Creating a winning patent strategy from the ground up –
Creating a winning patent strategy from the ground up
blueprint-for-success To some finding an appropriate patent strategy is as simple as searching for the winning scores of last night’s baseball game. All you have to do is hire a patent attorney – any patent attorney will do. Provide your patent
Biotage Continued Success in Re-Examination ProceedingsBusiness Wire (press release)

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  • AIPPI日中韓Trilateral Meeting 2015が開催されました。 – 特許庁

    AIPPI日中韓Trilateral Meeting 2015が開催されました。
    6月13日に、奈良県でAIPPI(国際知的財産保護協会)日本部会主催の「日中韓Trilateral Meeting 2015」が開催され、日中韓の知財実務者間で、知財制度運用の最新情報、職務発明制度、営業秘密の保護について、各国の実情の紹介及び運用実態の議論が行われました。

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  • Federal Circuit rules prenatal Diagnostic patents as patent ineligible in Ariosa – Lexology (registration)

    Federal Circuit rules prenatal Diagnostic patents as patent ineligible in Ariosa
    Lexology (registration)
    ast week, the Federal Circuit invalidated claims directed to a method of detecting fetal DNA in the maternal bloodstream as patent-ineligible in Ariosa Diagnostics, Inc. v Sequenom, Inc., No. 2014-1139, 2014-1144. (June 12, 2015). The opinion for the
    Federal Circuit Holds Sequenom Diagnostic Method Patent Invalid Under 101JD Supra (press release)
    Federal Circuit Finds Sequenom’s Diagnostics Patent Claims Patent Ineligible Mondaq News Alerts (registration)
    Sequenom Comments On US Court Of Appeals For The Federal Circuit Ruling MarketWatch
    Patently-O -Reuters
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  • Given up on following the EPO posts? Here’s a recap of the year to date

    Merpel has had a busy year to date, writing primarily about the governance crisis at the European Patent Office (EPO). This is a recap post, intended to bring new readers up to speed, as well as to assist regular readers who may have skipped past those posts and who want a synopsis of what exactly is rotten in the state of Eponia.

    Merpel ended 2014 with an attempt to summarise the various developments occurring in the last three months of that year, which is as good a place as any to start reading.
    How things looked on 1 January 2015

    When 2015 dawned, EPO President Mr Battistelli and the Staff Union (SUEPO) were engaged in running hostilities over controversial “social reform” plans to alter career and promotion structures, and to change the health care and invalidity plans. In addition, several commentators had noted the atmosphere of fear pervading the EPO due to the draconian Investigation Unit operating under Mr Battistelli’s regime and the perceived ineffectiveness of safeguards for those investigated or disciplined.
    There was a “constitutional crisis” concerning the Boards of Appeal. This crisis had two elements: the narrower issue of the “House Ban” affair, i.e. the President suspending a Board of Appeal member in apparent breach of both his powers and the principle of judicial independence; and the broader issue of whether judicial independence could be said to exist in any event given the structure of the Boards of Appeal within the European Patent Organisation.
    The AC: a current hope for some direct intervention?

    The other main player in the dramatis personae is the Administrative Council (AC), which is the board which oversees the entire running of the office. It is composed of delegates from each member state, usually the head of the national patent office or someone from the relevant ministry. The AC is chaired by Jesper Kongstad who is perceived as being very close to the President.

    While the President is answerable to the AC, in January 2015 the tail often seemed to be wagging the dog, at least to outsiders. The most controversial of the social reform plans were voted through without a whimper of dissent — usually accompanied by expressions of strong support for the President, notwithstanding attempts by SUEPO to convince AC delegates to see their side of the story.
    So against that background, here’s what Merpel found to write about since then (with one or two contributions from the IPKat when needed for the sake of coherence).
    Merpel’s posts since 1 January 2015, as they happened

