protecting your intellectual property: cost-saving techniques, legal updates & best practices...

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Protecting Your Intellectual Property Cost Saving Techniques, Legal Updates & Best Practices

for Obtaining and Managing Patents Worldwide

March 1, 2017

Knobbe Martens

Irvine, CA

© 2017 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

Importance of Foreign Associates

Important to have trusted partners in foreign countries

who can provide assistance

– Review specification and claims

– Assist with best practices for local jurisdictions

(e.g., deferral of costs, divisional strategy,

assignments, etc.)


Close relations between US/foreign practices

– Reduce miscommunications

– Matching of competence in IP and technology

– Exchange of ideas

Reduce divisional filings

Proactive prosecution

Value for Money


Transparency

Predictability of fees

Front office approach

Direct contacts to the

person managing a case

Risk management –

reservations when

necessary

Predictability of results

Bad News

Appeal necessary

Missed convention

priorities

Patent eligibility refusals

Close partners split –

forced choice

©2012 Knobbe Martens, Olson & Bear, LLP all rights reserved. ©2017 Knobbe, Martens, Olson & Bear, LLP – All Rights Reserved. 5

Agenda

• GLOBAL UPDATES

• BEST PRACTICES: COST-SAVING TECHNIQUES

• BEST PRACTICES: BEST DRAFTING & PROSECUTION PRACTICES

Speakers • Aki Ryuka, Ryuka IP, Japan

• Stephen Yang, Chofn IP, China

• Guido Quiram, Michalski Hüttermann, Germany

• Gavin Manning, Oyen Wiggs, Canada

• Vlad Teplitskiy and Dan Altman, Knobbe, USA

For copies of the Akihiro Ryuka’s slides (our Japanese representative from Ryuka IP), please

contact [email protected] directly.

Thank you.

www.ryuka.com 6

mailto:[email protected]

7

Current Situation

• Difficult to collect evidence

• Damages not high enough to create deterrence

• When infringement is found by court, but

• Evidence in possession of the alleged infringer, e.g. accounting books and/or other information

• Court can ask the defendant to produce evidence

• Defendant not cooperative

– damages determined with reference to plaintiff’s claim and evidence

• A good strategy to claim higher?

8

Daft 4th Amendment - Evidence Collection by Courts

Daft 4th Amendment - Punitive Damages Awarded by Court

• Introduction of the concept of willful infringement

• Up to 3 times of that of non-willful infringement – Patentee’s loss

– Infringer’s gain

– Multiples of royalties

• Up to 5 million (US$769,000) RMB in the case of statutory damages • Current: limited to 1million RMB

9

Joint Infringement

• Introduction of the concept of joint infringement in the 4th amendment

• Joint infringement:

– knowingly provide to infringer, raw materials, intermediate materials, parts or equipments specially used to exploit a patent

– induces another party to conduct patent infringing acts

– an internet service provider knows or should have known or is notified that its user infringes or passes off a patent using its internet service, but does not take necessary measures to curb it

10

11

Design Patent

• Partial design currently not allowed

• Graphic User Interface (GUI) can be protected by design patent

– But only together with the complete product

– protection of GUI, independent of the product, currently not possible

• 4th amendment of the patent law to allow partial design • 4th amendment of the patent law to extend design patent term

to 15 years

Business Methods

12

Guidelines for Patent Examination, Part II, Chapter 1, Section 4.2, effective as of April 1, 2017

• If a claim related to business model has

• features of business rules and methods; and • technical features

• Such a claim shall not be excluded from patentability under

Article 25.1(2) • Not rules & methods for mental activities

• Practice tip:

• include “technical features” in a claim related to business method

• claims need to have technical improvement

Computer Program Related Claims

13

• Part II, Chapter 9, Sections 2, effective as of April 1, 2017

• “Computer readable medium + computer program” format will be allowed • A computer readable medium, with computer program/instruction

stored therein, wherein the program/instruction performs the following steps when executed by a processor…

• Computer program related claims will be allowed to have both hardware features and software features. • A communication system comprises a memory and a processor

configured to execute the instructions stored in the memory, wherein said instructions comprise ...

