A history at the forefront of technology

As readers may be aware, the European Patent Office (EPO) recently extended its online filing software to allow online filing in post-grant opposition and appeal procedures.

As part of our history of working with the latest technologies, Brookes Batchellor was one of the first firms to use the European online filing system, within 6 months of its introduction in December 2003. Now that the system has been broadened, we are pleased to report that we have again taken the technology on board and made use of the technique in an opposition we are handling.

Of course, knowing the value of our clients' patents and the importance of ensuring that the correct patent documents are filed, we have always taken a cautious approach and even in this case we also filed a confirmation copy by registered post.

It is in this spirit that we have been involved in ongoing discussions with the UK Patent Office about its choice of carrier to transmit documents to the European Patent Office after diligence by our Records staff revealed that two patent applications filed at the UK Patent Office for transmittal to the European Patent Office had not arrived at the EPO within the normal period.

In this case, our quick response, (well before any other Patent Attorneys noticed) was enough to prompt the UK and European offices into action and ensure that the documents were located by the delivery service and arrived at the European Patent Office just in time to avoid losing the filing date they had been accorded.

Brookes Batchellor Quiz Success

Brookes Batchellor fielded a team for last night’s CMS Christmas Quiz for patent and trademark attorneys near the world-famous Barbican Centre in Central London.

The team included Nigel Shindler, David Bailey, Tim Roberts, Mark Jolly, Iain Russell and Joanna Winwood who finished mid-table, but were top in the patents round and scored highly in the trade marks rounds, showing good knowledge of recent case law.

The quiz included music, movie and general knowledge questions, such as how many pints of Guinness are consumed worldwide per day; the answer being around 10 million. The patent and trade mark questions involved identifying brands based on their earlier logos and identifying obscure inventions (such as a pencil including a cigar cutter) from their drawings.

Iain Russell won a “spot prize” for being the first person at the quiz correctly to attribute the statement that “heavier than air flying machines are impossible” to Lord Kelvin.

So, if you want to talk about films, you should probably look elsewhere, but if you are looking for patent attorneys with a good knowledge of the law and the ability to spot inventions, Brookes Batchellor is the team for you.

More Exam Success

Following our success in the UK Examinations, we are pleased to announce that Iain Russell passed all the European qualifying examinations at his first sitting and Mark Guy passed his final remaining examination. Their names will shortly be entered on the European Register of Professional Representatives and they will be fully qualified as both European and Chartered Patent Attorneys.

In addition Joanna Winwood passed three of the four European examinations, so she is now just one step away from being fully qualified too.

Congratulations to all of them.

For he’s a jolly good fellow – Class Discrimination at the Chartered Institute of Patent Attorneys

The Chartered Institute of Patent Attorneys (CIPA) intends to shake up the class system in terms of its membership – do not worry, it will not be asking what your father did and where you were schooled before accepting you into its membership. Rather, it is proposing a new class, imaginatively entitled “member”, which will fit between associate and fellow of the institute.

The new class could be thought of as an upper middle class, above the part-qualified associates and the lowly students, but beneath the exalted fellows of the institute. Fellows may now have to do something more than pass the fiendish British examinations which result in entry on the register, most likely simply work as a patent attorney with another fellow for a predetermined time and find a couple of fellows as proposer and seconder.

The apparent reason for the new class is that some patent attorneys working in the UK, particularly in industry, are no longer interested in becoming Chartered. Unlike many countries the UK does not require that an agent has any qualification or appears on a register in order to act for a client. Accordingly the Chartered Institute can be seen as a burden both in terms of its cost and Continued Professional Development (CPD) which requires Fellows to document the additional training they carry out to stay up to date.

It is proposed that “members” would include those who do not pay the fee to remain on the register of Patent Attorneys, and those who practice in the UK but decide only to take the European Qualifying Examinations.

In addition, Council is asking the current membership (all fellows) for their opinions on what voting rights “members” should have, whether we believe European Patent Attorneys not practising in the UK should also be allowed on the list, and whether we think Trade Mark Attorneys (who have had a separate institute (ITMA) since 1934) should be allowed as members of CIPA.

There is a lack of legal protection placing restrictions on who may act before the UK Intellectual Property Office. Therefore, it is the writer’s view that membership of CIPA as a “member” or “fellow” should remain limited to patent attorneys who have qualified by passing the UK examinations. Accordingly European Patent Attorneys who are unlikely to have knowledge of British Patent Law (especially post-grant) and Trade Mark Attorneys should not be allowed as members.

However, this may seem quite unfair to Trade Mark Attorneys. The Office of Harmonisation in the Internal Market (OHIM) which administers Community Trade Marks allows those who have passed the British Patent exams (which have only two basic examinations on Trade Marks in the UK and abroad) to be entered on the list of European Trade Mark Attorneys. However, this writer thinks that OHIM’s position is wrong and only those who are registered as Trade Mark Attorneys in national offices and actually practise Trade Mark law should be admitted as European Trade Mark Attorneys.

The rules are different in other countries: many have no distinction between Patent and Trade Mark Attorneys; some have no distinction between Patent Attorneys and other Lawyers. Moreover the current position of CIPA could be seen as out of step with other UK institutions, in which only those who make a significant benefit to the institute can become fellows.

We would welcome any of our readers’ comments on what they expect from a Chartered Patent Attorney (i.e. a fellow of CIPA) and whom they believe should be allowed as a fellow, a member and an associate of the institute.

We would also take this opportunity to remind our colleagues elsewhere that CIPA has a category of “foreign members” (to become “overseas associates”) for Patent Attorneys who are not qualified in the UK, but are interested in British Patent Law. If you would like any more information about becoming a foreign member of CIPA please feel free to contact us.

By Mark Jolly CPA

More Success in the UK Finals Examinations

We are delighted to announce that, following success in this year's UK Finals examinations, both Iain Russell and Joanna Winwood have passed all of their exams to qualify as Registered Patent Attorneys.

Hot off the press: CIPA's submission on Enlarged Board of Appeal Referral (G3/08)

The Chartered Institute of Patent Attorneys ("CIPA") has just submitted an amicus curiae brief on one of the most anticipated Enlarged Board of Appeal Referrals in recent years; G3/08. G3/08 concerns the patentability of computer-implemented inventions, although its effects could overspill into other areas of excluded matter, as discussed in CIPA's submission.

The brief will be appearing shortly on the EPO's website, along with numerous other briefs submitted by interested parties, at the following link: http://www.epo.org/patents/appeals/eba-decisions/referrals/pending/briefs.html.

Iain Russell, one of our Registered Patent Attorneys who specialises in computer-implemented inventions, sits on CIPA's Computer Technology Committee has been involved in the preparation of the brief. Iain studied various recent and older decisions of the Enlarged Board (so-called "G-Decisions") to assess both the treatment of patentability in general and also the Enlarged Boards' willingness or otherwise to depart from established case law and EPO practice.

CIPA's position is to argue that the current procedure of the EPO for assessing computer-implemented inventions should be maintained since it gives predictability to applicants and the public at large. The current approach is that there is a fairly low hurdle for overcoming 'exclusion' from patentability under A.52(2) and (3) EPC. The claims must have 'technical character', although this may be as a result of claiming a computer, a computer storage medium or even method steps which are carried out on such technical means. However, in line with A.56 EPC, the invention must provide a non-obvious technical solution to a technical problem.

Brookes Batchellor LLP welcomes CIPA's submission and agrees that predictability for applicants and third parties is paramount for the effectiveness and credibility of the European patent system.

If you have any queries relating to the referral itself or to the patentability of computer-implemented inventions, please contact one of our patents specialists.