News

Google and Apple are not new to patent wars targeted to acquire former patent pools to invest in IP beyond their core business.

This July, the Californian colossus Google lost a battle actually won by a consortium comprising its concurrent and neighbour of Cupertino, Microsoft, Research in Motion (Blackberry), Ecrisson, Sony and EMC. The battle aimed at acquiring the patent portfolio of Nortel Group, now in bankruptcy. The patents of the portefolio encompasses a wide range of technologies including voice, networking, wireless, optical data transmission and 4G. It seems that the consortium won the auction with a bid at $4,5 Md whereas Google’s bid was significantly lower.


Anyway Google still stands up, pursuing a real interest in the InterDigital patent portfolio. InterDigital has developed 3G with HSDPA and HSUPA breakthroughs, enabling real mobile computing, multimedia, gaming and commerce, and has already be licensed by Apple.


Today, Google is trying to secure as many patents as possible from InterDigital to defend its wireless technology, as well as the Android platform, from lawsuits.


Whatever will be the result of this new IP battle, it’s sure that the whole war has still to be won.

Emanuele Del Pero
Patent Attorney - IT Engineer

General trends one year after Bilski

Expected by professionals specialized in the patentability of computer implemented inventions, the decision of the Supreme Court released in June 2010 puts an end to a quite instable period as to the patentability assessment for inventions of the business method kind.

As a reminder, well accepted by the USPTO since the State Street Bank decision, the patentability of Business Method has seemed very uncertain when a number of decisions have started to adopt a new test called “machine-or-transformation��?.

This test significantly differs from the one established by State Street Bank’s case and dramatically raised the bar regarding the statutory subject matter requirement (35 USC § 101).

In June 2010, the Supreme Court has confirmed that the technical context of the invention will be under scrutiny while assessing patentability. Without considering it is binding, the test called “machine or transformation" was admitted by the Suprem Court as a relevant but non exclusive test for patent eligilibility as to the statutory or non statutory subject matter of inventions. In the decision Bilski, the Suprem Court’s decision also held that the three traditional exclusions of natural phenomena, abstract ideas, and laws of nature still apply.

Therefore, since the decision Bilski the sky was therefore somehow less dark for companies holding business method patents, but however not clear enough to know exactly where to go. Indeed, the Bilski decision and the memorandum subsequently issued by the USPTO for its Examiners did not provide precise enough guidelines on which practioners can securely rely.

Patent attorneys and IP practitioners have adapted their drafting trying to draft new claims that meet the requirements of the Suprem Court. Although such adaptation of drafting is quite easy for patent applications not filed yet, such adaptation may turn out to be more tricky when the patent application was filed years ago.


One year after the Bilski decision, almost two hundred decisions were issued by various instances: USPTO’s Board of Appeal (mainly), District Courts, Federal Circuit and Suprem Court.

Robert Greene Sterne and Michelle K. Holoubek have stringently collected a wide number of decisions.

From their study, the following trends are worth noting:

« Trends from the Courts:
(1) The District Courts appear to be very strict when reviewing statutory subject
matter – out of the 6 District Court decisions that addressed § 101, only 2 found that the claims at issue were patent-eligible under § 101.
(2) The Federal Circuit has offered some relief for patent owners. Out of the 3
Federal Circuit decisions that addressed § 101, 2 found that the claims at issue were patent eligible.
(3) The Supreme Court is staying close to the patent-eligibility issue, having granted
cert in the Prometheus case on appeal from the Federal Circuit.

Some trends from the Board worth noting:
(1) The number of decisions where the claims were held by the Board to be non-statutory
under §101 significantly outweighs the number of decisions where the Board found that
the claims satisfied §101. There are about 2.5 non-statutory decisions for every 1 statutory
decision.
(2) It is not unusual for the Board to raise a §101 rejection on its own, even if patent eligibility
was not a subject on appeal, and was not briefed.
(3) The Board still relies heavily on the machine-or-transformation test, although it
does look at other factors as well. For most claims that satisfied the machine-or-transformation test, the Board has found them to be patent-eligible without further analysis.
(4) Although it is not an official test, the "mental steps" doctrine rings true – if the
claims can be performed purely in the human mind, then they will be non-statutory.
(5) Even if the specification is silent as to whether a computer readable medium can
be read on a signal, the Board will likely read a signal into a claim reciting a computer readable medium, rendering it non-statutory.
(6) The panel of judges assigned to a particular appeal matters. As can be seen from
the following, several of the Board judges rarely find a claim patent-eligible, and often raise
previously non-existent §101 rejections.
(7) There are no guarantees. Similar claims have been treated differently by different
panels, and some BPAI judges appear inconsistent in applying the law to seemingly similar
claims. »


Clearly, many points of this study confirm what some Patent Attorneys specialized in business methods have forecasted and have been observing upon the issuance of the decision Bilski in June 2010. However, as revealed by the study, some trends, like the variability of treatments from a judge to another, do not seem to enhance the visibility of companies involved in business methods.

These considerations recall that examining a patent application is in practical more complicated than merely applying laws, guidelines or decisions. From Europe, one could hardly completely blame the US system since differences of treatment are also observed at the European Patent Office. Indeed, in pratical it seems to us than the EPO Examiners are often more reluctant to grant patents for methods related to e-business, banking or travel services than for inventions related to the automotive industry or the telecom even if the features that define the scope of protection are the same.

The European Patent Office has released interesting statics regarding the outcome of grant proceedings.


Below is presented statics for all patents whatever is their technical field.
(Source European Patent Office)
http://www.epo.org/about-us/statistics/granted-patents.html


It should be noticed than since 2008, the grant ration has significantly decreased. For the last three years a patent has been granted in under 50% of all cases. Therefore, more than 50% of the patent applications have been rejected by the Office or withdrawn by the applicants.

Clearly this illustrates the new strategy that the European Patent Office has been put in place for the past few years and that is called "raising the bar" .

