Section 7(2) of the Indian Patents Act requires that when an application is made “by virtue of an assignment of the right to apply for a patent for the invention”, then it is necessary to file “proof of the right to make the application”. The so-called “proof of right” is normally a “Form 1” signed by the applicant and the inventors. Alternatively, a certified/notarised copy of an assignment of rights in the invention in India from the inventors to the applicant can be filed in place of a “Form 1”.
Historically, the Indian Patent Office did not require “proof of right” to be filed if the applicant(s) for the priority application(s) and the applicant(s) for the subsequent convention filing were the same. This practice was based on an earlier opinion issued by the Controller General of Patents.
Given that most non-US priority applications are filed in the name of the applicant company and the subsequent convention application is also filed in the name of the same applicant company, it was not normally necessary to file “proof of right”. The main exception arose with applications claiming priority from one or more US patent applications filed in the name of the inventors, where the Indian Patent Office did require “proof of right” to be filed.
The Indian Intellectual Property Appellate Board (IPAB) has, however, recently overturned the earlier opinion issued by the Controller General of Patents. Thus, the IPAB indicated in NTT DOCOMO Inc vs The Contoller of Patents and Designs that “proof of right” must be filed for all applications where the applicants are not the inventors.
It remains to be seen how quickly Indian Patent Office practice will change in view of the IPAB decision. Nevertheless, it is now likely be necessary to file “proof of right” for the majority of Indian patent applications prior to grant. Thus, for pending Indian patent application where “proof of right” has not yet been filed, applicants should expect that it will be necessary to file “proof of right” before the expiry of the acceptance deadline. For future Indian patent applications, “proof of right” should be filed within six months of entry into the Indian national phase, if possible, though it should also be possible alternatively to comply with the requirement once substantive examination commences.
If the Indian Patent Office does not ask for a “proof of right” on pending applications where such evidence has not previously been filed, the application could be granted without the need to supply “proof of right” documentation. However, under those circumstances, third parties could potentially apply to the Indian Courts for revocation of the patent on the basis that “proof of right” was not filed during prosecution. Although it may be possible to defeat any such attacks by filing “proof of right” documentation during the revocation action, it may be more difficult to secure the necessary signatures at that late stage. We therefore recommend that if possible “proof of right” be filed on all pending Indian patent applications even in the absence of a Patent Office request for that material.
Accordingly, J A Kemp will review all pending Indian patent applications in our care to determine whether “proof of right” documentation needs to be filed. Your usual J A Kemp contact will be in touch if action is needed in this regard.
05 March 2014
12 March 2012
What is a patent? A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies. A patent does not, however, give a positive right to use an invention. There may be earlier patents for other inventions that an inventor may need to license to exploit his own invention.
04 April 2017
You have a new technical idea. When will you be ready to draft a patent specification? When will it be appropriate to file an initial application at the Patent Office? Are there any potential issues with filing an application early and making a follow-up application later? This Briefing sets out some of the factors to consider in addressing such questions.
12 March 2012
After your patent application has been filed at one (or more) of the many Patent Offices around the world, it will be processed by that Patent Office. This is known as the patent “prosecution” process. This Briefing provides an overview of what to expect. However there are many local differences to take into account. The law and practice that govern the details of the procedures followed by the Patent Office vary widely from country to country. The cost involved and the time taken to process applications also vary from country to country, and indeed from case to case.
12 March 2012
Which new ideas are worthy of a patent application? How should the applications be drafted and prosecuted? When should they be filed? Where in the world should they be filed? How long should applications and granted patents be maintained? A systematic answer to these questions is provided by a patent strategy. A patent strategy is part of an overall intellectual property (IP) strategy. It is usually the most important part of such a strategy for technology-based companies. The IP strategy should follow the company’s R&D strategy which in turn should follow its overall business strategy.
12 May 2017
When seeking patent protection, most companies start with a single national patent application but may then wish to seek protection in other countries. This briefing outlines points to consider in selecting the countries to cover, the international schemes available and the timing of the decisions to be taken. There are several advantages to filing a UK application first, even if you are not UK based. The UK Intellectual Property Office carries out searches quickly and cheaply; this can give you an indication of the patentability of your invention before you incur the costs of filing in other countries. UK applications must...
