Category: Intellectual Property

Clive Neil Galley (Patent): IPO 21 Dec 2009

The Hearing Officer refused the application on the grounds that the application was not clear enough or complete enough to enable a person skilled in the art to perform the invention. The Hearing Officer also considered the claims to be unclear.

Citations:

[2009] UKIntelP o39309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457544

Georgetown University (For Spc/Gb 07/070, Spc/Gb 07/071, Spc/Gb 07/073, Spc/Gb 07/078, Spc/Gb 07/079 and Spc/Gb 07/080); Loyola University of Chicago (For Spc/Gb 07/069 Only); University of Rochester (For Spc/Gb 07/075 Only) (Patent): IPO 29 Dec 2009

IPO Eight applications for SPCs for single active ingredients in the vaccine field were filed. One application concerned the recombinant L1 protein of Human Papillomavirus (HPV) strain HPV6; one application concerned the recombinant L1 protein of Human Papillomavirus strain HPV11; two applications concerned the recombinant L1 protein of Human Papillomavirus strain HPV16 and four applications concerned the recombinant L1 protein of Human Papillomavirus strain HPV18. Although in the name of three applicants, these applications all currently relate to a single licensee.
Two marketing authorisations were filed in support of these eight applications, Gardasil (RTM), which comprises the recombinant L1 proteins of HPV6, HPV11, HPV16 and HPV18, and Cervarix (RTM), which comprises the recombinant L1 proteins of HPV16 and HPV18.
The Hearing Officer considered the relevant ECJ and UK case law and took account of the alternative interpretation of Article 3(b) put forward by the applicant based on materials such as, the particular nature of vaccines; decisions of the courts and practice of national intellectual property offices in other EU and EFTA jurisdictions; previous practice at the UK Office; other official language versions of the Regulation; the explanatory memorandum of the Regulation; ECJ decision C-392/97 (Farmitalia Carlo Erba Srl’s SPC application). The eight SPC applications were found not to meet the requirement under Article 3(b), because the marketing authorisations filed in support of each of these applications comprises a further one or three active ingredients in addition to the active ingredient listed in the product definition of that SPC application. Thus, in each case, a valid authorisation has not been supplied to place the product (for which an SPC has been applied) on the market as a medicinal product.
Since in accordance with Article 10(3) an opportunity to correct the irregularities with these applications has been given, they were rejected under Article 10(4).

Citations:

[2009] UKIntelP o40109

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457547

Nokia Corporation, Richard Seward, Michael Maguire, Jeremy Hewitson, Martin Higham and Simon Hogg (Patent): IPO 2 Nov 2009

IPO An uncontested application was filed by Nokia Corporation. As a result, it was found that Michael Maguire, Jeremy Hewitson, Martin Higham and Simon Hogg should be mentioned as joint inventors in the published patent application and granted patent for the invention along with the currently named inventor, Richard Seward, and directed that an addendum slip mentioning them as joint inventors be prepared for the published patent application and granted patent for the invention.

Citations:

[2009] UKIntelP o34409, GB 2408428

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457532

Halliburton Energy Services, Inc (Patent): IPO 25 Nov 2009

The application relates to a method for designing a roller cone drill bit comprising locating bearings at minimal moment centres along axes of rotation of various cone assemblies.
The Hearing Officer applied the Aerotel/Macrossan test and decided that the contribution made by the invention fell solely within excluded matter. He also considered the decision in Halliburton Energy Services Inc. v Smith International (North Sea) Ltd. and concluded that the claims could be saved by the addition of a suitable manufacturing step. The application was remitted to the examiner on the condition that the applicant files new claims. If the applicant does not do so within 2 months from the date of this decision the application will be refused as being a method for performing a mental act or a mathematical method as such.

Citations:

[2009] UKIntelP o37209

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457522

Jon Teale and Lee Berman (Patent): IPO 15 Oct 2009

As a result of an uncontested reference and application filed under section 37 and 13(3) and rule 10(2) by Jon Teale, it was found that he should be mentioned as sole patent proprietor and sole inventor in respect of patent number GB GB2426448. It was directed that the patents register be updated and an addendum slip be prepared to reflect this finding. The decision also serves as a certificate, in accordance with section 13(3) to the effect that Lee Berman should not have been mentioned as an inventor in the published patent application and granted patent for the invention.

