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As patent attorneys, our constant refrain is that inventors must not tell others about their invention until the patent application is filed, other than in a confidential context. I I was recently at a hearing in the European Patent Office, demonstrating that care is needed even after filing.
Our client distributes medical equipment and supplies. They were the sole UK supplier of a specific product line, until the manufacturer changed hands and its new owner felt it knew better. A new UK distributor was appointed and our client was cut off. There was an alternative product available from elsewhere, but there was a problem – a pending European patent application covering the product. They approached us for help.
We started with the usual literature searches, and found something a little out of the ordinary – an article about 3 years after the filing date (and hence not of itself prior art) by the inventor, talking about how the invention came about and how they brought it to market. The story was a good one – a practising surgeon who met with a frustration that was making his surgeries more difficult, realised how that could be overcome, and bumped into someone with commercial experience while on holiday. Together they established a company in partnership, refined the prototype and showed it to influential US surgeons in the field concerned, many of whom were so impressed that they invested in the company.
One sentence stood out to me in that article – they showed it to the other surgeons “at the beginning of 2009”. The filing date of the patent application was 29 April that year. “At the beginning of 2009” sounds awfully like “before 29 April 2009”. Not a great admission to make in such a public form.
So we looked more closely. Those surgeons – some of them invested in the company. Were there any SEC records of investment in early 2009? Why, yes there were… investments had been notified to the SEC as having happened on 10 and 17 March 2009. So if the demonstrations to surgeons happened before the investments were made, and the investments happened in March, the demonstrations must have been before April…?
But what were the surgeons shown? Well, the article explained most of the features of the prototype, and was detailed enough to be very close indeed to the claimed invention. A little more digging revealed their related US patent application from just over a year earlier which described the product - in enough detail to fall within the scope of the claim. It was not published until after the European filing, so was also not prior art, but it showed what the inventor’s prototype looked like at the relevant time. Surely that was the prototype which the surgeons were shown?
That felt like an arguable case of prior disclosure. We waited for the patent to be granted, and lodged an opposition raising this issue. The patentee scoffed – none of this was proof, none of this was certain, we hadn’t shown a precise date, all of this was just supposition. The first-instance decision agreed, finding the proof insufficient and maintaining the patent. We lodged an appeal, and the Patentee maintained their position. Worse, the Board of Appeal’s preliminary opinion agreed entirely with the Patentee.
Time to turn on the advocacy, then. Most of the week before the hearing vanished into a close study of the documents and that most engaging of tomes, The Case Law of the Boards of Appeal. That meant I arrived at the new home of the Boards of Appeal in Haar (which is definitely in Munich, no questions there**) knowing exactly what every document offered and where each useful point was located in each one of them. Then, set the stage – acknowledge that this is not a typical prior public disclosure case. Review the case law, show that there is basis there for the Board to decide on the balance of probabilities and opt for whatever explanation they feel is more likely than not. Walk them through the documents, show them each and every pointer. Then tie them all together, set out the consistent narrative, and explain how that anticipates the claim. Wonder why the Patentee, whose inventors we are talking about, chose to offer no counter-evidence. And finally… acknowledge also that it is their decision to make… I’m just here to show them the lie of the land and let them make their own mind up.
The patentee – thankfully! – stuck to their previous line. We had proved nothing. There were gaps here and there. This is just a story spun from the documents. But no counter-evidence. No alternative narrative that could offer a different interpretation of the documents.
The Board took an hour to make their mind up. Then they came out, sat down, and said “The opinion of the Board is that claim 1 lacks novelty”.
I do like visiting Munich. Especially when I win.
* For my overseas readers, the UK government issued a range of propaganda posters during the 1939-45 war, under the banner “Careless talk costs lives”. The aim was to discourage chatter by armed forces personnel which might be overheard by enemy agents - https://en.wikipedia.org/wiki/Careless_Talk_Costs_Lives_(propaganda)
** My patent attorney contacts will understand the reference. Give me a call if you’d like it explained…
Best wishes,
Michael