01 February 2017
In decision G 1/15, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim. The Enlarged Board's conclusions prevent so-called "poisonous divisional" attacks, as well as the possibility of "self-collision" with the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications...
01 February 2017
To what extent will an SPC for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question has been addressed by the EFTA court in Pharmaq v Intervet, and subsequently applied by the Norwegian Court of Appeal. This briefing provides an analysis of the case as well as our conclusions and recommendations for those seeking SPCs for biological products.
12 December 2013
In three judgements released on 12 December 2013 (C-493/12 Eli Lilly v HGS, C- 443/12 Actavis v Sanofi, C-484/12 Georgetown v Octrooicentrum), the Court of Justice of the European Union (CJ-EU) gave further guidance on the interpretation of Regulation (EC) No 469/2009 (the SPC Regulation). Their guidance concerns: when a medicinal product is "protected" by a basic patent, such that an SPC is available; whether or not it is possible to have multiple SPCs based on a single basic patent; the availability of SPCs for combination products; the allowability of SPCs where the Applicant was not responsible for the clinical trials behind the marketing...
02 April 2015
In G 3/14 the EPO Enlarged Board of Appeal has ruled on the extent to which amendments made in EPO Opposition (and Opposition Appeal) proceedings may be examined for clarity, conciseness and support (Article 84 EPC). They confirmed that compliance with Article 84 EPC may be examined only when, and to the extent that, the amendment introduces non-compliance with Article 84 EPC. In particular an amendment which introduces the feature of a dependent claim may not be examined for Article 84 where the feature introduced corresponds to the complete dependent claim or is a simple alternative in such a claim.
27 March 2015
The EPO operates a PCT service, PCT Direct, available to PCT applications which: name the European Patent Office as International Searching Authority; and claim priority from an earlier patent application which was searched by the EPO. If a new PCT application fulfils both of these criteria, the Applicant may file a “PCT Direct letter” providing informal comments with the application. The Search Examiner is obliged to consider those comments when preparing the International Search Report and the Written Opinion on patentability.
24 April 2015
In the 2013 decision T 1670/07-Shopping with mobile device/NOKIA, Technical Board of Appeal 3.5.01, described a “gallery” of fallacies: frequently advanced arguments that appear reasonable but are fundamentally flawed. In decisions T 1755/10-Software structure/TRILOGY of 6 November 2014 and T 1834/10-Image selection/EBAY of 25 February 2015 the Board has added another, which they refer to as “the software implementation fallacy”. This argument seeks to suggest that “modified software causes a modified behaviour of the computer and should for that very reason (eo ipso) be considered as a technical implementation”.
15 December 2014
Since the decision of the US Supreme Court in Alice Corp v CLS Bank  , there has been much commentary comparing its ratio decidendi to the case law and practice of the EPO. It is therefore interesting to compare a post-Alice opinion of the district Court of Delaware and a decision of the EPO Technical Board of Appeal on essentially the same patent. US Patent 6,055,513 was held by the district Court to be directed to non-patent eligible subject matter, whilst corresponding European Patent Application 1,062,610 was refused by the Board of Appeal.
21 November 2014
Earlier this month a Judgment was issued by the Court of Appeal which reiterated the UK Courts’ approach to the exclusion of an invention relating to computer programs (as such). The Court of Appeal rejected the Lantana application, upholding the Judgment issued by the Patents Court last year. The Lantana claim includes two computers and a data retrieval system which allows a user at a first, local computer to obtain a file from a second, remote computer. On request of the file, the local computer sends an email via the Internet to the remote computer, the email containing machine-readable instructions and...
28 October 2014
Rule 164 EPC is amended with effect from 1 November 2014 to allow a further search of previously unsearched subject matter in European regional phase applications (E-PCT applications). Under the new procedure, the EPO will routinely invite applicants to pay further search fees for any unsearched subject matter present in the claims on file at the start of examination.
03 September 2015
The UK Patents Act was amended on 1 October 2014 to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug can constitute patent infringement. This briefing contains a discussion of the amendments and of the situation before the future European Unitary Patent Court (UPC).