• Becomes same as the US practice

Chemical Inventions – Supplement Data

• Part II, Chapter 10, Section 3.5, effective as of April 1, 2017

• Supplemented experimental data after filing data – allowed

– cannot be used to fulfil sufficiency requirement

– can be used to prove technical effect and thus support inventive step

• Technical effects must be present in/obtainable from the original disclosure

• Practice tips: – Include as many technical effects as possible in the original disclosure

14

M I C H A L S K I H Ü T T E R M A N N

P A T E N T A T T O R N E Y S

A new (Pharma) Patent Troll in the EP System



Art 56 EPC: “If the state of the art also includes documents within the

meaning of Art 54 (3) EPC, these documents shall not be considered in

deciding whether there has been an inventive step”

Art 54 (3) EPC documents are pre-filed, post-published EP applications

(“published on or after that date”)

Applicant A

files International

Application A

International Application A

is published (morning hours)

Troll downloads application A,

copy-pastes it, adds trivial

novelty features and files 2nd gen.

EP application B the same day

18 months

Patent A granted

(novel & inventive)

2nd gen. EP application B

automatically novel and inventive

(for EP, application A does

not count for inventiveness)



Case Study

- WO 2013/016155 with pending EP regional phase assigned to

ChemoCentryx, Mountain View, published on 31 January 2013

- Title and claims: „Polymorphic forms of the sodium salt of 4-tert-

butyl-n-[4-chloro-2-(1-oxy-pyridine-4-carbonyl)-phenyl]-

benzenesulfonamide“

- Discloses tablets, vials, etc., but no packaging unit

- EP 2740458 B1 of troll with (latest) priority date 31 January 2013

and granted claim 1:

• A packaging comprising a multitude of at least 2 administration units

comprising polymorphic trihydrated, solvated or desolvated form of

sodium salt of 4-tert-butyl-N-[4-chloro-2-(1-oxy-pyridine-4-carbonyl)-

phenyl]-benzenesulfonamide, or …

- Incorporates WO 2013/016156 (and 15 APIs of further WOs)



„Directed“ against Pfizer, Roche, Novartis, Merck etc.

The pipeline:



Light at the end of the tunnel



Remedies

- Art 54 (3) EPC could be amended to “state of the art shall …

comprise everything made available to the public … before or on

the date of filing of the European patent application” - unlikely

- Rule 64 PCT has a similar regulation (“prior to the filing date of the

international application”)

- WIPO could publish in the evening hours instead of morning hours

- EP opposition unlikely to be successful (illegitimate ownership or

“bad faith” is not a ground for opposition in EP)

- Entitlement can be clarified on national basis (action for vindication)



Further Remedies and other Jurisdictions

- Add omnibus clauses covering trivial 2nd generation embodiments to

the application (may end up in a „cat-and-mouse game“ with troll)

- Publish application one day prior to WIPO, e.g. on internet platform

or in a publicly accessible room, and care for proper documentation

- In US, troll approach does not work: Under § 102 (a) (2) post AIA,

pre-filed, post-published patent applications qualify as fully

applicable prior art, even for questions of inventive step

- In DE, troll approach would work: Under § 3 (2) PatG pre-filed,

post-published (…) applications only count for novelty

- So, is troll‘s behavior illegitimate or simply exploiting possibilities law

provides?

patentable.com

22 Protecting your Intellectual Property

Canada is a Good Place to File Patent Applications

patentable.com


Canadian trade with the United States

is Huge – Integrated Market • >$2 billion a day in goods and

services

• NAFTA Member

• Relatively large economy

Among the least expensive countries

to file and prosecute patent

applications

Sometimes Canada is one of the only

places you can file: • 12 month grace period

• 42 months for PCT national phase

entry

Canadian prosecution can be

deferred and is often smooth

patentable.com


RECENT DEVELOPMENTS

CIPO is relaxing its position regarding

patentability of computer-based

inventions.

