2020年3月5日 星期四

英國繼脫歐後接續退出UPC -- UK will not be part of the UPC

媒體原文:The UK will not be part of the UPC, government confirms to IAM

首相的媒體發言人在電子郵件中表示: "I can confirm that the UK will not be seeking involvement in the UP/UPC system. Participating in a court that applies EU law and bound by the CJEU is inconsistent with our aims of becoming an independent self-governing nation."


發言人說,他可以確認英國不會尋求參與UP / UPC(Unitary Patent/Unified Patent Court)系統。參與適用歐盟法律並受CJEU(Court of Justice of the European Union)約束的法院與我們成為一個獨立的自治國家目標不一致。

2019年12月24日 星期二

德國高等法院民事庭要求德國專利法院要參考EPO與其他EPC會員國的專利相關決定 -- Germany Patent Court Required to Consider EPO decisions

原文: Patent court required to consider EPO decisions

德國高等法院民事裁定在相似的爭點上(包含專利發明的新穎性及進步性),德國聯邦專利法院應參考EPO的專利決定與其他EPC會員國的專利相關決定。在此之前,德國法院皆不太願意去考慮由外國法庭所做出的決定。



Patent court required to consider EPO decisions

July 19 2010

Facts
Decision
Comment


The Supreme Court in Civil Matters has ruled that the Federal Patent Court is required to consider European Patent Office (EPO) decisions and decisions rendered in other member countries of the European Patent Convention if they pertain to similar issues, including whether an invention is novel and inventive. Hitherto, the German courts have appeared reluctant to consider decisions rendered by foreign courts.

Facts

The respondent was the registered owner of a utility model. The applicant held that the utility model was invalid and filed for a nullity suit at the Federal Patent Court. In its decision the court invalidated the utility model on the basis of a lack of inventiveness. The utility model was invalidated despite the fact that a parallel European patent, on which the utility model had been based, had not only been granted, but also upheld by the EPO upon opposition.

The respondent argued in his appeal to the Supreme Court that the Federal Patent Court had violated his constitutional right to be heard. He argued that the court had not considered the EPO decision and that the grounds of the Federal Patent Court's decision were incomplete since they lacked any reference to the EPO decision.

Decision

Although the Supreme Court did not ultimately overrule the Federal Patent Court, its decision contains some important findings regarding the consideration of decisions rendered by the EPO or by foreign courts.

The Supreme Court held that the lack of reference to the EPO decision in the grounds of the decision did not invalidate the decision. It stated that a decision is deemed to lack the necessary grounds only if an "independent means of attack or defence" is omitted (ie, an argument that would in itself establish, abolish, alter or negate a right). For this reason, the issue of whether an invention is novel and inventive must be addressed in a decision. However, the court explained that not every aspect considered by the court must be expressly mentioned in the grounds.

The court explained that the differing EPO decision did not constitute such an "independent means of defence", as it was merely an argument upon which the respondent based its claim that the invention was inventive. The court also found that the lack of reference to the EPO decision in the judgment did not violate the respondent's constitutional right to be heard by the court. The court stated that the courts are required to hear the parties' factual and legal allegations in order to consider whether they are relevant, and cannot base any decision on factors on which the parties did not have a chance to comment.

The court stated that it can be assumed in general that a court has considered the statements of the parties despite the fact that courts are not required to address every aspect in the grounds of the decision. The line is drawn in this respect where a court fails to address the main argument of a party in a matter that is of central importance to the case. In such cases it would be likely that the party's statement had not been given due consideration.

The court found that the Federal Patent Court was not required to address the EPO decision since the respondent had failed to submit a copy of the decision and to elucidate the grounds on which the decision had been based. Rather, the respondent had merely informed the court that the patent in question had been upheld by the EPO without further explanation.

Nevertheless, the court stressed the need to consider the grounds of previous EPO decisions when deciding on the validity of utility models or patents. The court stressed that although the EPO is not bound to decisions made by the national patent courts and the national courts are not bound by EPO decisions, it is in the interests of the harmonization of the respective patent regimes for the courts to consider decisions made in other jurisdictions.

In earlier cases the Supreme Court emphasized the importance of EPO decisions and held that they would need to be considered as expert opinions of considerable weight.(1) The importance of expert opinions has generally decreased in light of a recent Supreme Court ruling which held that the question of whether the state of the art has rendered an invention obvious is a question of law rather than of fact. However, the Supreme Court has now stressed the importance of EPO decisions in cases before the German courts, reasoning that such decisions address questions of law that are similar or identical.