It should be also noticed than very important variations exist between technical fields. Indeed, for inventions related to some technical fields like computer implemented invention or business methods, some patentability requirements (inventive step in particular) are significantly more difficult to meet. For instance, the grant ratio for telecom related inventions is five to seven times higher than for computer implemented inventions in connection with banking, e-shopping or travel&tourism inventions.

Qatar deposited its instrument of accession to the PCT to become a contracting state of the Patent Cooperation Treaty (PCT).

Consequently, any international application filed on or after 3 August 2011 will automatically include the designation of Qatar.
With the Qatar, 143 state are no bound by the PCT.

This is a good news for european companies since an increasing number of european applicant see the Qatar as a target market or a place for collaboration. The PCT will provide them a 30 months period from the first filing date (european or french patent application for instance) to file a national patent application in Qatar through the PCT.

Speech by Jean-Pascal Decobert for the Patent-Actions Club on May 5th

The Patent-Actions Club, led by the French Patent & Trademarks Office (INPI) and the Chamber of Commerce & Industry, is a club that aim at discussing topics related to IP issues such as valuation of IP assets.

In this context, Jean-Pascal Decobert is invited on May 5th to share his experience on IP assets valuation and protection through partnership and collaboration agreements.

Jean-Pascal Decobert will provide practical advices to make the best of a technological collaboration while preserving the IP assets and the know-how of the company.

A specific focus will be done for the following aspects: collaboration agreements, non disclosure agreements, negotiation before signing a contract, important contractual clauses etc.

Further information on the terms and conditions for taking part to the next session of the Patent-Actions Club can be obtained from the CCI (mde.sophia@cote-azur.cci.fr +33 4 93 95 45 12 Pauline Weber or José Fiotti).

An abusive practice targeting the owners of trademarks and domain names is on the rise across the internet.

It consists of inciting these owners to register domain names that are identical to their trademarks or other industrial property rights, by allowing them falsely to believe that others are trying to register them. These proposals are most often received from foreign - mainly Asian - companies posing as official domain name registrars.

The following type of message is typical:


We are an organization specified at dealing with domain name dispute and registration in Asia. We have something important on intellectual property right need to confirm with your company.
On , we received an application formally, one applied for the Internet keyword "(usually the trademark name)" and some domain names with our organization.


After checking, we found your company is the original trademark owner. If the company's action haven't been authorized by your company, so their behavior will conflict with your interests.

In order to deal with the matter better, please contact us ASAP.
Best Regards

What can you do if targeted by such a proposal?
• Above all, do not answer the e-mail. If you reply to these companies, they may offer to register the domain names for you at a much higher price than the market price.
• Immediately notify your Board, so that they can ascertain whether the domain name in question is still available and study whether or not to register it.
This type of dishonest incentive proposals is increasingly common on the internet. An interesting solution that can prevent the inconveniences, especially financial, of these practices might include monitoring domain name registrations.

Validity of a three-dimensional trademark comprising the shape of a chocolate product that is reminiscent of a vine shoot

Litigation between the companies TRIANON CHOCOLATIERS BV and REVILLON CHOCOLATIER SAS was recently the subject, in France, of an interesting ruling by the Court of Cassation regarding the validity of a three-dimensional trademark comprising the shape of a product.

The company REVILLON CHOCOLATIER SAS owns French trademark no. 02 3 188 047, filed on 7 October 2002 with class 30, covering the following products: "cocoa, chocolate, chocolate products". This three-dimensional trademark comprises the shape of the product, which is reminiscent of a vine shoot.

The company TRIANON CHOCOLATIERS BV has been summonsed for infringement of this trademark and unfair competition following its release of chocolate twigs with the name Les Rameaux.

The company TRIANON CHOCOLATIERS BV has a grievance against the ruling handed down by the Court of Appeal of Paris on 30 January 2009 for having non-suited its request to have three-dimensional trademark no. 02 3 188 047 declared null and void.

In this instance, the Court of Cassation approved the ruling of the Court of Appeal in that it points out:
- "that no chocolate product may have a thin, short, twisted shape that is even remotely reminiscent of a vine shoot and covered with chocolate over its entire surface";
- "that this representation is different enough from that adopted by all other chocolate products as to let the consumer know the commercial origin of a product and to enable said consumer to repeat the purchasing act carried out in the past without any possibility of confusion".
This same assessment had already been made in Benelux by an order of the Court of Appeal of The Hague on 12 January 2010, which considered the shape reminiscent of a vine shoot to be distinctive since it is considerably different from other chocolate sticks and is the only one which resembles a vine shoot, granting it “distinct originality".

The order of the Court of Cassation is an exception to the severity with which the distinct nature of three-dimensional trademarks is assessed, in particular on the European level.

This ruling provides an opportunity to review the criteria for assessing the distinct nature of trademarks that comprise the shape of the product and recent rulings handed down in this regard.
These criteria are the same as those applicable to other trademark categories, but it is particularly important to bear in mind the perceptions of the target audience, since consumers are not used to ascribing the origins of products according to their shape or packaging, but rather in relation to their name, logo or label. Furthermore, for a three-dimensional trademark to be considered distinctive, it must be as different as possible from representations that are common in the sector in question. The validity of registering a three-dimensional trademark must therefore take these assessment criteria into account. Unless the shape of the actual product is different enough from the shapes commonly used in the industry, it may sometimes be better to consider protecting the label of the packaging or the most distinctive figurative and verbal elements.

Court of Cassation, Ch. Com, 26 October 2010, TRIANON CHOCOLATIERS BV vs. REVILLON CHOCOLATIER and MADEMOISELLE DE MARGAUX SAS.

Under discussion for 10 years, the creation of a European Union patent and the establishment of a European Community patent court has seen recent developments which are being met with optimism, but will also require patience.