• If invention can be characterized

as addressing a “computer

problem” vs. merely doing

business using a computer

Methods for diagnostic medical

testing are still facing serious obstacles

Note: Methods of medical treatment

are NOT patentable in Canada (this is

not new)

26 ©2017 Knobbe, Martens, Olson & Bear, LLP – All Rights Reserved.

Subject Matter Eligible For Patenting

• Section 101 – Broadly defines what is patentable

– “Whoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new

and useful improvement thereof, may obtain a patent

therefor….”

• U.S. Supreme Court – Some subject matter is not patentable under

section 101

– Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012): Natural Laws

– Association for Molecular Pathology v. Myriad Genetics, Inc. (2013): Natural Phenomena

– Alice Corporation Pty. Ltd. v. CLS Bank International (2014): Abstract Ideas (see also Bilski (2010))


What’s the Law?

• Test:

1. Is the claim directed to a judicial exception (Natural Law,

Product of Nature or Abstract Idea)?

2. Is there something more to transform the judicial exception

into patentable subject matter?

• We don’t really know the precise boundaries.


Natural Laws: Mayo v. Prometheus

• Prometheus held that a correlation between a marker in the body and a specific medical condition is a natural law

• Most medical diagnostic tests incorporate such a natural law


All Medical Diagnostic Claims Patent-Ineligible?

• No! Many claims recite “significantly more”

– “Unconventional” steps in the assay itself

– Use of “unconventional” equipment

• But, many diagnostic methods do not involve “unconventional” steps or equipment

• Alternative strategy: omit diagnosis from claim, but remainder of claim must be novel and nonobvious


Natural Products: AMP v. Myriad Genetics

• Supreme Court held isolated DNA was not significantly different from a “product of nature”

• cDNA was held to be patent-eligible

– Man-made counterpart to mRNA

– Same genetic information, but chemical structure has minor difference


USPTO Implementation

• Reciting “isolated” not sufficient to make patent-eligible

• But, any products not actually found in nature are patent-eligible


Abstract Ideas

Section 101 – Alice


What’s the Law?

• Supreme Court did not define Abstract Idea

– Alice: “we need not labor to delimit the precise

contours of the ‘abstract ideas’ category in this

case”

– Compare claims to those already found to be

directed to an abstract idea

– Fundamental economic and conventional business

practices are likely abstract ideas even if

performed on a computer

• What are the precise boundaries?

– Courts and Patent Examiners apply section 101

inconsistently


Strategies for Patent Eligibility

• Focus the claims and the specification on technical improvements to computer technology or another field of technology

– Federal Circuit decisions DDR Holdings, Enfish, Bascom, and McRO found claims to be eligible

• Analogize the claims to eligible claims in the Patent Office Examples

– PTO Guidelines

• Avoid Technology Center (TC) 3600, which examines “business method” cases

– Amend Title, Abstract, Field of Invention and Claim Preambles to present technical aspect of invention

– If the application is in TC 3600, always interview (may require amending the claims)


Conclusion

• Patent-eligibility in US has gone from very broad to rather constrained in less than four years

• For most inventions, there is a way to claim

– Requires careful claim drafting

– Critical to have support for back-up positions in specification

– Applications without support for back-up positions may have no way forward

• Law evolving—these are still early days.


QUESTIONS?


BEST PRACTICES: COST-SAVING TECHNIQUES



Thank you.

www.ryuka.com 38


39

PCT National Phase Entry

• 30 months from the earliest priority date

• 2 months extension available – no action needed by the end of 30 months

– extra fees required - please decide early

• Translation must be filed upon national phase entry – Prepare translation early to avoid rush fee

• Extra claim fees – calculated on the basis of the WO publication

– reduce no. of claims at national phase entry will NOT reduce cost

– include a small number of claims upon filing

40

Voluntary Amendment

• Only two chances of filing voluntary amendment – at the time of request for substantive examination

– 3 months from receipt of Notification of Entering Substantive Examination Procedure