04 July 2014
Following the decision of the Supreme Court of the United States in Alice Corp. v. CLS Bank, the treatment of computer-implemented inventions in the United States will arguably become more similar to the treatment such inventions already receive in Europe. It will take time to see how the tests set out in the Alice decision are implemented by the lower Courts and the USPTO. However, below, we speculate as to parallels that might emerge between those tests and the current situation in Europe.
31 March 2014
The main change to the UK Patents Act introduced by the IP Bill is to enable the UK to bring the UPC into effect. That is the subject of a separate briefing, however, there are also some other more minor changes which we detail below. The first change below in particular has practical implications for patent proprietors.
31 March 2014
The Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants).
27 March 2017
The EPO introduced a revised accelerated prosecution procedure (PACE) on 1 January 2016. One key difference from the previous procedure is that it will now be possible to request PACE only once during the search procedure and only once during the examination procedure.
18 November 2013
Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances. However, in recent years, these provisions have only rarely, if ever, been used.
01 October 2013
Two recent decisions of an EPO Technical Board of Appeal recognise that recognition of human gestures, e.g. as a method of computer input, is technical. The Board overturned refusal of two European patent applications relating to the recognition of specific sequences of human gestures using a computer touch pad. In these refusals, the Examining Division had asserted that human gestures are inherently non-technical as a matter of policy and cannot therefore contribute to inventive step.
19 September 2013
In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the technical contribution provided by a patent is assessed.
31 May 2017
The software industry has been a major beneficiary of the R&D tax credit regime in the UK. Although more obviously suited to the manufacturing and pharmaceutical industries, the software industry can also benefit from UK Patent Box legislation. One aim of the Patent Box legislation is to provide an additional incentive to locate in the UK high-value jobs associated with the development and exploitation of patented technologies. To achieve this the Patent Box legislation allows companies to pay a lower rate of UK corporation tax for profit attributable to qualifying patented technology.
31 August 2016
The protection of software inventions in Europe and the United States has often been described in terms of a pendulum swinging between a liberal position, in which almost anything can be protected, and a restrictive position, in which it is much harder to obtain patents for inventions relating to or using software. While the United States has recently taken a decisive swing to the restrictive side, the position in Europe has been relatively stable for the best part of a decade.
13 October 2016
If the 31 month from priority/filing deadline for entry of a PCT application into the European regional phase has been missed, it is often still possible to enter the European regional phase.
26 November 2015
A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies.
24 September 2015
Third party patents can represent significant obstacles to achieving a commercial goal. The opposition procedure at the European Patent Office (EPO), if used successfully, can provide a cost-efficient mechanism for removing or limiting a troublesome patent. As a general rule, it is relatively cheap compared to national litigation and the centralised procedure means that revocation or limitation of a European patent in the opposition procedure applies in all of the validation states. However, EPO oppositions are often slow, in particular when the appeal stage is taken into account.
09 June 2017
Parameters are generally used in patent claims to define subject matter which cannot be expressed in terms of structural features. They are often relied upon for inventions in the chemical field, but can in fact be used in any technical area. Parameters can relate to features that can be measured directly, such as the density or melting point of a substance; measured indirectly, such as the tacticity of a polymer; or that can be calculated, such as the superficial velocity of a flow in a reactor. They can also be expressed in terms of relationships between such features.
30 June 2014
The issue of “double patenting” arises in the EPO when one applicant files two European patent applications with closely related claims and the same effective filing date. The issue often arises when the claims of a divisional application overlap with the claims of its parent application. Under such circumstances it is necessary to determine how much overlap between the claims of the divisional application and the claims of the parent application should be permitted. Recent developments in the case law mean that the EPO will generally allow substantial overlap between the claims.
13 July 2016
European Patent Office (EPO) opposition procedure comprises two parts: opposition division (first instance), and, if relevant, appeal. A typical procedure is set out on the attached flow chart. It is also possible to petition the Enlarged Board of Appeal for review of the appeal decision under certain very limited circumstances. There are some fixed time limits in the overall procedure, such as the deadline for filing an opposition and an appeal. However, there is also some flexibility in the procedure. The EPO announced in June 2016 that it aims to issue first instance decisions on “straightforward” oppositions within 15 months. ...