The EU Patent: Considerable Progress

The European Council authorised the establishment of a European Union patent on 10 March 2010.
This follows the European Parliament's approval last February for using the enhanced cooperation procedure to adopt the EU patent project.

This enhanced cooperation procedure was called for in view of the objections raised by Italy and Spain regarding the implementation of the EU patent, objections which were based primarily on linguistic considerations. The remaining 25 member states were in favour of establishing an EU patent.
Spain and Italy will be allowed to adopt the EU patent at their own discretion.


Single European Jurisdictional System: Review Required

The European Court of Justice has issued an advisory report against the creation of a system for setting up a European Community patent court, arguing that this system is not compatible with the provisions of the Treaty on European Union and the Treaty on the Functioning of the European Union.

The court noted that the draft agreement grants exclusive jurisdiction over a large number of proceedings (in particular infringement and revocation proceedings), which would deprive the member states of these powers. The following are the main reasons behind this negative report.
• The draft agreement provides a preliminary mechanism, which reserves the right to preliminary ruling for the European Community patent court, while taking this power away from the national courts. And yet, the Court emphasised that the preliminary ruling mechanism promotes direct cooperation among national courts, "allowing them to participate closely in the correct application and uniform interpretation of EU law and in the protection of the rights granted to individuals".
• The Court also noted that under the proposed system, "no orders of the European Community Patent Court that infringe EU law can be subjected to infringement proceedings or incur any pecuniary liability of one or more member States". However, a fundamental mechanism of the Union provides that "States are obliged to repair damage caused to individuals by infringements of EU law that can be attributed to them, whatever the body, including the courts, of the State that has caused the infringement".
Consequently, the advisory report from the European Court of Justice does not challenge the principle of a single patent court, but does require a review of the proposed project.

How can you protect a perfume? A design registration or even a three-dimensional trademark can be filed for the bottle; the name with which the perfume is marketed can be registered as a trademark; but what about the fragrance, the true work of the perfume maker? How can you protect it?

All attempts to file olfactory trademarks with the INPI and the OHIM have been futile.

All that remains is copyright, which implies protecting the fragrance as an intellectual work. Judges do not always agree on this matter: while court of cassation systematically refuses to grant protection by copyright, courts dealing with the substance of the case tend to recognise that a perfume can be considered an intellectual work protected by copyright.
In this instance, the company LANCOME brought a lawsuit against the company ARGEVILLE for copyright infringement, asserting a fragrance marketed by the latter company imitates the characteristics of its fragrance marketed under the trademark TRESOR.

In an order on 13 September 2007, the Court of Appeal of Aix en Provence admitted the infringement lawsuit.

On 22 January 2009, the Court of Cassation overruled this order, considering that “the fragrance of a perfume, which is the result of the simple implementation of know-how, does not constitute the creation of a form of expression that can benefit from copyright protection as an intellectual work��?.

Then, the Court of Appeal of Aix en Provence, by its order of 10 December 2010, on referral after cassation, admitted that a fragrance can be protected by copyright:
• Article L112-1 of the French Intellectual Property Code (CPI) states that “copyright protection can be granted to all intellectual works, regardless of genre, form of expression, merit or intended audience��?.
• Article L112-2 of the CPI, which lists the types of work that can be considered creations, contains the adverb “mainly��?, which implies that the list is not exhaustive.
• Even if the creation of a perfume requires know-how, it is not a purely technical operation.
• The creation of a perfume also requires “research into the succession and interactions of odours, a combination of volatile and persistent elements and a blending of various essences in proportions that will release a characteristic olfactory form, reproducing the personality, sensitivity and imagination of its author and constituting, as long as it is original, an artistic creation��?.

In this instance, it was ultimately found that TRESOR by LANCOME “does not have entirely new characteristics that can be fully identified by an average consumer and which would show the creative contribution of the author��? and the lawsuit for copyright infringement was therefore dismissed. However, it is no less true that this order represents major progress towards the basic recognition of copyright protection of the fragrance of a perfume, even when its implementation is sensitive in terms of compliance with conditions of originality.

Furthermore, the implementation of systematic testing processes in the company is established as a way to provide proof of creation prior to the disputed fragrance.
Ruling of the Court of Appeal of Aix en Provence on 10 December 2010 on referral after cassation - No. 2010/475

Another step forward in the fight against illegal downloads:
Hadopi takes on repeat offenders!

Hadopi, the High Authority on Content Distribution and Copyright Protection on the Internet, is an independent agency whose mandate is defined in the Creation and Internet Act of 12 June 2009, consisting mainly of:

- promoting increased availability of legal content on the internet;

- observing the licit or illicit use of content on the internet;

- protecting online content against applicable copyright infringements.


As part of this protection mandate, Hadopi has set up a two-step progressive warning mechanism.

The first phase was educational, aimed at informing internet users of their obligation to monitor their own internet access, and has just ended after three months of actual operation, with mixed results.

During this period, according to the scarce figures published by journalists, anywhere between 20,000 and 100,000 infringements were recorded each day, with 800 to 2,000 daily warnings sent out to internet users accused of downloading illegal files. Following these notifications, 50% of internet users continued to breach copyright laws.

These figures are obviously very difficult to verify and must be subjected to careful analysis.

Regardless, Hadopi is currently initiating the penal step of its process, in which any person suspected of repeated acts of piracy will receive an e-mail, also sent by registered mail with acknowledgement of receipt. Internet access may be cut off after the third offense.

Repeat offenders will have to behave themselves!

“Swiss Claims" are a specific wording of claim which was recommended by the Enlarged Board of Appeals of the EPO (G6/83) when applying for protection of a second or any subsequent therapeutic use of a substance or composition that is already known as a drug.

Example of a Swiss claim: “Use of a substance or a composition X in the preparation of a drug for treating the disease".