    Several developments from the Christmas and New Year period are reported: (1) the EU Parliament rejects a petition to investigate the EPO; (2) EPLAW writes a letter of protest to the AC delegates on the House Ban affair; (3) the UK government answers a parliamentary question assuring the MP that it stands over the independence of the Boards of Appeal; and (4) Mr Battistelli sends SUEPO a cheery Christmas message threatening dismissal of any employee who is found to have encouraged attorneys to cancel oral proceedings during their strike action, and takes the opportunity to emphasise that nothing has changed on the social reforms, which will continue apace. 6 January 2015
    It emerged that the President had not taken the necessary action to replace retired Board of Appeal members, or to reappoint members whose term was nearing its end. This has left 8 out of 28 Boards under-strength, and several very nervous BoA members. Merpel wonders if this is a deliberate strategy to exert pressure on Board members whose term is almost up. 7 January 2015
    The IPKat reports that Sir Robin Jacob has written to Mr Kongstad on behalf of patent judges across Europe, expressing their collective disquiet at the actions of the President in the “House Ban” affair. 7 January 2015
    A summary on what we do and don’t know about the proposed reform of the Boards of Appeal. 8 January 2015
    EPO Vice-President Minnoye writes a stinging (eh, not really) rebuttal of Robin Jacob’s  letter in an email to his cadre of examiners. With lots of exclamation marks! Sir Jacob doesn’t understand the facts or the law! And nevertheless he writes this letter! It’s crazy! Worth a read if you’re feeling down. 21 January 2015               
    Catarina Holtz, a former Board of Appeal member, writes a legal analysis of the “House Ban” situation. 27 January 2015
    The New Scientist publishes an interview with a patent examiner, which it appears was paid for by the EPO as a promotional or recruiting tool. 27 January 2015
    The IPKat posts a clarification and apology for having allowed readers to post comments on the “Life as a Patent Examiner” post, in which those readers wrongly stated that the subject of the piece was not a patent examiner. 3 February 2015
    The composition of “Board 28”, a powerful sub-committee of the Administrative Council, is disclosed, along with news that they are ready to consider a proposal to reform the structure of the Boards of Appeal. The post also includes an analysis of the new career structure for employees, including Board members. 5 February 2015
    Merpel posts a round-up of various minor developments at the EPO, including a first glimpse of the proposals to reform the Boards. 13 February 2015
    CIPA shows some leadership by proposing an interim solution, penned by Jim Boff, to guarantee independence of the Boards of Appeal. 18 February 2015
    The Appeal Court of the Hague finds the EPO to have breached fundamental rights of employees and orders the EPO at the Hague to stop blocking union emails, to stop dictating the terms under which strikes may take place, and to enter into collective bargaining [an order which the EPO President blithely ignored, with the support of the Dutch government, as it turned out]. 19 February 2015
    In the lead-up to a demonstration by SUEPO at the British consulate, Merpel called on Baroness Neville-Rolfe to issue a statement demonstrating that the UK was aware of and was taking the lead within the AC on resolving the unhappiness at the EPO. 23 February 2015
    Mr Battistelli explains why it’s not just a question of immunity … it would actually be wrong for the EPO to obey the court order imposed by the Appeal Court of the Hague. 24 February 2015
    The UK IPO responds to the Merpel’s post, assuring readers that the UK takes its responsibilities on the AC seriously, that it is monitoring the social unrest, and that it is willing to respond to particular concerns that users of the Office might want to raise [posted by the IPKat, but it’s a response to a Merpel post]. 24 February 2015
    Showing governments everywhere how the executive branch of a country’s government can most effectively interfere with its judiciary, the Dutch Minister for Justice, Ivo Opstelten, instructs bailiffs not to execute the Hague Appeal Court’s order against the EPO. 26 February 2015
    The Enlarged Board of Appeal uses decision R 2/14 as an opportunity to tell its own chairman to disobey the EPO President when any instruction given to him in his management role would conflict with the perception of independence of the Boards. 2 March 2015
    Management representatives write an open letter to staff about the “outrageous” behaviour of staff representatives at the meeting where the health care reforms were voted through. 5 March 2015
    The IPKat and Merpel set out some ground rules for the increasingly vitriolic comments on EPO matters. 8 March 2015
    The Central Staff Committee responds to the March 5 letter from management. It turns out that their numbers have been deliberately kept under-strength by the President. His refusal to sanction a replacement staff member has engineered a built-in majority for the management (10 – 9) when voting through the health care reforms, a point which Vice-President Topic, chairing the meeting, refused to acknowledge. The rules of the committee mandate equal numbers. 9 March 2015
    The plans for reform of the Boards of Appeal, part I (the proposal). 9 March 2015
    The plans for reform of the Boards of Appeal, part II (the annexes). 9 March 2015