01 April 2017
The Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent. This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables of larger patented articles. The Decision makes it clear that the question of whether an activity is “making” is “one of fact and degree”. The Decision concludes that there are no fixed principles nor any single simple test to assess what constitutes...
20 October 2017
Registered forms of Intellectual Property are typically associated with a variety of deadlines, both before and after registration. Missing any of these may have catastrophic results for the registration. Many systems therefore have a restoration procedure that may mitigate these effects, subject to certain conditions. In a great number of systems the most important condition is that an appropriate level of care was taken to observe the original deadline, an assessment of so-called “due care”.
28 August 2013
The patentability of computer-implemented inventions in Europe and how they should be examined have long been controversial issues. Legislation appears at first sight to exclude computer programs from patentability, but in practice many patents are granted in this area because the inventions covered are deemed not to reside solely in a program for a computer as such. Recent developments in case law, particularly at the European Patent Office (EPO), suggest that a degree of stability and consistency is developing, which means that the extent to which a given invention might be vulnerable to exclusion can be predicted with increasing reliably.
28 August 2013
Article 53(c) EPC specifies various patentability exclusions, including “diagnostic methods practised on the human or animal body”. This exclusion was considered in opinion G1/04 of the Enlarged Board of Appeal. The Enlarged Board identified two requirements that must both be met for a claim to be excluded from patentability. Firstly, the claimed method must include all the steps necessary to reach a medical decision on diagnosis. Secondly, all the technical steps of the method must require the presence of the human or animal body. This two-part test has subsequently been developed in several Technical Boards of Appeal decisions.
16 August 2013
Article 53(c) EPC specifies a number of exceptions to patentability in the field of medicine, including “ methods for the treatment of the human or animal body by surgery ”. These exceptions to patentability were included in the EPC on socio-ethical and public health grounds to ensure that medical and veterinary practitioners remain free to take any action necessary to treat or diagnose illnesses.
28 January 2016
In 2015 the Boards of Appeal of the EPO continued to develop the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but again declined to define what is and is not technical. This article discusses some statistics from 2015 of the various Boards of Appeal that consider software inventions and some interesting or notable decisions.
07 March 2017
The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. For both the European patent office (EPO) and the UK Intellectual Property Office (UKIPO) requesting PPH results in acceleration of examination and does not guarantee allowance.
20 October 2017
The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. For both the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) requesting PPH results in acceleration of examination and does not guarantee allowance.
01 July 2017
The European Patent Office (EPO) continues to grant many patents relating to antibodies, and in doing so applies the same patentability criteria as to other inventions. However, some commentators have suggested that antibodies are regarded as a special case by the EPO when evaluating inventive step / obviousness. It is implied that the EPO sets a higher patentability threshold for inventions in this field as compared to, for example, small molecule therapeutics. This perception likely reflects no more than the crowded nature of the antibody field, which has matured rapidly in recent years. As a result, EPO Examiners are able to...
12 May 2016
The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent’s claim, so long as it covers the product (or process or service). A company may wish to adapt its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments.
12 May 2016
In order to benefit from the Patent Box, the beneficiary must be a qualifying company as defined in the legislation. We discuss here the requirements of a qualifying company.
12 May 2016
In order to benefit from the Patent Box, a company must hold or have an exclusive license to a qualifying IP right. Here we discuss the definition of a qualifying IP right.
12 May 2016
We discuss here issues relating to which income streams can qualify for the Patent Box. The Patent Box legislation defines what income streams count as relevant IP income. The calculation of relevant IP income is used in determining an amount deductable from the profits of the trade for the calculation of UK Corporation Tax liability. Determining the amount deductable from the profits of the trade will ultimately lead to the amount of UK Corporation Tax due being equivalent to paying a rate of 10% on the relevant IP income (following certain deductions as explained in our separate Briefing “Patent Box...
12 May 2016
A company must elect in to the Patent Box regime in order to take advantage of the reduction in payable UK Corporation Tax. For some companies there may be advantages in delaying entry into the Patent Box. This Briefing looks at this issue.