With the passing of the new European Patent Convention (EPC 2000) on 13 December 2007, this wording no longer seems necessary for protecting this type of invention. The following wording would seem to be preferable:

EPC 2000 claim: “Substance X or composition X to be used for treating the disease".

This has been confirmed by the Enlarged Board of Appeals, which clearly stated in February 2010 in its decision G2/08 that Swiss Claims are no longer justified under the new wording of EPC 2000 (EPC art. 54).

The Enlarged Board of Appeal has established a period of three months from the publication of its decision G2/08 in which to adapt patent applications that still contain Swiss Claims. This announcement was published on 28 October 2010 in the Official Journal of the EPO.

Consequently, no new international or European patent application with a filing or priority date later than 29 January 2011 may contain any Swiss Claims.

For international or European patent applications pending on 29 January 2011, it is still advisable to adapt the claims to the new wording implemented by EPC 2000.

An analysis of patent litigations is often valuable for understanding the state of competition within an industrial sector. The year 2010 saw particularly vicious infringement lawsuits, in line with the competition that can be seen plainly on the shelves of mobile telephone shops.
The background for this state of affairs involves vast numbers of patents.

Traditional players in the mobile telephone market were quick to realise the utility of patent protection; Nokia, RIM or Sony Ericsson, to mention a few, have large portfolios of industrial property assets.

The increasing overlap between mobile technology and software applications, in particular in smartphones, has done nothing but speed up this trend. Leading players in the IT industry soon joined the fray, with historically well-stocked patent portfolios. Apple is a classic example of this convergence, which it has turned into success with its iPhone.

To our knowledge, more than 20 patent infringement lawsuits, in most cases American, are under way as of 31 December 2010 among leading names in the sector, including Apple, Microsoft, Nokia, RIM, Oracle, Samsung, Motorola, and Kodak in telephone imagery. Every dispute generally involves several patents.

The explosion in the rate of litigation can be explained mainly by the fact that companies that arrived late on the market need to impede the success of rapidly growing companies. Apple has become a popular target, revealing the strategy of its competitors to harm the company as much as possible, in particular due to its enviable growth and margins. Nokia, which has been losing market share, is one of its attackers.

The convergence of mobile telephony, IT and peripheral technology (in particular touch screens) is also used as justification for a number of disputes: Apple’s touch screens are a problem for Elan; Android (Google’s operating system) is being contested by Oracle for its Java technology and by Gemalto, etc…The risk of clashes between technologies is more frequent now than ever before.
Finally, certain companies may seek to disrupt the contractual and commercial relationships of competitors who use the Android system. It is not strange for infringement lawsuits to lead to dissension in the defender’s camp (responsibility sharing, licence agreement interpretations, validity of warranty clauses, etc.).

In many cases, a retort (a counter-lawsuit for infringement of other patents) rapidly follows the first legal proceeding. One thing is for sure: currently the best way to ensure survival in the mobile telephone industry is to be well-armed in terms of intellectual property.

The IEEPI (European Enterprise and Intellectual Property Institute) offers training programmes aimed at promoting control of industrial property within companies, in particular SMEs.

In this context, Jean-Pascal Decobert will be speaking on 17 February 2011 at Sophia Antipolis during a session dealing with the topic of: “Protecting and selling non-patentable innovations and know-how��?.

Further information on the terms and conditions for taking part in the training course can be obtained from the IEEPI (www.ieepi.org / +33 (0)4.90.24.84.07).

Ruling no. 2010-45 QPC of 6 October 2010


On 9 July 2010, the Council of State brought before the Constitutional Council a priority question regarding the constitutionality of article L.45 of the Post and Electronic Communications Code. This article outlines the assignment of internet domain names by specialist companies. The Constitutional Council was asked for its opinion regarding the conformity of this article with the rights and liberties laid down by the Constitution.

The Constitutional Council points out that this article grants bodies appointed by the Minister in charge of electronic communications the right to assign and manage domain names “within top level domains of the internet’s domain name system, corresponding to France�; that its core purpose is to ensure that the assignment of domain names by these bodies is carried out “in the public interest, according to publically available, non-discriminatory rules which aim to ensure that applicants respect intellectual property rights�; that, moreover, this article grants a Decree by the Council of State the responsibility for specifying the rules that govern its application; that, while legislators have thus protected intellectual property rights, they have delegated all power to define the conditions according to which domain names are assigned or can be renewed, rejected or withdrawn; that no other legal provision institutes guarantees that ensure respect for freedom of enterprise as well as for Article 11 of the 1789 Declaration; and that, subsequently, legislators have misinterpreted the scope of their powers.

In these conditions, the members of the Constitutional Council therefore estimate that “Article L. 45 of the Post and Electronic Communications Code shall be declared unconstitutional�.

This declaration of unconstitutionality will come into force on 1 July 2011.

Parliament therefore has a term of nine months in which to legislate on the issue of assigning domain names. Considerable changes may ensue, affecting both domain name registrars and their clients who are used to booking their domain names.

The case will be followed up in the summer.

Jean-Pascal DECOBERT will intervene on November 19th, 2010 at the winter university of EBAN on the theme “protection of computer implemented inventions, comparison between the American and the European approaches. EBAN (European Business Angels Network) is an association of business angels and constitutes an international network of investment professionals bringing their financial support to start-ups.

As our activity increases and to satisfy our client needs, Marie-Clotilde SCHIES joined our Trademark, domain name and contract department.

Marie-Clotilde SCHIES has a Master of Law and a Post Graduate Specialisation in Industrial Property Master.

Marie-Clotilde SCHIES specializes in the acquisition of Trademarks, Designs and Domain Names in France, Monaco and worldwide.

She also handles opposition to defend her clients’ IP rights and protect them against competitors.

Additionally, Marie-Clotilde SCHIES advises and assists her clients for litigation and contract drafting.

She provides counsels for multinational firms in various fields such as the food-processing industry, pharmaceutical industry, cosmetics, fashion, banking, real estate etc. She also deals with SMES, public institutions and individuals.