• No voluntary amendment allowed in response to OA – only to address issues raised in the OA

– If different claims are to be pursued at this stage, only option is to file divisional applications - more costly

• Don’t miss the chances

• For Paris Convention applications or first filings – file a small number of claims

– use voluntary amendment to change the claims to be examined

– need to ensure literal support to the amended claims

Office Actions - Interviews

• Not possible before 1st OA

• In person interview rarely granted

• Telephone interviews often used

• Useful to sound out examiner’s opinions, to reduce office actions

41

42

Second Tier Patent Rights

• Utility Model Patent and Design Patent – Shorter term: 10 years vs 20 years (invention: equivalent to utility

patent)

– No substantive examination

– Faster and cheaper to obtain

– Equally effective in enforcement

– Ideal for protecting products with shorter lifecycle

• Utility model Lower threshold on inventive step

– Easier to get, more difficult to invalidate

– Limited to products only

43

Financial Incentive Program

• Available to Chinese individual or entity, including Chinese subsidiaries of foreign companies – applications must be filed in the name of the business entity

established in China, i.e. Chinese subsidiary

• Central government subsidies – National patents: covering official fees, possibly attorney fees; – PCT and Paris Convention applications: Covering official fees and

attorney fees for up to 5 countries with a limit of RMB100,000 (USD15,000) per country

• Local governments / high tech parks have additional programs

• High tech company status

– Must have certain number of patents as one of the criteria – Enjoy preferred tax rate



Best Practices – Current Cost-Saving Techniques

- Complying with EP (and DE) practice often #1 cost saver

• EP is a very formalistic system and in various aspects

different to other jurisdictions

- EP allows protection in three continents (EP, Hong Kong,

Morocco and Cambodia) – national filing e.g. DE is cheaper

• Will your competitors have different products for different

European countries?

- Expedite EP proceedings

• Early entry, waive Rule 161 EPC, PACE or PPH requests

(each at no official fees)

• Avoid (heavy) EP claim fee by amending claims prior to

EP filing

• File EP application with at least „novel“ independent claims



Best Practices – Future Cost-Saving Techniques

- Unitary Patent and Unified Patent Court about to start 12.2017

• Gives you protection in ≥ 14 countries at the (annual) cost of

4 countries

- Will you opt-out your EP patents?

• If not, (maximum) cost re-imbursement in litigation:

0 €

200,000 €

400,000 €

600,000 €

800,000 €

1,000,000 €

1,200,000 €

Vertretungskosten DE

erstattbare Kosten UPC

DE

UPC

Value at dispute

patentable.com


Cost-Saving Techniques

• File a high quality application in the first place • Know the prior art; • Avoid drafting errors; • Good drawings; • This applies to ALL jurisdictions.

• Defer Examination • Can wait up to 5 years from Canadian filing

date • Amend claims based on prosecution in other

places • Pay multiple maintenance fees at once • Claim “small entity” status (but be VERY careful)

• < 50 employees or university or non-profit entity • Patent invalid if wrong fees paid • Recent case – wrong fee paid during

prosecution did not invalidate patent (do not rely on this).


Criteria for Reaching Patent Filing Decisions

What to file

– Multiple applications that cover both the

commercial product and also the entire relevant

market

Who should participate in the filing decisions

– R&D, C-level, Marketing, IP Counsel, and

Regulatory

Where to file

– Where there is present or potential need (direct

markets, manufacturing locations, shipping

destinations)


How to Streamline Costs

Have “standard” countries to pursue

– Sets expectations for costs and timing (translations,

local requirements, etc.)

– Sets needs and requirements for drafting

Preferred claim/support for jurisdictions

Restriction/lack of unity approaches

Consider taking advantage of international and

regional conventions (PCT, EPO, etc.)

Consider broader set of countries for key technologies


QUESTIONS?


BEST PRACTICES: BEST DRAFTING & PROSECUTION PRACTICES



Thank you.

www.ryuka.com 51


52

Novelty

• Absolute novelty – worldwide disclosure is novelty destroying

– Publication, public use, etc.