12 May 2016
We outline here the accounting steps which are necessary to calculate the Patent Box benefit. We also present a simplified example calculation which may help you to estimate the amount of saving in UK Corporation Tax you might expect to make if you were to elect in to the Patent Box regime under either the pre- or post- 1 July 2016 Patent Box rules.
03 May 2017
In two Decisions published on 27 April 2017, EPO Technical Board of Appeal 3.5.01 has given valuable guidance on the treatment of inventions that implement business methods and given rare positive verdicts on two related applications. In the process, the Board has introduced the "notional business person" whose hypothetical actions need to be considered alongside the venerable "person skilled in the [technical] art".
12 May 2017
Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting organisation (SSO) that it will grant licences on FRAND terms. Until this decision it was not clear exactly what ‘fair, reasonable and non-discriminatory’ meant nor the exact legal standing of the FRAND undertaking and while this decision cannot provide all...
25 July 2017
What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation  . The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law relating to SPCs and this is expected to continue. Some of the key decisions are discussed below.
26 July 2017
Experimental evidence can play a valuable role in patent litigation. It is not uncommon in patent validity proceedings for an expert will say to they would, when presented with a piece of prior art, have conducted a particular experiment in order to progress the research. Without then conducting the actual experiment that they said they would have done, it is impossible to know what the result of that experiment would have been. Knowing the result of that experiment is sometimes critical to a case, such as when the defendant argues the patent is invalid due to lack of novelty or...
01 July 2017
The planned European Union-wide patent court and related patent right will not launch in December as planned. The Unified Patent Court preparatory committee said June 7 that the delay was caused by several countries failing to agree to the protocol on UPC Provisional Application. The protocol allows parts of the UPC agreement, the controlling document for the court, to come into effect earlier.
20 October 2017
The efficacy of PPH varies from territory to territory. In some patent offices there is a history of examination being influenced by the granting of a patent by particular patent offices; PPH may work well for such patent offices. In other patent offices, requesting PPH only results in acceleration and does not guarantee allowance.
14 November 2017
In May 2017, we reported on two “CardinalCommerce” decisions1 by EPO Technical Board of Appeal 3.5.01 that introduced the concept of a “notional business person” into in the examination of mixed inventions (inventions including both technical and non-technical features). A new decision by the same Board ( T0630/11/Waterleaf ) provides some clarification of this approach, warning against over limiting what the notional business person can do and perhaps limiting the utility of the CardinalCommerce to applicants seeking to patent mixed inventions.
16 November 2017
The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found here , with a list of the amendments made compared to the current version available here . An overview of the changes is provided in our news item here .
The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found here , with a list of the amendments made compared to the current version available here .
14 December 2017
Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two for infringement and one for non-infringement – so it is instructive to consider what factors affect a finding of infringement. We review the relevant points of the three cases and draw some practical conclusions.
10 January 2018
The European Patent Office (EPO) uses the term “ disclaimer ” to refer to a negative feature in a claim of a patent application. Negative features are those which exclude certain subject matter from the scope of protection. While a positive feature in a claim may for instance take the form “ wherein the composition comprises X ”, a disclaimer would take the form “ wherein the composition does not comprise X ”.
17 January 2018
2017 was a year of change for the Boards of Appeal of the EPO: a new President 1 and a move out of the EPO’s oldest building in the centre of Munich to a suburb, Haar. There has been some recruitment, but overall it appears there are still many vacancies on various Boards. Overall the relevant Boards issued 10% more decisions than in 2016 and Board 3.5.01 in particular has significantly increased its output in the latter part of the year as it now has a chairman.
12 January 2017
In two judgments handed down on 13 January 2017 Mr Justice Arnold decided to send questions on the SPC Regulation to the CJEU for a preliminary ruling. In each case the question reflects the lack of clarity provided by earlier key CJEU decisions, Medeva 1 and Neurim 2 . Article 3(a) is the product “protected by a basic patent in force”.
09 February 2018
The EPO announced in January 2018 a number of changes to the rules and fee structure that come into force on 1 April 2018. The key changes are (a) discontinuation of the reduced search fee for most European regional phase applications, (b) expansion of the window in which the third year renewal fee can be paid, and (c) changes to fee structure, including an increased appeal fee for most corporate appellants. These changes are discussed in further detail below.