Cabinet Hautier's team now counts an additional European Patent Attorney.

The European Qualification Examination can only be obtained with a high level of expertise in european patent law. This examination enables to represent companies and inventors for any actions before the European Patent Office (EPO) (filing patents, obtaining grant through examination proceedings, leading oppositions and appeals etc.)

Each year, only a quarter of the 1500 candidates of all nationalities taking this exam are qualified.

The achievement of Allison DELAPORTE, as a first sitter, is of course mainly due to her professional skills but also relies on the efforts that Cabinet HAUTIER constantly carries out to bring its counsels to the highest level of expertise.



Allison DELAPORTE, engineer specialized in Biological Engineering - Pharmacology – Biotechnology will be pleased to represent and counsel before the EPO clients of Cabinet HAUTIER in the fields of chemistry, life sciences and medical systems and devices.

Nicolas Hautier has been invited to discuss computer program patentability at the PACA EST Incubator on July 13th. He will share his expertise and experience with heads of technical departments invited by the Incubator.

In the course of his presentation, Nicolas Hautier will provide updates of European and American case law on computer program protection.

Computer program protection is a hot topic, many projects supported by the PACA EST incubator deal with developing software, and the meeting is promised to be very interactive.

Expected by professionals specialized in the patentability of computer implemented inventions, the decision of the Supreme Court puts an end to a quite instable period as to the patentability assessment for inventions of the business method kind. Well accepted by the USPTO since the State Street Bank decision, the sky looked darker for business methods in the recent past when some decisions started to adopt a patentability test differing from the one established by State Street Bank’s case. The Supreme Court now confirms that the technical context of the invention will be under scrutiny while assessing patentability. Without considering it is binding, the test called “machine or transformation"? is admitted as a basis for evaluations as to the statutory or non statutory subject matter of inventions. The USPTO immediately communicated a memorandum to the examiners. This memo is available at

http://www.uspto.gov/patents/law/exam/bilski_guidance_28jun2010.pdf

We announced in previous news of this web site that a very important decision would be released by the US Supreme Court regarding patent related to business method. Bilski decision was supposed to come out on July 1st…, but we are still waiting!

As a reminder, this decision directly concerns the patentability condition of Article 35 U.S.C. 101 that relates to the statutory subject matter.

For now, what we have to do is to rely on previous rulings of Bilski, USPTO examination guidelines and current cases we went through…, and to firmly hope that the Supreme Court decision will bring a clear interpretation of the statutory subject matter and of the “machine-or-transformation"? test.

COMPUTER IMPLEMENTED INVENTIONS: COMPARISON OF EPO’S AND INPI’S APPROACHES


Laws are quite identical in the EPC (European Patent Convention) and in the CPI (French Code de la Propriété Intellectuelle) regarding the definition of a patentable inventions.

Is this howevere sufficiant to have similar rulings regarding “computer implemented inventions" at the:
- EPO
- French Patent Office (INPI)
- French Court (Tribunal de Grande Instance) ?

Nicolas Hautier is invited at the IPICA meeting organized by the INPI in SKEMA EXECUTIVE to present that issue.

Nicolas will present a recent decision of the TGI de Paris that clearly shows that EPO, INPI and TGI rulings may highly differ.

A review of French and EPO main case laws regarding “computer implemented inventions" will be presented to understand that recent decision.

Good practices to optimize chances to obtain the grant of patents for computer implemented inventions will also be discussed.

Computer implemented inventions:
The Enlarged Board of Appeal of the EPO decides the referral G03/08 is inadmissible.
The President of the European Patent Office had asked to the Supreme Board of the EPO its opinion about questions related to patentability of inventions in the field of computer science.

The Enlarged Board of Appeal decides this referral is not admissible since these questions are not subject to substantial divergences between past law cases of Boards of Appeal.

The Enlarged Board often relies upon the notorious decision T 1173/97 IBM to recall the basis for assessing patentability of computer inventions. The Board also confirms that this assessment logic often moves the “invention��? requirement (article 52 (1), (2) EPO) towards the inventive step requirement (article 56 EPO). The latter criterion becomes the main bar for patentability of such kind of inventions in Europe.

The American company had obtained the grant of a controversial patent (US 5 960 411) about an e-commerce technique based on user orders placed in one single click.

In March, after a long procedure, this patent was partially confirmed.

In Europe, the case law is much less in favor of patentability of this kind of inventions often called “business method��?. And Amazon never gets its patent granted by the European Patent Office in connection with this invention.

Nokia's just hit Apple with a patent infringement lawsuit, claiming that all iPhones models infringe on ten of Nokia's patents relating to GSM, UMTS, and WiFi. According to Nokia's press release, the patents in question have been licensed by 40 other companies, "including virtually all the leading mobile device vendors," and Apple has refused to agree to "appropriate" license terms and is thereby free-riding on Nokia’s 40 Billion dollar worth of researched technology.

“We believe that Nokia is not seeking an injunction; rather, we believe that the company has been in talks with Apple concerning a patent royalty payment for over a year" said Analyst Gene Munster in a note to investors. "With today's announcement, it appears that the companies have not come to a resolution and Nokia is attempting to hasten the process by further choosing the competent court of Delaware, which has the reputation of quickly settling legal patent disputes.

Nokia is the owner of a great patent portfolio of roughly 10.000 patent families. The ten carefully selected patents used against Apple are deemed essential, meaning that a modern handset can’t be made without relying on the technology they teach. The risk may seem huge for Nokia since an unfavorable outcome can jeopardize the licenses already in place with other companies regarding these same patents. However, we can rest assured that the litigation team of Nokia already has analyzed and tested the strength of their patents.

How to optimise your intangible assets?

Nicolas HAUTIER will share his experience in this area at the next Patent Action Club at the Ceram in Sophia Antipolis.

Our experts will be present at the next Sophia Antipolis Ceram Executive.