• Definition of ‘disclosure’ different from U.S. – technical solution must be in public domain

– sale, lease, exhibition (public use) not necessarily disclosure

– must be approached case by case

– the technical solution must be in a state accessible to the public

– no on sale bar

• Your application may lost novelty by US standard but it may still be good for China

53

Divisional Application (1)

• No restriction on: – number of divisional apps – number of generations of divisional apps – what can be claimed in a divisional

• No divisional can be filed, if – parent application is issued, rejected or withdrawn

• Deadline for filing divisional apps – within 2 months from receipt of Notice of Grant for parent

application

54

Divisional Application (2)

• Divisional from divisional – voluntarily filing, deadline counted on the basis of parent

application (very first generation) – Divisional lack of unity, deadline counted on the basis of the

previous generation divisional

• Practice Tip: – always deliberately make divisional lack of unity, keep option open

Office Actions - Common Knowledge

• Examiners often regard distinguishing features as common knowledge

• Possible solution – Request examiner to provide evidence (examiners often not

cooperative)

– Argue that the distinguishing features have different object, solve different problem and/or have different function

– Argue that the reference teaches away from the present invention

– Argue that one skilled in the art could use the distinguishing features but would not do so

• Could- Would, no motivation

55

Functional Limitation

• Avoid functional limitations in your claim – in prosecution, considered as covering all possible manners

– more vulnerable to novelty objections

– In litigation, possible narrower interpretation

56

Added Subject matter

• Chinese practice extremely strict regarding making amendments – Change of typo: from 1,000℃ to 100 ℃ --- NOT allowed

• Avoid using very generic term and very specific terms in description

• Add intermediate generalization terms

• Include as many technical effects as possible

– Supplement data to support inventive step

– Technical effects must be present in the original disclosure



Best Practices - Best drafting & Prosecution practices

- Have a thoroughly drafted application, prepared for EP filing

• Use clear, concise terms; no alternate expressions

• Have a “general” description instead of describing single

embodiments

• Only one independent claim per category

- Make amendments compliant to EP requirements

• Ideally have a literal disclosure basis for your amendment

and provide disclosure basis

• No intermediate generalizations

• Be careful with deletion of features in independent claims

• File main and auxiliary requests, call the examiner

- Sent instructions early ahead of the deadline, such that EP

counsel can review and propose alternatives

patentable.com


Sound Prediction

• For ‘unpredictable’ technologies (e.g. bugs / drugs) must disclose in the patent application a factual basis for predicting utility (i.e. that the invention will work) and also a sound line of reasoning supporting the prediction.

• This has even been applied in a mechanical case.

• Solution: include data and reasoning in appropriate cases.

patentable.com


“Promise” Doctrine

• A Canadian patent may be invalidated if:

• The patent contains a ‘promise’ regarding the utility of the invention; and

• The promise is not fulfilled.

e.g. patents for Eli Lily’s drugs Zyprexa and Strattera invalidated for failing to provide promised utility resulting in NAFTA challenge.

• Solution: avoid ‘promises’.

patentable.com


Double Patenting

• Prohibition on two patents for the ‘same’ invention.

• No good way to fix.

• Can be an issue where:

• Parent and C-I-P filed in US and applications corresponding to both are filed in Canada

• Two or more applications directed to different but related inventions are filed in Canada for some strategic reason

• Solution: assert all related claims in one application, avoid filing separate overlapping applications where possible.

patentable.com


Claiming Styles

Canada allows:

• US-style claims

• European-style claims

• Multiply-dependent claims

• No government fees for excess claims


Drafting Applications with Global Focus

• Provide support for US and foreign claims

• Recite several fall back positions for all important claim

elements

• Provide support for all combinations of elements

• Consider patent-eligible subject matter in all

jurisdictions

• US has three judicial exceptions

• Other jurisdictions’ exclusions are different (e.g.,

medical treatment methods, biological organisms,

and others)


QUESTIONS?