    The plans for reform of the Boards of Appeal, part III (Merpel’s comments). 9 March 2015
    The EPO reveals its proposals for renewal fees for the Unitary Patent. 9 March 2015
    What really happened at the December Administrative Council meeting, part I. 12 March 2015
    What really happened at the December Administrative Council meeting, part II. 12 March 2015
    The EPO reacts publicly to the Dutch decision, denying that it is violating human rights and insisting on its immunity from such court decisions. 18 March 2015
    An open letter from Merpel to the delegates who are about to attend the Administrative Council meeting, imploring them to deal decisively and with true independence on the major topics facing the organisation – BoA reform, healthcare, strike regulations, staff representation, and so on. 23 March 2015
    AMBA, the Association of Members of the [EPO] Boards of Appeal, launches a website to give itself a clearer voice on the reform proposals for the Boards. 25 March 2015
    The Administrative Council announces, following the March AC meeting, a renewed “social dialogue” with the staff union, aiming to secure industrial peace and win formal union recognition. 26 March 2015
    Merpel calls on all involved in the renewed social dialogue to grasp the opportunity to set matters right. 27 March 2015
    French newspaper Le Monde runs an article reporting on several suicides among EPO employees, and on the conflict between the President and the staff. 17 April 2015
    A demonstration is organised by the staff union at the Dutch Consulate, in protest at the Netherlands having voted in favour of reforms to the health care package at the EPO (which the union believes to infringe fundamental rights), despite the Dutch courts having held that the EPO was already violating such rights. 28 April 2015
    An online consultation is launched on the proposals for the reform of the administration and structure of the Boards of Appeal. 30 April 2015
    The EPO’s sick leave policy is compared to those of comparable international bodies, and this reveals a level of mistrust and a punitive regime for staff taking sick leave. 30 April 2015
    At the same time that the EPO President is engaging in social dialogue with a view to recognising the staff union, it emerges that an outside investigative agency, Control Risks, has been engaged to investigate staff representatives. 22 May 2015
    Merpel calls for financial transparency, without which the renewal fee levels cannot be properly set (by law they must be just enough to provide a balanced budget, but the EPO is running surpluses of several hundred million euro per annum). 26 May 2015
    The EPO confirms that it has appointed an outside firm, Control Risks, to beef up its investigations unit,, but insists that it has simply been done to make up for a shortage of staff in that unit. 27 May 2015
    Two associations of lawyers — EPLAW and CCBE — suggest that revision of the EPC may be inevitable to secure the independence of the Boards of Appeal, and comment critically on the current reform proposals. 5 June 2015
    The EPO is reported to have installed spyware on computers made available to members of the Administrative Council and visiting attorneys. 9 June 2015
    More than five months into the year, where do things stand?
    The House Ban affair drags on. There is still no word on the outcome of the investigation into the suspended Board member, though it has emerged through the course of the year that the reason he was frogmarched from the office and his computer confiscated was that he was alleged to have distributed defamatory material.
    The proposals for reform of the Boards of Appeal are problematic, and progress is much slower than originally announced. It is clear to every neutral observer that the correct solution is to amend the EPC and set the Boards up as a third branch of the Organisation, distinct from the Office and the AC. It seems unlikely that the AC has the stomach for such a revision which would necessitate a diplomatic conference.
    The social reform programme is being pushed through, just as Mr Battistelli announced at the end of  2014. However, given that Mr Battistelli has refused to authorise a full complement of staff representatives on the committee that oversees such proposals, it’s hardly surprising that the 10 loyal managers voted his proposals through over the heads of the 9 staff members and an empty seat.
    The AC has not yet stepped up to the mark in terms of governing the EPO, but Merpel is eternally hopeful. The AC has shown some signs of independent thought, but there’s a lot more to do if it is to bring the EPO into line with the standards of the national patent offices whose heads make up the AC. The delegates know full well that if they tried to subject their own staff at home to the same regime as in the EPO (i.e. the investigations, the unilateral changes to promotion structures and invalidity benefits), they would find themselves in court and probably out of a job due to the revolt of civil servants. But when they board the plane to Munich, somehow the standards slip. The AC continues to approve proposals for social reforms when it knows that the staff’s input into these proposals have been deliberately silenced. They are aware of the atmosphere of fear pervading the office, and now they know that someone in the EPO is spying on attorneys and potentially on themselves. Will this be enough for someone to cry “halt”?  Merpel is, as she said, eternally hopeful.
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  • 特許庁、TOKYO IP COLLECTION 2015の報告 – 知財情報局

