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European IP Bulletin, Issue 10, March -
Patents
Patents
On 11 February WIPO launched a new fully electronic system for filing international patent applications called PCT-SAFE.
The PCT entered into force in 1978 after the adherence of 18 countries. Since then, 123 countries have joined the system. The PCT allows an applicant to file one international application in one language in all the Member States instead of doing the same filing procedure before each national patent office. Today the PCT System receives over 110,000 international applications.
Until recently, the procedure to file an international patent application was only possible on paper. Then WIPO launched PCT-EASY. PCT-EASY was an application that facilitated patent application filing, giving the possibility for applicants to prepare patent application in both paper and diskette, but the application included the submission of substantive contents of the application on paper. The PCT-SAFE software now gives the users the ability to file international patent applications on-line, without the need for hardcopy filing. The PCT-SAFE software provides the following advantages: reduction on filing fees, reduced cost on mailing and printing, immediate notification of the reception of application, full search-ability of the document during the PCT procedure and, once it gets into the public domain, security of transmission on international applications and integrity of data.
Undeniably, this is an important improvement for inventors and enterprises involved in the race for knowledge based industries that will lower the cost and reduce the time to secure patent protection.
On 12 February 2004 the EPO announced that its Technical Board of Appeal had revoked Rambus ’ European patent on a “Semiconductor Memory Device” after the conclusion of public oral proceedings.
Rambus is one of the leading world providers of chip-to-chip interface products and services. It holds both US and European patents for an access time register, which is commonly used to increase the speed of communication between processing and memory devices in computers. Rambus had sued Micron, Infineon and other companies for patent infringement of its patented technology in both the US and Europe. In Europe, Rambus’ competitors approached the EPO and opposed the patent, alleging that it lacked novelty and non-obviousness; suffered from insufficient disclosure; and had been amended in a legally unacceptable way. The first instance opposition procedure decided to maintain the patent in its amended form. However, the Technical Board of Appeal revoked the patent on appeal. Although the detailed ruling, is not yet available, the decision has given major relief to Rambus’ competitors.
Despite suffering a setback in Europe, Rambus is upbeat about its patent infringement cases in the US against these companies, because of an FTC ruling given on 16 February 2004, which absolved Rambus of fraud allegations. Rambus’ conduct had been subjected to FTC enquiry on the grounds of having secretly patented technologies that had been proposed and ultimately adopted in JEDEC – an industry standards setting body; so that later on Rambus could claim huge royalty fees from other memory developers. This pattern of anticompetitive acts and practices by Rambus was alleged to be in contravention of JEDEC guidelines relating to disclosure of patents pursued by its members.
The patent infringement cases filed by Rambus against its competitors in the US are slated to begin in May and September of this year, after the US Court of Appeals for the Federal Circuit ruled that a lower court had improperly allowed a jury verdict of fraud to stand against Rambus.
After Europe, the battleground has once again shifted to the US. If the Rambus patent is allowed to stand, its competitors may be liable to pay royalties that could ultimately be passed on to consumers, resulting in higher prices for memory chips. The outcome of the US case could also affect the practices of standard-setting bodies relating to the disclosure of patents pursued by members.
A Code of Practice for pre-action conduct in intellectual property disputes, available on the website of the Chartered Institute of Patent Agents, was released in February by the Skrein Committee.
The Code of Practice is based on a set of IP-specific pre-action protocols that were initially drafted by a group instigated by the Law Society and chaired by Michael Skrein, in answer to the need that was felt for issue-specific pre-action protocols to form part of the Civil Procedures Rules 1999 (CPR).
However, following a decision by the judiciary not to introduce issue-specific pre-action protocols into the CPR for the time being, the Skrein Committee announced the publication of the drafts of the consultation process in the form of a Code of Practice in order to assist and guide those who are dealing with intellectual property issues.
The Code of Practice, which is non binding, represents the Committee’s assessment of what is reasonable pre-action behaviour in intellectual property. It takes into account comments received during the course of the consultation process and recent changes in the law.
The Code, which relates to intellectual property disputes and should be read in conjunction with the CPR, sets out the steps which parties should follow where litigation is being considered. It aims at encouraging parties to exchange information prior to issuing proceedings to ascertain whether proceedings can be avoided and if not, to ensure that the parties understand the issues sufficiently to ensure that any litigation is dealt with proportionately and in keeping with the overriding objective.
The Code suggests that the intended claimant in an intellectual property dispute should send the intended defendant a letter of claim after coming into possession of the relevant facts complained about. The letter should include, amongst other things, the identity of the claimant and the list of remedies that the claimant seeks; and give details of any funding arrangements entered into. The defendant should in turn provide a response to the letter of claim, which should state, amongst other things, whether the claim is accepted or rejected. If the claim is accepted, it should indicate which remedies the defendant is willing to offer. If, on the other hand, the claim is rejected, it should explain the reasons for the rejection. Furthermore, it should indicate whether the defendant is considering making a counterclaim, as well as details of any funding arrangements entered into.
The Code also provides examples of alternative dispute resolution techniques such as dialogue, determination by an independent expert, mediation and arbitration.
Finally, the Code of Practice provides six separate Appendices which contain additional guidelines as regards specific areas of intellectual property: Breach of Confidence, Copyright, Moral Right, Database Right and Unregistered Design Right, Passing Off, Patent and Registered Design, Registered Trade Marks and Unjustified Threats.
Michael Skrein said that the aim
of the Code of Practice was to “devise a system which will be user-friendly
and comprehensive. We need something which is easy to follow and effective”.
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