CALL US NOW ON 01494 422626
Our client was the exclusive UK distributor of a single use sterile bag to assist with inserting a silicone implant during breast augmentation surgery, which had been developed by a surgeon in the US.
The inventor obtained a US patent, and later extended that to add a European patent. It became the standard way of inserting a silicone implant in the US and UK, and because it was a single use sterile item, there was a continuous flow of sales.
Our client was the UK distributor until the business behind the invention was bought by a large multinational medical equipment supplier. The new owners informed our client that he would no longer be the UK distributor.
Our client found an alternative supplier in Korea to enable him to continue his business. This supplier produced a competing product that did the same thing.
However, his solicitors realised that there was a patent issue, and referred him to Downing IP.
In the initial research, Michael noticed that when the inventor had extended his US patent into Europe, it hadn’t been done in the conventional way.
(When filing a patent, the applicant has a year to file the same patent application anywhere else in the world; if it is filed within that year the overseas application date is backdated to the date of the original filing. This enables inventors to file an application, talk to people about the invention and then make a decision about filing in other countries in the light of the feedback that they get.)
In this particular case, the European application had a date of filing, which was 15 months or so after the original US filing date. What that meant was that the European application was not entitled to the US date, and there was an extra window of time between the US filing date and the European filing date - any disclosures in that window would be harmful to the European application.
After an extensive search against the inventor's name, we found an article published three years after the application had been filed. It was published in the medical press by the inventor and his business partner. There was a statement in it that said “we began introducing the prototype and its potential benefits to influential plastic surgeons at the beginning of 2009 and found a very receptive audience”. (The filing date in the European Patent Office was the 29th of April 2009.) The article also explained what the prototype looked like at that stage, which was enough information to see that it did fall within the scope of the granted patent.
We therefore filed an opposition in the European Patent Office.
The representatives for the new owner of the patent dismissed it, saying that the article doesn't say who it was disclosed to, what was disclosed or the date of the disclosure. The European Patent Office carefully considered our opposition and their response, agreed with them and rejected the opposition.
We appealed. We took the appeal board through all of the European Patent Office's case law on prior public disclosure through use and established that this was a situation where it's not our prior use, it's actually the patentee's own prior use, and that we do not have access to any of the supporting documentation as we are just a neutral third party. We can only see what has been published online, as we weren't party to the actual disclosure itself. So the burden of proof in this case is (simply) - is it more likely or not that what we're saying is true. In such a case, we don't have to prove it beyond reasonable doubt, we merely have to show that it's more likely than not. And then it becomes the responsibility of the patentee to disprove what we're saying.
The view of the appeal board was that on the “balance of probabilities”, it was more likely than not that this meeting with influential plastic surgeons took place before the 29th of April 2009. It was to a skilled and knowledgeable audience who would have understood what was going on, and the article explained in enough detail what the prototype was to show that it had all of the claimed features.
The law is clear that you have to keep your invention confidential until you file your patent application. But the inventor spoke to a number of influential plastic surgeons at the beginning of 2009, and then subsequently on the 29th of April filed the European application, describing what they had recently publicly disclosed.
The appeal board revoked the patent on the spot. This meant that our client was now free to import the competing product from Korea and sell it in the UK.
The client said: “Thank you for this. It's truly a staggering result and one that reflects your skill and expertise. We are grateful for what you've done.”
The Korean manufacturer said: “I do not know how I can express what I feel now in this amazing situation in which one of the biggest risks at our end and your end have been removed. All your efforts in which you have a lot of invested have been found worthwhile and we are so lucky to have you. You are now recognised by me as the greatest patent attorney in the world more than UK.”