They will share their experience with visitors and answer queries concerning means to enhance economic security using IP Rights.

The patent rights in the computer domain are far from being stabilized. We have already noticed it by the differences of assessment of the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). The jurisprudences of the Boards of Appeal of the European Office have themselves strongly evolved since 1978.

These evolutions must have led to some incoherencies in the assessment of the inventions implemented by computer whether it is about methods constituted by a series of steps or computer programs products. In order to overcome some incoherencies, the President of the European Patent Office has just submitted a question to the Enlarged Board of Appeal under the number G3/08. Indeed, an important decision had until then admitted the patentability of the computer programs products on condition that their execution implies an additional technical effect whereas a technical effect even known is sufficient so far to overcome the obstacle of the technical character for the claims written as a method or a device.

The Enlarged Board of Appeal of the European Patent Office should take a stand in the months to come and clarify the situation. This does not make the task of the Patent Attorney easier in the stage of writing of patent applications in the most adapted form for obtaining European patents.

On the American level, observers have for a long time criticized the USPTO its relative clemency as regards the interpretation of the requirement of inventive step (non obviousness) as well as the acceptance of the patentability of inventions without technical consideration.

Maybe this external pressure has led the American Office to considerably change its position and we have recently noticed an important fall of the granting rates of American patents. The court orders have something to do with it. Particularly, the decision KSR International Company v Telefex Inc has considerably strengthened the requirement regarding the inventive step. More recently, the decision In Re Bilski has updated the assessment requirements of patentability of the Business methods in the United States. This decision of October 30, 2008 adopts a test called « Machine – or Transformation » to determine if an innovation falls within the scope of protectable inventions according to the section 101 of the Patent Act.

Even if this decision has not, in principle, a fundamental impact for a great majority of inventions, the tendency is therefore to tighten the patentability requirements before the American Office.

The assessment of the Patent Attorney, the quality of writing and the follow-up of the patent applications turn out to be all the more crucial currently.

The WIPO has published its annual report: the number of filed PCT patent applications has increased by roughly 4% by year between 1995 and 2008. Approximately 166 400 PCT applications were filed in 2008.

The five biggest offices (Chinese, Japanese, American, Korean and European) count for more than three quarters of the application filings.

The appeal procedure T0959/03 has just confirmed the direction of the European Patent Office (EPO) about the patentability of the business methods and this for an invention in the limelight of the American judicial current affairs.

Two inventors, Ed Pool and Doug Mauer (linked to the company DE Technologies Inc) filed just about anywhere in the world, and at the EPO, patent applications about a universal buying office center for international transactions. The title of this patent application admits without ambiguity the very “business" side of this invention.

In the United States, two patents have already been granted around this invention, patents that DE Technologies skilfully exploits to harass American major companies among which the company Dell Computers.

In Europe, things seem to have got off to a bad start for the applicants. The Technical Board of Appeal has just confirmed the rejection decision of the examining division of the EPO.

If the decision is not surprising in the eyes of the current jurisprudence, the grounds adopted are clear and rectify the reasoning that the examining division had followed. Firstly, the conditions of the article 52 (2) and (3) EPO are fulfilled as long as technical means are present (even if they are ordinary…). Then, it is on the criterion of the inventive step that the assessment of the patentability must be made if the invention combining technical and non technical means is new. On this point, it is the concept of technical contribution which is here reaffirmed and the non technical means cannot be taken into account to justify the implication of an inventive step.

In the individual case, the technical means seemed to be ordinary and the contribution of the invention was of a commercial nature. The inventive step has therefore not been admitted.

Even if some decisions have tempered the American enthusiasm for the “business methods" (see for example the affair Bowman), the case Ed Pool underlines the strong differences of assessment of the patentability in the world.

Recent statistics show an important growth of the number of the domain names ending with «.fr». Thus, they are currently 1.3 million with a growth rate of 36 % on 1 year whereas the growth recorded for the whole of the domain names is around 20 %.

This growth can be explained by the relaxing of the granting rules of the domain names «.fr» as well as by the image of reliability that this extension represents.

These recent statistics confirm therefore the importance of the reservation of the domain names in «.fr» for the owners of the trademarks in addition to the protection.

Benoît BATTISTELLI, the current General Manager of the INPI, has just been nominated President of the Board of Directors of the European Patent Office.

His mandate of President of the Board of Directors will start on March 5, 2009 for three years. This should not affect his current duties of General Manager of the INPI.

With this appointment we can hope that France will play an important role in the expected evolutions regarding patents: European Patent Litigation Agreement regarding patents, setting up of a Community patent etc.

The atmosphere is now quieter, but we remember the sharp debate that occurred a few months ago because of a certain European directive about the patentability of the software innovations. The most virulent opponents to the patentability maintained that the freedom of the software innovations is essential to the pluralistic development in this branch of industry, particularly to merge the interests of the big groups and preserve the small structures, even the individuals.

The development of patent groups seems to counter this argument. These groups are alliances entered between players of a given market, owners of patents. We understand that this kind of agreements allows exchanges of licences between the partners but we observe more and more open alliances, i.e. allowing to third companies to obtain licences of the groups’ patents.

It is the case of an alliance concluded very recently between Alcatel-Lucent, Cisco, Clearwire, Intel, Samsung and Sprint on the WiMAX, technology of communication at high bandwidth.

This contractual solution could offer a compromise between patentees and other players of the market in a system where nobody loses. Furthermore the consumer does not seem to feel cheated, for these alliances generally improve the interoperability and the compatibility of the products stemmed from the various manufacturers.

After a favourable vote of the French National Council of Bars, the French National Company of Trademark and Patent Attorneys has just come down in favour of a fusion of the two professions.

Moreover, the speech of Mrs Rachida DATI at Lille this 17 October seems to definitely show the intention of the government to follow this way.

