Non-printed references and product-by-process claims
When a Norwegian Patent Office (NIPO) decision goes against an applicant or a party to an opposition, that party can file an appeal. Traditionally, appeals were handled by a separate NIPO appeals division. However, on April 1 2013 the Board of Appeal for Industrial Property Rights (KFIR) replaced this division. The motivation for this change was to increase legal certainty through independent review and efficient, trustworthy and user-friendly prosecution of appeals. The board should also help to establish better legal certainty within the field of industrial property rights for users and other affected parties.
Now that the KFIR has been active for four years, it is timely to take a closer look at the extent to which these purposes are being fulfilled. While this update does not examine a large number of KFIR decisions in order to identify trends or generate statistics, it does take a closer look at two cases which imply that the KFIR's decisions have provided no greater legal certainty.
One such case is PAT 14/002. NIPO had granted Norwegian Patent 331,292 to Aker Subsea AS, but the patent was later invalidated following an opposition filed by FMC Kongsberg Subsea AS. Aker appealed that decision to the KFIR, which decided in the patentee's favour.
The patent claims were directed towards a system for control of a subsea-located cyclone for separating oil from water. The opposition was based on new references which, according to the opponent, showed that the claims lacked novelty and inventive step. When the patentee appealed, the claims were amended by incorporating Claim 2 into Claim 1. Some claims were also cancelled.
In its decision, the KFIR pointed out that in order for a reference to be novelty destroying, it must be possible to derive all of the invention's features from the reference in such a manner that a person skilled in the art can work the invention. By "all of the invention's features", the KFIR presumably meant all of the features of a given claim, as it also pointed out that the novelty assessment is based on the claims. The KFIR then stated that "in order for the novelty requirement to be fulfilled it is sufficient that one feature of the invention is new compared with any one of the cited references, including the reference representing the closest prior art".
The last sentence of this paragraph is ambiguous, as it could be interpreted to mean that one feature has to be new, no matter which reference you examine – in other words, the feature has to be absent from all references. It is likely that the KFIR was trying to say that when an invention (ie, a claim) is compared with a reference, it is novel over that reference if one feature is not disclosed by the reference. It does not have to be the same feature that differentiates the claim over each reference.
So far so good. More precise language could have been used, but what the KFIR was trying to say appears to be consistent with practice.
Further, the KFIR agreed with the parties that reference P1 (WO98/37307) was the closest prior art.
Based on the above, the KFIR could be expected to proceed to identify claim features that were absent from P1 (of which there would have to be at least one). However, its analysis took a different turn.
Claim 1 requires that:
"a sensor for measuring oil contents is arranged in the water outlet or water outlet line, and via a control means said sensor is operatively connected to the control valve, the control valve being arranged to operate according to a setpoint for the ratio between the first and second differential pressures, which setpoint and control valve opening are arranged to be adjusted as a response to a change in oil in water contents, as measured with the sensor."
The patentee argued that there was nothing in P1 requiring "that the 'oil-in-water' measurement and oil valve opening… are the only measurement and control mechanism that are required". Based on the requirements that the KFIR had outlined, as quoted above, it could have been expected to respond that there was nothing in the claim requiring this either. However, it accepted the patentee's argument, opining that "in [the] KFIR's opinion claim 1 as amended is novel over P1 since it only makes mandatory the features that are included in claim 1, and not the features that are missing or that appear to be mandatory according to P1".
Exactly what this means is unclear, but the KFIR apparently found that Claim 1 was novel because it did not include features that were included in P1. In other words, Claim 1 was novel not because of the principle that the KFIR cited a few paragraphs above – namely, that a claim is novel if it includes a feature that is missing from the reference – but rather because the reference included features that were missing from Claim 1.
When discussing inventive step, the KFIR went on to say that "by combining a selection of features from the claims of the cited reference it is possible to arrive at a device which includes most of that which is necessary in order to function as the device in the present patent".
The KFIR appears to have found that it was possible to infringe the patent by removing features from the P1 device (ie, by combining a selection of features from P1). Since adding additional, non-claimed features to a device does not normally bring it outside the scope of a patent claim, it follows from this finding that the device of P1 could possibly infringe the later patent without anticipating it.
The KFIR could have been trying to say that P1 required a high number of measurements and valves in order to make the device work as intended, and that P1:
- did not instruct on how to create a system with only one measurement and valve; and
- consequently, did not fulfil the enablement requirement necessary to anticipate the patent.
However, even if that was the case, Claim 1 did not specify that only one measurement and valve was inside the scope of the claim.
The KFIR must do better if it wants to bring clarity to Norwegian patent law.
Non-printed references and product-by-process claims
In an administrative review case (for further details please see "Oral presentations as prior art"), NIPO followed similar decisions of the European Patent Office boards of appeal in requiring a high level of certainty with respect to whether:
- an oral presentation was 'public' in the sense that it made information available to a larger or indefinite group; and
- the information presented actually disclosed the invention to the public in a manner that would enable a skilled person to work the invention.
That decision was appealed to the KFIR, which reversed the decision reached by NIPO (PAT 16/00070). While the outcome of this case is unknown, as it has since been appealed to the courts, the KFIR's reversal of NIPO's decision has created uncertainity in this regard.
It appears that the KFIR still has some way to go before its decisions consistently have the quality that is required if they are to fulfil their purpose of increasing clarity and legal certainty.
For further information on this topic please contact Tom Ekeberg at Zacco by telephone (+47 22 91 04 00) or email ([email protected]). The Zacco website can be accessed at www.zacco.com.