Citations:

[2009] UKIntelP o32609

Links:

Bailii

Intellectual Property

Updated: 21 October 2022; Ref: scu.457499

Roke Manor Research Limited (Patent): IPO 18 Sep 2009

IPO The invention relates to a method of searching for user-specified strings of characters, or keywords in an input data stream using a finite state machine based on an Aho-Corasick algorithm. User-specified keywords are used to construct the state machine in the form of a ‘tree’ structure having branches representing each of the user’s keywords into which the input data stream is then fed. The machine providing an output each time a match is detected between any of the specified keywords and the input data.
In prior-art systems, problems arise when the user adds to, deletes or changes the keywords in some other way which requires the state machine to be rebuilt or recompiled. This can take a considerable amount of time and processing power to achieve particularly, as in the prior-art, where the state machine is said to be built-up in a ‘breadth first’ manner when the addition of new keywords requires all of the state transitions to be updated. For large keyword sets the computational cost of updating the entire structure is often excessive, requiring significant buffering of data or delays in processing the input data stream which may result in the loss of data, and may even prevent the structure from being updated whilst online.
The application provides a new method of constructing an Aho-Corasick state machine wherein the tree structure is built-up in a ‘depth first’ manner, a branch at a time corresponding to any new keywords added by the user and requires only those states or nodes associated with that branch to updated. This allegedly requires no buffering or loss of data and enables real-time online processing of the input data stream.
The hearing officer considered the four-step test in Aerotel/Macrossan in the light of the Symbian judgment, and found the contribution to relate to computer program for transferring and converting data between various schema or formats. The Hearing Officer could find no technical contribution and so refused the application under Section 18(3).

Citations:

[2009] UKIntelP o28509

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457475

Orkli (UK) Limited (Patent): IPO 30 Sep 2009

ICO This decision concerned whether the patent in suit should be restored following a failure to pay the renewal fee. In December 2000 and January 2001respectively two patent applications were filed for the same invention – a British (GB) application and a European (EP) application, the latter designating amongst other countries, GB and claiming priority from the British application. In November 2004 it became apparent that the British application would be accepted, so in order to remove a ‘double patenting’ situation (s.2(3) of the Act) the applicant’s representatives (‘B’) sent a letter to the European Patent Office (EPO) requesting that the designation of GB be removed from the EP application. This was B’s standard practice in these circumstances and their records were annotated accordingly. Unfortunately it transpired that these instructions were never carried out at the EPO for reasons unknown and this was only discovered by B after the final date by which the application in suit could be restored and by which time the GB patent was under s.73 (2) revocation action for duplicating the by now granted EP (UK).
The evidence showed and B admitted that through their intended policy of removing the GB designation from the EP, it was never their intention to pay the renewal fee on the application in suit. However, B argued that the policy to remove the GB designation from the EP was their decision and not one the applicant was aware of. B argued that s.28 (3) requires the comptroller to be satisfied that it is the failure of the proprietor of the patent to pay the renewal fee on time which is unintentional. B produced evidence to show that the proprietor (the applicant for restoration) was under the misunderstanding that he could have both the EP (UK) and the GB patent and had given instructions in good time to B to renew both of these patents. This B argued showed the proprietor’s intention was indeed to renew inter alia the application in suit and as it is the proprietor’s intentions and not those of B that should count in determining the restoration application.
The HO agreed with this argument and found that the evidence proved the applicant’s failure was indeed unintentional. As such he allowed the application for restoration.

Judges:

Mr G J Rose’Meyer

Citations:

[2009] UKIntelP o30209, EP (UK) 1215473

Links:

Bailii

Statutes:

Patents Act 1977 28(3)