    特許庁、TOKYO IP COLLECTION 2015の報告
    特許庁は6月15日、これからの日本を支える潜在的な知的財産権ユーザーを対象に、知的財産の重要性を発信し、普及・啓発を図る目的で、6月13日と14日の両日、東京国際フォーラムで開催した「TOKYO IP COLLECTION 2015」の写真や、プログラムとして配布した広報 …

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  • Sweden’s Elekta sues US Varian over alleged patent infringement – Reuters

    Sweden’s Elekta sues US Varian over alleged patent infringement
    Elekta, a maker of equipment used in cancer treatments, said in a statement Varian’s True Beam linear accelerator infringed patents owned by William Beaumont Hospital and exclusively licensed to the Swedish company. Elekta also said it believed Varian …
    William Beaumont Hospital and Elekta File Patent Lawsuit against Varian Business Wire (press release)

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  • AIPPI日中韓Trilateral Meeting 2015で木原特許技監が基調講演を行いました。 – 特許庁

    AIPPI日中韓Trilateral Meeting 2015で木原特許技監が基調講演を行いました。
    6月13日に、奈良県でAIPPI(国際知的財産保護協会)日本部会主催の「日中韓Trilateral Meeting 2015」が開催され、日中韓の知財実務者間で、知財制度運用の最新情報、職務発明制度、営業秘密の保護について、各国の実情の紹介及び運用実態の議論が行われました。

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  • Cancer patient takes BRCA1 gene mutation patent decision to high court – The Guardian

    ABC Online
    Cancer patient takes BRCA1 gene mutation patent decision to high court
    The Guardian
    Yvonne D’Arcy, who is suffering from breast cancer, is at the centre of a high court challenge to overturn a ruling that US-based biotech company, Myriad Genetics, had the right to a patent over a cancer-causing mutation of the BRCA1 gene. Photograph
    Breast cancer gene: High Court to hear whether Myriad Genetics’ gene patent ABC Online
    Genetic patents: Grandmother Yvonne D’Arcy takes on global giant Myriad Sydney Morning Herald
    Australian Court Weighs Patenting CaseGenomeWeb

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  • Tuesday tiddlywinks

    Congratulations, Dids! The IPKat adds his voice to the chorus of congratulations to bonnie design rights fighter Dids Macdonald on the occasion of her being honoured with as an Officer of the Order of the British Empire (OBE) in this year’s Birthday Honours List.  A tireless worker for Anti Copying in Design (ACID), which she founded, she is an example to us all of what we can only achieve if we put our minds to it.  You can get some idea of Dids’ career and achievements from the ACID website here.

    The Brüstle patent: can you help? One of our readers has emailed us to ask about the status in the Brüstle patent application in the European Patent Office (EPO), the patent being for a way to produce, from embryonic stem cells, specialised cells for treating neurological diseases such as Parkinson’s Disease, starting with embryonic stem cells. Our reader writes:

    “After the decision of the Court of Justice of the European Union (CJEU) in Case C-34/10 Brüstle v Greenpeace [noted by the IPKat here], the EPO revoked the patent. This was appealed and the appeal proceedings are still ongoing. In light of this it is a bit confusing that the patent is registered as granted. I am not a lawyer and I don’t read German very well so it is difficult for me to understand where the case stands today. Can I assume that the patent claims have been revised in a way that avoids the problems pointed out by CJEU? I can’t find any articles on this topic when I google use a search engine, but maybe the IPKat’s readers have more information …?
    Well, do you?

