed in contrast purpose-related product claims for second or further medical indications of known substances or compositions already used as medicines.

New Article 54(5) EPC contains an express permission of purpose-related product claims provided the new and inventive use of the substance or composition already known as a medicine be specific. However, the EPC does not give any definition of the precise meaning of this requirement that could encompass a new illness to be treated as well as the very disease that was already the object of a prior application, in which case the novelty of the use could be drawn from another distinguishing feature (e.g. different subjects to be healed or different modes of administration of the substance).

Therefore, the first sentence of Article 53(c) EPC, prohibiting patent protection of methods for treatment by therapy, is to be read and understood together with the provisions of its second sentence and with those of Articles 54(4) and (5) EPC respectively so that far from being mutually exclusive they are complementary.

By virtue of a legal fiction Article 54(4) and (5) EPC acknowledges the notional novelty of substances or compositions even when they are as such already comprised in the state of the art, provided they are claimed for a new use in a method which Article 53(c) EPC excludes as such from patent protection.

In such cases the notional novelty and following it the non-obviousness, if any, is not derived from the substance or composition as such but from the purpose the claimed substance or composition is related to, namely from its intended therapeutic use.

Swiss-type claims could be (and have been) considered objectionable as regards the question as to whether they fulfill the patentability requirements, due to the absence of any functional relationship of the features (belonging to therapy) conferring novelty and inventiveness, if any, and the claimed manufacturing process. Therefore, where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

In Case Number: G 0002/08; Dosage regime/Abbott Respiratory LLC, the EPO Enlarged Board of Appeal decided that:

Question 1: Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of Articles 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness?

Answer: Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

Question 2: If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime?

Answer: Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

Question 3: Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83.

Answer:A time-limit of three months after publication of the present decision in the Official Journal of the European Patent Office is set in order that future applicants comply with this new situation.

The EPO Enlarged Board of Appeal handed down its decision relating to the interpretation of the exclusion for patentability under article 53(c) EPC “method for treatment of the human or animal body by surgery”. Questions were asked to the Enlarged Board in a case about a medical imaging method, whereby a contrast agent was injected into the heart. The referring Board questioned whether this essentially diagnostic method involving a step consisting in a physical intervention was nevertheless excluded from patentability.

The appeal proceedings before the referring Board concern the appellant’s appeal against the decision of the Examining Division of 17 April 2003 refusing European patent application No. 99918429.4. The Examining Division decided that the claimed methods according to the requests then on file constituted diagnostic methods practiced on the human or animal body and thus were excluded from patent protection pursuant to Article 52(4) EPC 1973. Furthermore, the claimed methods comprised the step of administering polarized 129Xe as an imaging agent to a subject, either by inhalation or by injection. Insofar as the delivery of the imaging agent was done by injection, the claimed methods were excluded from patent protection pursuant to Article 52(4) EPC 1973 as involving a surgical step.

The application relates to magnetic resonance methods for imaging the pulmonary and/or cardiac vasculature and evaluating blood flow using dissolved polarized 129Xe.  The imaging methods of the present invention may precede surgery or a drug therapy for treating pulmonary or cardiac vasculature problems. During surgery, they may provide real-time feedback for verifying success, for example surgically induced variations in blood perfusion. During a drug therapy, they may allow the effects of the drug to be determined.

The wording of claims 1, 11 and 17, underlying the referring decision reads as follows:

1. A method for MRI imaging the pulmonary and/or cardiac vasculature using dissolved-phase polarized 129Xe, comprising the steps of: positioning a patient in an MRI apparatus having a magnetic field associated therewith; delivering polarized 129Xe gas to a predetermined region of the patient’s body, the polarized gas having a dissolved imaging phase associated therewith; exciting a predetermined region of the patient’s body, having a portion of the dissolved phase polarized gas therein with at least one large flip angle RF excitation pulse; and acquiring at least one MR image associated with the dissolved phase polarized gas after said exciting step.

11. A method for deriving a spectroscopic signal representative of a blood volume or a blood flow rate of a patient, comprising the steps of: positioning a subject in an MR spectroscopy system capable of detecting spectroscopic signals in a subject having a pulmonary vasculature; delivering gaseous polarized 129Xe to the subject; dissolving a portion of the gaseous polarized 129Xe into the pulmonary vasculature having an associated blood flow path; exciting the dissolved portion of the 129Xe with an MR spectroscopy RF excitation pulse; and deriving a spectroscopic signal associated with the dissolved phase 129Xe representing a blood volume or blood flow rate.

17. A cardiac imaging method, comprising the steps of: positioning a subject having a cardiac blood flow path in an MRI system; delivering polarized 129Xe to the subject; dissolving at least a portion of the polarized 129Xe into the subject’s cardiac blood flow path; exciting dissolved polarized 129Xe in a target region along the blood flow path with at least one large angle RF excitation pulse; and generating an MR image associated with the excited dissolved polarized 129Ke.

The Enlarged Board answered the following questions:

Q. 1.    Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04), which comprises or encompasses a step consisting in a physical intervention practiced on the human or animal body (in the present case, an injection of a contrast agent into the heart), to be excluded from patent protection as a “method for treatment of the human or animal body by surgery” pursuant to Article 52(4) EPC if such step does not per se aim at maintaining life and health?

A. 1. A claimed imaging method, in which, when carried out, maintaining the life and health of the subject is important and which comprises or encompasses an invasive step representing a substantial physical intervention on the body which requires professional medical expertise to be carried out and which entails a substantial health risk even when carried out with the required professional care and expertise, is excluded from patentability as a method for treatment of the human or animal body by surgery pursuant to Article 53(c) EPC.

2.    If the answer to question 1 is in the affirmative, could the exclusion from patent protection be avoided by amending the wording of the claim so as to omit the step at issue, or disclaim it, or let the claim encompass it without being limited to it?

2a.    A claim which comprises a step encompassing an embodiment which is a “method for treatment of the human or animal body by surgery” within the meaning of Article 53(c) EPC cannot be left to encompass that embodiment.

2b.    The exclusion from patentability under Article 53(c) EPC can be avoided by disclaiming the embodiment, it being understood that in order to be patentable the claim including the disclaimer must fulfill all the requirements of the EPC and, where applicable, the requirements for a disclaimer to be allowable as defined in decisions G 1/03 and G 2/03 of the Enlarged Board of Appeal.

2c.    Whether or not the wording of the claim can be amended so as to omit the surgical step without offending against the EPC must be assessed on the basis of the overall circumstances of the individual case under consideration.

3.    Is a claimed imaging method for a diagnostic purpose (examination phase within the meaning given in G 1/04) to be considered as being a constitutive step of a “treatment of the human or animal body by surgery” pursuant to Article 52(4) EPC if the data obtained by the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention?

3. A claimed imaging method is not to be considered as being a “treatment of the human or animal body by surgery” within the meaning of Article 53(c) EPC merely because during a surgical intervention the data obtained by the use of the method immediately allow a surgeon to decide on the course of action to be taken during a surgical intervention.

The entire opinion is here: Medi-Physics/Treatment by Surgery G107 Board Opinion