The patent and trademark attorneys would become attorneys at law with the “Intellectual property attorneys? specialization which would preserve the visibility of the expertise of our profession in the field of intellectual property right.

The “Professional Representative before the European Patent Office? and “Professional Representative before the OHIM (for the Community trademarks and designs)? qualifications, will complete, for the professionals who have this qualification, the recognition of their competences.

A recent study of the company EVALUESERVE entitled « Patenting Landscape in China » (May 22nd, 2008) confirms the quick spread of patent applications on the Chinese ground. The Chinese office has thus received in 2007, 694 153 patent applications (including utility models and ornamental models).

The number of applications is increasing so much (+ 21,1%) that China could surpass the United States and Japan by a few years.

The significance of a monopoly on the Chinese territory has been confirmed for all the potential patent applicants. It’s all the more true since the domestic filings (made by Chinese companies) are in the majority. Without a reaction of foreign companies, we could fear a quick takeover of the Chinese competitors in the most innovative sector.

With an accessible procedure cost, the Chinese patent has to be more and more considered in a protection strategy. We must not forget India where a growth of the applications is similar.

The new European Patent Convention (EPC 2000) is the result of the diplomatic conference of the 9th November 2000 between the contracting states of the Convention.
In accordance with article 8 of this Act of revision of the EPC of the 29th November 2000, the new EPC will come into force at the latest on the 13th December 2007, that is to say two years after the ratification to the Act of the fifteenth contracting state.

The main objectives of the revision of the European Patent Convention are:

· The harmonization of the EPC dated 1973 with the new developments of the international law: Agreement TRIPS (1994) and Treaty on the Patents (2000).
· To make the later changes of the EPC easier by removing or by changing some provisions of the Convention towards the implementing regulations which is simply modifiable by the Board of Directors.
· The taking into account of the needs of the users: new procedures have been planned.
· The taking into account of the needs of the European Patent Office: due to the increase of the workload, the EPO demanded the setting up at the office level of the system BEST (Bringing Examination and Search Together).

No change has been brought to the patents right; the procedures of obtaining, opposition and appeal have not been changed.

The important changes to remember are described hereafter:

· The change of the article 52(4) into the article 53(c) enables not to consider anymore the methods of chirurgical or therapeutic treatment of the human or animal body and the diagnosis methods applied to the human or animal body as non likely to industrial application, but only like exceptions to the patentability.

· The removal of the article 54(4) EPC and the rule 23bis EPC change the state of the art taken into account for the novelty step.
At present, regarding the assessment of the inventive step, a prior European patent application published on or after the filing date of the application under examination is comprised in the state of the art only for the contracting states for which the designation fees have been paid. With the EPC 2000, these kinds of European patent applications will be opposable whatever which designation fees have been paid.

· The new article 54(5) EPC 2000 authorizes the protection of the second (or nth) therapeutic application.

· The article 87(1) EPC recognizes the right of priority for all the member countries of the WTO and no longer only for the signatory countries of the Convention of Paris.

· The change of the article 69 determining the scope of protection, which states in the EPC 2000 that “the extent of the protection shall be determined by the claims� and no longer “by the terms of the claims�. The protocol of interpretation of A.69 EPC 2000 specifies that: “due account shall be taken of any element which is equivalent to an element specified in the claims�. These changes contribute to harmonize the interpretation of the European patents by the national jurisdiction during infringement actions.

· The criteria to obtain a filing date are simplified by the new article 80 EPC 2000 and the rule 40 of the implementing regulations.
The applicant must only supply:
- A request of delivery of the European patent
- Informations about the applicant
- A description

* The claims are no longer necessary to obtain a filing date!!
However, the article 123(2) remains unchanged and limits therefore these new criteria.

This new article and the corresponding rule go much further by precising that the description and the drawings can be replaced with a reference to a previous filed application by precising:
- The filing date
- The filing number
- The Office with which it was filed.

* The applicant can even specify that the reference also replaces the claims.
The implementing regulations provide a two-month delay following the filing to supply an official copy of the reference and a translation in one of the three official languages if the reference application was not written in one of these languages.

· According to the new article 14 EPC 2000, the European patent applications will be allowed to be filed in any language, on condition that a translation is filed according to the implementing regulations.

· A new centralised procedure of limitation or revocation of a European patent, a patent amended following an opposition or limitation proceedings, is provided for by the new article 105 EPC, on condition that no opposition proceedings are in progress.

· The other new procedure set up according to the article 112 EPC 2000 allows the parties to file a petition for review of a decision of the Board of Appeal by the Enlarged Board of Appeal. However, this type of request can only be filed in the case of a fundamental procedural error or a breach that could have had an effect on the decision.

· The article 121 EPC 2000 is changed to allow the implementation of the request for further proceedings in case of non-respect of some time limits prescribed by the EPC in the proceedings for grant. The article 122 EPC 2000 is changed according to the new article 121 EPC.

· The article 134 EPC and the rule 153 EPC 2000 provide for provisions relating to the confidentiality obligation of the professional representatives and their right to refuse the disclosure before the EPO their communication with their client or any other person. These changes ensued from an American court decision during a litigation between Myers Squibb and Rhone Poulenc Rorer where the judge ordered the presentation of all the elements of the European patent applications file. No text existed then to support the European representative to refuse.

· The article 124 EPC 2000 is becoming more restrictive. The European Patent Office can oblige the applicant to inform them about the state of the art taken in consideration in the national or regional patent proceedings about an invention covered by the European patent application.

This reviewed text will apply to the patent applications filed after its coming into force, except if it is done differently.

For example:

· The article 54(5) EPC 2000 will be applicable to pending applications during the coming into force of the new text.

· The article 112(a) EPC 2000 will be applicable to the orders of the Board of Appeal rendered from the coming into force of the EPC 2000.

· The articles 121 and 122 EPC 2000 will be applicable to the pending applications.