Intellectual Property

Updated: 21 October 2022; Ref: scu.457472

Ian A Ferguson (Patent): IPO 7 Sep 2009

IPO The applicant requested to further extend the compliance period by two months under rule 108(3) to enable a divisional application to be filed within the period prescribed by rule 19. In support of the request it was argued that the applicant had intended to file a divisional application within the prescribed period but had been prevented from doing so by serious financial difficulties. He had only been in a position to file such an application when his financial situation improved. The Office took the preliminary view that the further extension was not allowable and offered a hearing. The applicant requested a decision on the papers and later filed further arguments and evidence in support of his case.
The Hearing Officer found that, in the circumstances of the case, it was appropriate to apply the well established and judicially approved (in Luk Lamellan und Kupplungsbau GmbH’s Application [1997] RPC 104) criteria that apply to the exercise of discretion to allow an extension to the period for filing a divisional application under rule 108(1). She therefore considered whether the circumstances were exceptional and the applicant had been properly diligent. On the basis of the further evidence filed by the applicant, which was not available to the Office when it reached its preliminary decision, the Hearing Office found that Mr Ferguson was suffering considerable financial difficulties which prevented him from filing a divisional application within the prescribed period. She was therefore satisfied that Mr Ferguson’s financial situation was exceptional. She also found that Mr Ferguson had made reasonable attempts to secure investment to allow him to pay his patent costs and that, on balance, he had intended to obtain protection for the second invention disclosed in the application and had been properly diligent in pursuing this intention.
The request for a further extension was therefore allowed.

Citations:

[2009] UKIntelP o27209

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457458

Irwin Industrial Tool Company (Patent): IPO 1 Sep 2009

IPO The applicant replied 2 days late to an examination report, and in the late reply requested the standard 2 month as-of-right extension to the reply period. The reply enclosed amendments which, in response to a plurality objection, removed two independent claims. Within the extended reply period, the application was granted. The applicant subsequently filed a further application claiming divisional status.
The applicant argued that the Office should have confirmed the extension request, should not have granted the application within the extended reply period, and should have regarded the applicant’s various actions as amounting to foreshadowing of a divisional application. Alternatively, they argued that there was doubt about the applicant’s intentions which the Office should have clarified before grant. Furthermore, they argued that the word ‘warning’ in bold was missing from a relevant warning clause in the examination report, and so the comptroller should rescind grant of the parent application under rule 107 on the basis of one or more of these errors.
The Hearing Officer held that the applicant’s actions did not amount to foreshadowing of a divisional application, and that there was no error, default or omission in the way Office had processed the reply to the examination report. He held that the missing word ‘warning’ in bold was an omission but, applying Howmet, refused to exercise discretion under rule 107 to rescind grant, finding on the evidence that inclusion of the word would have made no material difference to the applicant’s actions.
An alternative argument that section 117 could be used to correct the date of grant to the end of the extended reply period was also rejected.

Citations:

[2009] UKIntelP o24709

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457461

Loadhog Limited v Polymer Logistics Bv (Patent): IPO 8 Sep 2009

IPO This preliminary decision concerns a request to strike out part(s) of the claimant’s statement of case. In the part(s) of the statement in question, the claimant asserted that the defendant had introduced one or more features to the claims of the patent only after the claimant’s own patent application had been published and the defendant had become aware of the claimant’s corresponding product.
However, the amendments had been made prior to grant and in any event, they appeared to narrow the scope of the claims. Even if the claims had been deliberately narrowed in the direction of the claimant’s product, that did not give rise to a cause for revocation under section 72. Consequently the Hearing Officer struck out the parts of the statement in question.

Citations:

[2009] UKIntelP o27409

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457463

Matthew Emmerson Allen (Patent): IPO 25 Sep 2009

IPO The application relates to a road safety arrangement that selects vehicles by sensing pre-determined vehicle behavior and communicating to such vehicles the requirement to proceed to a vehicle occupant testing system. The invention was found to be a collocation of the selection (sensing/communication) system and the testing system. Applying the Windsurfing/Pozzoli test separately to these two concepts the claims were found to lack an inventive step. The application was remitted to the examiner on the condition that the applicant files new claims. If the applicant does not do so within 2 months from the date of this decision the application will be refused.

Citations:

[2009] UKIntelP o29709

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457464

Colin R Hart, Paul J Joynt, Stork Townsend Inc Brent M Veldkamp, Jarrod A Grim and Robert T Seaberg (Patent): IPO 18 Aug 2009

IPO Colin R Hart and Paul J Joynt both filed uncontested applications under rule 10(2) of the Patents Rules 2007 to the effect that they should also have been named as joint inventors in the granted patent. The applications were consolidated. The comptroller found that Colin R Hart and Paul J Joynt should be mentioned as joint inventors along with Brent M Veldkamp, Jarrod A Grim and Robert T Seaberg in the granted EP (UK) patent and directed, in accordance with rule 10(1), that an addendum slip mentioning them as joint inventors be prepared for the granted patent for the invention.

Citations:

[2009] UKIntelP o24309

Links:

Bailii

Jurisdiction:

England and Wales

Intellectual Property

Updated: 21 October 2022; Ref: scu.457435