    But what of the converse proposition?
    Council, Community and Compromise: new trade mark law for the EU? The Council of the EU has published final compromise texts on a recast trade mark directive and revisions to the Community Trade Mark Regulation with a view to their agreement. The texts include several departures from the original proposals published in March 2013 as well as numerous clarifying amendments. Their publication reflects political agreement on the proposals as between the European Commission, the Council and the European Parliament in April 2015.  Formal adoption by the European Parliament and the Council is expected in the coming weeks, following which the 28 EU Member States will have three years to transpose the recast Directive into national law. Most of the amendments to the Regulation will come into effect with its entry into force 90 days after its publication in the EU’s Official Journal, with the rest being kick-started by the enactment of the inevitable secondary implementing legislation. Links to all three documents can be found on the Class 46 website here

    No confusion between AGRI.CAPITAL and AGRICAPITAL. While on the subject of trade marks in the EU, this Kat notices that in Case T-524/13 AgriCapital v OHMI – (AGRI.CAPITAL) the General Court has upheld an OHIM Board of Appeal decision that there was no likelihood of confusion between the word sign AGRI.CAPITAL for real estate management, brokerage services and building promoter services, and two earlier AGRICAPITAL word Community trade marks which had been registered for financial services.  This is correct, in that the parties’ respective services were neither competing nor complementary. 

    While financial services are important from the perspective of the average consumer of  real estate management, brokerage services and building promoter services, the same can be said of a significant proportion of activities conducted in any market economy. Accordingly, the link between the parties’ respective services was not sufficiently close to enable the court to conclude that the relevant public would think those services were covered by the same undertaking. This decision shows that the Court is determined not to accord over-wide protection to a mark for a service of very wide application such as financial services, broadcasting services and retail sales.

    Around the weblogs.  The IP Finance blog carries reports on three of yesterday’s sessions of the IPBC Global 2015 Intellectual Property Business Conference, on patent sales and purchases, the experiences of some successful inventor-entrepreneurs and the needs of patent-based start-ups.  Elsewhere, Andy Johnstone on the 1709 Blog discusses Save-the-Link Day (see below for further information). Finally, Marty Schwimmer’s Trademark Blog challenges readers to identify the images reproduced in silhouette: is this indeed a valid method of testing for the existence of secondary meaning?

    “Would you care for the pleasure of the next dance?”  This year’s IP Ball 2015 is fast approaching and this Kat hopes that you will not be missing out. Rumours abound that it’s going to be quite a party. The date of this exciting happening is 18 July, and it is being held in support of Great Ormond Street Hospital, one of the world’s leading paediatric hospitals.  The order of ceremonies is as follows: a drinks reception at 6 pm, a three-course dinner at 7 pm, with all manner of madness to follow. Tickets are £105 per person or £100 for Chartered Institute of Patent Attorney (CIPA) student members.  Just email with your name, your guest’s name and your CIPA student number (if applicable).  The deadline for purchase is 5 July 2015. For further and particulars visit

    SaveTheLink. Meghan from OpenMedia has been in touch with us and writes as follows:

    “A key vote in the European Parliament is about determine whether internet users and companies can freely link to content and services of their choosing. In the worst case scenario, we could all become legally liable for every single thing we link to –- a move that would stifle free expression and kill some of our favorite online services [like the IPKat…]“.

    OpenMedia has been asking web platforms to help get the word out by embedding their widget on their sites. The widget points readers to the website, where people can learn more about schemes that degrade the right to link. This Kat apologises for being a bit behind in getting this out.

    Big cheese comes to the sunny South Coast.  The Bournemouth University’s Centre for Intellectual Property Policy and Management (CIPPM) is running its CIPPM Symposium on 11 September 2015.  The topic is the legal regulation of geographical indications (GIs) in the EU, which might explain why the event is sponsored by Italian GI Grana Padano as well as the university itself. The speakers will mainly be UK-based academics and representatives from UK IPO, DEFRA and the European Commission (or WIPO). Further details are available here.

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