See the new text of the EPC 2000 and its implementing regulations.

The London Agreement, adopted in October 2000 by the main contracting states of the EPC, has been approved by the French Parliament seven years later.

The ratification by France was one of the conditions for the implementation of the London Agreement.

This agreement is one of the means set up by the contracting states to reduce the translation fees. For the granting of a European patent, the claims must be translated in the two other official languages of the EPO. Moreover, in order for a European patent to come into effect in the contracting states, the owner must supply to each state a translation of the patent in the national language.

With the London Agreement, some contracting states of the EPC have given up, totally or partially, their translation requirement (the translation requirement of the claims in the three official languages of the EPO is maintained):

- the states which have a national language in common with one of the three official languages of the EPO have decided to remove the requirements regarding translation,

- the states which national language is not one of the three official languages of the EPO have the right to require a translation of the claims in the language of their choice and a translation of the specification in the official language of their choice (particularly English).

These contracting states, 13 in number, are to date:
Germany
France No
England requirement
Switzerland of translation
Liechtenstein
Luxemburg
Monaco

Croatia*
Iceland* Requirement of
Latvia* translation of
Netherlands* the claims
Slovenia*
Denmark*

* Countries requiring as well the English translation of the specification

The implementation of the London Agreement is planned for May 1st, 2008.

London agreement: link

The Supreme Court of the United States has, on the last 30th April, given a judgement of importance (KSR international v. Teleflex inc.) about the decision of the patentability.

The criteria of patentability stemmed from the American code are the novelty, the utility and the non obviousness. This last criterion is in the heart of the recent decision.

Historically, the notion of non obviousness has been quickly introduced in the American right to only grant a monopoly to the inventions proving a sufficient progress in comparison with the existing techniques. The non obviousness is the counterpart of the inventive step known in Europe.

This criterion, formalized by the article 35USC 103 of the code, implies that a patent cannot be obtained when the differences between the subject of the invention and the state of the art are such that this subject would have been obvious for an average technician of the considered domain (person skilled in the art).

Distinguishing the obvious inventions from the non obvious ones has been always… not obvious for the patent practitioner. It is particularly the case when the invention is an association of technical teachings known separately from a few documents of the prior art.

The American jurisprudence, followed by the Patent Office (USPTO), has developed an analytic method initiated with the judgement Graham v. J Deere in 1966 and has then created a test often named TSM to assess the obviousness or the non obviousness of the combination of the prior art. According to this practical, the invention is obvious only if the prior art teaches (Teach), suggests (Suggest) or motivates (Motivate) the combination of the teachings of the prior art.

The application of this test is simple but it proved to be not very selective as time goes by. It implies moreover a rather passive vision of the person skilled in the art.

This is how the Court of Appeal of the federal circuit had validated the patent US 6,237,565 exploited by Teleflex in spite of two prior patents which, associated, formed directly the subject of the claimed invention, with the ground that the combination of the teachings of this prior art was neither taught, nor suggested, nor motivated by the prior art.

The Supreme Court wants now to intensify the demand of the non obviousness.

If it confirms the validity of the application of the test TSM, it criticizes the current use of it which is too rigid and systematic.

The person skilled in the art comes out of it as a stronger person for this juridical concept comes back in the heart of the assessment of the non obviousness.

From a more political point of view, it is the opportunity for the American authorities to limit a bit the grants of patents after an explosion of the number of filings (from 99 000 in 1990 to 440 000 in 2006) to which the clemency of the USPTO had contributed.

To our mind the credibility of the American patent system is improved.

The affair Senseo is without a doubt one of the most significant ones of the judicial current affairs of patent rights. There has been a new development.

In September 1997, the multinational company Sara Lee filed a patent application then extended just about anywhere in the world with the obvious purpose to obtain a monopoly on the system of coffee machine well known under the mark Senseo and on the pod Senseo itself. This ambition is a challenge for at that time some very close packaging techniques of ground coffee packagings and machines adapted to these disposable packaging were already known.

Cleverly, the patent attorney of Sara Lee defends the patentability of a choice of shape and dimensions for the pod and for the receptacle of the machine that cooperates with it. This combination, the applicant of the patent says, ensures a better flow of the hot water. On the 11th July 2001 the European patent is delivered and claims the bag, the receptacle and their combination.

At the same time, on the commercial ground, Senseo met with a wide success and the competitors, tempted by the huge quantities of consumables at stake, didn’t take long to propose pods compatible with the system Senseo. Sara Lee has immediately reacted by bringing infringement proceedings by several national jurisdictions. This company obtained this way from the Court of Anvers a ban under penalty of the continuation of competitor schemes despite several oppositions pending by the European Patent Office (EPO) to contest the validity of the granted patent.

The European patent is maintained by the opposition division under a sufficiently wide form to continue to bother the competitors: by supplying bags compatible with the patented combination bag/receptacle, these coffee merchants make acts of infringement by supplying means contributing to the claimed subject matter.

It is after an appeal of the opponents that a Board of Appeal of the European Patent Office has just recently given a verdict… in favour of a pure and simple revocation of the patent!

These episodes underline the imperfections of the patent system in Europe and once again the collision between the proceedings by the EPO and the ones of the national jurisdictions generating slowness and/or lack of reliability of the acts of infringements.

We also have to wonder about the limits of the principle of infringement by contribution. In the case in point, the claimed bag seemed to be of an ordinary design but the patentee had cleverly related it to more defensible features about the machine. By claiming this association, Sara Lee had finally obtained what they wished: a monopoly, even indirect, on the Senseo bag. This is all the more disturbing since the reality of a technical cooperation between the bag and the receptacle of the machine is doubtful but the assertions of the applicant were enough to grant the European patent.

Sara Lee will thus be able to find consolation as their European patent, even questionable and now revoked, has disturbed their competitors during more than nine years. Although it is unsatisfactory on the juridical plane, it is far from being negligible commercially.