Thus, in order to avoid divergent court decisions, to increase the predictability of legal decisions and to harmonize the jurisdiction in patent matters, it is necessary to consider decisions rendered by the EPO as well as by national patent courts in other member states. The court pointed out that divergent decisions may result if different documents regarding the state of the art are submitted in different proceedings, if such documents are considered differently or the rules on interpretation are applied in a different way.

Ultimately, the Supreme Court did not overrule the Federal Patent Court. While the Federal Patent Court did not address the EPO decision in its judgment, the Supreme Court did not attribute this failure to the court. Rather, it emphasized that the respondent had failed to explain the relevance of the EPO decision. Thus, the Federal Patent Court was not required to address the EPO decision.

Comment

This decision is remarkable. The Supreme Court could have limited itself to ruling that, in the case before it, the Federal Patent Court should have considered the EPO decision. Instead, the Supreme Court established as a rule that courts must consider EPO decisions. Furthermore, the court also held that the same would apply to decisions issued by the courts of other European Patent Convention member states.

Unfortunately, the effect of the decision is somewhat mitigated by the Supreme Court's holding that, although the courts are required to consider EPO decisions and those rendered in other European Patent Convention member states, the deviation of a national court from such decisions does not constitute grounds to appeal to the Supreme Court. From the perspective of harmonization, such a ruling might have been desirable.

EPO 拒絕以AI發明家作為專利申請人 -- EPO rejects ‘AI inventor’ patent applications

新聞報導原文: EPO rejects ‘AI inventor’ patent applications

https://www.worldipreview.com/news/epo-rejects-ai-inventor-patent-applications-19057

EPO 新聞稿 EPO refuses DABUS patent applications designating a machine inventor

https://www.epo.org/news-issues/news/2019/20191220.html

EPO 拒絕以Dabus(AI 程式)做為發明人的EP 18 275 163 and EP 18 275 174專利申請案。

MIT Technology Review  Can an AI be an inventor? Not yet. 有比較完整說明與分析。

2019年10月1日 星期二

即將發生變革的美國專利法制 -- Ongoing Change to U.S. Patent Act of Eligibility And Injunction




參議院司法委員會智慧財產權小組的委員,已經草擬了修正101條專利適格性禁制令改革相關法案。我認為這應該是未來數年美國美國國會對專利法自AIA修整以後最大的異動。

這兩草案都已將經過一輪的聽證程序。國會的修正草案到正式成為法律條文的執行,仍有一段時間,實際在法院形成判例造成深遠的影響,又是數年以後的事了,但是在聽證會上各方利益者的攻防,仍是相當精彩。

對於整個專利產業只有片段工作經驗的人,檢視聽證會的各方的發言,可以看到整個專利產業的相關人員對於法條應用結果的不同面向,也是知識上不錯的增長。


2018年7月4日 星期三

IP5 協助增進ISA檢索報告品質 -- PCT Collaborative Search and Examination Pilot Project Involves IP5


原文: The ‘Collaborative Search and Examination’ Enterprising or Overrated?
WIPO 原始文件,簡體中文版

Credit:  Arvind Sankar  Intepat

就經手過的案件經驗,檢視ISA 檢索報告,其實並不保證已經檢索過世界上多數的專利文件。檢索報告中先前技術所列出文獻,多是ISA國家的專利文件。

在IP5中,ISA檢索報告只列出國家內專利文件的以日本/韓國/中國的檢索報告最為明顯。美國雖然只列出自家的專利文件,但是因為整體專利前案幾乎是世界薈萃,讓先前技術的檢索只有檢索自家國內的專利文獻的疑慮稍有減輕疑慮。

經驗中在五邊局所出具的檢索報告只有歐洲專利局最具參考性,常見US專利案件,偶爾出現EP/WO的專利文件與非專利文獻。

所以這個計畫試辦選定申請人只要指定IP5的做為ISA,其所出具的檢索報告,會增加其他IP5的檢索人員的同儕檢視的作業流程,增進檢索報告的品質。

不過個人認為,品質的改進這也只是可能而已啦。畢竟營利機構做任何事情都是要成本的,從WIPO文件來看,這似乎沒有經費補助要IP5對指定ISA的檢索報告同儕檢視,只是寄望在未來進入國家階段不必真的再進行檢索。

到底成效會如何,就讓我們繼續看下去。